Parker v. St. Sure, 6573

• Decision Date: 26 October 1931
• Docket Number: No. 6573,6577.,6573
• Citation: 53 F.2d 706
• Parties: PARKER v. ST. SURE, District Judge.
• Court: U.S. Court of Appeals — Ninth Circuit

53 F.2d 706 (1931)

PARKER v. ST. SURE, District Judge.

Nos. 6573, 6577.

Circuit Court of Appeals, Ninth Circuit.

October 26, 1931.

Chas. M. Fryer and A. C. Aurich, both of San Francisco, Cal., for petitioners.

Frederick S. Lyon and Leonard S. Lyon, both of Los Angeles, Cal., and John H. Miller, Chas. E. Townsend, and A. W. Boyken, all of San Francisco, Cal., for respondent.

Before WILBUR and SAWTELLE, Circuit Judges, and JAMES, District Judge.

WILBUR, Circuit Judge.

Petitioners seek a writ of mandamus to compel the respondent judge to make findings of fact and conclusions of law in the case of George D. Parker and Charles E. Evans, Plaintiffs, v. A. Fox, Defendant, and Eby Machinery Company, Intervener, 53 F.(2d) 706 being equity case No. 2401-S, as required by Equity Rule No. 70½ (28 USCA § 723) recently adopted by the Supreme Court. It is alleged in the petition that after final hearing the respondent rendered his decision holding the patent involved to be valid but not infringed. It is alleged that respondent filed a memorandum order directing a finding of fact and conclusion of law to be entered in accordance with the memorandum opinion; it is alleged that each party filed with the respondent their proposed findings of fact and conclusions of law, that a hearing was had by the respondent to settle the findings of fact and conclusions of law, but the respondent refused to follow Equity Rule No. 70½ and refused and failed to make any findings of fact as required by said rule, and "signed and filed the purported findings of fact and conclusions of law proposed by defendant and intervener." A rule to show cause was made, and upon the hearing respondent contends that the findings of fact and conclusions of law filed in the case were a compliance with the equity rule in question and that if not the findings of fact and conclusions of law at least represent an exercise of discretion which cannot be controlled in a mandamus proceeding. Petitioners' contention is that, although the respondent signed what purported to be findings of fact and conclusions of law, they were not such in fact.

The respondent, in his memorandum opinion, indicated the basis of his decision; namely, that the patent in suit was valid, but that it was not infringed. The findings of fact and conclusions of law follow the memorandum opinion. The findings are that a valid patent was issued to the complainant, and the court specifically found that the defendant had used and operated the machine complained of; reference being made in the findings to a photograph of the machine in evidence, and, as a conclusion of law, it was held there was no infringement. In the findings of fact the issuance and reissuance of patent in suit are set forth, and the court finds: "That the machine so made by the defendant, Eby Machinery Company, and used by the defendant, A. Fox, is correctly shown by the photographs introduced in court during the trial of this cause as `Plaintiff's Exhibit #3', and by photographs shown in `Plaintiffs' Exhibit #8', and drawings, Defendants' Exhibits U and S, (Sheets 1 to 9) and now on file in the records of this court."

In the conclusions of law it is stated:

"II. The validity of the patent is in doubt but in accordance with the rule of law that when such a question is close or in doubt, the presumption of the patentability is to be regarded as controlling, Reissue Letters Patent No. 16,292, granted March 6th, 1926, to plaintiff, Charles E. Evans, for Bundling, Binding and Tying Machine are held valid particularly as to Claims 3, 36, 37, 38, 39, 40, 42 and 43."

"VI. That said machine so manufactured by the defendant, Eby Machinery Company, and used by the defendant, A. Fox, complained of in this suit, does not infringe upon the Letters Patent in suit, Reissue Letters Patent No. 16,292, and particularly Claims numbered 3, 36, 37, 38, 39, 40, 42 and 43, or any thereof."

In the decree it is recited that the court has filed its memorandum opinion, its findings and conclusions of law, and it is ordered, "(1) That the defendants have not, nor has either of them, infringed upon the claims of Reissue Letters Patent No. 16,292."

The petitioners claim that these findings are insufficient, and claim that the answers in each of the suits set up substantially the following defenses:

"(a) Lack of infringement because of estoppel against the patentee arising from proceedings by him in the Patent Office while obtaining his patent;

"(b) Lack of infringement because of so-called `intervening rights,' a defense based upon the fact that the patent in suit was a reissue instead of an original patent;

"(c) Lack of invention in the disclosure of the patent and consequent invalidity thereof;

"(d) The existence of a mere aggregation instead of a true combination in the disclosure of the patent, and consequent invalidity of the patent;

"(e) Falsity of the oath in support of the reissue application and consequent invalidity of the patent;

"(f) Undue multiplicity of claims and consequent invalidity of the patent;

"(g) Granting of the reissue patent for something different from the disclosure of the original patent, and consequent invalidity of the reissue patent;

"(h) Public use of the disclosure of the patent for more than two years prior to the application therefor, and consequent invalidity of the patent."

Petitioners complain that the findings "* * * did not contain any statement showing how the trial court resolved any question of fact relating to any of the defenses (a) to (h), supra, page 2, set up in the answers. On the contrary,...