Preemption Devices, Inc. v. Minnesota Min. and Mfg. Co.
| Decision Date | 12 April 1984 |
| Docket Number | No. 83-1082,83-1082 |
| Citation | 221 USPQ 841,732 F.2d 903 |
| Parties | PREEMPTION DEVICES, INC., Appellant, v. MINNESOTA MINING AND MANUFACTURING COMPANY, Appellee. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
William E. Cleaver, Paoli, Pa., argued for appellant. With him on brief was Zachary T. Wobensmith, III, Philadelphia, Pa.
Joel S. Goldhammer, Philadelphia, Pa., argued for appellee. With him on brief were Steven J. Rocci, Philadelphia, Pa., and Terryl K. Qualey, St. Paul, Minn.
Before RICH, DAVIS and SMITH, Circuit Judges.
This appeal is from the March 18, 1983, judgment order (amended April 25, 1983) of the District Court for the Eastern District of Pennsylvania (Judge James T. Giles), 559 F.Supp. 1250, after a bench trial in a declaratory judgment action brought by appellant to declare invalid the William H. Long Reissue Patent No. 28,100 for "Traffic Signal Remote Control System" owned by appellee, Minnesota Mining and Manufacturing Company (3M), which counterclaimed for infringement of the patent. Appellant, Preemption Devices, Inc. (PDI), admitted that it "willfully and intentionally" infringed, but asserted five grounds of invalidity of the patent: three bars under 35 U.S.C. Sec. 102(b), namely, on sale and in public use in this country and described in a printed publication more than one year prior to the date of the application for patent in this country; obviousness from prior art under 35 U.S.C. Sec. 103; and fraud in the then Patent Office in the prosecution of the application. In a most lucid and thorough opinion, 218 USPQ 245, including 37 findings of fact and 6 conclusions of law as well as detailed discussion of each of the aforesaid five points, the trial court rejected each of these assertions. A permanent injunction was granted and an accounting ordered. We affirm.
PDI raises on appeal each and every one of its five points and in its briefs asks us, in effect, to review the entire record and reach our own conclusions on each point--in its favor, of course. This is not our function as an appellate court. Fed.R.Civ.P. 52(a); Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 123, 89 S.Ct. 1562, 1576, 23 L.Ed.2d 129, 161 U.S.P.Q. 577, 586 (1969):
In applying the clearly erroneous standard to the findings of a district court sitting without a jury, appellate courts must constantly have in mind that their function is not to decide factual issues de novo. The authority of an appellate court, when reviewing the findings of a judge as well as those of a jury, is circumscribed by the deference it must give to decisions of the trier of the fact, who is usually in a superior position to appraise and weigh the evidence. The question for the appellate court under Rule 52(a) is not whether it would have made the findings the trial court did, but whether "on the entire evidence [it] is left with the definite and firm conviction that a mistake has been committed." [Cases cited.]
It behooved appellant, therefore, to precisely point out and demonstrate why the finding of the trial court, on any issue it argued, was clearly erroneous, not merely that we might reach a different conclusion on a de novo review. We are not in as good a position as was the trial judge to evaluate conflicting evidence or even to judge the true significance of documentary and physical exhibits introduced through or testified about by live witnesses who appeared before him.
We have carefully considered the opinion of the trial court and appellant's criticisms thereof. We find no sufficient reason to disturb its holding on any point. The opinion below discussed appellant's contentions under four headings. Familiarity with the opinion will be presumed, and we will comment briefly thereon under the same headings.
Preliminarily, to make our remarks intelligible, we explain that the Long patented invention resides in means to control city traffic light systems from emergency vehicles such as fire apparatus and ambulances, utilizing a pulsed, high-intensity light on the vehicle, similar to a strobe light, by which the vehicle can send a light beam signal ahead to the traffic signal controllers. Light signal receiving and control mechanism is installed adjacent to the controllers which causes them to cycle the traffic lights, stopping cross traffic in a normal fashion while giving the green light to the emergency vehicle well ahead of its arrival at an intersection.
In the process of developing the invention, Long and his business associates first developed prototypes which were installed in the California cities of Gardena and Buena Park. The trademark OPTICOM was adopted for the devices. At the same time, Long et al. were investigating the market, visiting many other cities, and making demonstrations. PDI asserted below that the early installations amounted to putting the invention on sale and/or in public use more than a year before the application for the patent was filed, thus creating a bar to the grant of a valid patent under 35 U.S.C. Sec. 102(b). This was disputed by 3M as a legal proposition for various reasons and, assuming the use was of the invention, and insofar as it was public, asserted the experimental use exception to the bar. Evidence was received on many aspects of this issue which was required to be evaluated by the trial court. The patent application having been filed on March 16, 1967, the "critical date" is a year earlier. The trial court's conclusions of law on this issue were:
1. The Opticom patent was not on sale before the critical date.
2. The uses of Opticom before the date were bona fide experiments.
We note in passing, that what the trial judge plainly meant by conclusion "1" was that the patented invention, not the patent, was not on sale; he was, as is very commonly done, using the word "patent" to mean the patented invention. Such use is confusing and should be avoided.
We do not find in appellant's arguments on this point anything more than a general disagreement with the trial judge's appraisal of the evidence on the basis of well-established law of which the judge had a thorough grasp. We find a total failure by appellants to establish error on these two issues. We find particularly unconvincing its argument based on the declaration filed in connection with the application to register the trademark OPTICOM, stating the dates of first use and first use in commerce. Those statements were not made with respect to the use of the invention but the use of the mark. The description of goods in the registration is very general and defines no particular apparatus.
This is the third contention based on Sec. 102(b). The trial court dealt with two aspects of it. First, appellant relied on 1964 articles by Long in Electronic Industries Magazine describing a device called "Enetron" involving light communication but having nothing to do with traffic control, as the trial court found. The court disposed of this by holding, in effect, that under the precedents the article did not disclose the invention in such terms as to enable anyone to practice it. In the section of its brief before us devoted to the printed publication issue, appellant does not mention the "Enetron" articles, which is sufficient reason for us to ignore them. Instead, appellant concentrates on another so-called publication, some OPTICOM brochures. These the trial court found insufficient under Sec. 102(b) for two reasons. As with the "Enetron"' articles, he found the descriptions insufficient under the law. Furthermore, he found they did not qualify as "publications" since all the evidence showed regarding dissemination prior to the critical date was the mailing of six copies to a friend of Long's on March 9, 1966, with a view to their being used to get some financial backing. There is no evidence to show further dissemination by the friend before the critical date. Appellant has said nothing to contradict the court's holding that the dissemination of six copies to an individual was not a "publication" under Sec. 102(b) or to show error in its third conclusion of law, "Opticom was not described in a printed publication before the...
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