Regimbal v. Scymansky, 23947

• Decision Date: 20 July 1971
• Docket Number: 23975 and 23976.,No. 23947,23947
• Citation: 444 F.2d 333
• Parties: Laurent REGIMBAL et al., Plaintiffs-Appellants, v. Peter SCYMANSKY et al., Defendants-Appellees. Laurent REGIMBAL et al., Plaintiffs-Appellees, v. Lloyd BRULOTTE et al., Defendants-Appellants. Laurent REGIMBAL et al., Plaintiffs-Appellees, v. Melvin J. NEWHOUSE et al., Defendants-Appellants.
• Court: U.S. Court of Appeals — Ninth Circuit

444 F.2d 333 (1971)

Laurent REGIMBAL et al., Plaintiffs-Appellants, v. Peter SCYMANSKY et al., Defendants-Appellees.

Laurent REGIMBAL et al., Plaintiffs-Appellees, v. Lloyd BRULOTTE et al., Defendants-Appellants.

Laurent REGIMBAL et al., Plaintiffs-Appellees, v. Melvin J. NEWHOUSE et al., Defendants-Appellants.

Nos. 23947, 23975 and 23976.

United States Court of Appeals, Ninth Circuit.

April 20, 1971.

As Amended on Denial of Rehearing July 20, 1971.

Richard W. Seed (argued), Carl G. Dowrey, of Seed, Berry & Dowrey, Seattle, Wash., John Gavin, of Gavin, Robinson, Kendrick, Redman & Mays, Yakima, Wash., Joseph C. Murphy, Toppenish, Wash., for appellant Laurent Regimbal.

Margaret E. White (argued for Newhouse), Arlington C. White (argued for Brulotte), of White & White, San Francisco, Cal., C. W. Halverson, of Halverson, Applegate & McDonald, Yakima, Wash., for appellees.

Before CARTER, KILKENNY and TRASK, Circuit Judges.

JAMES M. CARTER, Circuit Judge.

Appellants in case #23947 filed this action against appellees for infringement, contributory infringement, and inducing infringement of appellants' Regimbal Patent #2,699,172. The district court held that the Regimbal patent was invalid for obviousness under 35 U. S.C. § 103. The court's findings indicate, in the alternative, that if the patent were valid, then appellees' actions constituted infringement. No reference to these findings appears in the judgment. We affirm the district court's determination that the Regimbal patent is invalid and, therefore, do not reach the infringement issues in the cross-appeals (No. 23,975 and 23,976). The cross-appeals are dismissed.

I. Factual Background:

Appellants, in case #23947, Regimbal and Thurmer, are the joint inventors and joint owners of the patent in issue Regimbal #2,699,172. Appellants' patent describes a "vertical" or "upright" hop-picking machine in which the hop vines hang vertically with their butt ends at the top as they are picked. This type of machine is distinguishable from a "horizontal" machine, in which the hop vines move with their length horizontally as they are picked.

The allegedly infringing machine is manufactured by the Dauenhauer Manufacturing Company, pursuant to Dauenhauer #2,677,378. In 1949, Dauenhauer was granted permission to inspect a prototype version of appellants' machine. Thereafter, Dauenhauer returned to his factory, copied appellants' machine, and filed a patent application on August 16, 1950 that resulted in patent #2,677,378. Meanwhile, appellants had filed their application on May 16, 1950, from which issued the patent in suit #2,699,172.

The appellees are hop growers in Washington, who have used the allegedly infringing Dauenhauer machine, repaired such machines, and maintained a supply of spare parts for such machines to be used in the repair of their own machines and for sale to neighboring hop growers. Dauenhauer was initially a party defendant to this suit, but he was dismissed from this action on a motion based on improper venue. Another defendant, Peter Scymansky, was dismissed from this action pursuant to a consent decree.

II. The Validity of the Regimbal Patent:

The district court determined that appellants' machine was a combination of elements present in the prior art of hop-picking machines and in the relevant prior art in related fields. We agree. Only claim 13 of the Regimbal patent remained in issue. We set forth the elements of that claim (as described in appellants' brief), and cite the relevant prior art that supports the district court's finding:

Claim 13 In a hop-picking machine, (1) A pair of endless belts each comprised of a plurality of endless chains trained top and bottom about sprocket wheels journaled for rotation about vertically-spaced horizontal axes and mounted one belt alongside the other; Crowley #2,496,858 (1950); Horst Jr. #2,447,122 (1948);

(2) with the opposed inner runs of the belts occupying converging vertical planes to describe a flared picking throat there between, Horst Jr. #2,447,122 (1948); Griswold #2,536,927 (1946);

(3) said belts being each provided at equidistantly spaced intervals of the circumference with transversely extending picking combs which are vertically staggered as between the two belts, Crowley, #2,496,858 (1950); Griswold #2,536,927 (1946); Horst Jr. #2,447,122 (1948);

(4) and lap one another at the narrow end of the throat, Crowley #2,496,858 (1945); Livermon # 1,749.040 (1930) — threshing machine; Harrington #1,350,452 (1920) — threshing machine; Horst #1,008,914 (1911);

(5) means for driving the belts to have the combs move in a downward direction along said opposing inner runs of the belts, Crowley #2,496,858 (1950); Griswold #2,536,927 (1946); Horst Jr. #2,447,122 (1948);

(6) means for giving continuous travel to a succession of suspended hop vines to cause the vines to move without interruption progressively through the picking throat entering at the wide end and leaving the narrow end of the latter, Hinds #2,064,748 (1936); Horst #1,008,914 (1911); Miller #1,054,360 (1913); Thys #2,193,354 (1938); Griswold #2,536,927 (1946); Horst Jr. #2,447,122 (1943);

(7) and supporting means bearing against portions of the outer sides of said opposing inner runs to resist outward bellying of the latter as the vines approach and traverse the narrow end of the throat. Mundale #799,750 (1905); Harrington #1,350,452 (1920) — threshing machine; Randolph #555,533 (1896) — threshing machine.

There is no real contention by appellants that the prior art does not show all the above elements except numbers 4 and 7. Appellants stressed these elements to the trial court and on appeal as not being found in the prior art. We cited the prior art references, supra, that clearly show these elements. The fact that some are found in the related art of threshing machines, does not destroy their pertinence or negate the fact that a mechanic skilled in the art would have had available these references.

In addition to elements 4 and 7 of the appellants' patent, appellants point to what is called the distinguishing feature of the patent in suit, "* * * the fact that the present invention initially works on only the side edge portion of the foliage and then causes the fingers to penetrate with progressive travel of the vines * * *" Regimbal #2,699,172 (1950), col. 4, lines 79-82. This operation was completely disclosed in the Miller patent #2,139,029 (1938) p. 2, col. 2, lines 39-40.

III. Inconsistency Among the Findings of Fact and the Conclusion of Law:

Appellants assert that there are inconsistencies between certain findings of fact and between certain findings and the related conclusion of law. We do not agree.

In substance, the district court found that: the device described by appellants' patent did a better job of hop-picking than other machines existing in the prior art of hop-picking devices Finding XX;¹ The combination of elements in the appellants' patent was new and novel Finding XXIV;² the combination in appellants' patent was novel in that there was a different range and positioning of old elements Finding XXVI;³ the various elements or parts of appellants' patent performed no different function in combination than they did individually Finding XXV;⁴ and, the combination of elements in appellants' patent produced a more efficient result, but not a "new and unexpected result" Conclusion II.⁵

Although they are not artfully drawn, we have determined that the contested findings and conclusion of law are consistent. The trial court had previously announced its decision and general findings. Any appearance of inconsistency was created in part by several amendments to the original findings, which amendments were offered by the appellants and adopted by the court. To the extent that these amended findings contributed to the purported inconsistency, it was confusion of the appellants' own making.

Only Finding of Fact XXII requires specific explanation. Finding XXII states in pertinent part:

"The picking fingers along the longitudinal side edges of the belts overlap at the narrow end of the picking throat and are spaced apart at the wide infeed end of the picking throat. The V of this picking throat is horizontal whereas the direction of travel of the picking fingers is vertical. However, the prior art shows a narrowing but not an overlapping."

Regarding the absence of "overlapping" in the prior art, the court was undoubtedly referring only to the prior art in the field of hop-picking machines.⁶ Thus, the court did not find that "overlapping" was not present in the prior art of related fields, such as threshing machines.

This construction of Finding XXII is firmly supported by examination of the court's following Finding (XXIII), which states:

"The Regimbal-Thurmer machine provides supporting means bearing against the outer sides of the opposed inner runs of the picking belts at the narrow end of the picking throat to resist outward bellying of the inner runs so that the overlap of the picking fingers at the narrow end will be maintained. This combination of the supporting means with the overlapping picking fingers at the narrow end of the picking throat is not disclosed in any of the prior art hoppicking machines."

It is clear that both findings discuss the "overlapping" of picking fingers, and that Finding XXIII expressly limits its scope to the prior art in the hoppicking field. The final sentence in Finding XXIII was added at appellants' request. The record shows that the district judge insisted that the amendment would be allowed only if it specifically indicated that the court was speaking only of the prior art of hop-picking machines.

Therefore, Finding XXII is not inconsistent with the court's conclusion that the elements of appellants' claim 13 were all present in the pertinent prior art, including that in such related fields as threshing machines.

IV. Validity of Conclusion of Law II:

In its Conclusion...