La Salle Street Press, Inc. v. McCormick and Henderson, Inc., 18384.

• Decision Date: 09 July 1971
• Docket Number: No. 18384.,18384.
• Citation: 445 F.2d 84
• Parties: LA SALLE STREET PRESS, INC., Plaintiff-Appellee, v. McCORMICK AND HENDERSON, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

445 F.2d 84 (1971)

LA SALLE STREET PRESS, INC., Plaintiff-Appellee, v. McCORMICK AND HENDERSON, INC., Defendant-Appellant.

No. 18384.

United States Court of Appeals, Seventh Circuit.

June 11, 1971.

Rehearing Denied July 9, 1971.

COPYRIGHT MATERIAL OMITTED

Anthony S. Zummer, Chicago, Ill., Leo J. Aubel, Wilfred S. Stone, Chicago, Ill., for defendant-appellant; Stone, Zummer, Livingston & Aubel, Chicago, Ill., of counsel.

Howard W. Clement, Chicago, Ill., Robert P. Cummins, Melvin F. Jager, Hume, Clement, Hume & Lee, Ltd., Chicago, Ill., for plaintiff-appellee.

Before PELL and STEVENS, Circuit Judges, and MORGAN, District Judge.¹

ROBERT D. MORGAN, District Judge.

This appeal grows out of a suit for patent infringement. Both plaintiff and defendant are engaged in the business of commercial printing in the City of Chicago, Illinois. Plaintiff's complaint alleged that it was the owner of Anderson Patent No. 3,136,248 (hereinafter referred to as the 248 Patent), entitled "Process and Apparatus for Temporarily Indicating Corrections in Text of Printed Matter," and that defendant was infringing the process claims of that patent.

The 248 Patent issued June 9, 1964. Shortly thereafter plaintiff initiated a licensing program which led to the grant of certain licenses outside the Chicago area.

After defendant filed an answer and counterclaim, cross-motions for summary judgment were filed on the issue of infringement. On May 23, 1968, the court entered summary judgment for plaintiff, finding that defendant had infringed the process claims of the 248 Patent if the same were valid. LaSalle Street Press, Inc. v. McCormick and Henderson, Inc., 292 F.Supp. 276 (N.D.Ill.1968). On June 18, 1968, pursuant to stipulation, the court entered an order finding that claim 4 of the patent, the apparatus claim, was not infringed.

After a licensing arrangement was offered to defendant in an offer of settlement, defendant filed a second amended counterclaim, alleging the violation by plaintiff of the antitrust laws in that plaintiff had attempted to monopolize the printing business by price discrimination and unfair competition in violation of the Robinson-Patman Act, 15 U.S.C. 13a, the Federal Trade Commission Act, 15 U.S.C. 45, and the Sherman Act, 15 U.S. C. 2. Upon a motion by plaintiff, the court held that plaintiff's license agreements under the 248 Patent did not involve a sale of a commodity and that there was, thus, no violation of the Robinson-Patman Act. The court held, further, that a cause of action under section 45 could be initiated only by the Federal Trade Commission. Pursuant to that holding, it entered an order dismissing the paragraphs of the second amended counterclaim grounded upon sections 13a and 45. LaSalle Street Press, Inc. v. McCormick and Henderson, Inc., 293 F.Supp. 1004 (N.D.Ill.1968).

On June 3, 1969, the court entered an order striking the paragraphs of the second amended counterclaim, grounded upon the theory that plaintiff had sought to charge an exorbitant license fee under its patent in violation of the Sherman Act. 15 U.S.C. 2. The court held that there was lacking any sufficient specific allegation of injury.

Defendant was denied leave to file a third amended counterclaim. A second amended answer filed by defendant, attempting to aver antitrust violations as a matter of affirmative defense, was stricken upon the ground that such defenses were not timely asserted and were waived.

Following a trial upon the issue of the validity of the 248 Patent, the court found and concluded that all claims of the patent were valid and that the process claims 1 through 3 were infringed by defendant. Judgment was entered ordering an injunction to issue against defendant and ordering defendant to account in damages for the extent of its use and sale of its infringing process. This appeal followed.

Defendant began using its accused process shortly after the 248 Patent was issued in 1964. In 1969, H. B. McCormick, defendant's president, filed a patent application claiming defendant's process as an advancement in the art. He obtained a patent upon that application on October 21, 1969, while this suit was pending.

Specific contentions of error are recited in context herein.

At the outset, we reject defendant's contention that the provisions of Rule 52(a) of the Federal Rules of Civil Procedure do not insulate the trial court's findings of fact because the issue of patentability depends upon documentary evidence.

The general rule that findings of fact may not be set aside unless they are clearly erroneous applies to patent cases as well as others, e. g., Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227, 1229 (7 Cir. 1969), cert. denied, 397 U.S. 1037, 90 S.Ct. 1354, 25 L.Ed.2d 648 (1970); Armour Research Foundation v. C. K. Williams & Co., Inc., 280 F.2d 499, 503 (7 Cir. 1960), cert. denied, 365 U.S. 811, 81 S.Ct. 690, 5 L.Ed.2d 691 (1961), except that in situations in which the factual determination rests solely upon documentary evidence this court is as competent as was the trial court to interpret and weigh the evidence. Deep Welding, Inc. v. Sciaky Bros., Inc., supra; Charles Peckat Mfg. Co. v. Jacobs, 178 F.2d 794, 802 (7 Cir. 1949), cert. denied, 339 U.S. 915, 70 S.Ct. 575, 94 L.Ed. 1340 (1950).

When faced with findings resting upon a blending of documentary evidence and oral testimony, Rule 52(a) applies, and this court must accept findings of fact unless they are clearly erroneous. Deep Welding, Inc. v. Sciaky Bros., Inc., supra, 417 F.2d at 1230; Novo Industrial Corp. v. Standard Screw Co., 374 F.2d 824, 827 (7 Cir. 1967), cert. denied, 389 U.S. 823, 88 S.Ct. 51, 19 L.Ed.2d 75 (1967).

This case is closely parallel to the Novo Industrial situation. Expert witnesses testified for both parties with respect to the functional and process claims of the patent in suit and the scope and content of the prior art. In that situation we cannot reject the findings of fact upon the issues of patentability unless we must conclude that they are clearly erroneous.

We also reject at the outset defendant's contention that the trial court applied the wrong standard of patentability in this case. That argument rests upon the court's finding and conclusion that defendant's inconsistent positions with respect to anticipation provided evidentiary support to the findings that the claims of the 248 Patent were not anticipated by the prior art.

Before the court below, the defendant took the position that the teaching of the 248 Patent was obvious in view of the Lowensohn patent, the VanOrden process and the Kellow-Brown process, all hereinafter discussed. In June, 1966, defendant's president had filed an application for a patent upon its accused process, verifying that its process was new and asserting that its process was not anticipated by the prior art, including the 248 Patent. It now urges the VanOrden and Kellow-Brown concepts as identical to plaintiff's claims of invention, yet that art was not brought to the attention of the Patent Office when defendant processed its application upon the accused process.

This court has recognized the evidentiary value of evidence of such inconsistencies as buttressing the conclusion of the validity of a patent. See McKee Door Co. v. Forest Door Co., Inc., 284 F.2d 809, 814 (7 Cir. 1960). In the McKee case, the alleged infringer had sought to obtain a United States patent upon its accused device and had obtained several foreign patents upon substantially the same combination claimed by the plaintiff's patent. In approving the evidentiary value of evidence of that inconsistency, the court noted the "anomalous position of urging the invalidity of that which" the defendant had previously sought for itself in the United States "and on which it now claims foreign protection." See also Zegers v. Zegers, Inc., 365 F.2d 156, 161, n. 11 (7 Cir. 1966), cert. denied, 385 U.S. 948, 87 S.Ct. 320, 17 L.Ed.2d 226 (1966); Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 269 (2 Cir. 1967).

That principle is not opposed to the Supreme Court decisions upon which defendant here relies. In Paramount Publix Corp. v. Tri-Ergon Corp., 294 U.S. 464, 476-477, 55 S.Ct. 449, 79 L.Ed. 997 (1935), the court rejected the contention that the alleged infringer was estopped to assert obviousness of the subject matter because defendant had sought to obtain a patent upon an application which would have embraced the claims of the patent in suit. Estoppel was the thrust of the argument. Moreover, it appears that defendant's agent had filed its patent application some seven years prior to the date of issuance of the patent in suit. In the case before us, the inconsistent positions were advanced in two different fora at the same time.

Haughey v. Lee, 151 U.S. 282, 285, 14 S.Ct. 331, 38 L.Ed. 162 (1894), also dealt with the argument that an alleged infringer was estopped by its inconsistent positions from asserting nonpatentability over the prior art. The Court did indicate, however, that the fact that the alleged infringer had taken inconsistent positions at the same time, the one before the Patent Office and the other in court, was evidence which the court might consider as bearing upon the issue of patentability.

Plaintiff has not urged estoppel, but only that the court could consider defendant's inconsistent positions for whatever evidentiary bearing that fact might have upon the issue of obviousness. The court's conclusion related to such evidence is likewise so limited and it is consistent with the teaching of the Haughey and McKee Door cases.

Patentability of Claim 4

The finding that apparatus claim 4 of the 248 Patent is valid is not clearly erroneous. That claim described a printing projection in conjunction with a slug of printed type adapted to print a temporary identifying symbol in association with a line of type printed by such slug.² In response to Patent Office action, ...