Sutter Products Co. v. Pettibone Mulliken Corp.

• Citation: 166 USPQ 100,428 F.2d 639
• Decision Date: 05 June 1970
• Docket Number: No. 17806.,17806.
• Parties: SUTTER PRODUCTS COMPANY, Plaintiff-Appellant, v. PETTIBONE MULLIKEN CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

166 USPQ 100, 428 F.2d 639 (1970)

SUTTER PRODUCTS COMPANY, Plaintiff-Appellant, v. PETTIBONE MULLIKEN CORPORATION, Defendant-Appellee.

No. 17806.

United States Court of Appeals, Seventh Circuit.

June 5, 1970.

Lloyd M. Forster, Farley, Forster & Farley, Detroit, Mich., Arlie O. Boswell, Jr., Hibben, Noyes & Bicknell, Chicago, Ill., for plaintiff-appellant.

Norman H. Gerlach, Chicago, Ill., Louis Robertson, Darbo, Robertson & Vandenburgh, Arlington Heights, Ill., for defendant-appellee.

Before CUMMINGS and KERNER, Circuit Judges, and GRANT, District Judge.¹

CUMMINGS, Circuit Judge.

Plaintiff Sutter Products Company manufactures foundry equipment in Holly, Michigan. It charges that the Flexiblomatic machines manufactured by Pettibone Mulliken Corporation's Beardsley & Piper Division in Chicago, Illinois, infringe the apparatus claim of Sutter Patent No. 2,856,653. Plaintiff also asserts infringement of apparatus claim 3 of Sutter Patent No. 2,867,017 by another of defendant's machines which removes finished articles from the Flexiblomatics.² In addition to the apparatus claims, Sutter charges that the operations of defendant's machines infringe method claim 7 of Sutter '653 and method claim 2 of Sutter '017.

The district court concluded that in light of the prior art in the field, the Sutter patents were at best entitled to a narrow range of equivalents. The court first held that no infringement had occurred. It then alternatively held that the Sutter patents must be invalidated as obvious or anticipated by prior art.

Before passing upon the substantive issues of validity and infringement, it is necessary to deal with preliminary challenges to the district court's reliance upon certain items as "prior art."

Disqualification of Prior Art References Not Required.

1. The Shell Blomatic Machine

Plaintiff objects to the references made in testimony to the defendant's "Shell Blomatic" machine which was demonstrated at a foundry convention in Cleveland in May 1954. Plaintiff first contends that defendant is precluded from relying upon this machine because of the failure to include it in the list of "prior art references" supplied to plaintiff pursuant to 35 U.S.C. § 282.³

The language of Section 282 is directed toward the disclosure of specific patents, publications and persons. It does not purport to order notice of specific incidents of prior use, demonstrations of individual apparati, or prototype or specimen machines. The statute lays down no arbitrary or absolute rule to prevent surprise at trial. In the last sentence of Section 282, Congress expressly permits the trial judge to admit an exhibit into evidence which, though failing to satisfy the strict requirements of the statute, nevertheless does not deprive the plaintiff of an adequate opportunity to present his case. Stiffel Company v. Sears, Roebuck and Co., 313 F.2d 115, 116-117 (7th Cir. 1963), reversed on other grounds, 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661; C. S. Johnson Co. v. Stromberg, 242 F.2d 793, 797 (9th Cir. 1957), certiorari denied, 355 U.S. 816, 78 S.Ct. 19, 2 L.Ed.2d 33; Thermo King Corp. v. White's Trucking Service, Inc., 292 F. 2d 668 (5th Cir. 1961). Even if Section 282 is read to require disclosure of individual instances of use, such as the demonstration of the experimental Shell Blomatic at the convention, the district court did not abuse its discretion in considering that machine. There is no indication that defendant deliberately obscured its intention to rely upon the Shell Blomatic machine. The plaintiff does not appear to have been surprised. Depositions of both Raymond Sutter and Otto W. Winter dealt extensively with the machine. Those depositions were allowed into evidence without objection. The list of "references" actually furnished plaintiff included the issue of "Better Methods" magazine devoted to the description of defendant's machines demonstrated at the convention, including the Shell Blomatic. After an extended argument by both parties, the trial judge admitted the testimony of expert witness Roy F. Nosek on the Blomatic and excluded various photographic exhibits from consideration. There is no indication that this decision prevented plaintiff from preparing or presenting an adequate response to the testimony as it applied to the Shell Blomatic machine. We conclude that the action of the court below was not an abuse of discretion contrary to Section 282.

A second basis for plaintiff's objection to the evidence of the Blomatic involves the alleged failure of defendant to produce available drawings of that machine as agreed by counsel. At the deposition of Otto Winter, inventor of the Blomatic, plaintiff requested the production of certain "complete drawings" of the machine referred to by the deponent. The parties completed their examination of Winter with the exception of questions pertaining to the drawings. The deposition was continued until defendant ascertained the existence and availability of any such drawings. Plaintiff contends that the defendant's failure to produce the drawings misled plaintiff into believing that the Blomatic machine had been abandoned as a reference to prior art. Plaintiff further contends that the lack of access to the drawings prejudiced its preparations by hampering any investigation of the Blomatic machine through analysis and further examination of Mr. Winter.

There is scant evidence to support plaintiff's contention of surprise at defendant's reliance upon the Blomatic at trial. The defendant's failure to produce drawings of the original Shell Blomatic did not reasonably indicate that the machine would not be relied upon as prior art at the trial. Production was conditioned upon availability, and the drawings were to be produced for further examination of the deponent Winter. Certainly there was no basis for construing the absence of any subsequent response as an abandonment of reliance upon that device. Nor can we agree that defendant's actions disclose the deliberately prejudicial suppression of relevant drawings which might have compelled the trial judge to exclude all evidence of the Shell Blomatic.

The record does not clearly indicate that defendant deliberately failed to investigate or produce the requested drawings. Counsel for defendant represented below that he had made a diligent investigation which revealed that the Blomatic machine displayed at the convention had been dismantled, and that no drawings of that machine existed. Defendant's brief here reiterates that there were no such drawings. The Blomatic was apparently built from component parts of existing Beardsley & Piper machines of which drawings had been made. Nothing in the record indicates that separate drawings of the general arrangement of the Blomatic machine had been made or were in existence at the time of this litigation. Nor does the record clearly establish that any detailed parts drawings existed for the Blomatic, as distinguished from the Beardsley & Piper machines from which the components were taken.

No true prejudice may be claimed by plaintiff from its inability to scrutinize any existing detailed drawings of Blomatic's component parts. No drawings were allowed into evidence without plaintiff's prior opportunity to inspect them. A thorough cross-examination was made at Winter's deposition concerning the nature, operation and construction of the Blomatic. No objection was made to the introduction of that deposition into evidence. It is not clear that the original request for "complete drawings" of that machine contemplated the production of drawings of the complete Blomatic or its various parts, and no subsequent attempt was ever made to procure their production.

Plaintiff's actions in connection with these drawings seem geared to preclude the consideration of pertinent evidence of prior art rather than to prevent surprise or insure adequate preparation. At no time was the court below asked to order the production of any drawings or to continue the trial until adequate preparation could be made to rebut defendant's evidence. Moreover, during the entire year which elapsed between the termination of Winter's deposition and the beginning of trial, no inquiry was ever made by plaintiff concerning the existence of these drawings. Plaintiff took no steps to provide the trial court with information necessary to establish their very existence and relevance or to show any potential prejudice to its case. Plaintiff could have minimized any prejudicial impact by any of these procedures. In light of these facts, we cannot conclude that the trial judge abused his discretion by admitting testimony as to the Shell Blomatic demonstrated at the foundry convention in 1954.

Plaintiff also challenges the use of the Shell Blomatic because of allegedly insufficient and conflicting evidence. Plaintiff points to certain slight discrepancies between the descriptions of the Blomatic given by deponent Winter and trial witness Nosek. The divergence in description was neither great nor incapable of resolution by the district judge. We do not find any basis to set aside his findings on the ground that they were "clearly erroneous" under Rule 52(a) of the Federal Rules of Civil Procedure.

Finally, plaintiff seeks to disqualify the Blomatic as an unsuccessful, abandoned experiment. Plaintiff disputes the finding of the district court that

"One of the machines exhibited at the May, 1954, convention was defendant\'s `BLOMATIC\' shell molding machine, also called the `SHELL BLOMATIC.\' Useable and satisfactory shell sand articles were made on this machine at the convention. Some were handed out as souvenirs. Defendant did not sell the exhibited shell blowing machine (a three-station machine shuttling two pattern boxes alternately between a common blowing station and separate curing and stripping stations), but sold machines embodying its principle. Defendant\'s `BLOMATIC\' machine fully established that the

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