Toledo Scale Corp. v. Westinghouse Electric Corp.

• Decision Date: 09 October 1965
• Docket Number: No. 16010.,16010.
• Citation: 351 F.2d 173
• Parties: TOLEDO SCALE CORPORATION, Plaintiff-Appellee, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant-Appellant. WESTINGHOUSE ELECTRIC CORPORATION, Plaintiff-Appellant. v. TOLEDO SCALE CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

351 F.2d 173 (1965)

TOLEDO SCALE CORPORATION, Plaintiff-Appellee, v. WESTINGHOUSE ELECTRIC CORPORATION, Defendant-Appellant.

WESTINGHOUSE ELECTRIC CORPORATION, Plaintiff-Appellant. v. TOLEDO SCALE CORPORATION, Defendant-Appellee.

No. 16010.

United States Court of Appeals Sixth Circuit.

October 9, 1965.

C. L. Freedman, Pittsburgh, Pa., Carl F. Schaffer, Owen & Owen, Toledo, Ohio, on brief, Ralph H. Swingle, Pittsburgh, Pa., of counsel, for appellant.

David H. Wilson, Jr., Toledo, Ohio, Marshall, Wilson & Yeasting, Toledo, Ohio, on brief, for appellee.

Before CECIL,^* PHILLIPS and EDWARDS, Circuit Judges.

EDWARDS, Circuit Judge.

This appeal concerns an invention (stated in 23 counts) designed to speed up the operation of automatic elevators. It is undisputed that inventor Phillip C. Keiper, who assigned his patents to appellant Westinghouse, first conceived of this invention. It is also undisputed that Westinghouse first applied for patents thereon.

Shortly after Keiper conceived of the particular invention involved here, Walter A. Nikazy, an engineer employed by the Haughton Elevator Company, independently conceived of essentially the same scheme. Nikazy's claims have been assigned to Haughton, which has now been acquired by (and operated as a division of) plaintiff-appellee, Toledo Scale.

Where Westinghouse claims rest upon priority of conception and patent application, Toledo's claims are based wholly upon the contention that it and its assignees were the first to reduce the invention to practice. Toledo claims that it accomplished this reduction to practice by installation and operation of all counts of the invention in a period between December 10, 1953, and January 30, 1954. Westinghouse's patent application was dated January 28, 1954.

Although there are numerous questions argued to us on this appeal, they can be summarized as one dispute of substance; namely, did Toledo accomplish reduction to practice of all counts of this invention prior to January 28, 1954?

This question of fact has been presented to, and decided by, two fact-finding agencies. On May 31, 1961, the Board of Patent Interferences, in an interference action brought by Toledo, found for Toledo's claims as to all of the counts of the invention in dispute before us. On motion for reconsideration by Westinghouse, the Board of Patent Interferences thereafter reaffirmed its finding in favor of Toledo, except as to Counts 8, 9 and 22, which it then awarded to Westinghouse. Westinghouse then filed a notice of appeal (from those decisions favorable to Toledo) to the United States Court of Customs and Patent Appeals. At this point Toledo filed the instant civil action before the United States District Court for the Northern District of Ohio, Western Division, in accordance with Title 35 U.S.C. §§ 141 and 146.

Toledo's suit sought to invalidate the award of Counts 8, 9 and 22 to Westinghouse. Westinghouse in turn then filed a similar action to contest the Board of Patent Interferences' award of the other 20 counts to Toledo. Thereupon the two actions were consolidated for trial.

Testimony concerning the conflicting claims was heard at length before Judge Kloeb, who found for Toledo on all issues in dispute. Judge Kloeb entered findings of fact and conclusions of law as the basis for the judgment from which Westinghouse brings this appeal.

The invention which is the subject of this controversy involves the use of an electric beam across the door of an elevator for the purpose of sensing the entrance (or exit) of passengers at each floor. The passenger interrupts the beam by moving through the door, and when when he clears it, the restoration of the beam activates a timing circuit, which (after a short delay) initiates the closing of the door. By this means it is possible to save waiting time for automatically operated elevators in those instances where the prospective passenger (or passengers) are located so as to be able to enter the elevator quickly.

The invention has usefulness only when there is no operator in charge of the car. Since the calling button on each floor would be located adjacent to a single or a double operation, the invention's maximum usefulness would pertain to its operation on a bank of several or more automatic elevators.¹

The proofs produced by Toledo before Judge Kloeb indicate that in the fall of 1953 Toledo began work on the design and construction of banks of automatic elevators for three major buildings — the 4215 Crescent Street Building, Long Island City, New York; Commodore Perry Hotel, Toledo, Ohio; and the Secor Hotel, Toledo, Ohio. The plans for these elevators, as demonstrated by engineering drawings, contemplated use of Nikazy's invention in all disputed counts. But it is undisputed that none of these installations were completed or operated prior to January 28, 1954, the date of the Westinghouse patent application.

Toledo's claim of reduction to practice rests, therefore, on certain work which employees of its Haughton Division performed on a bank of six elevators in the NBC Building in Cleveland, Ohio, between December 10, 1953, and January 30, 1954. Toledo claims that it installed its invention on three of these elevators and operated said elevators singly and together.

The NBC Building had been constructed with six passenger elevators designed for employee operation. In July of 1953 it employed Toledo's Haughton Division to begin to convert its elevators to semiautomatic. Two such conversions were effected and proved successful. NBC then employed Toledo to convert all of the elevators to full automatic operation.

On or about December 10, 1953, three of Toledo's employees installed a control panel for Elevator No. 3, which control panel had all of the essential control features of the disputed invention. The necessary modifications were thereupon made on Elevator No. 3 and it was tested in operation with the disputed invention (which Toledo had then named Standing Time Saver) working.

The facts just recited were established by testimony before Judge Kloeb without dispute. It is also undisputed, however, that before Elevator No. 3 was turned over to NBC for regular operation, a subsequent adjustment of the waiting time interval was made. The shortening of the basic waiting time interval had the effect of rendering the Standing Time Saver device ineffective in subsequent operation, although it was left installed and operating. Westinghouse depends upon these latter facts to argue that the installation on Elevator No. 3 was not in legal terms a "reduction to practice," of the invention as to Counts 1, 3-5, 11-21 and 23.² It claims that at most this operation represented an unsuccessful — or an abandoned experiment.

On this basic disputed point Judge Kloeb found as follows:

"We have studied the transcript of the evidence submitted in the case, the exhibits, the stipulations and the briefs of the parties involved, and conclude that Toledo did build a complete operative structure embodying everything called for in the claims in issue, and tested it under conditions of actual use to establish with certainty that it worked for its intended purpose, and that it established such testing and use in elevators 3, 1 and 2 in the NBC Building prior to January 28, 1954, and that, therefore, Toledo has maintained its burden of proof and has established an actual reduction to practice prior to the critical date of January 28, 1954, and should, therefore, be awarded the priority of invention of the counts involved. We do not agree with the contention of Westinghouse that the experiment was abandoned by Toledo. * * *"

On appeal from a District Court's finding of fact in a patent case, we are required to accept the findings of fact entered by the District Judge if they are supported by substantial evidence and unless they are "clearly erroneous." Rule 52(a) Fed.R.Civ.P.; Graver Tank & Manufacturing Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672 (1949), rehearing granted, 337 U.S. 910, 69 S.Ct. 1046, 93 L.Ed. 1722 (1949), aff'd., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Maytag Company v. Murray Corporation of America, 318 F.2d 79 (C.A.6, 1963).

In our judgment the evidence upon which the District Judge relied as to these counts was not only substantial, it was thoroughly convincing. At the outset the District Judge had before him the fact that the Board of Patent Interferences had awarded priority of invention to Toledo's inventor as to all of these counts. This court has given great weight to such Patent Office findings. Heston v. Kuhlke, 179 F.2d 222 (C.A.6, 1950).

At the trial Toledo introduced the shop drawings from which the Standing Time Saver features installed on the NBC Building elevators were fabricated. These drawings (Toledo's Exhibits 4a thru 4h) are dated 11-1-53.

Toledo's Superintendent of Field Operations, Mr. C. K. Wilson, testified concerning the tests made on the three cars first converted to full automatic operation in the NBC Building:

"Q Can you describe the door controlling cycle for a typical stock elevator car No. 3 as you tested it in the NBC Building prior to or on or about December 10, 1953?

"A Yes. At that time when they were riding the — or when we were riding the elevator and when we would pick up a signal to slow down, when the car reached approximately six inches of the floor the door mechanism relays would be energized and the door would start to open.

If the light beam was not interrupted the door would remain open something like seven seconds and it would start to reclose.

"Q Did you test the elevator in the fashion you just described?

"A Yes.

"Q Do you know what would happen if the light beam had been broken?

"A That interval would be reduced down.

"Q Did you test the elevator with the light beam broken?

"A Yes.

"Q How did it function?

"A When the light beam was broken the door would open. It would remain open for something

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