TUCKER ALUMINUM PRODUCAS, INC. v. Grossman

• Decision Date: 09 January 1963
• Docket Number: No. 17619.,17619.
• Citation: 312 F.2d 293
• Parties: TUCKER ALUMINUM PRODUCTS, INC., a Corporation, Appellant, v. Abraham GROSSMAN and Glide Windows, Inc., a Corporation, Appellees. Abraham GROSSMAN and Glide Windows, Inc., a Corporation, Appellants, v. TUCKER ALUMINUM PRODUCTS, INC., a Corporation, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

312 F.2d 293 (1963)

TUCKER ALUMINUM PRODUCTS, INC., a Corporation, Appellant, v. Abraham GROSSMAN and Glide Windows, Inc., a Corporation, Appellees.

Abraham GROSSMAN and Glide Windows, Inc., a Corporation, Appellants, v. TUCKER ALUMINUM PRODUCTS, INC., a Corporation, Appellee.

No. 17619.

United States Court of Appeals Ninth Circuit.

January 9, 1963.

Lyon & Lyon, and Charles G. Lyon, Los Angeles, Cal., for appellants-cross appellees.

Thomas P. Mahoney, Los Angeles, Cal., for appellees-cross appellants.

Before JERTBERG and BARNES, Circuit Judges, and ROSS, District Judge.

ROSS, District Judge.

This is an action by Abraham Grossman (hereinafter Grossman) and Glide Windows, Inc., (hereinafter Glide Windows) against Tucker Aluminum Products, Inc., (hereinafter Tucker) for an injunction and damages as a result of an alleged infringement of a patent. The district court had jurisdiction pursuant to the provisions of 28 U.S.C. § 1338 (1958), pertaining to the jurisdiction of the district courts in civil actions arising under any Act of Congress relating to patents, and we have jurisdiction under 28 U.S.C. § 1292(a) (4) (1958) pertaining to the jurisdiction of the courts of appeals in appeals from judgments in civil actions for patent infringement.

Briefly, the facts are as follows:

On March 30, 1954, Grossman filed an application for a patent for a sliding closure. The invention related to sliding closures such as doors and windows. An object of the invention was to provide a sliding door which included a knockdown sash and frame which could be easily and quickly assembled on the job. The patent was issued to Grossman on March 29, 1955. Thereafter, Glide Windows became the exclusive licensee under the patent and was entitled to exclusively manufacture, use and sell the invention covered thereby.¹

The district court concluded that claim 3 of the patent was valid and that said claim was infringed by Tucker's sliding closures.² The court entered a judgment in which it held that a perpetual injunction be issued restraining Tucker from, among other things, making or selling any sliding closures embodying the invention claimed in claim 3 of the patent. Tucker appealed from said judgment. Plaintiffs cross appealed because in its judgment the court refused to grant damages to them in accordance with 35 U.S.C. § 284 (1958), pertaining to damages in patent infringement cases. The court also adjudged that each party shall pay its own costs and plaintiffs also cross appealed from this part of the judgment.

In its brief Tucker sets forth three contentions but in order to dispose of its appeal we need only consider the first contention which is as follows:

The patent in suit in invalid because the invention was described in printed publications, was in public use and on sale more than one year prior to the date of the application for patent contrary to the provisions of 35 U.S.C. § 102(b).

Section 102(b), Title 35 of the United States Code, provides that a person shall be entitled to a patent unless, among other conditions, his invention was in public use or on sale in this country, more than one year prior to the date of the application for patent. Grossman filed his application on March 30, 1954. Therefore, the question is, was the patented door in public use or on sale in this country before March 30, 1953. If so, Grossman was not entitled to a patent.

At this juncture it is important to note that the trial judge stated in his findings of fact the following:

"The defendant failed to carry its burden of establishing invalidity of the patent in issue based upon prior public use of the invention. * * *

* * * * * *

"No actual sales of the sliding closure of the patent in issue were made until after the critical date of March 30, 1953 since the sliding closure of the invention was still under test of the plaintiffs."

We, of course, recognize that findings of fact shall not be set aside unless clearly erroneous.³ Further, it is important to observe that in this Circuit there is some confusion as to the burden of proof imposed upon a defendant who raises the defense of prior "public use." See Whiteman v. Mathews, 216 F.2d 712, 716 (9th Cir. 1954); Paraffine Cos. v. McEverlast, Inc., 84 F.2d 335, 339 (9th Cir. 1936); Rown v. Brake Testing Equip. Corp., 38 F.2d 220, 223 (9th Cir. 1930) and Blanchard v. J. L. Pinkerton, Inc., 77 F.Supp. 861, 864 (S.D.Calif. 1948). We think the burden is successfully borne where there exists "substantial evidence," which is "clear and satisfactory" although a defendant need not prove this defense "beyond a reasonable doubt."

Here, defendant Tucker has met this burden and furthermore the finding of fact relating to the absence of sales before March 30, 1953, is clearly erroneous.

An examination of the...