Under Sea Industries, Inc. v. Dacor Corp.

• Decision Date: 13 November 1987
• Docket Number: 87-1254,Nos. 87-1137,s. 87-1137
• Parties: UNDER SEA INDUSTRIES, INC., Plaintiff-Appellee, v. DACOR CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1551

833 F.2d 1551

4 U.S.P.Q.2d 1772

UNDER SEA INDUSTRIES, INC., Plaintiff-Appellee, v. DACOR CORPORATION, Defendant-Appellant.

Nos. 87-1137, 87-1254.

United States Court of Appeals, Federal Circuit.

Nov. 13, 1987.

John A. Krause of Fitzpatrick, Cella, Harper & Scinto, New York City, argued for plaintiff-appellee. With him on the brief was Ronald A. Clayton of Fitzpatrick, Cella, Harper & Scinto, New York City.

Edmond T. Patnaude of Patnaude, Batz & Videbeck, Oak Brook Terrace, Ill., argued for defendant-appellant. With him on the brief were Gerard B. Gallagher of Gallagher, Joslyn & McGurn, Oak Brook Terrace, Ill., and Eric P. Schellin of Arlington, Va.

Before FRIEDMAN and DAVIS, Circuit Judges, and COWEN, Senior Circuit Judge.

FRIEDMAN, Circuit Judge.

These are consolidated appeals from a judgment of the United States District Court for the Northern District of Illinois, holding that the appellee's patent was valid, enforceable, and infringed. We affirm in one appeal and dismiss the other appeal.

I

A. The pertinent facts are set forth in the district court's written findings. See part II below.

The patent (No. 4,278,080) (the '080 patent), issued to Joseph N. Schuch and assigned by him to the appellee Under Sea Industries, Incorporated (Under Sea), discloses a snorkel that is more easily purged of water following a dive than conventional snorkels are. All snorkels function to allow a swimmer to breathe through a hollow tube while face down in the water. One end of the tube is in the swimmer's mouth Attempts have been made to devise a snorkel that is more easily cleared of water by novice divers. Most of the early attempts focused upon either narrowing the bore of the tube or obstructing the tube during a dive. These attempts were only partially successful. A narrow tube is more difficult to breathe through. An obstruction may fail and allow water to enter the tube or pose a hazard by obstructing clearing.

and the other end is open to the air above the surface of the water. A swimmer who wishes to dive takes a breath, dives and, upon resurfacing, clears the tube of water by exhaling sharply. Experienced divers generally have no difficulty in clearing a snorkel of water. Novice divers, however, often experience great difficulty in clearing a snorkel and may panic upon resurfacing.

Schuch's invention avoided the problems of the earlier snorkels. It also improved upon snorkels that had "purge valves" to drain some of the water out of a snorkel before a diver attempts to clear it. In the '080 patent specification, Schuch explained that by placing the purge valve at the end of a drainage tube, rather than in the main snorkel tube, the force of the diver's breath was not dissipated.

Purge valves have been used with questionable success. Such purge valves are ordinarily located in the flow path, generally at the bottom of the snorkel tube adjacent the mouthpiece. The purge vavle [sic] allows the column of water in the snorkel tube to drop to the level of the surrounding water which otherwise would be trapped. Consequently, the volume of water that need be purged is reduced, but the purge valve provides an alternate path for the air. The energy of the air blast is dissipated to an extent dependent on the effective size of the purge valve.... The problem is to find a way to provide a large size purge valve that does not detract from the purge effort.

Mr. Schuch summarized his invention's solution:

In order to solve the problem, I provide a large purge valve at the end of a branch or bypass conduit that connects with the snorkel tube at a place spaced substantially from the snorkel mouthpiece. The remote location of the purge valve prevents the premature venting of air [so] that the water is effectively purged before any significant slippage occurs between the impelling air and the impelled water.

Only claims 1 and 4 are involved in this appeal. The pertinent language is discussed in part III A, below.

The claimed invention was a commercial success, which Under Sea marketed as the "Shotgun" and the "Son of the Gun" models.

The appellant Dacor Corporation (Dacor) subsequently introduced its version of a snorkel with a purge valve at the end of a separate drainage tube. Dacor marketed its snorkel under the name "Turbo Vent."

The following diagram illustrates the snorkel disclosed in the '080 patent and Dacor's "Turbo Vent" snorkel:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

B. Under Sea filed suit against Dacor alleging that Dacor's "Turbo Vent" snorkel infringed the '080 patent. Dacor counter-claimed for a declaratory judgment of invalidity and non-infringement. After trial, the district court ruled that the '080 patent was (1) valid and (2) infringed, both literally and under the doctrine of equivalents. 2 USPQ2d 1706, 1711 (N.D.Ill.1987).

The facts relating to the three issues Dacor raises--the validity of the district court's rulings that the patent was infringed and had not been procured through inequitable conduct, and that the invention claimed in the patent would not have been obvious--are set forth in part III, below.

II

A. The district court initially ruled from the bench on December 9, 1986. It rendered oral findings and conclusions. Both before announcing and in announcing those findings and conclusions, however, the court stated that they were "unpolished" and that the prevailing party was to "draw up a formal set of findings of facts and conclusions of law, submit that to the losing party and have the losing party approve it as to form at least, and then I will sign it." In its earlier announcement, the court had stated that it "th[ought]" those oral findings and conclusions "will cover all the bases."

A minute order form initialed by the courtroom deputy on that day stated:

This court enters its oral findings on the issue of liability and finds the patent to be valid and infringed by the defendant. Judgment is entered in favor of the plaintiff and against the defendant. Findings of Fact and Conclusions of Law to be submitted for this court's approval. Status hearing set for January 13, 1987 at 9:15 a.m.

On the same day, the clerk signed a formal judgment, set forth in a separate document as Rule 58 of the Rules of Federal Civil Procedure required, which read as follows:

IT IS ORDERED AND ADJUDGED

That this court finds that patent to be valid and infringed by the defendant. Judgment is entered in favor of the plaintiff and against the defendant.

On December 23, 1986, Dacor filed a notice of appeal to this court from the December 9, 1986 judgment. That appeal was docketed in this court as No. 87-1137.

As the prevailing party, Under Sea filed written proposed findings of fact and conclusions of law. Dacor filed objections to some of them. On January 13, 1987, Under Sea responded, and the district court overruled the objections. On February 23, the district court entered its written findings of fact and conclusions of law, which contained some findings and conclusions not included in the earlier oral findings and conclusions. The clerk's docket sheet for that date shows the following entry: "Enter findings of fact and conclusions of law, on liability issue."

On March 16, 1987, Dacor filed a notice of appeal to this court "from the Findings of Fact and Conclusions of Law on the issue of liability entered in the above-captioned matter on February 23, 1987." We docketed that appeal as No. 87-1254.

B. Dacor contends that the filing of its notice of appeal from the December 9, 1986 judgment ousted the district court of jurisdiction to enter its written findings and conclusions, and that we must decide this case solely on the basis of the district court's earlier oral findings and conclusions.

The Seventh Circuit, the precedents of which we follow in deciding this procedural question, Power Controls Corp. v. Hybrinetics, Inc., 806 F.2d 234, 231 U.S.P.Q. 774 (Fed.Cir.1986), follows the general rule that the filing of a notice of appeal ousts the district court of jurisdiction to take further action in a case. See Local P-171, Amalgamated Meat Cutters v. Thompson Farms Co., 642 F.2d 1065, 1073 (7th Cir.1981). The rule, however, is not inflexible or immutable, and exceptions have been allowed "where a fair construction of the Federal Rules of Civil Procedure so requires." Id. We conclude that, in the particular circumstances of this case, the Seventh Circuit would hold that Dacor's filing of its notice of appeal did not preclude the district court from subsequently entering its written findings and conclusions.

In announcing its oral findings and conclusions, the district court stated that they had been prepared "in an unpolished fashion" and that the prevailing party was to prepare formal findings and conclusions that the court would sign. The court thus made it clear that it did not intend its oral announcement to constitute its formal findings and conclusions. Until the court signed the latter, its final determination of the liability phase of the case had not been completed.

The only judgment entered in this case was the judgment of December 9, 1986, Dacor's notice of appeal from that judgment was properly filed, and that notice of appeal invoked our jurisdiction. At that time, however, the district court had not yet entered its written findings and conclusions, which on December 9, 1986 it had announced it would do. We know of no sound reason why the filing of the notice of appeal should have barred the district court from signing the findings and conclusions it intended to enter. We hold that the district court's signing and entry of its written findings of February 23, 1987 was valid.

As noted, Dacor's second notice of appeal was only from the findings and conclusions entered on February 23, 1987, no new or additional judgment having been entered on that date. An appeal, however, is taken from the judgment or order of the district court and not...