Welch v. Grindle, 15540.
Decision Date | 31 December 1957 |
Docket Number | No. 15540.,15540. |
Parties | C. Martin WELCH, Appellant, v. Eugene L. GRINDLE, Appellee. |
Court | U.S. Court of Appeals — Ninth Circuit |
Naylor & Neal, James M. Naylor, Frank A. Neal, San Francisco, Cal., for appellant.
Flehr & Swain, Paul D. Flehr, John F. Swain, Harold C. Hohbach, San Francisco, Cal., for appellee.
Before STEPHENS, Chief Judge, and BARNES and HAMLEY, Circuit Judges.
This is an appeal1 from a judgment of the lower court that Patent No. 2,534,6442 is invalid and void. The patented article is a "Liquid Measuring Gauge," commonly known in the airline industry as a "Fuel Tank Dipstick." The trial court, having jurisdiction,3 held the patent invalid because:
(1) the application for patent was not filed by the true inventor;
(2) the application for patent was filed more than one year after public use of the patented article; and
(3) the patented article does not teach invention over the prior art.
Plaintiff-appellee (hereinafter called Grindle) and defendant-appellant (hereinafter called Welch) sued below by an original complaint for declaratory relief, alleging a justiciable controversy, because he (Grindle) had demanded an assignment of the Letters Patent to him; that Welch had refused to assign, and had threatened Grindle with suit if Grindle undertook the manufacture and sale of dipsticks incorporating the subject matter of the Letters Patent. By amended complaint, filed by permission of the trial court at the conclusion of the evidence (Fed.Rules of Civ.Proc. 15(b), 28 U.S.C.A.), Grindle alleged the organization of Deterjet Corporation, a corporation, with adequate financial resources, and with cost studies, tools, jigs and quotations on components, and production models of the dipstick, and an existing manufacturing operation on at least one other product. Grindle charged that Welch had threatened infringement litigation seeking to enforce the Letters Patent.
Grindle prayed that the patent be declared invalid; that it be assigned to him; that Welch be estopped to deny the validity of the patent after assignment; that Welch be enjoined from further manufacture and sale of dipsticks; that Welch render an accounting to Grindle; for costs; and for attorney's fees.
The trial court after finding the patent invalid and void denied damages because the putative damages were not proven; denied the assignment requested because the patent was void and invalid; held that the defense of estoppel barring Grindle from raising the issue of invalidity was not good; denied counsel fees and costs to Grindle; but enjoined Welch: (a) requiring him to inform past and possible future customers that said dipstick, or the substantial equivalent thereof, is not patented; (b) from claiming on the same articles by markings any existing patent, or patent proceedings pending, or advertising or suggesting in any manner that the dipsticks are patented.
Leaving for later consideration the question of whether an actual judiciable controversy did exist between the parties (28 U.S.C.A. § 2201), we turn to the evidence.
Rather than discuss the factual situation leading to the issuance of the patent in suit, we are tempted to rely on the testimony of Welch, given by deposition on file herein, and merely state that Welch confessed error; that he had invented nothing.4 But the case below was not tried on that theory, and counsel for appellant assures us a mistake in transcription was made by the shorthand reporter. We therefore will briefly consider the facts.
We adopt here the language the trial court used in his Memorandum Order:
Welch claims that the "concept" expressed in the Letters Patent was entirely different from the "concept" admittedly originally presented to him by Grindle. Welch states the difference lies in (a) the substitution of radial grooves (in the supporting inner wooden filler) for square cut grooves, housing the two inner plastic tubes; (b) the substitution of plastic and cement lamination fillers for solid end plugs; (c) the substitution of tubes protruding one-eighth of an inch beyond the upper edge of the top plug for tubes flush with the upper edge.
Upon oral argument, it was admitted that the concept of the radial grooves, rather than square grooves, for the support of the inner plastic tubes came not from Welch, but from one Kerr, in 1948 a vice-president of Plastic Process Company of Los Angeles, the company for whom Welch was the San Francisco salaried sales representative, in reply to a letter Welch had written Kerr on May 3, 1948, proposing a design for a dipstick.
The trial court found that this change from a right angle wooden support for the inner plastic tubes to a rounded or radial wooden support for the same plastic tubes was "a minor change" between the dipstick as designed by Grindle (first placed on a drawing board on April 28, 1948), and as delivered by Welch, on August 12, 1948, and subsequently, that any skilled mechanic "* * * could have accomplished the substitution." With this conclusion we agree. It therefore becomes unnecessary for us to determine, as counsel for Welch urges, whether, granting invention to Kerr rather than Welch, the co-inventor statute saves the situation. 35 U.S.C.A. § 256. If there was no invention, the necessity of determining co-invention disappears.
The trial court likewise found the two additional variations (plastic and cement laminations, and protrusion of the tubes beyond the upper edge) were minor changes, and capable of being accomplished by any skilled mechanic, "or any person who has had some experience working with plastics." Again we agree. The record as a whole overwhelmingly demonstrates that in all essentials, the dipstick as finally submitted by Grindle to Welch, both through sketch, engineering design, and mock-up, was the dipstick incorporated in the patent. Not by the wildest flight of fancy could we hold the court's finding in this regard clearly erroneous. Fed.Rules of...
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