Welsh Co. of California v. Strolee of California, Inc.
| Decision Date | 28 April 1961 |
| Docket Number | No. 16674.,16674. |
| Citation | 290 F.2d 509 |
| Parties | WELSH CO. OF CALIFORNIA, a Corporation, Appellant, v. STROLEE OF CALIFORNIA, INC., a Corporation, Appellee. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Lawrence H. Cohn and Cohn, Powell & Cassidy, St. Louis, Mo. (Warren L. Kern and Harris, Kiech, Russell & Kern, Los Angeles, Cal., of counsel), for appellant.
Lyon & Lyon and R. Douglas Lyon, Los Angeles, Cal., for appellee.
Before STEPHENS, BARNES and JERTBERG, Circuit Judges.
Appellee, hereafter sometimes referred to as Strolee, was the victor in a patent infringement suit brought in the District Court for the Southern District of California against appellant, hereafter sometimes referred to as Welsh. The patents held and sued upon by Strolee are United States Letters Patent Nos. 2,728,580 and 2,798,730, otherwise known as the Preisler patent or stroller and the Smith patent or stroller respectively. The Preisler patent teaches a collapsible baby stroller and the Smith patent one thatcollapsible but also adjustable for lying down, sitting up and intermediate positions. Upon this appeal, Welsh concedes that if the patents are valid, it has infringed them. It urges, however, that the patents are not valid and, secondarily, that the trial court committed prejudicial error in regard to the exclusion of certain evidence.
As we read appellant's brief, it raises two contentions in regard to the invalidity of this patent: 1.) That the patent was fully anticipated by the prior art, see 35 U.S.C. § 102(a), consisting of baby strollers manufactured by the Kuniholm Company and designated in the record as Exhibits E, H, L, R, P, and AP, and 2.) that if this prior art did not fully anticipate the Preisler patent, the latter is invalid for lack of invention. See 35 U.S.C. § 103; Leishman v. General Motors Corp., 9 Cir., 1951, 191 F.2d 522, 530; Rohr Aircraft Corp. v. Rubber Teck, Inc., 9 Cir., 1959, 266 F.2d 613, 618-619.1
Both of these contentions necessarily raise a question of fact — what was the prior art at the time appellee's devise was conceived and reduced to practice? See 35 U.S.C. § 102(g). The trial court's resolution of this question appears in the record as Findings of Fact 24 and 25, which we reproduce here for easy reference.
We think these findings are too broad and conclusory. They do not reveal the "basic facts on which the District Court relied." Dalehite v. United States, 1953, 346 U.S. 15, 24 note 8, 73 S. Ct. 956, 962, 97 L.Ed. 1427. Apparently the court found that not only the device taught by the Preisler patent but also the Kuniholm strollers, exhibits H, L, R, P, Y and AA, had been reduced to practice before the filing date of the Preisler application, February 9, 1953. Otherwise, Finding of Fact 24 would serve no purpose; the Kuniholm strollers there mentioned would have been included in Finding 25. And although the court clearly found that appellant had failed to prove that the Kuniholm strollers were reduced to practice prior to the date of reduction to practice of the Preisler device, the essential facts leading to this conclusion are unexpressed. These missing findings are of the utmost significance. Without them we cannot determine whether the trial court held that appellant had failed to prove prior use because its evidence was insufficient to show the dates of reduction to practice which it claimed for the Kuniholm strollers or because appellee's evidence of the date of reduction to practice claimed for the Preisler stroller — approximately fifteen months before the filing of Preisler's patent application — was sufficient to establish the latter's priority regardless of appellant's evidence. We have not been told upon what dates each of the Kuniholm strollers and the Preisler device were, in the trial court's view, reduced to practice. And even if we were made aware of such conclusions, we could not review the court's interpretation of the meaning of "reduction to practice," assumedly a legal standard, because the court has made no factual findings as to the events which transpired in regard to the various strollers during the period prior to February 9, 1953. We could not say whether or not these events constituted a reduction to practice because we do not know what the events were.
The conclusion reached by the District Court in regard to priority appears as Finding 24. We can only imagine the court's view of the basic facts. Conceivably, the District Court thought that the Preisler stroller had been reduced to practice in October, 1951, since the evidence indicates that at no other time prior to February, 1953 did anything happen which could possibly be considered as a reduction to practice of the Preisler device. Yet testimony does suggest that something happened in October, 1951. We could further assume that the dates of reduction claimed by appellant for the various Kuniholm strollers were accepted by the trial court except for the date claimed for Exhibit H. All other dates were later than October, 1951. As to Exhibit H, we could assume that the trial court concluded that the evidence offered as to the date of reduction to practice was insufficient to accomplish the end to which it was addressed. We could assume all these findings and then proceed to test them by the "clearly erroneous" standard prescribed by Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C. We could also assume that the trial court took another course, that it thought none of the Kuniholm strollers were reduced to practice on the dates claimed by appellant. We could then subject this assumed finding to the "clearly erroneous" test. If the evidence supported all of these assumed findings, regardless of their inconsistencies, then no matter how the District Court arrived at its conclusion, we could not overturn it. But we think it is the duty of the District Court to find the facts and not to leave to us the heavy chore of reviewing sundry, contradictory assumptions any of which could have led to the conclusory statements misnamed Findings of Fact in the present record.
Irish v. United States, 9 Cir., 1955, 225 F.2d 3, 8. See also Dalehite v. United States, supra; Hycon Mfg. Co. v. H. Koch & Sons, 9 Cir., 219 F.2d 353, certiorari denied 1955, 349 U.S. 953, 75 S. Ct. 881, 99 L.Ed. 1278; Cross v. Pasley, 8 Cir., 1959, 267 F.2d 824, 826; Graham v. United States, 9 Cir., 1957, 243 F.2d 919, 923.
In the instant case, we are wholly unable to determine how the trial court reached its conclusions regarding priority of invention between the various Kuniholm strollers on the one hand and the Preisler device on the other.
The inadequacy of the District Court's fact findings also permeates its conclusions concerning anticipation and invention. Findings of Fact 27, 28 and 29 read as follows:
We do not think it plausible to read Finding 27 as assuming, contrary to the express conclusion reached in Finding 24, that the various Kuniholm strollers comprised part of the prior art, and as ruling, given such an assumption, that the Preisler device was significantly different from the Kuniholm products. Finding 27 says no more than that the Kuniholm strollers did not anticipate the Preisler device. To have anticipated in this case, the Kuniholm strollers would have had to have been part of the prior art. For Finding 27 is apparently predicated upon Finding 24; the Kuniholm strollers are not anticipatory because they were not prior. As we have previously noted, the factual basis upon which the trial court rendered its conclusions concerning priority or the identity of the prior art is unrevealed to us. In consequence, we cannot discern the factual basis for the court's conclusions as to anticipation. Again we are without findings concerning the basic facts which led to the trial court's decision.
Findings 28 and 29 suffer from a similar deficiency. They clearly represent conclusions of law; that is, an application of the statutory standard of invention. See generally, Chin, The Statutory Standard of Invention; Section 103 of the 1952 Patent Act, 3 Patent, Trademark and Copyright J. of Res. and Educ. 317 (1959). As Judge Pope noted in his penetrating concurrence in Bergman v. Aluminum Lock Shingle Corp., 9 Cir., 1957, 251 F.2d 801, 809, the presence or lack of invention will frequently turn upon findings of fact. These findings relate to the differences between the claimed invention...
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