Welsh Co. of California v. Strolee of California, Inc., No. 16674.

CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)
Writing for the CourtSTEPHENS, BARNES and JERTBERG, Circuit
Citation290 F.2d 509
PartiesWELSH CO. OF CALIFORNIA, a Corporation, Appellant, v. STROLEE OF CALIFORNIA, INC., a Corporation, Appellee.
Decision Date28 April 1961
Docket NumberNo. 16674.

290 F.2d 509 (1961)

WELSH CO. OF CALIFORNIA, a Corporation, Appellant,
v.
STROLEE OF CALIFORNIA, INC., a Corporation, Appellee.

No. 16674.

United States Court of Appeals Ninth Circuit.

April 28, 1961.


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.

STEPHENS, Circuit Judge.

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

290 F.2d 510
the patents are not valid and, secondarily, that the trial court committed prejudicial error in regard to the exclusion of certain evidence

The Preisler Patent

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.

"24.
"None of the Kuniholm devices, Exhibits H, L, R, P, Y, AA, AB, U, AC, AO, were proven to have been made or used prior to the conception and reduction to practice of the invention described and claimed in United States Letters Patent No. 2,728,580.
"25.
"Kuniholm strollers, Exhibits AB, U, AC and AO, were not made or used prior to the filing date of February 9, 1953, of the application which issued as United States Letters Patent No. 2,728,580."

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.

290 F.2d 511

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...

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15 practice notes
  • In re Treatment and Care of Luckabaugh, No. 25503.
    • United States
    • United States State Supreme Court of South Carolina
    • July 22, 2002
    ...as well as the lower court to whose factual determinations we give deference. See Welsh Co. of California v. Strolee of California, Inc., 290 F.2d 509 (9th The order now before us fails to substantially comply with Rule 52(a), SCRCP, thus failing to accomplish these purposes. Our review of ......
  • United States v. Marchese, No. 19172
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • March 4, 1965
    ...Irish v. United States, 225 F.2d 3 (9th Cir. 1955); Brooks Bros. v. Brooks Clothing, (S.D.Cal.1945), 5 F.R.D. 14; Welsh Co. v. Strollee, 290 F.2d 509 (9th Cir. We must assume fact findings will be made on essential facts only, and not on those which are superfluous or immaterial. But we als......
  • BF Goodrich Company v. Rubber Latex Products, Inc., No. 17643.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • September 27, 1968
    ...However, there must be subsidiary findings to support the ultimate conclusions of the court." In Welsh Co. of California v. Strolee, 290 F.2d 509, 511 (9th Cir.), an action for patent infringement, the Court "We think it is the duty of the District Court to find the facts and not to leave t......
  • Maytag Company v. Murray Corporation of America, No. 14728.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • June 5, 1963
    ...King Corporation v. White's Trucking Service, Inc., 292 F.2d 668, 678, C.A. 5; Welsh Co. of California v. Strolee of California, Inc., 290 F.2d 509, 511, C.A. We sustain the finding of the trial court that the patent in suit is valid as to claims 7, 8, 9, 12, 16 and 17. The terms of claim 1......
  • Request a trial to view additional results
15 cases
  • In re Treatment and Care of Luckabaugh, No. 25503.
    • United States
    • United States State Supreme Court of South Carolina
    • July 22, 2002
    ...as well as the lower court to whose factual determinations we give deference. See Welsh Co. of California v. Strolee of California, Inc., 290 F.2d 509 (9th The order now before us fails to substantially comply with Rule 52(a), SCRCP, thus failing to accomplish these purposes. Our review of ......
  • United States v. Marchese, No. 19172
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • March 4, 1965
    ...Irish v. United States, 225 F.2d 3 (9th Cir. 1955); Brooks Bros. v. Brooks Clothing, (S.D.Cal.1945), 5 F.R.D. 14; Welsh Co. v. Strollee, 290 F.2d 509 (9th Cir. We must assume fact findings will be made on essential facts only, and not on those which are superfluous or immaterial. But we als......
  • BF Goodrich Company v. Rubber Latex Products, Inc., No. 17643.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • September 27, 1968
    ...However, there must be subsidiary findings to support the ultimate conclusions of the court." In Welsh Co. of California v. Strolee, 290 F.2d 509, 511 (9th Cir.), an action for patent infringement, the Court "We think it is the duty of the District Court to find the facts and not to leave t......
  • Maytag Company v. Murray Corporation of America, No. 14728.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (6th Circuit)
    • June 5, 1963
    ...King Corporation v. White's Trucking Service, Inc., 292 F.2d 668, 678, C.A. 5; Welsh Co. of California v. Strolee of California, Inc., 290 F.2d 509, 511, C.A. We sustain the finding of the trial court that the patent in suit is valid as to claims 7, 8, 9, 12, 16 and 17. The terms of claim 1......
  • Request a trial to view additional results

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