Whiteman v. Mathews

• Decision Date: 09 November 1954
• Docket Number: No. 13725.,13725.
• Citation: Whiteman v. Mathews, 216 F.2d 712 (9th Cir. 1954)
• Parties: Marvin Edwin WHITEMAN, Appellant, v. L. G. MATHEWS, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

216 F.2d 712 (1954)

Marvin Edwin WHITEMAN, Appellant, v. L. G. MATHEWS, Appellee.

No. 13725.

United States Court of Appeals Ninth Circuit.

November 9, 1954.

Lyon & Lyon, Richard F. Lyon, Los Angeles, Cal., for appellant.

Mason & Graham, Collins Mason, Max Tendler, Olin N. MacKay, Los Angeles, Cal., for appellee.

Before STEPHENS and CHAMBERS, Circuit Judges, and WALSH, District Judge.

WALSH, District Judge.

Appellant (hereinafter Whiteman) is the owner of United States Letters Patent No. 2,198,929, issued April 30, 1940, on application filed May 3, 1939, for a Cement Floor Finisher. The machine of the patent is described briefly as follows: Trowels or blades extending substantially radially to a vertical shaft are rotated by means of a motor geared to the upper end of the shaft. At the lower end of the shaft is attached a plate to which the blades or trowels are connected by means of pins. The plate and the trowels are rotated by the action of the motor on the shaft through reduction gears, and the contact of the rotating trowels on the cement surface accomplishes the finishing process. While in operation the weight of the machine is entirely supported by the trowels.

In order that the trowels may be adjusted to the pitch or tilt which is suitable to the texture or consistency of the particular surface being finished, each trowel is so mounted that it may be turned to an angle relative to the surface acted upon. On each trowel itself there is a small arm or pin which attaches to one end of a crank-arm; and the other end of the crank-arm is in contact with a thrust-collar. The thrust-collar is on the motor-driven shaft and can be raised or lowered on the shaft by turning a knob which is located on the handle of the machine and is connected by a control mechanism to the thrust-collar. The raising or lowering of the thrust-collar can be accomplished either while the machine is in operation or while it is stationary. When the trust-collar is raised or lowered it simultaneously varies the tilt of all the trowels; and the tilt to which the trowels are moved is maintained so long as the control knob remains in the position to which adjusted.

Whiteman brought suit below charging appellee (hereinafter Mathews) with infringement of his patent and praying for an injunction and damages. Mathews' answer denied infringement and asserted the invalidity of the patent. At pre-trial conference, Whiteman specified claims 1 to 7, inclusive,¹ as being those relied upon in his infringement claim, and thereafter the suit proceeded to trial before the court without a jury. The trial court held the claims invalid for lack of invention and, consequently, did not determine the question of infringement. On this appeal, Whiteman attacks the crucial Findings of Fact² made by the trial court as unsupported by substantial evidence and clearly erroneous.

In sum, the Findings of Fact under attack amount to two basic determinations by the trial court, viz.: (1) that previous to the Whiteman patent there existed in the cement finishing art a machine or machines disclosing all of the elements of the Whiteman patent except the thrust-collar for changing the pitch of the trowels while in motion; and (2) that the addition to the preexisting machine or machines of the thrust-collar for changing the pitch of the trowels while in motion involved no more than the exercise of the ingenuity to be expected of a mechanic skilled in the art. Our decision in this case depends upon the resolution of the question of whether or not the evidence supports these two determinations.

At the trial, Mathews introduced into evidence two patents, Boulton No. 2,101,895, issued December 14, 1937, and Leistner No. 2,181,375, issued November 28, 1939, together with evidence regarding the construction and use in the Los Angeles area during the period 1936-1941 of cement finishing machines of a type styled "the Spencer machine". The Boulton patent is for a "Machine for Troweling" and the Leistner patent is for a "Finishing Device for Cement Surfaces". The evidence relating to the Spencer machine consisted of a physical exhibit identified as the first of such machines constructed, the testimony of its creator, John Spencer, and the testimony of an operator of the machine, Charles Solenski. Support for the finding below of the existence of a machine disclosing the elements of the Whiteman patent, absent the thrust-collar, must be found, if it is to be found at all, in the foregoing evidence.

Both the Boulton and Leistner patents, like Whiteman's, show machines for troweling cement surfaces, composed of a motor rotating a vertical shaft at the end of which shaft are placed a plurality of trowels, each tiltably mounted, radially arranged with respect to the shaft and adapted to be rotated thereby. Whiteman contends, however, that study of the machines of Boulton and Leistner discloses that they lack important elements of the Whiteman machine and, accordingly, furnish no basis for the finding of the trial court.

In analyzing the Boulton patent, Whiteman first divides the work of cement troweling into the "floating" operation and the "finishing" operation,³ and then asserts that the design and purpose of the Boulton machine are for "floating" cement surfaces and that it is not, as Whiteman is, a machine for "finishing" cement surfaces. Indeed, Whiteman's contention is very much broader, because he argues that prior to the Whiteman patent there was no machine designed or constructed for finishing cement. The merit of this contention is opened to question when it is observed that in his application for his patent he stated that machines had theretofore been devised for finishing cement surfaces but asserted that they had been unsuccssful because the machine driven trowels were either incapable of being tilted with respect to the surface of the cement or, if given a tilt, the degree of tilt of the trowels could not be varied while the machine was in operation. Apart from this tacit admission that some machines for finishing cement had been devised prior to Whiteman, in the trial of the case Whiteman's counsel several times conceded that all of the elements of the Whiteman patent were old and, indeed, that the invention in the Whiteman machine consisted of the ability to adjust the trowels while the machine was in operation. In this latter regard, the record shows this passage between the court and Whiteman's counsel:

"The Court: While we have a moment of interruption, Mr. Miller, do you want to tell me where the flash of genius is in this case, that which the books describe as `flash of genius\', that makes this invention rather than application of mechanical skill? * * *

"Mr. Miller: I don\'t know how to go into that without going into an extended argument; but in a ten-second statement it is on this: It is the ability to adjust these trowels while the machine is in operation and it is the tiltable-in-motion principle. That is brand new in this art."

As to both Boulton and Leistner, Whiteman stresses what he regards as a major variation in these machines from his patent, claiming that while the trowels in both Boulton and Leistner are tiltably mounted, and while the claims of the Whiteman patent describe its trowels as tiltably mounted, the drawings and specifications of the Whiteman patent disclose its trowels to be actually rotably or pivotally mounted.⁴ He cites the principle, and we agree, that the claims of a patent must be contrued in the light of the specifications and drawings, Payne Furnace & Supply Co. v. Williams, 9 Cir., 117 F.2d 823, Himes v. Chadwick, 9 Cir., 199 F.2d 100; but we add that the claims are to be interpreted, not only in the light of the specifications and drawings, but also with reference to the file wrapper history. Whitman v. Andrus, 6 Cir., 194 F.2d 270, 275, Mas v. Owens-Illinois Glass Co., D.C.N.J., 122 F.Supp. 582, 583. The file wrapper of the Whiteman patent shows that the original claims 1 to 5 were rejected, on the Boulton patent, because the trowels in Boulton were tiltable; and further, that claim 1, as amended, was withdrawn after it had been rejected because Leistner substantially read thereon, in that Leistner had tilted blades, held in tilted position by means of pins and a spring plate. With the matter of the mounting of the trowels thus forcibly drawn to his attention, Whiteman amended his claims to include means of holding the trowels in their tilted positions; but at no time in the Patent Office proceedings did he claim rotable or pivotal mounting of the trowels. If it were necessary to decide it, we might have some difficulty with the question whether Whiteman is estopped to raise the issue of tiltable as opposed to rotable or pivotal mounting of trowels.

However, the finding with which we are immediately concerned does not rest alone on the Boulton and Leistner patents in evidence. Whiteman concedes that the Spencer machine, Defendant's Exhibit H, discloses all of the elements of the patent in suit except the thrustcollar for changing the tilt...