*1 All these reactions explain would the low PENTEC, INC.,
evolution of formaldehyde high Bob Allen, Appellees, evolution water during stage the second hardening.
GRAPHIC CONTROLS CORP., Appellant. Appeal No. 85-1565. United Appeals, States Court of Federal Circuit. Nov.
MARKEY, Judge. Chief Appeal judgment from a of the United States District Court for the Central Dis- trict of declaring California claims 1-4 of 3,983,569 U.S. Patent No. to James Hub- (‘569 bard and Charles patent) Erdman in- *3 valid for infringed obviousness and not and dismissing the Graphic counterclaims of Controls, (GC). Inc. infringement for and (C.D. competition.. unfair .224 Cal.1984). We affirm.
Background
Pentec, (Pentec) Inc. and Allen Bob sued for a declaration invalidity and non- infringement GC, of the patent. ‘569 as assignee patent, counterclaimed for infringement of claims 1-4 and for unfair competition. nonjury trial, After a the dis- adopted trict court in full Pentec, conclusions submitted and de- clared the claims in suit invalid and not infringed. The district court further held that Pentec did not compete unfairly under Act, 1125(a), the Lanham 15 U.S.C. under California law.
A. Prior Technology recording instruments here involved thin, light, very are formed of and small 1970, recording elements. Before instru- pens, ments included metal “bucket” each arm, pen to a permanently affixed with supplies. experi- ink Users liquid refillable maintaining ink enced difficulties flow refilling. During 1970’s, the industry devel- oped disposable pens with fibrous ink res- Prestía, Paul Prestía, F. Ratner Valley & ervoirs, solving the prob- flow and refill Pa., Forge, appellant. for With him on the However, lems. frequent replacement of Husick, brief was Lawrence Valley A. disposable pen risked upsetting or dam- Forge, Pa., Rahn, LeRoy Christie, T. Par- aging the pen delicate arm. During the Hale, Pasadena, Cal., ker & of counsel. 1970’s, early competitors and its used folded-over metal pen. tabs to attach the Gardner, Paul Spensley, Horn, L. Jubas Lubitz, Cal., Angeles, & Los appellees. GC introduced its disposa- first pen
ble “Series 10” for use on round chart MARKEY, Before Judge, Chief BEN pen recorders. That had the same fasten- NETT, Judge, *, Circuit ing HARVEY Sen means as GC’s earlier “MARK-TROL” Judge. ior District pen. The Corporation (Sanford) Sanford * Harvey, sitting The Honorable by designation. James United States Dis- Michigan, trict Court for the Eastern District of
sought develop disposable pens to C. Pentec’s Actions fastening better means. Sanford’s efforts Shortly setting up after wholly his owned 3,893,130 produced U.S. Patent No. corporation Pentec request- Allen Browning Perrigo Charles and Gilbert ed, refused, and GC a license under (Browning) July which issued 1975. patent. the ’569 patent plastic That on disclosed channel compete Pentec tried to with its first pen attaching as a means for it to the pen. However, 390” “Series Pentec with- However, proved arm. that means inse- drew that from the market because it improved An cure. version was disclosed securely did not mount to the arm. 3,934,255 Guy Taylor in U.S. Patent No. Pentec introduced a second “Ser- (Taylor) January which issued 1976 on pen. hinged ies 390” It clasp has a at- application an filed June tached to the side of the and is the September On the ’569 product accused as infringement in GC’s *4 from a continuation-in-part applica- issued counterclaim. It differs from the invention assigned tion to Hubbard Erdman who patent claimed in solely ’569 in that its The original applica- it to GC. date of the hinged clasp separately is molded and ul- tion, 10, 1975, January stipulated has been trasonically separate process welded in a to have been the date of invention. being “integrally rather than molded” in B. The ’569 Patent step. one GC introduced to the market its Pentec pen introduced the accused with- pen, “Series 39” which embodied the Hub- out advice of counsel. Allen Bob testified patent. patent bard invention disclosed in the ’569 that he believed the '569 to be inval- pen The invention id and that pen infringe Hubbard includes a arm Pentec’s did not it. having charged When it “integrally hinge infringement an molded mem- GC of patent, sought the ’569 folding against ber” for over Pentec counsel and pen body. the only declaratory judgment initiated this action independent Claim the claim in issue in 1983. and from depend, which claims 2-4 inis Jepson form. It reads: D. Proceedings District Court pen an instrument body marker in- 5, 7, 8, 11, 12, Trial was held on June cluding an ink reservoir and means for 13, 1984, 1984. On November the dis- receiving writing a tip, improvement the judgment trict court issued in favor of Pen- comprising pen holding a arm means con- tec. The record indicates that the court sisting integrally of an hinged molded “proposed” page crossed out from the title adapted member against to fold a sur- findings of the and conclusions submitted pen face of the body and to be locked by adopted Pentec and them verbatim. against said by engageable surface lock- adopted findings The and conclusions re- ing means and to receive and secure in lating validity (1) say: Pentec rebutted place against pen said surface a arm presumption validity by clear and hinged when said member is in its folded evidence; (2) convincing the ’569 position. and locked light in prior was invalid of the art because ridges hinge Claim adds on the grip the Hubbard invention would have been the arm. Claim adds a channel on the ordinary art; obvious to one of skill in the pen body to hold the arm on each side. (3) clearly GC had not established a nexus disposable pen having Claim adds a a pat- between commercial success of its body containing fibrous ink. invention; pen ented and the claimed (4) long GC had not shown existence of a successfully marketed under its “Ser- hinged felt need for a fastener. designation many ies 39” models of its “snap-on” recording pens instrument em- court found district Pentec not bodying the claimed in the ’569 guilty competition inventions of unfair its because patent. merely designated “Series 390” manufacture, model, not the source of its a B. Obviousness actu- conclusion bolstered an absence of GC contends that the district court erred confusion, caused al absence (1) scope on: and content marking pens. “Pentec” on its art; prior (2) ordinary level of skill; (3) the prior differences between the Issues Presented invention; (4) art and the claimed objec- (1) district court erred in: Whether the nonobviousness; tive evidence of and erred declaring claims 1-4 invalid for obvious- (5) in applying special pat- “combination 103;1 (2) finding non-in- ness under § ent” rule of law. (3) dismissing counter- fringement; GC’s (1) Scope and Content the Prior Art competition. claim for unfair Section Supreme as construed Deere, Court Graham v. John 383 U.S. OPINION 86 S.Ct. 15 L.Ed.2d A. Standard Review (1966), makes factual This court reviews factual find inquiry scope into the and content of the ings underlying a conclusion of obvious prior art step determining the initial finding infringement ness and a under obviousness of a claimed invention. At the erroneous standard. Fed.R. outset, GC contends there nothing is in the 52(a). A Civ.P. erroneous suggesting ordinary that one of skill reviewing when the court is left with art would have looked to the that a firm conviction mistake has been plastic hinge and fastener art without *5 made, notwithstanding presence of evi knowledge of the Hubbard invention. GC may support dence that it. United States argues hinge thus that the and fastener art Co., 364, 395, 333 68 Gypsum v. U.S. U.S. i.e., “non-analogous”, was that it was im- 525, 541, 746, U.S.P.Q. 92 L.Ed. 76 S.Ct. properly looked to the district court in (1948). 430, pro Though adoption 444 of determining whether the Hubbard inven- may posed verbatim increase wari tion would or would not have been obvious. review, clearly ness on erroneous stan thereby inapplicable. ordinary dard is not rendered Those of skill in the art N.C., City City, may presumed knowledge Anderson Bessemer to have of - U.S. -, -, 1504, 1511, “reasonably pertinent particular 105 S.Ct. 84 arts to the (1985); Rosemount, L.Ed.2d 518 Inc. v. problem with which the inventor was in Instruments, Inc., Beckman 727 F.2d Wood, In re 599 F.2d volved.” USPQ 1, (Fed. 221 1544 n. 5 n. 4 USPQ 171, (CCPA 1979). 202 174 How Cir.1984). The ultimate obviousness deter ever, gathered prior may that art not be subject mination is a conclusion of law not in the claimed invention mind. In re with to the erroneous standard. Antle, 1168, 1171, USPQ 285, 170 1971). (CCPA 287
GC, appellant, as bears the burden problem confronting The was persuading us that Hubbard the district court simple holding the need for a means to legal committed reversible error in its de frequent, termination that the invention have enable secure attachment and would obvious, probative findings easy pen or that of a marker and from been removal to Nothing in underlying pen that determination were a arm. the record indicates to trying problem erroneous. Atlas Powder v. E.I. Du that one solve that Co. would DeNemours, hinge 224 not have looked to the fastener and Pont (Fed.Cir.1984). Stratoflex, Aeroquip 411 art. See Inc. v. part: subject provides pertinent U.S.C. matter as a whole would have § been obvious at the time the invention was may if the A not be obtained ... person having ordinary made to a skill in subject sought between the matter differences subject pertains. art to which said matter prior patented and the art are such that to be 1530,.1535, USPQ closed. the fastener are On antiskid
Corp., 713 fact, (Fed.Cir.1983). interlocking Hubbard testi- and an on one side bars bar into the at deposition portion fied at a read a recessed on the other to did, effect, was to snapping trial that what he receive the bar for it closed. he plastic hinge from the literature select a 3,713,622 United States Patent No. to incorporate plastic it into a and had read Dinger (Dinger) teaches a tube closure pen securing it on a arm. pen for bucket using device bendable arms connected later testified at trial Although Hubbard integral hinges. after he had occurred that that selection published Three articles Modern Plas- invention, the district court conceived design advantages tics disclose the testimony. That apparently rejected plastic hinges. fasteners and The Oc- clearly supported by Hubbard’s rejection article, “Plastics Add tober New that, coming to work for admission before Design”, sug- Dimensions to Fastener had read and collected liter- GC in he gested design plastic of a “thin describing advantages “living ature clip in a found in cross-section [as Davis] thought of those articles hinges”, and had integral can double as project design to a fastener for when stated, hinge____”, “perhaps and also assigned him. pen first to was popular approach most has been to mold integral part the fastener and the fastener in as an of the relevant, product.” hinge art is thus within having one scope prior art which foregoing, only Of the the examiner cited looked, ordinary skill in the art would have Taylor. clearly erroneous. The district was not Although Pentec introduced a sub supported by finding is also Hub court’s quantity prior stantial of relevant art not that what he claimed bard’s statement examiner, cited it continued to bear development plastic in the use of a “new proving compelling the burden of facts a arm.” hinges to attach holding invalidity, Inc. v. Aer Stratoflex correctly The district court found that oquip, 713 F.2d the relevant art of record consists (Fed.Cir.1983); U.S.C. see 35 patents publications: *6 here of these and, though may that under such burden 1,895,727 United States Patent Nos. to easily carried, circumstances be more 3,774,230 Pearce and to Tullos teach met- American Hoist & Derrick Co. v. Sowa & pens having hinges al recorder metal or Sons, Inc., 1350, 1359-60, F.2d 220 725 pen which are folded back over the tabs 763, USPQ (Fed.Cir.1984), 770 whether that arm. can said to have carried burden been 3,438,058 requires United States Patent No. to careful consideration of whether (Davis) Davis teaches a metal attachment the claimed invention would have been ob clip pen under a light prior which metal arm is of all relevant art of vious clip dap dimple fastened. The has a or record. Solder Removal Co. v. United provide tighter Comm’n., 628, pen a fit on the arm. 582 States Int’l Trade F.2d 129, (CCPA 1978). USPQ 199 132 Browning plastic teaches the use of a integrally plastic channel molded awith (2) Ordinary Level Skill pen body receiving retaining the pen Taylor Browning by arm. modified The district court said that the level of using pairs plastic channels. ordinary skill in 1974 in the art to which 3,824,654 pertains United Patent No. to the Hubbard invention was that of States (Takabayashi) engineering an in- “some formal edu- Takabayashi teaches one with engineer- tegrally plastic years connector or ad- cation and one or more molded ing design experience.”2 that justor snapped which is folded over and GCconcedes Law, the court stated that a determination of the level of ordi- In its Conclusions of district
315 finding “perhaps analyzed that is not errone- the differences between ous.” claimed structure and those of prior art. Our supported conclusion is by the
(3) Between the Claimed Differences testimony, said, inventor’s in which he “our Invention and the Prior Art invention consisted development of a new The difference between claimed in- plastic use of hinges to pen attach a prior vention art resides in and the pen ato arm.” replacement clip of the metal attachment (4) Objective Evidence Davis, or the channelled members of Browning Taylor, “integrally or Objective evidence nonobvious hinge plastic molded member.” Similar ness, present, when always must be con hinges “clamps” were disclosed in Taka- reaching legal sidered before a conclusion bayashi Dinger, though not in combina- 103. Stratoflex, Inc. v. Aeroquip under § plastic pens. tion with Hubbard testified Corp., 1530, 1538, 713 F.2d USPQ 871, 218 that the ’569 combined a known (Fed.Cir.1983). “Indeed, 879 evidence of plastic hinge plastic pen, with a known secondary may considerations often be the hinge serving pen a to secure on a arm. probative most cogent evidence in the question Thus the is true whether it would may record. It often establish that an have of ordinary been obvious to those skill appearing invention to have been obvious in the art in that 1975 to make combination. light prior Id. art was not.” Hospital Inc. Systems, ACS v. Montefiore 1572, 1577, Hospital, For a USPQ 732 F.2d 221 claimed invention’s commer (Fed.Cir.1984). given cial success 933 to be substantial weight, nexus must be established between it and GC contends that the district court did the merits of the claimed invention. Cable not consider the claimed invention as a Genmark, Inc., Electric Prods v. 770 F.2d pursuant see Carl whole (Fed.Cir. USPQ 226 Schenck, Corp., A.G. v. Nortron 1985); Solder Removal Co. v. United (Fed. USPQ Cir.1983), Comm’n., States Int’l Trade i.e., “denigrate[d]” pat court (CCPA 1978). ent overemphasizing hinged member court prove district found that GC failed to and de-emphasizing its combination with a undisputed commercial success of plastic pen, separated and improperly its “Series 39” attributable to the preamble from the improvement clause of claimed invention. The district court based Jepson Although preamble claim. testimony of on the the inven impliedly admitted to be art when a Adams, general tor and man GC’s former Ehrreich, Jepson used, In re claim is see ager. They plastic when the testified that 902, 909-10, hinge nondisposable was combined with (CCPA 1979); 1.75(e) (1984), 37 C.F.R. § *7 pens, that combination was received “cool preamble unless the is the inventor’s own in It ly” marketplace. only the was when work, Reading & Bates Construction Co. plastic hinge dispos with the was combined v. Baker Energy Corp., Resources 748 pens that that able was re (Fed. F.2d combination warmly.” Cir.1984), “extremely ceived The district the claimed invention consists of court concluded success of preamble that in im combination by the see Manual provement, latter combination was caused mar Patent Exam of ketplace’s disposable ining 608.01(m) (5th pens readiness Procedure for ed. (cid:127) 1983). great by spent sums GC in adver tising pen. its “Series 39” We cannot conclude district denigrated court mischaracterized That the structure claims 1-3 of was patent “pen “coolly” body” invention claimed in the ’569 when it received when the Cumberland, nary unnecessary Equipment skill here is because the sub- Time ject easily (Fed.Cir.1983). USPQ matter understandable. Chore- nondisposable those claims was does not and commercial factors unrelated to the upon from reliance preclude GC success quality patented technical subject structure of claim in achieved with the Electric, matter.” supra, Cable is, “pen body” of that claim which the as (Fed.Cir.1985). at at 888 claim, “disposable”. forth in the It is set sum, In simply GC has failed on this record undisputed the structure of claim 4 required to show the nexus. successful, commercially that GC’s was The district court found that GC grew share of the recorder market failed to any long show felt need for the 1983, and between 1980 and that GC sold brief, claimed invention. In its GC cites many pens about twice as as the rest of the page one testimony of its former sales Nonetheless, industry combined. GC’s manager support in long of its felt need showing of commercial success on this argument. testimony That indicates the just showing falls short of a suffi- disposable pens se, need for per not for the required cient to tilt toward a conclusion of brief, claimed reply invention. GC the scales on non-obviousness which rests attempted long to show the felt need for all the evidence. the claimed pointing poor invention that, upon introducing The record is clear disposable pens, sales of other a reiteration the claimed invention GC launched of its argument. commercial success advertising campaign an extensive and con- light period of the short introduc between campaign years. tinued that three disposable pens tion of and the time the advertising budget That GC reduced its made, invention was the district court’s moment, 1980-1983 is of little absent a finding that prove GC failed to existence of showing high that continued sales volume long a felt need was not erroneous. campaign was not due to the extensive 1977-1980. district court’s arguments GC, Other raised but not promotional campaign that GC’s contribut- (1) mentioned the district court are: pen’s patented ed to the commercial suc- others, Pentec, failure of including de- cess has not shown to been have been sign competitive (2) pen; praise for the clearly erroneous. invention; (3) infringe- claimed absence of ment between 1977 and and license The record shows that GC was the leader requests by Sanford; (4) Pentec and recording pen field well before the copying Pentec’s of the claimed invention. patent. issuance of its ’569 During the 1970’s, greatly had increased the num No evidence indicating was submitted personnel ber of its and the size of its long-continued others failed after at- A regional facilities. former manag sales tempts to fastening problem. solve the er for selling GC testified that it Taylor The efforts of Browning, which early 1970’sits “MARK-TROL” at lev resulted in the use of fastening channels as els similar to those achieved with the “Ser means, period occurred over a short sub- pen. ies 39” Because GC was stantially coterminous with those of Hub- market leader well before the introduction bard. pen, figures “Series 39” its sales That an patent owner art given controlling weight cannot be in deter praised the claimed invention as “better” mining the effect of commercial success in than what his disclosed does not add this question case on the of obviousness. sufficiently to the record to warrant a con- Bicycle Goodyear Schwinn Co. v. Tire Cf. clusion of non-obviousness. Co., & Rubber *8 argument third 258, (9th GC’s suffers from a lack USPQ Cir.1970) 262 (sponsorship of record by evidence that those who refrained “may largely market leader respon be infringement sought for the from and who design”). sible success of the licenses On record, present respect it did so out of strength cannot said be may commercial success here not and not out of a have desire to avoid the in large part been due to “other litigation. economic costs of
317 rect, “it cannot Lastly, copying appealed of a claimed inven be said that the judgment of nonobviousness. can be evidence this case so influenced tion reversal,” Corp. thereby require Medtronic, v. Dennison Panduit as to Manufactur (Fed.Cir.1985). 1082, In 1566, USPQ 1099 ing, supra, 774 F.2d 721 F.2d 220 at at 100. however, infringer Panduit, admitted 1540, Stratoflex, supra, F.2d at See 713 satisfactory solu produce failed to USPQ had 218 at 880. expense. years of effort and
tion after ten case, present Pentec’s effort to de In the Conclusion on Obviousness to velop their own solution was not shown extensive, product record, its is not iden have been the entire GC has failed On invention, vigor claimed and it tical to the that the district court erred establish infringement. copying ously factors, denied GC’s in its application its of the Graham can, accordingly, given little argument the claimed invention and the evaluation of weight. art, objec or in its treatment of the language adopted That the tive evidence. proffered by GC objective evidence by court mistates the law at various require reversal of is insufficient require points does not in this case rever determination that district court’s sal, being in there the record sufficient claimed invention would have been obvious judgment. Accord support evidence to ordinary in the art when it to one of skill declaring 1-4 ingly, judgment claims was made. is affirmed.3 invalid (5) Patent” “Combination arguing that the district court errone- ously its conclusion on a based obviousness Competition C. Unfair rule, patent” GC special “combination alleges GC that Pentec has violated 1, law points to conclusion of wherein 43(a) Act, of the Lanham 15 U.S.C. § court indicated that “a combination which 1125(a), law, California common § change in only unites old elements with no designating pens “Series 390” in imita- patentable. is not their functions” tion of the “Series 39” term used GC. provides In 1952 Patent Act no ba Because this court does not have exclusive separate patent” any sis for “combination claims, jurisdiction over those the discerna- classification, Roper v. Raytheon Co. ble law established the Ninth Circuit USPQ 592, Corp., 724 F.2d 220 applied. will be Corp. CPG Products v. (Fed.Cir.1983), “virtually every 600 Inc., Pegasus Luggage, 1007, 1011 claimed invention is a of old combination (Fed.Cir.1985). elements,” Medtronic, Inc. v. Cardiac recognizes no essential The Ninth Circuit
Pacemakers, Inc. 721 F.2d 220 compe difference claims of unfair between 97, (Fed.Cir.1983). USPQ 99-100 tition, 43(a) brought whether under appeals from This court hears state law. under California See K-S-H language jus not from used in judgments, 54, Carolize, Inc., v. 59 n. Plastics judgment appealed tification of the from. (9th Cir.), 78 n. cert. Plate, Inc., Fromson v. Advance Offset denied, 396 U.S. S.Ct. (Fed. USPQ (1969). Accordingly, treat L.Ed.2d 76 we Cir.1985). language in an Though “the jointly separate brought by counts opinion, or in a set of and conclu under those laws. sions, may harmful indicate that numerous produced respect competition, of unfair
errors of law an erroneous con Lindemann, public supra, 730 F.2d “the ultimate test is whether the clusion. ...” confused____” though likely to be deceived or at at appearing Corp. Company in conclusion 1 is incor- New Cal language West NYM non-infringement. district court’s no need exists for discussion here of 3. Hence *9 Inc., ifornia, dismissing 595 F.2d 202 and the counterclaims is af- firmed. (9th Cir.1979). USPQ AFFIRMED. may indepen contends that this court
GC
dently
the “foundational factors”
review
HARVEY,
Judge,
JAMES
Senior District
underlying a trial court’s determination on
(cid:127)
concurring.
confusion, citing Bandag,
likelihood of
Inc.
majority opinion,
While I concur in the
I
Stores, Inc.,
Al Bolser’s Tire
750 F.2d
separately
express my
write
concern
903, 912-13,
USPQ
(Fed.Cir.
posture
which this case comes
1984)
law).
(following Ninth Circuit
trial,
Following
nonjury
us.
before
however,
concerning
the evidence
Bandag,
District Court issued a four sentence deci-
of confusion was “over
likelihood
holding
sion
that
Court is of the
“[t]he
Here,
undisputed.”
whelmingly
GC dis
opinion
judgment
that
should be in
favor
putes
the district court’s
that “Ser
plaintiff
against
and
defendant
[Pentec]
designate
ies 39” and “Series 390” do not
however,
[Graphic
Court,
The
Controls].”
origin.
merely
must
sources of
GC
not
gave no indication as to the basis for its
dispute
findings,
court’s
the district
but
holding and noted that it would consider
clearly
must
them to
show
have been
erro
any proposed findings
by Pen-
submitted
neous.
v. Le
See J.B. Williams Co.
Conte
proposed
tec. Pentec submitted its
find-
Cosmetics, Inc.,
186 ings
on November
1984. On November
(9th Cir.1975),
denied,
cert.
15, 1984, the
adopted
District Court
with-
47 L.Ed.2d
U.S.
S.Ct.
change
proposed findings
out
Pentec’s
(1976).
opinion
fact and conclusions of law as the
of the Court.
by simply
The Court did this
The district court found that “Ser
scratching the word “proposed” off of the
ies 39” and
390” on
“Series
GC’s and Pen
by
document submitted
Pentec and
then
pens, respectively,
desig
tec’s
were model
filing
Similarly,
proposed judgment
it.
“designate
nations and
not
did
serve to
adopted
change
without
on November
origin].”
manufacturers’
The
[source
15, 1984. Nowhere in the record does it
court further
found that Pentec
appear
Graphic
any op-
Controls had
name,
pens
marks its
with the Pentec
portunity
respond
object
pro-
to the
“palmed
pens
Pentec had not
off” its
as
posed findings
submitted
Pentec.
those of GC and had not tried to mislead
requiring
a District Court to “find the
customers, and that no actual confusion
specially
separately
facts
and state
its con-
had occurred. The court then concluded
thereon,”
52(a)
clusions of law
Rule
serves
competition
that GC’s claim of unfair
must
purpose.
a threefold
It
ensures care
dismissed,
necessarily
a conclusion
rest
preparation
opinion,
of an
defines the res
ing on the view that likelihood of confusion judicata limitations of a decision for future
had not been shown. GC has not on this
provides appellate
cases
courts with
findings
those
shown
to have been
insights
the benefit of the District Court’s
clearly erroneous, and has not
shown
Ross,
into a case. See Roberts v.
unsupported by
findings.
(3rd Cir.1965);
conclusion
those
751-52
Fed.R.Evid. 52
note;
advisory
Wright,
committee
J.
The
having
failed to show that the district
Fact,
Nonjury
Preparing Findings of
Trial—
court’s relevant
were
erro-
Law,
Opinions,
Conclusions of
Seminar
neous,
judgment dismissing
the unfair
Newly Appointed
United States District
competition claim must be affirmed.
(1962);
Miller,
Judges
Wright
&
Feder-
al Practice and Procedure
2571 at 679-
Conclusion
judgment
52(a)
The
of the district court declar-
purposes
served
Rule
are
ing
largely
1-4
the find-
claims
of the ’569
invalid
defeated
cases which
*10
majority opinion
I concur in the
I
of law more
because
ings of fact and conclusions
thinking
pre-
although
Supreme
the
accurately reflect
find that
the
Court has
the
vailing attorney than that of
Court.
practice
adopting proposed
criticized the
of
struggling through the various
only
verbatim,
in
findings
For
it has held that
the
legal
itself can a Court
issues
factual
clearly
thereby
erroneous standard is not
result which is reached
certain that the
he
inapplicable.
agree
rendered
I
with the
intended.
that it would have
is the result
majority
findings
that the
in
of fact
this
delegated to
function is instead
When this
scrutiny
case withstand
under such a stan-
attorney, factual inconsisten-
prevailing
the
Nevertheless,
dard of
I feel
review.
legal
difficult
issues are often
cies and
very
questions
close factual
several
were
minimized.
Roberts v.
improperly
See
presented in this case and
whether
wonder
Ross, supra.
the District Court would have reached the
separately prepared
same result had it
the
recognized the
Supreme
The
Court has
findings.
created when a
problems which are
various
adopts proposed findings of
Court
District
Although
agree
I feel constrained to
change.
without
fact and conclusions
law
has,
decide
it
I
this Court must
this case as
Nevertheless,
notes,
majority
as the
the
that an alternative exists
believe
which
has indicated that such
Supreme Court
effectively protect
proce-
would more
the
hand
rejected
not' to be
out of
findings are
52(a).
set forth in Rule
That
dures
alterna-
clearly erroneous
subject to a
and are still
simply
tive would be to
remand cases such
v. Bessem
of review. Anderson
standard
as the one
before this Court to the
now
-
1504,
U.S. -, -,
105 S.Ct.
City,
er
District Court
for
its
reconsideration.
(1985);
1511,
518,
84 L.Ed.2d
United
a rule
have
beneficial ef-
Such
would
two
Bancorporation,
v. Marine
States
First,
proper
it would ensure
consid-
fects.
n.
n.
94 S.Ct.
U.S.
by
eration of a case
a District Court. Sec-
(1974);
Anderson is
appeal
cases on
an
silencio
some
sub
Anderson
the case at bar.
Court
compen-
by
Appeal
effort
Courts
judge had
specifically found that the trial
by a
inadequate consideration
Dis-
sate for
preliminary opinion,
judge
that the
issued a
trict Court.
[pro
“uncritically accepted the
had not
denigrate
suggestion, I do not
By this
opposing par
posed] findings” and that the
having the
importance
the value
ty
given
opportunity
had
to re
been
—
in its task
sub-
parties assist the Court
findings.
U.S.
spond
proposed
to the
findings
fact and con-
mitting proposed
at-,
at
ion. *11 CORP.,
DATASCOPE Appellee/Cross Appellant, INC., SMEC, Appellant/Cross Appellee. 85-812, Appeal Nos. 85-837. Appeals, United States Court of Federal Circuit. 1, 1985.
Nov.