SPERTI PRODUCTS, INC. v. Thе COCA COLA COMPANY, Sperti Products, Inc. and the Institutum Divi Thomae Foundation, Appellants.
No. 17025.
United States Court of Appeals Third Circuit.
Argued May 10, 1968. Decided Aug. 13, 1968.
399 F.2d 607
See also, D.C., 262 F.Supp. 148.
The Commissioner‘s position which was accepted by the Tax Court is simply that various factors when taken together show that the higher salaries were unreasonable. Rodgers was the sole sharеholder and in control of the Board. Rather than declare dividends, the Board paid him a high salary. The bonus which resulted in the high salary was admittedly adjusted according to the surtax exemption available to the corporation rather than to any change in the efforts or duties of Rodgers. In prior years while doing substantially the same work Rodgers was paid much less. The salary of Rodgers constituted a very high percentage of the gross income of the corporation.
There is no doubt that these and other factors may properly be considered in determining reasonableness of compensation. Mayson, supra. The failure of the taxpayer to pay any dividends while radically increasing the compensation of its sole shareholder is particularly significant (Miles-Conley v. Commissioner of Internal Revenue, 173 F.2d 958 (4th Cir. 1949)) as is the lack of any showing by the taxpayer that the duties of Rodgers had significantly changed from the fiscal year in which he was paid a total compensation of $29,000. Hoffman, supra. The $30,000 figure selected by the Commissioner is slightly more than Rodgers received in the fiscal year ending on January 31, 1962, and allows for an approximate 20% bonus on top of the base sаlary established by the taxpayer at the start of the fiscal years in question. It is not for this Court to step in and make new factual determinations. The factors present in the record before this Court give ample support to the determination of the Commissioner and the decision of the Tax Court confirming it. The decision of the Tax Court is affirmed.
Paul L. Ahern, Wolfe, Hubbard, Voit & Osann, Chicago, Ill. (Rodney M. Layton, Richards, Layton & Finger, Wilmington, Del., Riсhard Russell Wolfe, George E. Bullwinkel, Wolfe, Hubbard, Voit & Osann, Chicago, Ill., on the brief), for appellee.
Before McLAUGHLIN, KALODNER and VAN DUSEN, Circuit Judges.
OPINION OF THE COURT
PER CURIAM.
This appeal challenges that part of the August 17, 1967, opinion of the District Court, 272 F.Supp. 441 holding that “the Cole patent is invalid for obviousness under Section 103 (
Claim 4 of the Cole patent calls for a process of producing а citrus juice concentrate. The juice is maintained in a state of continuous agitation, while subject to freezing temperatures, to convert it into a pumpable slurry with ice crystals “less than about 1/32 inch in the greatest dimеnsion” from which the first concentrate is separated. A second concentrate is then formed by washing the ice crystals “at a temperature below the freezing point” with sufficient “aqueous liquid at a temperature аbove the freezing point“, with such concentrate having “a Brix value closely approaching the Brix value of the first concentrate.”3 Appellee‘s expert (Dr. Redd) testified that several prior and one cо-pending patent disclosed basic parts of the process described in Claims 4-8 of the Cole patent and that the process which it described would have been obvious to a man skilled in the field of juice concеntration on or before the date when the application for the Cole patent was filed. Dr. Redd gave specific reasons, with references to prior patents, why he disagreed with appellant‘s expert, Dr. Tressler, on this point. In the District Court‘s findings, it adopted at least some of the views of Dr. Redd. Also, it explicitly rejected the views of appellant‘s expert. After a review of the record, we are unable to concludе that the District Court committed clear error in its findings as grounded in its reliance upon appellee‘s qualified expert4 and other evidence in the record. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 274, 275, 69 S.Ct. 535, 537, 93 L.Ed. 672 (1949), rehearing 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), a patent case, where the court said:
“Rule 52(a) of the Federal Rules of Civil Procedure provides in part: ‘Findings of fact shall not be set aside unlеss clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses.’ To no type of case is this last clause more appropriately appliсable than to the one before us, where the evidence is largely the testimony of experts as to which a trial court may be enlightened by scientific demonstrations. * * *
“The rule requires that an appellate court make allowances for the advantages possessed by the trial court in appraising the significance of conflicting testimony and reverse only ‘clearly erroneous’ findings.”5
The District Court‘s opinion shows that it followed this language used in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966):
“Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or non-obviousness of the subject matter is determined.”
See, also, Gould-National Batteries, Inc. v. Gulton Industries, Inc., 361 F.2d 912, 915 (3rd Cir. 1966), where this court held that a “claim * * * comprised of an aggregation of elements which the court below found were old and well known in the art * * * is invalid for its failure to meet the test of § 103“; cf. Allen-Bradley Company v. Air Reduction Company, 391 F.2d 282 (3rd Cir. 1968).
The order of the District Court dated October 5, 1967, will be affirmed.
KALODNER, Circuit Judge (dissenting).
I would reverse the Judgment of the District Court insofar as it holds the
In my opinion the District Court erred (1) in holding the Cole process “obvious” in light of the prior art; (2) in failing in the instant case, to take cognizance of the “secondary сonsiderations” of “commercial success, long felt but unsolved needs, failure of others, etc.,” which “may have relevancy” as “indicia of obviousness or nonobviousness” under the doctrine of Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); and (3) in holding that the defendant “mеt the heavy burden of persuasion required of it to establish that the Cole patent is invalid for obviousness under Section 103“.
In the instant case, the District Court failed to apply the teaching of our recent opinions in Frank W. Egan Co. v. Modern Plastic Machinery Corp., 387 F.2d 319 (3 Cir. 1968), cert. den. 391 U.S. 966, 88 S.Ct. 2036, 20 L.Ed.2d 879 (June 3, 1968), and Jones Knitting Corporation v. Morgan, 361 F.2d 451 (3 Cir. 1966) with respect to giving effect to the “secondary considerations“, spelled out above, and to the quality and quantum of proof necessary to rebut the presumption of validity of a patent.
The majority here mistakenly aрplied the “clearly erroneous” rule with respect to the District Court‘s factfinding as to the “obviousness” of the Cole Patent. The District Court‘s opinion clearly indicates that its finding of “obviousness” is premised on several patents and publications and not on oral testimony. That being so, the “clearly erroneous” rule is inapplicable here. Borden Company v. Clearfield Cheese Co., 369 F.2d 96, 101 (3 Cir. 1966).
The weight of the evidence establishes that Cole invented and taught a process of producing а citrus juice concentrate which was not obvious in the light of the prior art; that the Cole Patent is novel and has utility and represents a significant advance in the field, as demonstrated by the secondary considerations of its “commercial success“; solution of “long felt but unsolved needs“, and “failure of others” to achieve its results.