author: JAMES M. CARTER. Circuit Judge:

text:
    MOBIL OIL CORPORATION, Plaintiff-Appellant, v. FILTROL CORPORATION and Texaco Inc., Defendants-Appellees. MOBIL OIL CORPORATION, Plaintiff-Appellee, v. FILTROL CORPORATION and Texaco Inc., Defendants-Appellants.
    Nos. 71-2512, 71-2559, 71-2534 and 71-2560.
    United States Court of Appeals, Ninth Circuit.
    July 22, 1974.

      George B. Finnegan, Jr. (argued), of Morgan, Finnegan, Durham & Pine, Sanford M. Litvaek (argued), of Donovan, Leisure, Newton & Irvine, New York City, for appellant.
    William K. Kerr, Herbert F. Schwartz, Eric C. Woglom, William J. Hone, Fish & Neave, Hulit L. Madinger, New York City, John G. Flett, Thelen, Marrin, Johnson & Bridges, Los Angeles, Cal., for appellees.
   OPINION

Before CHAMBERS, CARTER and GOODWIN, Circuit Judges.

JAMES M. CARTER. Circuit Judge:

In this patent case the district court held that certain claims of Mobil’s U.S. Patents 3,210,267, 3,436,357 and 3.459.680 were valid and not infringed by either Filtrol or Texaco, and dismissed Filtrol’s counterclaim for misuse of patents and damages.

Mobil has abandoned its appeal from the judgment of non-infringement as to Patent 3,210,267 (hereafter # ’267) and as to claim 1 of Patent 3,436,357 (hereafter # ’357). There remains Mobil’s appeal from the judgment of non-infringement as to claims 17 and 24 of # ’357 and claims 10, 11 and 12 of Patent 3.459.680 (hereafter # ’680).

In Appeal No. 71-2559, Mobil appeals from the amended judgment of August 17, 1971, holding Patents # ’357 and # ’680 not infringed.

In Appeal No. 71-2560, Filtrol and Texaco cross-appeal from the amended judgment of August 17, 1971, holding # ’267, # ’357 and # ’680 valid; and Fil-trol cross-appeals from the amended judgment of August 17, 1971, dismissing with prejudice its counterclaim - for patent misuse and damages.

The questions presented are:

1. Appeal No. 71-2559: Did the district court err in holding the patents not infringed ?

2. Appeal No. 71-2560: Did the district court err in finding the patents valid, since it held them not infringed?

3. Appeal No. 71-2560: Did the district court err in dismissing Filtrol’s

-counterclaim for misuse of patents and damages ?

Three sets of findings of fact and conclusions of law were filed covering (1) non-infringement, (2) validity, and (3) misuse of patents. At argument here, the question was raised of possible conflicts in the findings on validity in sets (1) and (2) of the findings.

We are informed that the district court directed the prevailing party to prepare the findings on each of the three questions, which explains the conflict. The findings prepared by Mobil on validity broadly construed the patents. The findings prepared by Filtrol and Texaco on infringement narrowly construed the patents and then held them non-infringed.

It is better practice not to permit a prevailing party substantially to control the findings. Here, however, we believe that the immensity of the task of preparing findings, owing to the size of the record and the complicated problems involved, dictated the course adopted by the district court.

The question whether the district court erred in holding the patents both valid and non-infringed is one of law. The non-infringement question is largely one of fact. We find no insurmountable problem regarding the conflicts.

We affirm the district court on the holding of non-infringement and reverse the district court on its holding of validity. We affirm the district court on its dismissal of the counterclaim for patent misuse and damages.

I.

Mobil’s patents were not infringed

We noted above the possible conflict between the findings on validity (prepared by Mobil), construing the patents broadly, and the findings on infringement (prepared by Filtrol and Texaco), construing the patents narrowly.

In the findings on infringement the trial court was following the well-known principle of patent law that where claims are close to the prior art, often they cannot be construed broadly enough to be infringed without also being so broad as to be invalid. See National Screw & Mfg. Co. v. Voi-Shan Industries, Inc. (9 Cir. 1965) 347 F.2d 1, 3; Air Devices, Inc. v. Air Factors, Inc. (9th Cir. 1954) 210 F.2d 481, 482, cert. denied, 348 U.S. 825, 75 S.Ct. 41, 99 L.Ed. 651; Nye & Nissen v. Kasser Egg Process Co. (9 Cir. 1938) 96 F.2d 420, 424-425.

The trial court concluded:

“15. If, in order to avoid prior art and sustain the validity of a patent, a claim is construed as narrow in scope, this scope cannot be discarded to establish infringement. Mackay Co. v. Radio Corp., 306 U.S. 86, 102 [59 S.Ct. 427, 83 L.Ed. 506] (1939); Crown Machine & Tool Co. v. D. & S. Industries, Inc., 409 F.2d 1307, 1309 (9 Cir. 1969) [cert. denied, 396 U.S. 824, 90 S.Ct. 66, 24 L.Ed.2d 75]. Claims 10-12 of patent 3,459,680, claim 20 of patent 3,210,267 and claims 1, 17 and 24 of patent 3,436,357 cannot be construed broadly enough to be infringed by Filtrol 700, 800, 900 and 810 as made, offered for sale and sold by Fil-trol and used by its customers, including Texaco, and still be valid over the prior art.”

Mobil attempts to rely on the findings on validity (prepared by Mobil) to attack the findings on non-infringement (prepared by Filtrol and Texaco) which were adverse to Mobil. Mobil states in its opening brief:

“In attempting to resolve the issue of infringement, however, Judge Ferguson failed to give effect to his findings (on validity) that the inventions of the claims on appeal constitute a breakthrough in the art. Instead he imposed limitations on the claims. .

“But for the restriction erroneously imposed on those claims . . . they . have been infringed.”

But since we decide in Part II that the part of the judgment holding the claims valid and enforceable was erroneous and reverse that portion of the judgment, we need not consider the findings underlying that portion of the judgment.

Therefore, Mobil, to prevail, must demonstrate that the trial court committed reversible error on the issue of non-infringement.

Mobil’s patents in suit are in a very crowded field. The specifications and claims are highly technical. We hold that the findings of fact on infringement made below were not clearly wrong. Accordingly, we refer only in summary form to some of the scientific terminology and the claims of the patent.

I. In general

The hydrocarbon conversion catalysts of Mobil’s patents have two principal components: a crystalline zeolite component is distributed or placed in a second component, a matrix.

The crystalline zeolites, also called crystalline aluminosilicates, are synthetic. Zeolite X is described in Union Carbide’s Patent No. 2,882,244 and zeolite Y in Union Carbide’s Patent No. 3,130,007. They were first synthesized by Union Carbide Corp.

The matrix component can be inorganic oxide gels (e. g., silica alumina) or specially treated clay. Both of these, alone or with components, have been widely used as “cracking” catalysts since the 1940s.

“Cracking” with catalysts is an oil refining process by which most gasoline, for commercial purposes, is made. In the process the gas oil, out of crude petroleum, is heated to form a vapor. The hot vapor is brought into contact with finely divided particles of the material known as a catalyst which has been dispersed in the matrix. For reasons still unknown this contract results in “cracking” or the breaking up of large molecules to produce gasoline sized molecules.

The crystalline zeolites have three primary chemical elements: aluminum, silicon and oxygen. In addition, they usually have associated with them some metal, such as sodium, magnesium or a rare earth metal in the form of electrically-charged ions. Such ions, when positively charged, are also called “cations.”

By an old and conventional technique called “Base Exchange” the ions of a particular metal associated with the zeolites may be replaced or exchanged with ions of another metal or non-metal (such as ammonium). By use of the “Base Exchange” technique, sodium ions organically associated with a crystalline zeolite may be replaced in whole or in part by magnesium ions, ammonium ions or rare earth ions, or by a combination of such ions.

2. The Disclosure and Claims of Patent # ’680, Generally

Patent # ’680 relates to a two-component composite catalyst made up of a low sodium, rare earth-exchanged synthetic crystalline zeolite (either zeolite X or zeolite Y) component, distributed in and diluted by an inorganic oxide matrix.

The zeolite component is a crystalline aluminosilicate, characterized as a “high activity component having an ordered structure of rigid three-dimensional networks characterized by pores and having openings of nearly uniform diameter in the range of greater than 4 and less than 15 angstrom units.” The particularly preferred zeolites are the ■ fauja-sites, including the synthetic materials such as zeolite X (Union Carbide’s U;S. Patent ’244) and zeolite Y (Union Carbide’s U.S. Patent ’007) as well as other crystalline aluminosilicate zeolites having pore openings of between 6 and 15 angstroms.

With respect to the zeolite component, the #’680 specification points out that zeolites X and Y, as synthesized, contain alkali metal (e. g., sodium) cations, and that the presence of such cations make these zeolites unstable and unselective catalysts. To alleviate these shortcomings, the zeolites are base-exchanged to replace the sodium cations with non-alkali metal cations. A substantial portion of the replacement cations must be rare earth cations.

Put in numerical terms, the residual sodium content of the zeolite component of the #’680 catalyst after base exchange is “preferably less than 1%.” Because zeolites X and Y contain approximately 12-14% sodium in the as-synthesized form, a reduction in the sodium content to less than 1% means removal of approximately 95% of the sodium cations.

The matrix component’s role is to provide attrition resistance and also to dilute the high activity of the zeolite component. The #’680 specification states that useful catalysts must possess physical characteristics [e. g., attrition resistance] required for successful commercial operation, (col. 2, lines 46-48 of the patent). The ability of a particle to hold its shape is a primary requirement for a successful catalyst, (col. 2, lines 50-53 of the patent). To meet this and other requirements, the highly active base-exchanged zeolite (col. 9, lines 10-11 of the patent) is intermixed with a material which will dilute and temper the activity thereof so that currently available cracking equipment and methods may be employed, (col. 5, lines 32-35 of the patent). This material, called a “matrix,” possesses a substantial catalytic activity, but of a- lower order than that of the crystalline aluminosilicate, (col. 5, lines 5-8 of the patent). The preferred matrix is the old commercial silica-alumina cracking catalyst because it is known to have high octane number producing properties, (col. 9, line 63, col. 10, line 15 of the patent).

3. The Disclosure and Claims 10, 11 and 12 of #’680

“65. Claim 10 of the #’680 patent teaches:
A composite catalyst having a sodium content of less than 1 weight percent, and having two components:
(a) 75% or more of a silica-alumina matrix, and
(b) 25% or less of a crystalline zeolite with specified structural characteristics, catalytieally more active than the matrix, the zeolite having associated with it metal cations (excluding sodium) only, a substantial portion of which are rare earth metal cations.
Claim 11 of #’680 adds to claim 10 the requirement that the zeolite be prepared from clay. Claim 12 of the #’680 adds to claim 10 the requirement that the matrix be prepared from clay.” [#65, Findings of Fact on Infringement]

4. The Disclosure and Claims of #’357 Generally

The #’357 patent relates to two-and-three-component composite catalysts made up of a low sodium, base-exchanged zeolite Y component, a matrix component, and sometimes a diffusivity component, referred to as a “secondary solid additive.” It relates also to a method for preparing such catalysts.

The zeolite component of the #’357-composite catalyst is a “crystalline alu-minosilicate having a silica to alumina mole ratio in excess of 3.” (col. 2, lines 7-8 of the patent). Zeolite Y, whose preparation is described in Union Carbide’s “Belgium Patents Nos. 577,642 and 598,582” (col. 1, lines 62-63 of patent #’357) is the preferred zeolite. In its base-exchanged form, it has a “structure of rigid three-dimensional networks characterized by uniform pores between 6 and 15 Angstroms in diameter and in which substantially all of the original alkali metal has been replaced. . . . ” (col. 2, lines 33-40 of the patent). The #’357 specification identifies as “particularly preferred replacing ions” “those of the alkaline earth metals [e. g., calcium], rare earth metals, manganese, ammonium and combinations of such ions with one another.” (col. 2, lines 13-16 of the patent).

Mobil’s expert testified that the sodium content of the zeolite component of the #’357 patent is also “preferably less than 1%.” Stated differently by the trial court, approximately 95% of the sodium cations are replaced by base exchange.

The zeolite component is distributed in a matrix (col. 3, lines 17-19 of the patent), the preferred matrix material being a “cogel of silica” (col. 5, lines 54-58 of the patent), such as silica-alumina, silica-magnesia and the like, although “inorganic - oxide gels generally may be utilized as a suitable matrix.” (col. 5, lines 52-53 of the patent). The specification refers also to clay as an alternative to the inorganic oxide gel matrix. (col. 4, lines 18 and 39; col. 5, lines 41-51; col. 6, lines 52-58 of the patent).

In addition to the zeolite and matrix components, the #’357 specification (col. 5, lines 7-30 of the patent) mentions a third component, namely, “a secondary solid additive . . . capable of imparting increased diffusivity” to the catalyst.

Only claims 17 and 24 of the #’357 patent are contested by Mobil on the issue of infringement.

(a) Claim 17 of #’357

,“43. Claim 1 of the ’357 patent teaches a composite catalyst made up of two components:
1. a base-exchanged zeolite, having a silica alumina ratio in excess of 3, in which sodium is removed to the extent that ‘the negative electrovalence of the silica and alumina of said aluminosilicate is balanced by ions of at least one member selected from the group consisting of metals below sodium in the electromotive series, calcium, ammonium, hydrogen and combinations of such ions with one another’; and
2. a matrix.
“Claim 17 of the ’357 patent adds to claim 1 of the further detailed requir-ments (a) that the matrix component be an inorganic oxide gel, and (b) that the zeolite component be a Y zeo-lite, and constitute between 1% and 50% of the composite catalyst. Claim 17 requires that the sodium ions be ‘substantially completely replaced by ions of at least one member selected from the group consisting of rare earth metals, calcium, magnesium, manganese, ammonium, hydrogen and combinations of said ions with one another.’ ”
“44. In product claim 1 of the ’357 patent, ‘balancing’ of the negative electrovalence of the zeolite means ‘using other cations to replace that [the original] sodium’ .... This claim, when read in light of the specification, requires removal of substantially all, i. e., at least approximately 95% of the sodium. Product claim 17 of the ’357 patent requires that the sodium cations be ‘substantially completely replaced.’ This claim when read in light of the specification also requires removal of substantially all, i. e., at least approximately 95% of the sodium.” [#43 and #44, Findings of Fact on Infringement]

Although we have set the finding of fact out in full, claim 17 of #’357, in summary form, describes a composite catalyst made up of two components:

1. a Y zeolite component, constituting between 1% and 50% of the composite, in which the sodium ions are “substantially completely replaced by ions of at least one member selected from the group consisting of rare earth metals, calcium, magnesium, manganese, ammonium, hydrogen and combinations of said ions with one another” ; and

2. a matrix which is an inorganic oxide gel. [Summary of # 43-44, Findings of Fact on Infringement]

(b) Claim 2U of # ’357

“55. Claim 24 of the #’357 patent teaches a method for preparing a three-component composite catalyst, the three components being zeolite Y, a matrix, and a secondary solid additive. The four steps of the claimed method are:
(1) ’Dispersing in a matrix (a) a finely-divided Y zeolite in which at least 70 % of the original alkali metal content has been replaced by base-exchange, and (b) a finely-divided secondary solid additive capable of imparting increased diffusivity to the composite;
(2) washing the composite free of soluble matter;
(3) drying it; and
(4) calcining it.”
[#55, Findings of Fact on Infringement]

5. The Findings of Fact on Factual Differences.

The trial court, after comparing the Filtrol zeolite-containing catalysts with the Mobil patent claims in suit, found that the Filtrol catalysts were “fundamentally different” from the Mobil patents. One such difference was the high sodium content of Filtrol’s zeolites. The court found:

“41. In contrast to the emphasis on low sodium in the three patents in suit, Filtrol did not concern itself with attempting to produce a zeolite component which was low in sodium. Instead, the zeolites prepared by Fil-trol from clay had a high sodium content from the inception of Filtrol’s work in preparing them and, as time went on, their sodium content became even higher. This contrast in sodium content is a fundamental difference between the Filtrol catalysts and the Mobil patents.” [#41, Findings of Fact on Infringement]

By other uneontested findings (12, 13, 16, 17, 18, 21, 22, 24, 25 and 26 of the Findings of Fact on Infringement) the trial court detailed the independent development of Filtrol’s high sodium zeo-lite-containing fluid cracking catalysts, and described how the Filtrol catalysts (in both the successful fluid versions and unsuccessful moving-bed versions) come into existence. These findings are summarized as follows:

(a) Filtrol’s development in the Spring of 1963 of an experimental catalyst which improved, rather than deteriorated, when its sodium content was increased. (Finding 12)
(b) Filtrol’s introduction to the market in January 1964 of Filtrol Grade 800, the first commercial zeo-lite-containing fluid cracking catalyst marketed by any company. (Finding 13)
(c) Filtrol’s continuing program to improve its catalysts, including an increase in the sodium content of their zeolite component from 1.9% to 3.3%. (Findings 17, 18)
(d) Filtrol’s unsuccessful attempt to enter the moving-bed catalyst field with Filtrol Grade 810, a zeolite-con-taining catalyst. (Findings 21, 22)
(e) Filtrol’s manufacture and sale of the challenged catalysts years before the issuance of Mobil’s patents here on appeal. (Findings 24, 25)
• (f) Filtrol’s ownership of a patent relating to its challenged catalysts in which the zeolite component, unlike the zeolite components of Mobil’s patented catalysts, has low stability to steam. (Finding 26)

Generally, the trial court arrived at its findings and conclusions as to non-infringement on two principal grounds: (1) the factual differences between the patent claim asserted by Mobil and the Filtrol catalysts, and their respective methods of preparation; and (2) Mobil’s failure to prove that Filtrol’s catalysts had some of the characteristics recited in the Mobil patent claims.

(a) Factual difference between claims 10-12 of the (’680 patent and the Filtrol catalysts.

The trial court found as to claims 10, 11 and 12 of #’680 a difference between sodium content in the claims and in the Filtrol catalysts.

“68. The specification ... of the . . . ’680 [patent] teach[es] that the 'original alkali metal ions’ (e. g., sodium) (P-2, col. 6, lines 21-22 [of the patent]) are to be replaced by ‘other metal cations’ ‘in conjunction with rare earth’ (P-2, col. 6, lines 24-25 [of the patent]). . . . These other metal cations do not include sodium (P-2, col. 6, lines 26-28 [of the patent]).”
[#68, Findings of Fact on Infringement]
“69. Claims 10-12 of the ’680 patent . which recite that the cations of the zeolite component ‘consist essentially of metal characterized by a substantial portion or rare earth metal’, when read in light of the specifications, require removal of substantially all, i. e., at least approximately 95%, of the sodium.”
[ # 69, Findings of Fact on Infringement]

With respect to the Filtrol catalysts, the court found:

“67. The sodium cations of the Fil-trol zeolite ingredient added to Fil-trol’s accused catalysts are on the order of 25% of the total cations associated with the zeolite component. For this reason alone, these Filtrol zeolite-containing catalysts as made, sold and introduced into a catalytic cracking unit (including Texaco’s) are not described by, and do not fall within, product claims 10-12 of the ’680 patent. ...”
[#67, Findings of Fact on Infringement]

Mobil claims that there is no limitation with respect to the sodium content of the zeolite component of the catalysts described in claims 10, 11 and 12 of #’680. In Finding #69 the trial court found that there was. The trial court also found the corollary in Finding #68, that the term “metal cations” excludes alkali metal cations, e. g., sodium. Neither finding was clearly erroneous. If these claims were not so read, they would be teaching the absurd proposition that the original alkali (e. g., sodium) cations of the zeo-lite would be replaced by other alkali (e. g., sodium) cations.

Further, if claims 10, 11 and 12 were not limited as found by the trial court, “the prior art [of] Fleck patent 2,962,435 . . . alone or together with the prior art [of] Kemberlin patent 2,971,903 . . . would invalidate these claims. . . . ” [#75, Findings of Fact on Infringement]

Moreover, Mobil’s #’680 alleged invention as found by the trial court is, at most, a composite catalyst having a low sodium zeolite as a matrix. Such a low sodium limitation in the zeolite must be read into the #’680 claim to prevent these from being broader than the actual invention. Del Francia v. Stantho-ny Corporation (9 Cir. 1960) 278 F.2d 745, 747.

Mobil contended below that the zeolite of #’680 claims 10, 11 and 12 had to have “the sodium removed from it and replaced by metals, primarily the rare earth metals,” and that this removal and replacement drove the sodium content of the zeolite “down to a level of less than 1 per cent.” Mobil’s expert testified that the sodium requirement for the zeolite component in all their patents in suit was “preferably less than 1%.” [#34, Findings of Fact on Infringement] The trial court found that a level of less than 1% meant that “substantially all, i. e., at least 95% [of the sodium] had to be removed.” [#69, Findings of Fact on Infringement]

Mobil urges in this court that there is no limitation whatsoever on the sodium content of the zeolite in claims 10, 11 and 12 of #’680. Mobil relies on low sodium content to avoid the prior art, but urges, in order to defeat Filtrol, that Mobil’s claims cover composite catalysts containing zeolites with a sodium content as high as the sodium content of the zeolite components of prior art composite catalysts.

The trial court held Mobil could not have it both ways. It concluded:

“15. . . . Claims 10-12 of patent 3,459,680 . . . and claims 1, 17 and 24 of patent 3,436,357 cannot be construed broadly enough to be infringed by Filtrol 700, 800, 900, and 810, as made, offered for sale and sold by Filtrol and used by its customers, including Texaco, and still be valid over the prior art.”
[#15, Conclusions of Law on Infringement]

Mobil contends that claims 10, 11 and 12 of #’680 are broad enough to cover catalysts containing a zeolite component having rare earth cations and either hydrogen or ammonium cations or both. The trial court properly disposed of this contention.

“70. Mobil was forced, during prosecution in the Patent Office of the application for the ’267 patent, to distinguish claims 10-12 from the claims of Mobil patent 3,140,253, not asserted in this suit, which call for a zeolite component containing both metal cations and hydrogen cations or precursors thereof (ammonium cations). . . . Mobil then incorporated the language of the ’267 patent claims into the ’680 patent claims. On this set of facts, claims 10-12 of the ’680 patent and claim 20 of the ’267 patent cannot be read to cover a zeo-lite component which contains both metal (other than sodium) cations and hydrogen cations or precursors of hydrogen cations.”

(b) The Factual Differences between claim 17 of #’357 and the Filtrol catalysts.

The trial court found that Filtrol’s zeolite cracking catalyst did not infringe claim 17 of #’357 because of differences in (1) sodium content and (2) the matrix.

As to sodium, the trial court found:

“44. Product claim 17 of the ’357 patent requires that the sodium cations be ‘substantially completely replaced.’ This claim when read in light of the specification also requires removal of substantially all, i. e., at least approximately 95% of the sodium.”

With respect to the Filtrol catalysts, the trial court found:

“45. The sodium cations of the zeolite component of Filtrol’s accused catalysts constitute on the order of 25% of the cations associated with the zeolite component. ... On this basis alone, Filtrol’s zeolite-containing catalysts as made and sold by Filtrol do not fall within the sodium ion removal or replacement limitation of claim 17 of the ’357 patent.”
[#44 and #45, Findings of Fact on Infringement]

As to the matrix, the trial court found:

“46. A further limitation of claim 17 of the ’357 patent is its requirement that the matrix be an ‘inorganic oxide gel.’ The '357 patent specification refers repeatedly to ‘clay’ and ‘inorganic oxide gels’ as different materials (e. g., col. 4, lines 17-18; col. 4, lines 38-39; col. 5, lines 50-51; col. 6, lines 52-57 [of the patent]). The clay used in Filtrol’s zeolite-con-taining catalysts is not an ‘inorganic oxide gel.’ For this second and separate reason, the Filtrol catalysts do not fall within claim 17 of the ’357 patent. . . . ”
[#46, Findings of Fact on Infringement]

Again Mobil has taken inconsistent positions in the trial court and on this appeal. The findings are not clearly wrong.

(c) The factual differences between claim 21 of #’365 and the challenged manufacturing process.

Here the trial court found three separate differences. With reference to the identity of the secondary solid additive, the trial court found:

“56. This claim, when read in the light of the specification of the ’357 patent restricts the amount of the ‘secondary solid additive’ to a maximum of approximately 40% by weight of the composition, (col. 5, lines 8-18 [of the patent]).”
[#56, Findings of Fact on Infringement]

With respect to defendants’ catalysts, the trial court found:

“57. In attempting to establish infringment of claim 24 Mobil asserted that Filtrol’s alumina component was the matrix, and its SR clay component was the ‘secondary solid additive’ called foi by this claim. . Filtrol’s clay component (SR fines) is by far the largest component of its catalysts, amounting to between 68 and 78% of the composite catalyst by weight.- . . . Filtrol’s clay component cannot be construed to be a ‘secondary solid additive’ within the meaning of claim 24 of the ’357 patent.”
[#57, Findings of Fact on Infringement]

Again Mobil’s positions were inconsistent and the trial court made note thereof:

“58. Mobil’s position with respect to the identity of the matrix in Fil-trol’s composite catalysts was inconsistent. With Mobil’s charge of infringement of claim 24 of the ’357 patent, Mobil contended that the alumina component was the matrix. . On other issues Mobil asserted that the matrix was something other than the alumina component (presumably the clay) . . . that ‘the matrix was an acid chemically treated silica-alumina clay’ or that the matrix was a combination of the clay and the alumina gel. When called on to explain these discrepancies Mobil’s expert, Dr. Hawthorne, could only state that these three different definitions of the matrix were ‘mistakes’ . . . that, in any event, this was ‘all semantics’ and ‘a matter of what we define’ the matrix to be. . Such vacillation confirms the lack of merit of Mobil’s position with respect to infringement of claim 24 of the ’357 patent.”
[#58, Findings of Fact on Infringement]

The trial court found other differences between claim 24 and the method of making the challenged zeolite-contain-ing catalysts.

“59. Mobil’s own descriptions of the Filtrol process of making its zeo-lite-containing catalysts demonstrate that Filtrol does not perform the step of washing its composite catalyst after the clay, alumina and zeolite components are combined, a step required by claim 24. This is a second and separate reason why the method of preparing the Filtrol catalyst does not fall within claim 24 of the ’357 patent.”
“62. Filtrol does not perform any heating step which is even contended by Mobil to be ‘calcination’. . There is no evidence that FiltroL instructed Texaco to perform any particular heating operating on Filtrol catalysts when received, or that Texaco informed Filtrol that it performed any particular operation on the catalysts when received. Nor is there any evidence that Texaco knew the details of Filtrol’s manufacturing process.”
“63. Texaco uses the Filtrol catalyst by placing it into ‘the regenerator’ section of its cracking unit. The Texaco regenerator temperature is 1100° to 1200° F. . and the new catalyst stays in the regenerator approximately 15 to 18 minutes (substantially less than the time period set in the ’357 specification) before it goes into the cracking reactor.”
“64. The established differences between the lengthy and specific cal-cination procedure described and claimed in the ’357 patent and the introduction of the catalyst into the re-generator by Texaco make clear that Texaco’s use of Filtrol’s catalyst does not include ‘calcination’ within the meaning of claim 24 of the ’357 patent. This is a third and separate reason why the method of preparing the Filtrol' catalyst does not fall within claim 24 of the ’357 patent.”
[#59, 62, 63, 64, Findings of Fact on Infringement]

Finding #55 states that the method of patent #’357 includes the step of washing and the step of calcinating the composite catalyst. Finding #42 states that defendants do not perform these steps. Thus two of the four steps of claim 24 of #’357 are omitted by defendants.

The trial court correctly concluded:

“2. Each and every element of a claim asserted to be infringed must be found in the accused product or process. Englehard Industries, Inc. v. Research Instrumental Corp., 324 F.2d 347, 351 (9 Cir. 1963) [cert. denied, 377 U.S. 923, 84 S.Ct. 1220, 12 L.Ed. 2d 215]; Haynes Stellite Co. v. Osage Metal Co., 110 F.2d 11, 14, 10 Cir. 1939.”

Mobil contends that Filtrol and Texaco split between them the performance of the four steps of the claim. The short answer is that neither defendant ever performed the step of washing the composite; second, the calcination step was not performed by Filtrol but by Texaco in its commercial use of catalysts that Texaco purchased from Filtrol. We question whether a method claim can be infringed when two separate entities perform different operations and neither has control of the other’s activities. No case in point has been cited.

■ Finally, the trial court’s findings of the difference between the length and specific calcinations procedure in #’357 patent and Texaco’s conventional commercial use compel the conclusions that Texaco’s use is not “calcination” within the terms of the claims of the patent.

6. Mobil’s Burden of Proof.

Finally, the trial court found, in substance, that Mobil had not carried the burden of proving infringement by failing to determine and offer proof whether or not the zeolite component of Fil-trol’s catalysts had the characteristics required by claims 10, 11 and 12 of #’680 and claims 17 and 24 of #’357.

“73. Claims 10-12 of the ’680 patent . . . require that the zeolite component of the claimed catalysts have a ‘structure of rigid three-dimensional networks and uniform pore openings of a size greater than 6 angstroms and less than 15 angstroms.’ Claim 24 of the ’357 patent requires that the zeolite have ‘uniform pore openings between about 6 and 15 angstrom units.’ The requirement of rigid three-dimensional networks’, although not present in the terms of claim 24 must be read into it in order properly to construe it in light of the prior art and in light of the specification of the '357 patent itself (P-3, col. 2, lines 34-35). Similarly, claim . 17 of the ’357 patent, when properly construed in light of the prior art and the ’357 patent specification (P-3, col. 2, lines 33-35), require [s] also ‘a structure of rigid three-dimensional networks characterized by uniform pores between 6 and 15 angstroms.’ ”
“74. Mobil has never made any tests on the zeolite components of the Filtrol catalysts (MR or MRK) to determine whether or not these components have rigid three-dimensional networks . . . and ‘uniform pore openings’. . . . This is a separate reason why none of these claims is infringed.”
[#73 and #74, Findings of Fact on Infringement]

7. Mobil Cannot Rely on the Doctrine of Equivalents.

Mobil contends that the defendants’ catalysts “function in the same way to produce the same extraordinary results” as the patented catalysts and that therefore they must be the same.

Mobil ignores the detailed findings of fact set forth above detailing the differences between the Filtrol catalyst and the claims of the patents in suit.

“The fact that the two devices accomplish the same result, or perform the same function, settles nothing about infringement. . . . Identity of result is no test.” Air Devices v. Air Factors (9 Cir. 1954) 210 F.2d 481, 483, cert. denied, 348 U.S. 825, 75 S.Ct. 41, 99 L.Ed. 651 (1954). Accord: e. g., Nelson v. Batson (9 Cir. 1963) 322 F.2d 132, 137; Kemart Corp. v. Printing Arts Research Laboratories (9 Cir. 1953) 201 F.2d 624, 632.

“A finding of equivalence is a determination of fact.” Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 857, 94 L.Ed. 1097 (1950); Bowser, Inc. v. Filters, Inc. (9 Cir. 1968) 396 F.2d 296, 298-299; Nelson v. Batson, supra; Moon v. Cabot Shops, Inc. (9 Cir. 1959) 270 F.2d 539, 545, cert. denied, 361 U.S. 965, 80 S.Ct. 596, 4 L.Ed.2d 546 (1960).

After detailing the numerous differences between the Filtrol products and processes and the patented products and processes, the trial court made the following findings:

“76. Filtrol 800, Filtrol 900 and Filtrol 700, as made, offered for sale and sold by Filtrol and Filtrol 900 as used by Texaco, are fundamentally different from and not equivalent to or the same as the compositions called for by claims 10, 11 and 12 of the ’680 patent.”
******
“78. Filtrol 800, Filtrol 900 and Filtrol 700, as made, offered for sale and sold by Filtrol and Filtrol 900 as used by Texaco, are fundamentally different from and not the equivalent to or the same as the compositions taught by claim 17 ... of the ’357 patent.”
“79. Filtrol, together with its customers including Texaco, has made Filtrol 800, Filtrol 900 and Filtrol 700 by processes which are not the same as or equivalent to, but instead are fundamentally different from, that taught by claim 24 of the ’357 patent.” [#76, #78 and #79, Findings of Fact on Infringement]

The trial court then concluded as follows:

“12. Even if a claim cannot be literally read on a device or process there can be infringement if the accused device or process is equivalent to what is taught by the claim. Graver Mfg. Co. v. Linde Co., 339 U.S. 605, 608-609 [70 S.Ct. 854, 94 L.Ed. 1097] (1950).. Claims 10-12 of patent 3,459,680, . . . and claims 17 and 24 of patent 3,436,357 are not infringed under this doctrine because there are fundamental differences between these claims in suit and the accused products and processes.”
#12, Conclusions of Law in Infringement]

The findings of fact on non-infringement were not clearly wrong and the legal principles applied by the trial court were correct.

The portion of the judgment holding the patents non-infringed is affirmed.

II.

Mobil’s patents could not be held valid and non-infringed

The trial court not only found the patents not infringed (on which we affirm, supra) but also found the patents valid.

An adjudication on validity was reversed by the Supreme Court when there had also been a holding of non-infringement. Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263 (1939).

Altvater v. Freeman, 319 U.S. 359, 363, 63 S.Ct. 1115, 1117, 87 L.Ed. 1450 (1943), states: “To hold a patent valid if it is not infringed is to decide a hypothetical case.” There, only one claim of a patent was involved in the issues raised by the complaint and answer, and the claim was held not infringed. However, a counterclaim raised the validity of other claims of the patent. The issues raised in the counterclaim as to the validity of the other claims of the patent were not moot, and the judgment was reversed.

Mobil cites Burgess & Associates, Inc. v. Klingensmith (9 Cir. 1973) 487 F.2d 321, which states: “Our holding that Klingensmith’s devices do not infringe the 738 patent does not render moot the question of the patent’s validity, since its validity is challenged in Klingensmith’s counterclaim. Altvater v. Freeman, 319 U.S. 359, 363, 63 S.Ct. 1115, 87 L.Ed. 1450] (1943).”

The decision is correct.

In addition, the Ninth Circuit has spoken on the problem in various cases, Kemart Corp. v. Printing Arts Research Laboratories, Inc. (9 Cir. 1953) 201 F.2d 624, 634, states:

“It has been said by the Supreme Court that it is the ‘better practice’ always to pass upon the question of validity. This language has been generally understood as a mere cautionary admonition to the courts to exercise their discretion whether to pass upon the question of validity, and to strike down clearly invalid patents where it would be in the public interest to do so, even though a finding of non-infringement would dispose of the ease. A court may not, however, find a patent uninfringed and at the same time hold it valid, since a holding of validity would be a decision of a hypothetical case.” (Footnotes .omitted)

Lockwood v. Langendorf United Bakeries, Inc. (9 Cir. 1963) 324 F.2d 82, 91, states:

“The law is not entirely clear as to whether, in such a case as this, the court is required to adjudge the validity or invalidity of the patent in suit. Undoubtedly, it had the power to adjudge it invalid. (Altvater v. Freeman, 1943, 319 U.S. 359, 63 S.Ct. 1115, 87 L.Ed. 1450). It appears, however, that it would usually be error to adjudge it valid, in the face of a finding of non-infringement. (Electrical Fittings Corp. v. Thomas & Betts Co., 1939, 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263; Altvater v. Freeman, supra). To do so, says the Supreme Court, would be to decide a hypothetical case.” '

R. H. Baker & Co. v. Smith-Blair, Inc. (9 Cir. 1964) 331 F.2d 506, 507, states:

“ . . . We . . . agree with the district court that ‘in no event should a judgment hold a patent valid, but not infringed.’ See, e. g., Altvater v. Freeman, 319 U.S. 359, 363, 63 S.Ct. 1115, 87 L.Ed. 1450 (1943); Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263 (1939); Lockwood v. Langendorf United Bakeries, Inc., 324 F.2d 82, 91-92 (9th Cir. 1963); Kemart Corp. v. Printing Arts Research Labs., Inc., 201 F.2d 624, 634 (9th Cir. 1953); Patent Scaffolding Co. v. Up-Right, Inc., 194 F.2d 457, 461 (9th Cir. 1952).” (Footnotes omitted)

M.O.S. Corporation v. John I. Haas Co. (9 Cir. 1967) 375 F.2d 614, 617, states:

“But if the issue [of validity] was litigated in the trial court, and if the record presented is such as to permit decision, the Court of Appeals can, and, at least where the answer seems clear, should decide the issue.6”

Footnote 6 reads in part:

“This, however, is subject to the rule that if the patent is not infringed, it should not also be held valid. The admonition is limited to those cases in which the patent is invalid. Kemart Corp. v. Printing Arts Research Labs, supra, n. 3; see Electrical Fittings Corp. v. Thomas & Betts Co., 1939, 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263.”

In answer to the above authorities, Mobil cites Neff Instrument Corporation v. Cohu Electronics, Inc. (9 Cir. 1961) 298 F.2d 82; American Technical Machine Corp. v. Caparotta (2 Cir. 1964) 339 F.2d 557, cert. denied 382 U.S. 842, 86 S.Ct. 65, 15 L.Ed.2d 83 (1965); Marston v. J. C. Penney Co. (4 Cir. 1965) 353 F.2d 976, cert. denied, 385 U.S. 974, 87 S.Ct. 515, 17 L.Ed.2d 437 (1966); and Guiberson Corp. v. Equipment Engineers (5 Cir. 1958) 242 F.2d 431. In each case the court held the patent valid and infringed.

In Neff, this court stated in footnote 12 (298 F.2d p. 88) :

“Because of what is hereinafter said [holding patents infringed], defendant’s reliance on Kemart Corp. v. Printing Arts Research Laboratories, Inc., 9 Cir., 1953, 201 F.2d 624, 634, is of no moment. This renders the sixth error charged in the cross-appeal moot.”

Our case concerns a holding below that the patent was valid and not infringed. The cases cited by Mobil do not negate or control our ruling in this case.

We hold the trial court erred in holding the patents valid, since it held the patents were not infringed. The judgment is reversed insofar as it holds valid claims 17 and 24 in Patent #’357, and claims 10, 11 and 12 in Patent #’680.

Although Mobil dismissed its appeal challenging the judgment on non-infringement as to claim 20, Patent #’267, and claim 1, Patent #’357, the judgment as to the validity of these claims still stands and is before us on this appeal.

Since Mobil abandoned its appeal from the trial court’s decision as to non-infringement of claim 20 of #’267, and claim 1 of #’357, we cannot rule on that issue. But this leaves the case in the posture of a trial court judgment of non-infringement of such claims and an appealable judgment that the claims were valid and enforceable. Accordingly, we also reverse the portion of the judgment holding claim 20 of #’267 and claim 1 of #’357 valid and enforceable.

III.

The Filtrol counterclaim was properly dismissed

Following the trial the district, court made extensive findings of fact and conclusions on Filtrol’s counterclaim against Mobil for misuse of patents and for damages and dismissed the counterclaim.

In substance, it found that (1) Filtrol, far from being discriminated against by Mobil, refused even to consider a license from Mobil; (2) Mobil acted properly in its negotiations with W. R. Grace & Co., and in all of its licensing practices and policies; (3) the non-exclusive cross-license between Mobil and Esso Research and Engineering Corporation was entered into solely to resolve a “blocking patent” situation and was entirely lawful; and (4) Filtrol failed to prove it suffered the requisite damage to maintain an antitrust claim.

The issues in (1), (2) and (3) above were for the most part factual. In addition to the written exhibits there was considerable oral testimony from witnesses, particularly on Mobil’s side of the case. The trial court had the opportunity to weigh the credibility of the witnesses. We cannot say the factual findings were clearly wrong nor do we find error in the legal principles applied by the district court. As to (4) above, we do not reach the problem in view of our holding on (1), (2) and (3) above.

The portion of the judgment holding the patents not infringed is affirmed. The portion of the judgment holding the claims of the patents valid and enforceable is reversed. The portion of the judgment dismissing the counterclaim is affirmed.

      . Appeals No. 71-2512 and No. 71-2534 were from the judgment of June 24, 1971, which was superseded by the amended judgment of August 17, 1971. These two appeals are dismissed.


source: Caselaw Access Project

author: PER CURIAM.

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Kenneth Wayne HARVILL, Defendant-Appellant.
    No. 74-1310.
    United States Court of Appeals, Ninth Circuit.
    July 15, 1974.

      Richard T. Ball, of Arrick & Ball, Phoenix, Ariz., for appellant.
    William C. Smitherman, U. S. Atty., Phoenix, Ariz., for appellee.
    Before MERRILL and CHOY, Circuit Judges, and ZIRPOLI, District Judge.

       Honorable Alfonso J. Zirpoli, United States District Judge, Northern District of, California, sitting by designation.

   OPINION

PER CURIAM.

Following a jury trial, Kenneth Wayne Harvill was convicted of a two count indictment charging him with possession of firearms in violation of 18 U. S.C. App. § 1202(a)(1).

The only error claimed on appeal is that the trial judge failed to comply with Rule 30 of the Federal Rules of Criminal Procedure. Rule 30 provides, in relevant part:

At the close of the evidence or at such earlier time during the trial as the court reasonably directs, any party may file written requests that the court instruct the jury on the law as set forth in the requests. The court shall inform counsel of its proposed action upon the requests prior to their arguments to the jury, but the court shall instruct the jury after the arguments are completed.

During the course of the proceedings, Harvill’s counsel submitted requested instructions to the court on the question of specific intent which would require proof that defendant acted knowingly, purposely intending to violate the law, for conviction.

Immediately prior to the testimony of the final defense witness, during a recess, the trial judge indicated he would give the requested instructions. The proceedings were reconvened, and counsel presented their arguments to the jury. Court was then recessed until the following morning, when the judge, without notifying counsel, failed to give the requested instructions, and instead instructed the jury that no specific intent was necessary to show a violation of section 1202(a)(1).

Counsel for Harvill made timely exception to the failure to give the requested instructions and to the contradictory pattern of instructions. The exception was noted by the court (RT 41 -43).

The government does not argue that there was compliance with the rule, but claims that the court’s instructions were proper and did not result in any prejudice to defendant. Whether the requested instructions were faulty is irrelevant; however, the court’s failure to advise Harvill’s counsel that he would not give the requested instructions requires reversal of the conviction only if counsel’s closing argument was prejudi-cially affected thereby. Wright v. United States, 339 F.2d 578, 580 (9th Cir. 1964). See also United States v. Schef-fer, 463 F.2d 567, 574 (5th Cir. 1972).

The focus of our inquiry must be on the effect which the court’s misleading indications regarding the requested instructions had on the content of counsel’s argument. “The obvious object of the rule in point is to require the judge to inform the trial lawyers in a fair way what the charge is going to be, so that they may intelligently argue the case to the jury.” Ross v. United States, 180 F.2d 160, 165 (6th Cir. 1950).

In this instance, Harvill’s counsel argued to the jury after receiving misleading assurances that his instructions on specific intent would be given. Although only a portion of his closing argument stressed this issue, we cannot conclude that “the effectiveness of counsel’s argument and hence of appellant’s defense” was not impaired by counsel’s inaccurate information regarding the court’s charge. Wright v. United States, supra, 339 F.2d at 580. See also United States v. Mendoza, 473 F.2d 697 (5th Cir. 1973).

Although the government argues that the outcome of the trial could not conceivably have been affected had Harvill’s counsel based his argument on accurate information about the court’s action on his requested instructions, we cannot say that if the argument had been retai-lored to focus more vigorously on the questions of constructive possession and credibility of the witnesses, there would not have been a different outcome. In effect, part of counsel’s argument was repudiated by the court, and thus the potential prejudice to defendant was considerably greater than in Wright and Mendoza where the court had not initially given an apparent unequivocal affirmative response to defendant’s requested instructions. As the fifth circuit noted in Mendoza:

Although we recognize that the evidence against the [defendant] is nearly overwhelming, we cannot say with reasonable certainty that the outcome would be the same if the defense had argued before the jury with accurate information about the Trial Judge’s proposed action upon the requested jury instructions.

473 F.2d at 701.

Accordingly, the judgment of conviction is reversed and the case remanded for a new trial.

      . Specific intent is not required to sustain a conviction of violation of section 1202(a) (1). United States v. Freed, 401 U.S. 601, 607, 608, 91 S.Ct. 1112, 28 L.Ed.2d 356 (1971) ; United States v. Jones, 446 F.2d 12, 14 (9th Cir. 1971). Cf. United States v. Petrucci, 486 F.2d 329, 331-332 (9th Cir. 1973).

      . § 1202. Receipt, possession, or transportation of firearms — Persons liable; penalties for violations

      (a) Any person who—
      (1) has been convicted by a court of the United States or of a State or any political subdivision thereof of a felony, . and who receives, possesses, or transports in commerce or affecting commerce, after the date of enactment of this Act, any firearm shall be fined not more than $10,000 or imprisoned for not more than two years, or both.

      . THE COURT: Now, we come to defendant’s request to instruct. Defendant requested instruction number one, lias the Government any objection to that?
      MR. JENNINGS: I would request, Your Honor, that the Court give it encompassing instruction as specific intent as we talked about in chambers.
      THE COURT: I shall enlarge it, but in essence the Court adopts defendant’s requested instruction number one.
      Defendant requested instruction number two, has the Government any objection?
      MR. JENNINGS: No, your Honor.
      THE COURT: Very well. . . . (RT 90)


author: PER CURIAM:

text:
    Charles L. WILKERSON et al., Plaintiffs-Appellants, v. Thomas J. MESKILL, Governor of the State of Connecticut, et al., Defendants-Appellees.
    No. 931, Docket 73-2064.
    United States Court of Appeals, Second Circuit.
    Argued June 24, 1974.
    Decided July 25, 1974.

      Edward Gallant, Hartford, Conn. (Zeldes, Needle & Cooper, and Barry Schéinberg, Michael Sucoll and Robert Sattin, Hartford, Conn., on the brief), for plaintiffs-appellants.
    Bernard F. McGovern, Jr., Asst. State Atty. Gen., Hartford, Conn. (Robert K. Killian, Atty. Gen. of Conn., F. Michael Ahern and David J. Della-Bitta, Asst. Attys. Gen., Hartford, Conn., of counsel), for defendants-appellees.
    Before MOORE and FEINBERG, Circuit Judges, and PALMIERI, District Judge.

       Of tlie Southern District of New York, sitting by designation.

   PER CURIAM:

This is an appeal taken from the dismissal of a class action based on the Civil Rights Act, 42 U.S.C. § 1983 (1970). Appellants, a class consisting of Connecticut State troopers, sought an accounting and an injunction ordering the return to them by the State of funds allegedly improperly withheld. Appellees are various Connecticut State officials, sued in their governmental capacities.

The dispute centers around a period of two years, June 1967-June 1969, during which State .troopers were required to work in excess of fifty hours per week to receive the time-and-one-half increment for overtime work. Other State employees generally only had to work in excess of forty hours to receive pay at the additional rate. The reason for this discrepancy in treatment is that the statute authorizing overtime pay required work in excess of a regularly scheduled workweek. At that time State troopers worked a regularly scheduled fifty-hour week. In 1969 the statute was amended to allow troopers working in excess of forty hours per week to receive pay at the additional overtime rate. No allowance was made for pay lost during the previous two years, and it is generally to right this grievance that this suit is brought.

The District Court, noting that although this action took the form of a plea for injunctive relief, held that it was in reality a suit for damages against the State and dismissed it on the grounds ■that the defendants — in actuality the State of Connecticut — enjoyed Eleventh Amendment immunity. This appeal followed.

Appellants argued in the District Court that federal relief should not be barred by the Eleventh Amendment in light of the interpretation of State immunity provided by Shapiro v. Thompson, 394 U.S. 618, 89 S.Ct. 1322, 22 L.Ed.2d 600 (1969) and cases decided on its authority. This argument, however, was destroyed by the recent Supreme Court decision in Edelman v. Jordan, 415 U.S. 651, 94 S.Ct. 1347, 39 L.Ed.2d 662 (1974), which affirmed the reliance that the District Court had placed in this Circuit’s previous decision in Rothstein v. Wyman, 467 F.2d 226 (2d Cir. 1972), cert. denied, 411 U.S. 921, 93 S.Ct. 1552, 36 L.Ed.2d 315 (1973). Therefore, there is no need to investigate further the merits of the case presented.

Appellants, at this level for the first time, raise two arguments designed to circumvent the effect of the Edelman decision. First, it is argued that Connecticut has waived its immunity from suit; second, appellants contend that since pay received determines the amount of pension rights, portions of their suit seek valid future relief and that these portions should not have been dismissed. Since neither of these arguments was properly raised below, we cannot hear them now.

The decision of .the District Court, is, therefore, affirmed.

      . It would seem that this argument has also been foreclosed by a recent case, Fidelity Bank v. Connecticut, 164 Conn.- (1974).

      . Since apparently none of the appellants lias actually retired and, therefore, received reduced pension rights because of the allegedly improper ascertainment of overtime pay, it may be that they would have been held unable to raise this contention, even at the proper time, due to a lack of standing.


author: MERRILL, Circuit Judge: ELY, Circuit Judge

text:
    MANUFACTURERS MUTUAL FIRE INSURANCE COMPANY, Plaintiff-Appellee, v. ROYAL INDEMNITY COMPANY, Defendant-Appellant.
    No. 72-2723.
    United States Court of Appeals, Ninth Circuit.
    July 22, 1974.
    As amended Aug. 2, 1974.
    Rehearing Denied Aug. 14, 1974.
    John B. Marchant (argued) of Sedg-wick, Detert, Moran & Arnold, San Francisco, Cal., for defendant-appellant.
    Harding A. Orren (argued) of Robins, Davis & Lyons, Minneapolis, Minn., for plaintiff-appellee.
    Before MERRILL and ELY, Circuit Judges, and LINDBERG, District Judge.

       Honorable William J. Lindberg, Senior United States District Judge for the Western District of Washington, sitting by designation.

   OPINION

MERRILL, Circuit Judge:

On September 9, 1965, Hurricane Betsy struck the New Orleans area, causing physical damage to plants and facilities owned and operated by Kaiser Aluminum & Chemical Corporation at Chal-mette, Gramercy, Baton Rouge, Norco and New Orleans. As a result of this physical damage, Kaiser suffered property damage and business interruption losses of approximately $8,400,000.

This diversity case concerns Kaiser’s facility at Chalmette, Louisiana, one of the largest aluminum reduction plants in the world. As a result of wind damage caused by the hurricane, the aluminum production facilities at the Chalmette Plant were without electric power from 10 p.m. on September 9, 1965, until 11:25 a.m. on September 11, 1965, during which period of 37 hours the molten metal in the reduction potlines solidified (“froze”). Aluminum production was not resumed until September 17, 1965, and full production was not obtained until several months thereafter. This resulted in a loss of production of 30,217,936 pounds of aluminum and a loss of profits of $3,979,913.27.

This case involves the insurance coverage afforded Kaiser for this loss of profits under a Physical Damage and Business Interruption policy issued by plaintiff and appellee, Manufacturers Mutual Fire Insurance Company, and a Boiler and Machinery policy issued by defendant and appellant, Royal Indemnity Company. Both policies afforded Kaiser insurance against the loss sustained due to interruptions of business as a result of on-premises physical damage caused by the peril insured against. In addition, Royal, by its Endorsement 8, extended its coverage to include business interruption losses arising out of a deprivation of power when caused by off-premises occurrences. Both policies contained an “idle period” clause to the effect that the insurer should not be liable for “loss with respect to any period during which goods would not have been produced or business operations or services maintained had no fire or other peril insured against occurred.”

Here Kaiser suffered on-premises damages to electrical transmission lines and distribution equipment that resulted in total shutdown of Kaiser’s on-premises power plant and total interruption of delivery of electrical energy to the aluminum reduction potlines. Within four to eight hours thereafter the pots solidified. On-premises damage unquestionably was the direct cause of the business interruption loss. United Gas Pipeline Co. supplied Kaiser with natural gas from off-premises sources, which gas was used by Kaiser to generate electricity through its on-premises power plant. Kaise,r’s normal requirement was 143,000 mcf. The record contains testimony to the effect that as a result of the hurricane about 74 per cent, of United’s available gas supply was cut off; that had Kaiser made a request for power the day following the hurricane United could have delivered up to 15,000 mcf and no more.

The dispute is as to the manner in which liability for the loss should be apportioned between the two companies. The recognized practice of the insurance industry where there is overlapping coverage is to ascertain whether, beyond the area of common coverage, there is an area where separate coverage is afforded by a policy. If so, then the company affording separate coverage must first respond to that loss which it alone covers; the remainder of its limit of liability then contributes to the loss commonly covered.

The problem facing the District Court was how to give effect to this principle as well as to the “idle period” clauses of the policies and to Royal’s Endorsement 8 coverage of off-premises damage under the facts of this case. Its solution, over the protest of Royal, was to make findings on the following hypothetical questions:

(a) Assuming that the Kaiser plant had suffered no on-premises wind damage, had continued to operate, and had continued to require its normal supply of natural gas (143,000 mcf), how much gas could United have supplied Kaiser on September 10 and September 11, 1965. — the first two days following the hurricane ?

(b) In the event that under this hypothetical set of facts United could not have supplied Kaiser with its full normal requirements on those two days, what hypothetical loss of profits would Kaiser have suffered?

Upon these questions the court found that United could have delivered only 15,000 mcf of gas to Kaiser on the two days following the hurricane; that the hypothetical, loss suffered by Kaiser due to this reduction in supply was $2,855,052; that Royal’s Endorsement 8 provided separate coverage for this hypothetical loss of profits. Judgment against Royal was entered accordingly.

Royal contends here, as it did below, that the issue of a hypothetical gas deprivation was irrelevant to the determination of the separate coverage afforded Kaiser by Endorsement 8. Royal urged the trial court, and urges us, to base this determination on the actual undisputed facts of the Kaiser loss. Since it was undisputed that the freeze-up of the potlines (the interruption of business giving rise to the loss) was the result of on-premises physical damage caused by the hurricane and was neither caused nor contributed to by any lack of incoming gas and electricity from off-premises sources, Royal contends that the trial court should have found as matter of law that there was no separate coverage under Endorsement 8. Royal summarizes its position by asserting that insurance policies are designed to cover actual, rather than hypothetical, losses and that it was error to impose liability under Endorsement 8 for a loss that in fact never was suffered.

We do not, however, interpret in this fashion the action taken by the District Court.

As we view it, liability was imposed on both companies for the loss that actually was suffered — that resulting from the on-premises damage. Both policies, however, contained an “idle period” clause which provided for an exemption from this liability. It is this clause that required the court to indulge in hypotheses. Under the clause the court was required to hypothesize a situation in which no damage had been suffered by on-premises facilities. If, in that hypothetical situation, there was a period when (for reasons other than on-premises damage) goods would not have been produced or operations and services maintained, then, as to that hypothetically “idle” period there was no liability. The court found that there was such a period and that the exemption accordingly became effective.

While Manufacturers received the benefit of this exemption, Royal’s Endorsement 8 precluded Royal from enjoying it, since the endorsement provided coverage for the very risk that hypothetically had created the “idle period.” If we accept the hypothesis that makes the exemption effective, we must in turn extend that hypothesis to Endorsement 8. Assuming that off-premises damage would have “idled” the Kaiser plant, then Royal is, by the same assumption, liable under Endorsement 8.

It is not Endorsement 8, then, that imposes liability by hypothesis. Endorsement 8 precludes escape from liability elsewhere imposed where that escape is founded upon a factual hypothesis under which Royal would nevertheless remain liable.

Accordingly we find no error in the District Court’s resort to hypothesis.

Royal protests that the court’s findings upon the hypothetical questions are clearly erroneous. It asserts that the record, when properly read, establishes that United could have provided Kaiser with its minimum requirements without interruption. It may indeed be read to provide support for that contention, but it can also be read to support the findings of the District Court.

Royal protests that the actual facts render the hypothesis absurd since the on-premises facilities could not possibly have escaped damage from Hurricane Betsy; that the “idle period” clause should not be given effect under these circumstances. The clause, however, allows for no exception to its application.

Judgment affirmed.

ELY, Circuit Judge

(dissenting):

It is a fundamental principle of insurance law, now fixed by California statute, that an insurer cannot be held liable unless the insured’s loss is proximately caused by the peril or hazard insured against. California Code of Insurance § 530. Here, however, the majority ignores this principle in order to hold Royal Indemnity (hereinafter Royal) liable for the hypothetical damages of a hazard which occurred but was not the cause of any loss to the insured.

Royal and Manufacturers Mutual (hereinafter Manufacturers) both insured Kaiser against loss of profits caused by on-premises physical damage. Both companies also included idle period clauses in their policies, providing that profits which would have been lost “in the absence of the hazard insured against” were thereby excluded from coverage. Royal, in addition to its on-premises physical damage insurance, also insured Kaiser against loss of profits caused by the interruption of off-premises power. At trial Manufacturers argued that in order to give effect to its idle period clause, the Court must consider what losses Kaiser would have sustained had there been no on-premises physical damage. If there had been no on-premises physical damage, Manufacturers contended that there would have been substantial profits lost by Kaiser as a result of the interruption of the off-premises power supply. Therefore, according to Manufacturers, the idle period clause requires that those profits that would have been lost as a result of the interruption in off-premises power must be deducted from the actual profits lost as a result of the on-premises physical damage. The trial court, in agreeing with Manufacturers’ position, held Royal liable for the losses that would have occurred from the interruption in off-premises power, assuming there had been no prior damage to Kaiser’s plant and equipment. Royal was thus required to pay for seven-ninths of Kaiser’s damage, despite the fact that Kaiser’s loss was actually caused by a contingency (on-premises physical damage) against which both companies had insured. This is not fair.

While the majority apparently recognizes the general rule that the cost of indemnifying a loss commonly covered is shared equally by the two insurance companies up to the limit of each company’s coverage, it has nonetheless upheld the District Court’s decision. The basis for the majority’s decision is its literal interpretation of Manufacturers’ idle period clause. In their view the clause operates to eliminate from common coverage an amount equal to the damage that Kaiser would have suffered from the off-premises power failure if the plant had not already been disabled by on-premises damage. This literal interpretation violates the basic principle, heretofore emphasized, that an insured risk must cause actual damage before liability can be imposed. The majority’s error, I think, stems from its failure to take into account the purpose of the clause in the context of business interruption insurance.

“[Business interruption insurance] may be generally described as a form of insurance designed to indemnify the insured against losses arising from his inability to continue the normal operation and functions of his business, industry, or other commercial establishment or, in other words, the total or partial suspension of such business, due to the loss, or loss of use of, or damage to all or part of the buildings, plant, machinery, equipment, or other physical assets thereof, as a result of a peril or hazard insured against.”

Annot., 83 A.L.R.2d 885, 890 (1962). See also Pacific Coast Engineering Co. v. St. Paul Fire & Marine Insurance Co., 9 Cal.App.3d 270, 88 Cal.Rptr. 122 (1970); 1 Couch on Insurance (2d ed.) § 1.108, p. 102, § 1.125, p. 53. Obviously, the risk against which the policyholder was insured must be the proximate cause of the loss in order for liability to accrue to the insurance company.' And if other hazards coincidentally occur, but cause no damage, the idle period clause does not eliminate from coverage any part of the actual loss. See Rogers v. American Insurance Co., 338 F.2d 240 (8th Cir. 1964); General Insurance Co. v. Pathfinder Petroleum Company, 145 F.2d 368 (9th Cir. 1944). But the majority has interpreted the idle period clause to achieve exactly that result — e. g., liability for losses actually caused by one hazard (on-premises damage due to loss of on-premises power) is shifted to Royal which insured against a different hazard (off-premises power failure) that occurred coincidentally but caused no damage.

Idle period clauses have typically been used to eliminate from coverage any losses caused by concurrent or intervening hazards. For example, if an insured’s plant is burned to the ground after all its employees have gone on strike, an idle period clause would prevent the insured from recovering his usual business profits. He could only recover the amount of profits he would have made while the strike existed. And if an uninsured risk adds to the damage suffered by the insured, the idle period clause operates to prevent recovery for additional losses. For example, if a fire shuts down a plant for ten days, but it doesn’t reopen for fifteen days due to a strike at the same time, the insured is entitled to business profits during the time his plant was shut down because of the fire, but not for the additional time it was shut down due to the strike. Business interruption insurance reimburses the insured for the period of time that his business was idle due to the insured hazard, and the idle period clause limits the insured’s recovery to the amount he actually lost rather than his usual business profits for that period. While it may be argued that under this interpretation the idle period clause is only “boilerplate”, past decisions indicate that such “boilerplate” was intended to prevent insured parties from recovering larger damages than those actually suffered. In Eisenson v. Home Ins. Co., 84 F.Supp. 41 (D.C.Fla. 1949) the court awarded the insured recovery for prevented net profits on the basis of net profits for the twelve months preceding the fire for which it was insured, notwithstanding that the business had operated at a loss for several months immediately before the fire due to the cancellation of a large contract and would have continued to operate at a net loss. And in General Insurance Co. v. Pathfinder Petroleum, supra, our court held that when the insured had been in business for eight months during the first five of which profits were high, but during the last three of which profits were much lower and would have been lower still during the period of business interruption, recovery should be based on an average of the profits over the entire prior eight months. See Annot., 83 A.L.R.2d 885, 906 (1962).

Interpreting the idle period clause as a limitation to prevent greater than actual recoveries by the insured avoids the majority anomalous result whereby liability is imposed when there has been no actual damage from the insured risk. Furthermore, an interpretation of the clause in light of its purpose, unlike the majority’s literal interpretation, is consistent with other fundamental principles of insurance law, such as: (1) policies should be interpreted in light of the purposes for which they are presumably made, i. e., the courts should consider what losses the insured was attempting to protect himself against; (2) the reasonable expectations of the parties should be carried out, i. e., did the insured expect that if he insured himself from fire, and the fire occurred, that the simultaneous occurrence of an earthquake would allow the company insuring against business interruptions caused by fires to escape liability; (3) when it is possible to give two meanings to language the meaning most favorable to the insured should be adopted. In the instant case, the importance of the latter principles are minimized because our case does not involve a suit between an insured and his insurance company, but between two insurance companies. But in the next case between the insured and the insurance company the majority’s holding will compel the following bizarre result: If a plant, insured for fire, is burned to the ground, and five seconds later the charred remains fall into a pit caused by an earthquake, for which the plant was not insured, then the idle period clause operates to eliminate the insurance company’s liability. The company can successfully argue, after this decision, that if there had been no fire, there still would have been an earthquake five seconds later, so the insured can only recover what the business would have earned in the next five seconds. This will result in allowing the carrier to avoid liability for losses that it insured — loss of profits due to fire. Since the fire occurred first and was the proximate cause of the damage, the insured should be able to recover notwithstanding that an earthquake occurred later, causing no further damage. Of course, if the earthquake in some way added to the actual damage suffered by the insured, for example, by extending the time required to rebuild the plant, the idle period clause should properly eliminate the additional damage from the company’s liability. But the majority’s result will require that the insurance company be relieved from liability in the above example. That result is completely contrary to the existing principles of insurance law.

In our case Kaiser insured itself against business interruptions caused by two different contingencies — damages caused by the loss of off-premises power (insured by Royal) and damages caused by the loss of on-premises power (insured by both Royal and Manufacturers). Both of these contingencies occurred, but only one caused damage to Kaiser. At the time the off-premises power was reduced, Kaiser was already shut down, damaged and disabled from the earlier loss of on-premises power, and the loss of off-premises power did not in any way extend or enlarge the period of business interruption (the damage). If the loss of off-premises power had added to the damage caused by the loss of on-premises power, then Royal would be liable for that additional amount of damages caused by the loss of off-premises power. But to hold Royal liable for the loss to Kaiser of off-premises power that Kaiser could not use because of prior on-premises damage violates the basic concept of insurance law that there is liability only where the hazard caused damage. The majority’s decision ignores all traditional principles of insurance law and, at the same time, works an injustice with which I cannot associate myself. I would reverse.

      . Pursuant to a written agreement between Manufacturers and Boyal, the parties each paid Kaiser 50 per cent of its total loss of profits of $3,979,913.27 in consideration of a full release from Kaiser. Manufacturers reserved the right to bring suit against Boyal to recover $1,427,520.00 (50% of $2,855,052.00), being that portion of its payment to Kaiser which it contended was an off-premises loss payable under Endorsement 8 of the Boyal policy. Judgment was for this amount.

      . This view is echoed by Judge Ely in his dissenting opinion, infra. Bespecting that opinion we note that when Judge Ely’s burned out factory collapsed into the earthquake fault the idle period clause did not eliminate recovery for fire damage. It simply served to attribute loss of earnings to the earthquake.

      . The “idle period” coincided with the actual period of nonoperation. It applied, however, only to seven out of the nine potlines that froze. As to two of the potlines, United could have provided the necessary power.

      . Manufacturers’ idle period clause stated: “This Company shall not be liable for
      “4. Loss with respect to any period during which goods would not have been produced or business operation or services maintained had no fire or other peril insured against occurred.”
      Manufacturers’ policy also insured Kaiser against “ . . . the actual loss sustained . . . due to interruption of business as a result of [on premises] physical damage caused directly by the perils insured against hereunder ... .” (Emphasis added.) (One of the “perils insured against” was “direct action of wind”.)

      . While there was conflicting testimony offered by the insurance companies as to the meaning of the clause, I view the interpretation of the policy’s unambiguous language as a legal question rather than a factual question.


author: FEINBERG, Circuit"Judge: MANSFIELD, Circuit Judge

text:
    Jasper ROBERSON, Relator-Appellant, v. STATE OF CONNECTICUT, Respondent-Appellee.
    No. 1020, Docket 74-1072.
    United States Court oí Appeals, Second Circuit.
    Argued May 8, 1974.
    Decided July 31, 1974.
    Henry Mark Holzer, Brooklyn, N. Y., for relator-appellant.
    Jerrold H. Barnett, Asst. State’s Atty., New Haven, Conn., for respondent-appellee.
    Before ANDERSON, FEINBERG and MANSFIELD, Circuit Judges.
   FEINBERG, Circuit"Judge:

Jasper Roberson, a state prisoner, appeals from a judgment of the United States District of Connecticut, T. Em-met Clarie, Chief Judge, dismissing his petition for a writ of habeas corpus. Appellant’s principal claims are that his constitutional rights were violated because his probation was revoked on the basis of other convictions then under appeal and because the state has unduly delayed the hearing of those appeals. For reasons stated below, we affirm the dismissal of the former claim and remand to the district court for consideration of the latter.

I

The chronological history of this case is complicated but essential to an understanding of the issues before us. In January 1970, appellant was convicted in a Connecticut state court of possession of heroin. He received a suspended sentence of two to five years imprisonment and was placed on probation. Shortly thereafter and while on probation, appellant was arrested and incarcerated on charges of robbery. These charges were tried separately: In June 1971, appellant was convicted of robbery and in October 1971, of robbery with violence. Concurrent sentences of two to four and four to eight years imprisonment were imposed. What happened next is the basis for appellant’s first contention on this appeal. On October 8, 1971, a state court hearing was held to determine whether probation on the heroin offense should be revoked. The state relied primarily on a probation report detailing appellant’s alleged involvement in the robberies and noting the fact of his June 1971 conviction. The state judge was also aware of the October conviction since he had just presided over the trial. When asked whether he agreed with the contents of the report, appellant responded through his counsel that the convictions were in the process of being appealed and that probation could not be revoked on the basis of such non-final convictions. The judge rejected this argument, reasoning that “the violation of probation is the conviction of any crime,” and revoked Roberson’s probation, ordering the term of imprisonment for the drug offense to be served consecutively to those for the robbery offenses. The Supreme Court of Connecticut affirmed the revocation of probation in a thorough opinion. Conn., 327 A.2d 556 (1973).

Appellant then filed a petition for ha-beas corpus in the United States District Court for the District of Connecticut, alleging that it was a denial of due process for Connecticut to revoke his probation because of criminal convic- ■ tions still pending on direct appeal. In September 1973, Judge Jon O. Newman dismissed the petition on the merits in an unreported memorandum. Appellant took no appeal from this decision.

Shortly after the decision by Judge Newman, appellant filed in the district court a second habeas petition, which is the subject of this appeal. This petition raised the same claim of unconstitutional revocation of probation as did the earlier one. Judge Clarie also rejected the argument on the merits. The second habeas petition alleged in addition that Roberson had been denied his right to appellate review of his robbery convictions because of the state’s “lack of diligence” in defending the appeals. At the time, some two years had elapsed since the convictions on the robbery charges and Roberson’s appeals were not yet close to the stage of being heard by the Connecticut Supreme Court. Moreover, maintained appellant, this delay was very largely the fault of the state. Under Connecticut practice, a party seeking appellate review of a criminal conviction after a jury trial must file with his appeal a request for findings by the trial court and a draft of proposed findings. Conn. Practice Book (CPB) § 629. This request must contain a statement of the questions of law sought to be reviewed; if evidentiary rulings or the charge to the jury are at issue, the draft finding must contain enough of the allegedly proven facts to show that the ruling or charge, if erroneous, was harmful. CPB § 630. The draft finding cannot be prepared until the party has obtained a transcript since CPB § 631 requires that the draft finding make appropriate references to the transcript. Transcripts are available only from the court reporters, who are employees of the state. Appellant’s trial counsel ordered a transcript of the first robbery trial in August 1971 and of the second in November 1971. Yet the transcripts (totalling some 2,000 pages) were not delivered until December 1972, 16 and 13 months respectively after they were ordered.

Judge Clarie did not reach the merits of the claim of undue delay, holding instead that appellant had failed to exhaust his state remedies. CPB § 696 provides in relevant part:

If a party shall fail to defend against an appeal or writ of error with proper diligence [the supreme court] may, on motion by any other party to the appeal or writ of error, or of its own motion, set aside in whole or in part the judgment under attack, with costs, and direct the entry of an appropriate final judgment by the trial court against the party guilty of the failure.

The judge ruled that this section offered Roberson “a plain, speedy, and efficient state court remedy” for the state’s alleged lack of diligence in defending against his appeals. Since Roberson had made no motion under the section, the judge dismissed the petition for failure to exhaust. Appellant thereafter filed a notice of appeal and sought, and obtained, a certificate of probable cause.

After Judge Clarie’s decision, appellant also returned to state court and made a motion under section 696 to set aside the robbery convictions. In January 1974, the Connecticut Supreme Court granted the motion with respect to the first conviction unless the state should file its counterfinding by January 22, 1974, and denied it with respect to the second. The state filed its coun-terfinding on January 14 and the first conviction remained in effect.

Meanwhile, appellant’s trial counsel had filed the draft findings with respect to both robbery convictions in August 1973, eight months after receiving the transcripts. As noted above, the state submitted its counterfindings on the first conviction in January 1974, five months later, and the trial court released its findings in March. Apparently, the appeal from the first conviction will be heard at the October 1974 Term of the supreme court, by which time over three years will have passed since the judgment of conviction. As of the date of. oral argument in this court, the state had not yet submitted its counterfind-ings on the second robbery conviction. Appellant received parole from his two sentences for robbery in June 1973, and is now serving his sentence for the heroin offense on which probation was revoked.

II

Appellant’s first contention to us is that revocation of his probation on the heroin offense because of robbery convictions still subject to direct appeal was a denial of due process. He reasons that “although probation can be revoked without a conviction, or on a conviction alone, once an appeal is taken the equation is drastically changed, and the Constitution then prohibits revocation before the probationer’s direct appellate rights are exhausted.” This is so, says appellant, because the right of appeal is of “tremendous importance,” presenting an opportunity to correct legal errors which may have occurred below and to achieve that near-certainty of wrongdoing which society demands before a man can be deprived of his liberty. Appellant would have the state present at the revocation hearing some independent ev- • idence that the probationer engaged in conduct constituting a crime.

While appellant’s argument has a superficial appeal, we do not believe his due process claim is valid. Essentially, appellant is contending that he has a federally protected right to suspension of the revocation order during the pendency of his appeal from the conviction that triggered the revocation. Clearly, he has no such right. All that is required for revocation of probation is that the court be satisfied that the probationer has abused the opportunity given him to avoid incarceration. United States v. Nagelberg, 413 F.2d 708, 709 (2d Cir. 1969), cert. denied, 396 U.S. 1010, 90 S.Ct. 569, 24 L.Ed.2d 502 (1970). And, as the Connecticut Supreme Court observed in its opinion in this case, “[i]t is universally held that the commission of a felony violates a condition inherent in every probation or„der.” Conn., 327 A.2d 556 at 558. Moreover, even though revocation is based upon felonious conduct, the Constitution does not require that proof of such conduct be sufficient to sustain a criminal conviction. United States v. Nagelberg, supra, 413 F.2d at 709; United States v. Garza, 484 F.2d 88, 89 (5th Cir. 1973) (per curiam). Here, the revocation proceeding was held up until the robbery charges were tried, a protection for the probationer not required under our cases. See, e. g., United States v. Markovich, 348 F.2d 238, 240 (2d Cir. 1965). But cf. ABA Project on Standards for Criminal Justice, Standards Relating to Probation § 5.3 at 63-64 (Approved Draft 1970) (suggesting that revocation proceeding should, as a matter of policy, be postponed until after disposition at the trial level of the new criminal charge). A criminal conviction after a trial at which the probationer was entitled to all the protections afforded a criminal defendant including formal rules of evidence, the right to assigned counsel if indigent, and the requirement that the state establish guilt beyond a reasonable doubt certainly affords a more than sufficient basis for revocation of probation, even if that conviction is still awaiting appellate review. United States v. Garza, supra, 484 F.2d at 89; United States v. Ambrose, 483 F.2d 742, 753-754 (6th Cir. 1973); United States v. Carrion, 457 F.2d 808 (9th Cir. 1972) (per curiam).

Of course there is a risk of unfairness to a probationer whose freedom is taken away because of a conviction which is later reversed. But there are competing policies to consider as well. It is likely that in most cases a probationer, again convicted of a crime, presents some danger to society even though the later conviction has not yet been reviewed. It is worth noting that appellant was arrested for robberies, one involving violence, less than two weeks after receiving probation on a very serious charge. Surely, then, a probationer cannot be in a better constitutional position than any other state prisoner convicted of a crime, who seeks bail on appeal. Despite appellant’s argument to the contrary, it is clear that there is no absolute federal constitutional right to bail after a state conviction. United States v. Fields, 466 F.2d 119, 121 (2d Cir. 1972); Hamilton v. New Mexico, 479 F.2d 343 (10th Cir. 1973) (per curiam) ; Bloss v. Michigan, 421 F.2d 903, 905 (6th Cir. 1970) (per curiam). Yet that is the practical effect of what appellant seeks here. Moreover, requiring revocation of probation to await the end of the appellate process on the underlying conviction would create a further constitutional anomaly. Appellant concedes that a probationer found to have committed a felony on the basis of independent evidence introduced at a relatively informal hearing, at which the state does not have the burden of proof beyond a reasonable doubt, can be incarcerated immediately. See Gagnon v. Scarpelli, 411 U.S. 778, 782, 93 S.Ct. 1756, 36 L.Ed.2d 656 (1973); Morrissey v. Brewer, 408 U.S. 471, 484-489, 92 S.Ct. 2593, 33 L.Ed.2d 484 (1972). We do not see why a probationer, who has already received a full criminal trial on an offense found to justify revocation of probation, should receive more favorable treatment.

Accordingly, we reject appellant’s argument that revocation of his probation because of convictions then on appeal denied him due process.

Ill

Roberson’s second contention is that he was denied an asserted federal constitutional right by the undue delay in the processing of his appeals from the state robbery convictions. As our statement of facts, Part I supra, indicates, there is no doubt that these appeals in the state courts have not proceeded with dispatch. Judge Clarie did not deal with this claim on the merits, holding that Roberson was first required to exhaust his state remedy and dismissing his habeas petition for that reason. Under our recent decision in Ralls v. Manson, 503 F.2d 491 (2d Cir. 1974) (per curiam), this ruling was proper. We could, therefore, merely affirm the dismissal of the petition, allowing Roberson to file a new one after exhaustion of his state remedy. But in the situation now before us, that disposition would be unduly technical. As we have indicated, appellant has already followed the course Judge Clarie suggested. Roberson’s motion in the state courts has been made, and was granted in part and denied in part by the Connecticut Supreme Court. Accordingly, we believe that the case should now be remanded to the district court. Unlike the plaintiff in Ralls, supra, Roberson has now given the state courts an opportunity to consider his claim of undue delay in the state process. Therefore, he should be allowed to press in the federal district court his contention that his federal constitutional rights have been and are being violated by such delay. We express no opinion on the substance of this claim or on any possible argument respondent may make in the district court as to why on the facts then available the court should not reach the issue on the merits. But should the district court reach the merits, a remand will allow the making of a substantial record on whether the delays complained of by this appellant are isolated occurrences or predictable products of Connecticut appellate procedures. See Judge Blumenfeld’s findings in Ralls v. Manson, 375 F.Supp. 1271 (D.Conn.1974), rev’d on other grounds, 503 F.2d 491 (2d Cir., 1974) (indicating that from November 1970 through December 1973 the average time between conviction and final determination of the appeal was 30 months). As Judge Lumbard remarked, concurring in Ralls,

Apparently, [the Connecticut practice of submitting findings and counter-findings] has been found to be a time-consuming, expensive and altogether archaic practice which puts an unnecessary burden on counsel and the trial judge, and results in inordinate delay. Of course, it is not for the federal courts to devise rules for state practice. But if such rules play a part in the denial of constitutional rights, the fact that their use is tolerated would be no excuse for delays which might substantially diminish or nullify due process rights,

at 499.

Affirmed in part, remanded in part for further proceedings consistent with this opinion. The court wishes to thank Henry Mark Holzer, Esq., assigned counsel for appellant, for his dedicated efforts on this appeal.

MANSFIELD, Circuit Judge

(concurring and dissenting):

I concur in Judge Feinberg’s excellent opinion, except for Part III.

The essential facts with respect to the nature and extent of the inordinate delays resulting from Connecticut’s archaic appellate procedure in the processing and disposition of criminal appeals are not in dispute. See Ralls v. Manson, 375 F.Supp. 1271 (D.Conn.1974), reversed on other grounds, 503 F.2d 491 (2nd Cir. July 5, 1974).

Rather than remand this case to Judge Clarie for confirmation of the delays that prevailed at the time of Roberson’s appeal, I would, on the basis of the record before us, decide now whether he was entitled as a matter of due process to have his appeals processed and heard within a shorter period of time than that permitted by Connecticut’s procedure. That issue is not easily resolved. Although a defendant, subject to certain conditions, is constitutionally entitled to a speedy trial in accordance with the Sixth Amendment, see Barker v. Wingo, 407 U.S. 514, 92 S.Ct. 2182, 33 L.Ed.2d 101 (1972), denial of a speedy appeal may not amount to a denial of due process. Cf. United States v. Massino, 432 F.2d 324 (2nd Cir. 1970) cert. denied, 400 U.S. 1022, 91 S.Ct. 586, 27 L.Ed.2d 633 (1971) with Way v. Crouse, 421 F.2d 145 (10th Cir. 1970). Some of the reasons advanced in favor of a speedy trial (e. g. the express terms of the Sixth Amendment, the presumption of innocence, the risk of loss of evidence) are not persuasive in determining whether the Constitution requires an appeal to be heard within a prescribed period of time, or indeed, at all. Repeatedly the Supreme Court has stated “that a State is not required by the Federal Constitution to provide appellate courts or a right to appellate review at all. See, e. g., McKane v. Durston, 153 U.S. 684, 687-688 [14 S.Ct. 913, 914-915, 38 L.Ed. 867].” Griffin v. Illinois, 351 U.S. 12, 18, 76 S.Ct. 585, 590, 100 L.Ed. 891 (1956). See also Monger v. Florida, 405 U.S. 958, 959, 92 S.Ct. 1163, 31 L.Ed.2d 236 (1972) (Douglas dissenting, joined by Brennan and Stewart).

The question here is whether, once having accorded Roberson a right of appeal, Connecticut was required by the Due Process Clause to process it promptly. See North Carolina v. Pearce, 395 U.S. 711, 724, 89 S.Ct. 2072, 23 L.Ed.2d 656 (1969). I think we can and should resolve that issue on the records made available to us by the parties, rather than, by remanding, ourselves compound the delay that is the focus of Roberson’s attack.

      . Roberson v. Robinson, Civ. No. H-165 (D. Conn. Sept. 13, 1973).

      . Roberson verified the second petition in prison prior to Judge Newman’s decision. Appellant observes in his brief that the record does not show that he received notice of that decision.

      . Brief at 14.

      . This, so appellant informs us, is the procedure followed in Texas. See Harris v. State, 169 Tex.Cr.R. 71, 331 S.W.2d 941 (1960). But while the Texas courts are free to adopt such a procedure, we hold, infra, that the Constitution does not impose it upon Connecticut.

      . We need not deal here with the effect of such a reversal on the revocation order. See State v. Roberson, supra, Conn., 327 A.2d at 559.

      . Because of this disposition, we find it unnecessary to consider Judge Olarie’s (and the Connecticut Supreme Court’s) alternative holding that Roberson admitted his involvement in the robberies when he stated at the revocation hearing that he agreed with the contents of the probation report. Roberson maintains that he admitted only that he had been convicted and that the probation report correctly related the state’s allegations. Indeed, an admission of guilt would appear inconsistent with appellant’s insistence that his convictions could not justify revocation because they were being appealed.

      . Appellant does not appear to have been entirely without fault; his trial counsel filed tlie draft findings some eight months after receiving the transcripts.

      . Appellant also contends on this appeal that he was denied his right to a speedy trial. Since this argument was presented neither to the district court nor, we are informed, to the state courts, we decline to consider it.

      . Upon oral argument counsel acknowledged the acceptability of statistics that had been presented to Judge Blumenfeld in Ralls, where he stated (375 F.Supp. at p. 1280)
      “While the appellate procedures theoretically provide for a final determination of a direct appeal within approximately six months, the procedure apparently works very differently in practice. The petitioner has submitted statistical tables representing the timetable of review of the seventy criminal appeals decided by the Connecticut Supreme Court between November 4, 1970, and December 18, 1973. The tables are not controverted or challenged by the state. The data indicate that during the three years covered by the tables, no criminal appeal taken by a defendant has received final determination by the Connecticut Supreme Court in less than thirteen months after a notice of appeal was filed. Moreover, less than ten percent of the criminal appeals by defendants decided during the three-year period were decided in less than eighteen months. Slightly more than half the appeals were decided in eighteen to thirty months, and almost forty percent of the appeals were pending more than thirty months before final decision. The average length of time for a criminal appeal by a defendant was approximately thirty months.”

      . Nor does the fact that state appellate delay may excuse exhaustion of remedies upon an application for habeas corpus relief, United States ex rel. Graham v. Mancusi, 457 F.2d 463 (2nd Cir. 1972), bear any relevance to the possible unconstitutionality of the delay itself.