author:
PELL, Circuit Judge.
      GRANT, Senior District Judge

text:
    HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff-Appellant, v. FREDMAN BROTHERS FURNITURE COMPANY, INC., and Harry Fredman, Defendants-Appellees. HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff-Cross-Appellee, v. Harry FREDMAN, Defendant-Cross-Appellant.
    Nos. 73-1170, 73-1171.
    United States Court of Appeals, Seventh Circuit.
    Argued Jan. 8, 1974.
    Decided Jan. 14, 1975.
    Rehearing and Rehearing En Banc Denied March 5, 1975.

      Ronald B. Schertz and Tim Swain, II, Peoria, Ill., Dalbert U. Shefte, Charlotte, N. C., for Hickory Springs Mfg.
    Lyle W. Allen, Peoria, 111., Harvey B. Jacobson, Jr., Washington, D. C., for Fredman Brothers Furniture Co.
    Before CASTLE, Senior Circuit Judge, PELL, Circuit Judge, and GRANT, Senior District Judge.

       Senior Judge Robert A. Grant of the Northern District of Indiana is sitting by designation.

   PELL, Circuit Judge.

In May 1970, Hickory Springs Manufacturing Company (Hickory Springs), a manufacturer of furniture hardware, introduced to its customers a metal bed device called the “Hi-Co Slatless” rails. The next month, Harry Fredman of Fredman Brothers Furniture Company, Inc., wrote Hickory Springs and one of its customers warning them that the Hi-Co Slatless bed rails infringed Fredman’s Patent No. 3,118,151. Hickory Springs thereupon filed the present declaratory judgment action, seeking a declaration of the invalidity of Fredman’s patent or, if it was found valid, of its noninfringement by the Hi-Co Slatless rails. Plaintiff also alleged a cause of action for unfair competition. Harry Fredman and his company (hereinafter referred to collectively as “Fredman”) answered and counterclaimed for infringement.

While the cause was before the district court, this court issued its opinion in Fredman v. Harris-Hub Co., Inc., 7 Cir., 442 F.2d 210 (1971). This court there construed claim 3 of Fredman Patent No. 3, 118, 151 “as an anti-spread device contemplating a slatless assembly for beds with end board notch separations equal to the width of the springs.” We upheld the district court’s finding of invalidity, noting that prior art had anticipated the device described in claim 3. 442 F.2d at 214-215. The Harris-Hub panel also affirmed the district court’s conclusion that defendant’s accused device was not the “equivalent” of the innovation revealed in claim 4 of the Fredman patent and, hence, did not infringe that claim. The Harris-Hub accused device merely “interconnect[ed] the centers of two conventional metal side rails with a strap that applies sufficient tension to bow the rails inwardly against the bedding.” 442 F.2d at 213. In contrast, the “substance of [Fred-man’s] invention [in claim 4] includes an original design for side rails.” Id. at 216.

“[Their] horizontal flange[s] [flare] into the vertical at [their] ends [Fredman’s] contribution to the art was predicated on an assumption that the portion of the rail which provides both clamping pressure from the vertical flange and adequate- support from the horizontal flange ‘will not flex.’ The benefits of parallelism are described in the specifications and, in large part, constitute the objective achieved by the special design of the rails. . . . ” Id. at 215.

Relying on our Harris-Hub decision, Hickory Springs moved for summary judgment on the issues of the invalidity of claim 3 of the Fredman patent and the noninfringement of claim 4. The district court granted summary judgment on the claim 3 point only. 330 F.Supp. 978, 981 (S.D.Ill.1971); see Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).

Meanwhile, in an effort to rectify Harris-Hub’s “emasculation” of their patent, Fredman had sought and obtained a reissuance of the original patent. Fredman U.S. Reissue Patent No. Re. 27,182. After the pleadings were appropriately amended, Hickory Springs moved for summary judgment, asserting the invalidity of reissue claims 3, 4, 6, 7 and 8 and of original patent claim 4. The district court granted the motion as to all the claims except original and reissue claims 4. (The two were substantially the same. See 338 F.Supp. 636 (S.D.I11. 1972).

During the course of the trial, the court ruled that claim 4 was valid as a matter of law. Therefore, the primary issue left for the jury was whether the accused Hi-Co Slatless bed rails infringed claim 4 of the Fredman patent. The jury found infringement and awarded damages in an amount equal to 2% of the dollar sales of the infringement device. Accordingly, the court entered judgment for $17,983.17 and permanently enjoined Hickory Springs from infringing claim 4. Hickory Springs moved unsuccessfully for a judgment n. o. v. or, in the alternative, for a new trial. It appeals that denial. Fredman cross-appeals the court’s decision as to the invalidity of the reissue claims.

I

Hickory Springs proffers two arguments: (1) because the evidence did not warrant a finding of infringement, the district court erred in denying plaintiff’s post-trial motion for judgment n. o. v., or, alternatively, (2) because of “the prejudicial exclusion of evidence and the prejudicial and improper instructions to the jury, as well as the improper granting of summary judgment of validity,” the cause should be remanded for a new trial.

A

The determination of infringement is normally considered a question of fact. Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 609-611, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Independent Pneumatic Tool Co. v. Chicago Pneumatic Tool Co., 194 F.2d 945, 947 (7th Cir. 1952). Further, if a jury has made the crucial findings,

“a motion for . . . judgment n. o. v. is properly denied where the evidence is such that reasonable men in a fair and impartial exercise of their judgment may draw different conclusions therefrom. . . . Thus, the propriety of such denials turns on the determination of whether under the facts, as disclosed by the record, there was sufficient evidence to warrant the submission of the case to the trier of fact. ... In making this determination, we are obliged to view all the evidence, together with all reasonable inferences to be drawn therefrom, in the light most favorable to [the party prevailing below.]” Hannigan v. Sears, Roebuck & Co., 410 F.2d 285, 287 — 288 (7th Cir.), cert. denied, 396 U.S. 902, 90 S.Ct. 214, 24 L.Ed.2d 178 (1969).

See also Valdes v. Karoll’s, Inc., 277 F.2d 637, 638 (7th Cir. 1960); Lambie v. Tibbits, 267 F.2d 902, 903 (7th Cir. 1959). Cf. Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225, 227 — 228 (7th Cir. 1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973).

Recognizing the limited standard of review usually applicable to findings of infringement and the heavy burden an appellant must carry to overturn a jury’s determination, Hickory Springs claims that it comes within an exception to these rules. It relies on cases such as Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 543 (5th Cir. 1970), cert. denied, 401 U.S. 909, 91 S.Ct. 869, 27 L.Ed.2d 807 (1971), and Foster Cathead Co. v. Hasha, 382 F.2d 761, 766 (5th Cir. 1967), cert. denied, 390 U.S. 906, 86 S.Ct. 819, 19 L.Ed.2d 872 (1968), which hold that an appellate court may consider infringement directly where the finding hinges on the construction of the patent (a question of law) or where the evidence at trial consisted of exhibits, documents, and uncontradicted testimony-

We are unpersuaded that we should exercise an enlarged scope of review here. The parties at trial did disagree with each other in regard to two basic matters at least: whether the end portions of the Hi-Co Slatless rails embody the end plate deflection required by claim 4; and whether the major angle iron portions of the accused rails bow as conventional rails do or whether they may more accurately be described as achieving a high degree of parallelism. To differentiate among the exhibited bed rails on the bases of their varied propensities for bowing along their lengths and for deflecting laterally in their end pieces is not the simple task that Hickory Springs implies it is. The characteristics are relative, not absolute. The witnesses at trial and the parties on appeal offered differing opinions as to the import of the construction of the Hi-Co Slatless, whether it embodies the features claimed in Fredman’s patent. For example, Hickory Springs minimized the engineering differences between the end portion of a conventional rail and that of the accused rail, whereas Fred-man considered those variations to be significant indicia of the supposedly different functions each type of rail performs. We also note that at oral argument before this court, the parties could not agree whether a key bed assembly exhibit shown to us had been set up in such a way as to disclose its true nature.

In sum, we find this to be an inappropriate case for an appellate court to substitute its findings for those of the jury. Cf. Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517 (7th Cir. 1971); Kennatrack Corp. v. Stanley Works, 314 F.2d 164 (7th Cir. 1963). Contrast Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227 (7th Cir. 1969), cert. denied, 397 U.S. 1037, 90 S.Ct. 1354, 25 L.Ed.2d 648 (1970). We cannot say that the jury was unreasonable in concluding as it did in light of the evidence presented to it.

We therefore turn to Hickory Springs’ second argument, namely, that trial errors in effect ensured that the jury would find infringement.

B

The task of conducting an error-free jury trial in a patent case is not an easy one. Panther Pumps, supra. The highly technical and frequently obscure words utilized in connection with a patent and the devices supposedly embodying its claims combined with the language of patent law, itself often precisely cognizable only to those in this specialized profession, pose a challenging and difficult feat for the trial judge who must guide the presentation of the law and evidence in such a manner that a jury of lay persons hopefully will render a fair and just verdict. The present case was no exception to the foregoing observations although it involved a part of a piece of furniture with which all of the jurors certainly must have been familiar.

Hickory Springs contends that the district court judge committed serious, prejudicial error in his trial rulings.

First, as to the limitation of the evidence that Hickory Springs wishes to introduce, we are unconvinced that the trial court committed reversible error. See Rule 61, Fed.R.Civ.P. Most of the material that plaintiff sought to introduce falls into one of two categories: (a) matters arguably relevant to a determination of the scope of claim 4; (b) evidence of commercial bed rails other than the accused device and of prior art. In regard to category (a), the court, and not the jury, had the responsibility of determining the scope of claim 4. The parties informed the court of their respective views on that subject, and the court, in its instructions, related its conclusions. This was the proper course. Whether the court’s instructions were erroneous is of course a different question. In regard to category (b), Hickory Springs was in fact permitted to introduce substantial evidence of this type. Further, not all the evidence was directly relevant to the determination of infringement and would have confused the jury as to the issues which they were to resolve.

As to Hickory Springs’ attack on the jury instructions, the plaintiff argues that the court “[rewrote] . . . the claim in language broader than the claim itself.” The court in its instructions referred to the “one piece side rails” described in the patent and their having a “vertical end plate that can be resiliently flexed in a lateral direction, more easily than the portion of the rail having a right angular cross-section.” This, the court stated, results in the clamping of “the box spring by the vertical flanges of the side rails.” Hickory Springs maintains that the court’s explanation of what claim 4 encompassed failed to give sufficient emphasis to the limitations that Harris-Hub found inherent in the claim.

The language the court used does not call one’s attention to the element of “parallelism” as strongly as does the description in Harris-Hub. However, we do not find this to be reversible error. The instructions did mention the contrast called for by the claim between the degree of flexing in the end portions of the rails and the degree of flexing in the major angle iron portions of the rails. The jury could not have been unaware of the significance of this point, for the parties dwelt on it at length during trial. And the jury had a copy of the Fredman reissue patent during its deliberations. Finally, the instructions that Hickory Springs unsuccessfully proffered were not viable alternatives. They provided no clear guidelines and would have been improperly prejudicial to Fredman.

We also do not find the court’s instruction on equivalence to be reversible error. Hickory Springs asserts, inter alia, that the court failed to define adequately what constitutes an “equivalent.” However, Hickory Springs suggested no version that was both more explicit and yet not prejudicial.

Plaintiff also urges that the court did not give it an opportunity to present evidence as to the invalidity of claim 4. Although the court did not allow plaintiff to argue this point to the jury, the parties did argue the point to the court itself, both in briefs and orally.

In a ruling prior to trial in which the district court had denied plaintiff’s motion for summary judgment of invalidity of claim 4, the court had expressed the thought that factual questions “cannot be resolved without trial.” 338 F.Supp. at 642. Eventually during the course of the trial, the judge indicated that he was determining the issue of the validity of claim 4 adversely to the plaintiff. It would have been helpful to this court had the district court outlined more specifically than it did the precise reasons for its determination. However, we are satisfied from our review of the record that all of the evidentiary matters Hickory Springs sought to raise on the issue were before the court and were considered by him, specifically inter alia the decision in the Harris-Hub case, the relevant prosecution histories of the reissue patent, and the later concededly non-infringing rails developed by Hickory Springs. We cannot say that the legal issue of validity was incorrectly determined by the court.

II

On cross-appeal, Harry Fredman contends that, contrary to the district court’s conclusions, reissue claims 3, 6, 7 and 8 do not enlarge the scope of the original claims and are valid. Fredman complains that the district court misunderstood 35 U.S.C. § 251, governing the reissuance of “defective patents.” See 338 F.Supp. at 639-640. He also maintains that the impact of our Harris-Hub decision is limited to the claims then before the court, that is, original claims 3 and 4. The Patent Office, he points out, was aware of Harris-Hub and of all pri- or art, including that mentioned by Judge Stevens in Harris-Hub, when it granted Fredman the reissue claims.

We agree with the defendant that section 251 is remedial in intent and should be read liberally. He is correct that under the statute, which prohibits the enlarging of the scope of the claims of the original patent, claims which an applicant seeks to reissue are to be evaluated in light of the scope of the original claims, both valid and invalid. “[The applicant] may correct claims of the original patent that might otherwise be invalid due to their being too broad, by making them narrower or more limited in the reissue patent . . . .” Stewart-Warner Corp. v. A C Sparkplug Co., 5 F.Supp. 371, 377 (E.D.Mich.1933) (decided under a precursor of section 251). See also Edison v. American Mutoscope 6 Biograph Co., 151 F. 767 (2d Cir. 1907); Sticker Industrial Supply Corp. v. Blaw-Knox Co., 321 F.Supp. 876 (N.D.Ill. 1970). Reissue claim 3 is identical to original claim 3 except for the addition of certain language, which, Fredman asserts, “narrows” the invention originally claimed. Reissue claims 6, 7 and 8 are dependent on reissue claim 3.

Even if we interpret one or two ambiguous passages in the district court’s opinion as adopting an unduly restrictive view of section 251, it does not follow that the court’s conclusions were therefore erroneous. In invalidating the reissue claims, the court relied heavily on our analysis of the Fredman patent in Harris-Hub. Although, as defendant notes, Harris-Hub did not deal with reissue claim 3 and the reissue claims dependent thereon, its explanation of the scope of the original claim — regardless of the claim’s validity or invalidity — is certainly pertinent to an assessment of the permissible scope of the reissue claims. Cf. Edison v. American Mutoscope & Biograph Co., supra.

The district court found that “[rjeissue claim 3 lacks any recitation of the limitations of the original claims deemed necessary by the Court of Appeals to patentable invention.” 338 F.Supp. at 640. The court was referring primarily to the “unique side rail design” discussed in Harris-Hub. Fredman, in his appellate brief, states that he does “not take issue with Judge Morgan’s interpretation that reissue claims 3, 6, 7 and 8 do not include any specific recitation directed to Fred-man’s preferred end plate design . .” Defendant argues, however, that this is of no moment; Judge Morgan supposedly failed to grasp the significance of the new limitations included in the reissue claims.

The controversy would seem to come down to this: whether the language added in reissue claim 3 narrowed or broadened the original claim. As the district court remarked, reissue claim 3 is “in a sense narrower than original 3 by virtue of the added limitation of a tension means for pulling the rails inwardly . .” 338 F.Supp. at 639. However, this “narrowing” is not necessarily sufficient under the law to validate the reissue claims. We find helpful the following comments made in 1954 by P. J. Federico, at the time, Examiner-in-Chief, U.S. Patent Office (Fredman himself brought Federico’s essay to our attention.):

“The statute does not define a broadened reissue, or a reissue which enlarges the scope of the claims of the original patent, but the cases indicate that the general rule is that if a claim of a reissue can hold something as an infringement which would not be an infringement of any of the claims of the original patent (not considering the validity of such claims), then the particular claim of the reissue enlarges the scope of the claims of the original patent, and that a claim is broadened if it is broadened in any respect.” Commentary on the New Patent Act, 35 U.S.C.A. pp. 1, 44^-45 (1954) (emphasis added).

Defendant on appeal maintains that his “basic concept of pulling the side rails inwardly and into contact with the box spring in order to rigidify the bed and bedding, could still be accomplished by angle type side rails, even with conventional end portions.” In accordance with this position, Fredman at oral argument asserted that the Harris-Hub rails found by this court not to infringe the original patent would infringe reissue claim 3. We agree that that result would probably follow. But such a result supports Judge Morgan’s determination that reissue claim 3 improperly enlarges or broadens the scope of the original claims and, hence, is invalid. See Rohm & Haas Co. v. Roberts Chemicals, Inc., 245 F.2d 693, 700 (4th Cir. 1957); Federico, supra. The district court did not err in concluding that reissue claims 3, 6, 7 and 8 are invalid.

For the reasons set out hereinbefore, the judgment of the district court is

Affirmed.

GRANT, Senior District Judge

(dissenting in part).

I respectfully dissent in part.

I dissent from the court’s opinion, concluding, as I do, that this court should have reversed the jury’s finding that the accused Hickory Springs device was infringing the Fredman patent. In contrast to a statement in the court’s opinion, this may well be one of those “rare cases in which the appellate court may consider infringement directly”, because the court’s construction of the patent is the main determinant factor on the issue of infringement. Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 431 F.2d 539, 543 (5th Cir. 1970). However, the standard to be applied in reviewing the case before us is not crucial inasmuch as the finding of the jury, in my considered judgment, was “clearly erroneous”.

This court previously reviewed Fred-man’s patent for a “slatless bed” frame and found the 4th claim of the patent (which claim was later re-issued but left essentially unchanged) to be valid. Fredman v. Harris-Hub Company, 442 F.2d 210 (7th Cir. 1971). The device described in the patent is a bed rail assembly which can be attached to a headboard and a footboard to hold a box springs and mattress. Originally, slat-type bed assemblies contained wooden side rails which were inserted into the headboard and footboard, with the wooden slats placed on the rails to support the springs and mattress. Slatless beds were much desired in order to eliminate the cumbersome wooden slats which would often fall down when the bed was moved or jostled. Due to the fact that headboards and footboards were often designed so as to place the rails a greater distance apart than the width of the box springs, the rails had to be made to conform to the width of the springs. The Fredman patent contained a unique rail assembly which envisioned as one piece a wide rail and a deflected end plate which would fit into the headboard and footboard. The court upheld the validity of that patent (under patent claim 4) because it disclosed a device which securely held the springs throughout the length of the bed by clamping them alongside essentially parallel rails and supporting them with a wide horizontal lip on the bottom of the rails. The court found that that patent did not cover the accused Harris-Hub device which had conventional narrow rails being pulled at the center by a tension member (a strap) to hug the springs at that point. Not only did such a device lack the required parallelism, but it supported the springs by clamping them at the center rather than resting them on a wide horizontal lip at the bottom of the rail. Of course, the patented assembly prevented the wide headboards and footboards from pulling the rails away from the springs, but the court denied the claim (patent claim 3) that this was an “anti-spread” device and that it would cover conventional rail systems which had the rails pulled in (bowing) at the center to avoid spreading. What Fredman had patented was a unique method of securely supporting the springs throughout the length of the bed.

In my judgment, the accused device is not infringing the patent as described in Harris-Hub. The accused device merely involves the attachment of a deflected end plate to a conventional rail with a couple of bolts. Certainly, claim 4 of the patent as construed by the court cannot prohibit all use of the cut off end plate. The court noted the pains to which the inventor had gone to create the sophisticated rail design for his assembly and found that his rail design was a crucial feature of the patented invention. Harris-Hub, supra, 442 F.2d at 215. Without utilizing the strengthening effect of the merger of the end plate and rail, the desired parallelism of the patented device simply will not exist. And without utilizing the widened horizontal lip on the rails, the springs will be held by clamping the springs at the center of the bed and by the tension member which joins the bowing rails. The secure uniform fit which this court found so beneficial in Harris-Hub will not be achieved. These observations were borne out in the demonstration of the accused device which took place at oral argument on appeal. I find it inconsistent with the court’s previous interpretation of the patent to say that the accused device infringes. It is for that reason that I am of the opinion that the infringement question can and should be reviewed under the standard suggested in Sterner Lighting, supra. Moreover, even if this court treats the issue as we would any other review of fact finding, a review of all of the evidence and comparison of the patent and the design of the accused device make it convincing to me that the finding of the jury was clearly erroneous. Accordingly, I would hold that the finding of infringement in this action should be reversed.

      . For an explanation of the problems manufacturers encountered in producing slatless bed rails and the background of the Fredman patent, see Fredman v. Harris-Hub Co., 442 F.2d 210 (7th Cir. 1971).

      . 28 U.S.C. §§ 1338(a) and 2201.

      . Upon motion of Hickory Springs, the district court had enjoined Fredman from threatening suit against plaintiffs customers during the pendency of the litigation.

      . Claim 4 of the original Fredman patent read:
      “The structure as defined in claim 3 wherein each end portion of each rail is formed in the configuration of a vertical plate capable of being resiliently laterally deflected, hook members on the ends of each rail for engagement with the end boards, said plates enabling the end portions of the rails to be deflected laterally to engage with pins on the end boards spaced at varying distances apart for connecting the rails to the end boards while maintaining the central portions thereof in constant spatial relation, the spatial relation between the vertical flanges of the side rails being such that the spring assembly will be clamped there-between whereby this spring assembly is locked to the rails to rigidify the entire assembly by retaining the vertical flanges snugly to the spring assembly throughout the major portion of the length of the rails.”

      . The district court correctly interpreted our Harris-Hub decision:
      “The Seventh Circuit decision in Harris-Hub cannot be interpreted as standing for the proposition that all slatless bed rails which bow slightly along their entire length do not infringe claim 4 as a matter of law.
      “It should be pointed out that this court does not view claim 4 of the patent as claiming that the rail design will achieve absolute parallelism without any bowing or flexing of the right-angled portion of the rail at all. The achievement of a high degree of parallelism is the result of the special design.” 330 F.Supp. at 982-983.

      . In their brief, Fredman drily comments that “it is interesting to note that Hickory Springs has not elected” to alter its conventional bed rail so as to gain the benefit of the lower costs that a Hi-Co Slatless kind of end rail entails. (On this point, see Judge Morgan’s discussion at 330 F.Supp. 984.)

      . Hickory Springs complains that throughout the trial Fredman attempted to equate the Hi-Co Slatless rails with Fredman’s commercial device, the Glideaway rail, which Fred-man insists embodies the teaching of claim 4. Defendant’s witnesses did dwell at length on the supposed similarities between the accused rails and the Glideaway. It is well established that a comparison of a patentee’s commercial device with an accused infringing device, although not irrelevant to nor improper evidence in an infringement case, is not the appropriate test for determining infringement. See, e. g., Norvell v. McGraw-Edison Co., 316 F.Supp. 198, 207 (E.D.Wis.1970).
      However, at least one Fredman witness did explain the Hi-Co Slatless in terms of the provisions of claim 4. Hickory Springs at trial had the opportunity to discredit the witness’s analysis and conclusions. And the district judge clearly informed the jury that “It is important for you to realize that the question of infringement is not decided by comparing the patent owner’s commercial structure with the accused device. Rather the test of infringement depends upon patent protections granted to the inventor by the claims of his patent, Claim 4 here.” Later in his instructions, the judge reiterated this important point.

      . “No error in either the admission or the exclusion of evidence ... by the court . is ground for granting a new trial or for setting aside a verdict or for vacating, modifying, or otherwise disturbing a judgment or order, unless refusal to take such action appears to the court inconsistent with substantial justice. The court at every stage of the proceeding must disregard any error or defect in the proceeding which does not affect the substantial rights of the parties.” Rule 61, Fed.R.Civ.P.

      . Section 251 provides in part:
      “Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid by reason of the patentee claiming more or less than he had a right to claim in the patent, the Commissioner shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent . . . . No new matter shall be introduced into the application for reissue.
      “The Commissioner may issue several reissued patents for distinct and separate parts of the thing patented, upon demand of the applicant

        “No reissued patent shall be granted enlarging the scope of the claims of the original patent unless applied for within two years from the grant of the original patent.” (Emphasis added.)
      It is undisputed that the Fredman reissue patent was applied for more than two years after the issuance of the Fredman original patent. The reissue claims, therefore, cannot “enlarg[e] the scope of the claims of the original patent.”

      . Reissue claim 3 states:
      (3.) A slatless bed assembly comprising a pair of side rails, a pair of end boards interconnecting and extending perpendicularly to said rails, a spring assembly supported on and between said rails and between said end boards, each of said rails being of one-piece metallic construction and having a right angular cross-sectional configuration substantially over a major portion of its length and including a horizontal flange extending under the spring assembly and a vertical ñange, and having at each end thereof an end portion which permits the horizontal flanges to be pulled in to underlying relation to the spring assembly, and a tension member interconnecting the central portions of the rails for pulling the rails inwardly from their respective at-rest positions so that said vertical fíanges contact the spring assembly, notwithstanding variations in the width of the end boards, thereby preventing outward defection of the central portions of the rails from their pulled in position with the vertical flanges in contact with the spring assembly and maintaining the horizontal [flange] flanges thereof in underlying relation to the spring assembly throughout a major portion of the length of said rails thereby providing support therefor without the necessity of slats.

      The matter enclosed in brackets appeared in the original patent but is not part of the reissue claim; the matter printed in italics indicates the additions made at reissue.

      . We find Blonder-Tongue laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), cited by Hickory Springs, to be inapplicable. The Court there held that a prior holding of invalidity of a patent could be raised by an alleged infringer in a subsequent case. See also Bourns, Inc. v. Allen-Bradley Co., 480 F.2d 123 (7th Cir. 1973), cert. denied, 414 U.S. 1094, 94 S.Ct. 726, 38 L.Ed.2d 551.


source: Caselaw Access Project

author: PER CURIAM:

license: Public Domain

text:
    HERBERT ROSENTHAL JEWELRY CORPORATION, Plaintiff-Appellant, v. HONORA JEWELRY CO, INC., et al., Defendants-Appellees.
    No. 214, Docket 74-1774.
    United States Court of Appeals, Second Circuit.
    Argued Nov. 20, 1974.
    Decided Dec. 20, 1974.
    Charles Sonnenreich, New York City, for plaintiff-appellant.
    Daniel A. Pollack, New York City (Martin I. Kaminsky, Neil D. Thompson, Pollack & Singer, New York City, of counsel), for defendants-appellees.
    Before SMITH, HAYS and MANSFIELD, Circuit Judges.
   PER CURIAM:

The sole issue on this appeal is whether plaintiff-appellant’s copyright of a design for a gold jeweled pin in the shape of a turtle is infringed by a similar-appearing pin made and sold by defendants. We agree with the district court’s holding that it was not infringed and affirm its order granting summary judgment dismissing the complaint which sought damages, an accounting, injunctive and other relief.

On December 4, 1967, appellant, a designer and manufacturer of jewelry, acting in apparent compliance with the copyright laws, 17 U.S.C. § 1, et seq., secured the issuance by the Register of Copyrights of a copyright of a design of its gold pin, which is in the shape of a turtle and bears an oval cluster of round precious stones on the back shell, or carapace, of the turtle. Some time in 1971 defendant Honora Jewelry Co., Inc. (“Honora”), which is controlled by the two other defendants, began producing and selling a gold turtle pin with jewels in an oval arrangement on its back, similar in appearance to appellant’s pin. In 1973 appellant brought the present suit for infringement.

Appellant concedes that Honora’s pin is not an exact duplicate of its piece and that appellant does not have any evidence of direct copying by defendants. Defendants, while admitting that they knew of appellant’s pin and, indeed, had in 1968 produced an exact copy which led to the issuance of a decree enjoining its sale as an infringement, see Herbert Rosenthal Jewelry Corp. v. Grossbardt, 428 F.2d 551 (2d Cir. 1970), contend that the alleged infringing pin in the present case was independently created and is sufficiently different from appellant’s pin to preclude the possibility of copyright infringement.

A comparison of the two pins, which were submitted to us upon oral argument and which are shown in photographic exhibits, discloses that, although there are numerous differences between the two, which have been detailed by the district court, each conforms generally to the shape of a turtle as that reptile appears in nature, with upper shell, legs, protruding head and tail. Each also bears an oval cluster of jewels on its back.

The threshold question is what characteristics of appellant’s design have gained copyright protection. Since all turtles are created more or less along the same lines, appellant cannot, by obtaining a copyright upon one design of a turtle pin, exclude all others from manufacturing gold turtle pins on the ground that they are substantially similar in appearance. Clearly, a copyright does not offer protection of such breadth. “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea — not the idea itself,” Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954). In Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738 (9th Cir. 1971), a case involving a claimed infringement of a jeweled bee pin produced by these same defendants, the court said:

“We think the production of jeweled bee pins is a larger private preserve than Congress intended to be set aside in the public market without a patent. A jeweled bee pin is therefore an ‘idea’ that defendants were free to copy.” (446 F.2d at 742).

Appellant contends that, even assuming the foregoing limitations upon the scope of protection offered by its copyright, the protection nevertheless extends to “the essence” of its design, which it describes as consisting principally of the utilization of an oval shaped cluster of 10 jewels on the back of its turtle.

The test of copyright infringement is whether the similarity between the products would lead “the average lay observer . . . [to] recognize the alleged copy as having been appropriated from the copyrighted work,” Ideal Toy Corp. v. Fab-Lu, Ltd., 360 F.2d 1021, 1022 (2d Cir. 1966); Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487 (2d Cir. 1960). Applying this test here, the district court concluded that the average layman would not find sufficient similarity in the parties’ particular expressions of the idea of a jeweled turtle pin to warrant a finding of infringement. We agree.

Going beyond the initial observation that both pins are turtles and both are jeweled, we believe the average layman would indeed detect numerous differences, the existence, of which are conceded by appellant’s President, which tend to eliminate any substantial similarity of protected expression. The idea of placing jewels on the back of the cara-r pace is rather obvious. Although the oval arrangement of 10 gems might at first blush appear to possess individuality of expression, further observation discloses that it merely conforms to the normal shape of the turtle’s back and the pattern of its vertebrae segments, of which there are in nature not less than 10 nor more than 12. Accordingly, there being no dispute as to material factual issues, we agree with the district court’s conclusion that there was no copyright infringement and affirm its order granting summary judgment dismissing appellant’s complaint.

      . The differences between the two pins were described by Judge Brieant as follows:
      “He [appellant’s President] testified that defendant’s pin, which he claims infringes, was lighter, that it was not made of nugget gold, but a reasonable imitation thereof, that the turtle’s tail on Rosenthal’s pin was straight, while the tail on the turtle comprising defendant’s pin was somewhat curved. Plaintiff’s has jewelry stones in the eyes, and the defendant’s pin does not. Plaintiff’s pin has flat, or paddle type feet, while defendant’s pin indicates toe differentiations. Plaintiff’s pin has a gold base holding it together, and defendant’s pin has no such base. Plaintiff’s pin has a matted finish on the head of the turtle, while defendant’s turtle head has a lined finish, but Mr. Rosenthal asserted that this difference in the finish was not observable to the naked eye.
      “Plaintiff’s turtle head comes out straight from the body, while the head on defendant’s pin protrudes from the shell of the turtle at an angle from the body. There are twenty-seven little nubs or sections in the shell of plaintiff’s, while defendant’s has only ten rounded sections with straight lines. The body of plaintiff’s pin consists of two pieces, with the top soldered onto the bottom frame, while defendant’s appears to have been manufactured in a single piece. Defendant’s pin is half the thickness or depth of plaintiffs pin (8 millimeters vs. 4 millimeters). Plaintiffs pin has a line for the mouth of the turtle, and defendant’s pin has no mouth on the turtle.”


author: BOREMAN, Senior Circuit Judge:

text:
    Lynward James DAYE, Jr., Appellant, v. Lee V. BOUNDS, Commissioner, et al., Appellees.
    No. 74-1374.
    United States Court of Appeals, Fourth Circuit.
    Argued Oct. 1, 1974.
    Decided Jan. 16, 1975.
    Certiorari Denied June 2, 1975.
    See 95 S.Ct. 2404.

      Frank R. Edrington, II, Third-year law student, and George K. Walker, Associate Professor of Law, Wake Forest University, Winston-Salem, N. C. [court-appointed counsel] for appellant.
    Jacob L. Safron, Asst. Atty. Gen. of N. C. (Robert Morgan, Atty. Gen. of N. C., on brief) for appellees.
    Before BOREMAN and BRYAN, Senior Circuit Judges, and WARRINER, District Judge.
   BOREMAN, Senior Circuit Judge:

This is a civil action, brought in forma pauperis, in which the appellant (hereafter Daye or plaintiff) seeks $10,-000 in punitive and compensatory damages against the State of North Carolina and certain named North Carolina prison officials for an alleged denial of his civil rights under 42 U.S.C. § 1983. The defendants moved to dismiss the action and the district court, by memorandum opinion and order of February 7, 1972, dismissed the complaint. On appeal, this court, by memorandum decision of February 13, 1973, vacated the district court’s order and remanded for factual investigation of the allegations in the complaint, indicating that certain allegations, if true, would state a cause of action.

On May 15, 1973, the district court held an evidentiary hearing pursuant-to our remand order. The district court again found the plaintiff’s contentions to be without merit and on August 15, 1973, ordered judgment for the defendants. While the motion of the defendants, which the district court sustained, was denominated a motion to dismiss, all the parties proceeded on the basis of a motion for summary judgment at the hearing on remand. They submitted documentary records from penal institutions, affidavits, and a transcribed tape recording, as well as live testimony. For all practical purposes, then, the motion was heard and disposed of as a motion for summary judgment and we treat the order disposing of it as the entry of summary judgment. So regarded, the judgment of the district court is affirmed.

There is yet another reason, to be explicated fully in this and following paragraphs, for sustaining the district court’s disposition of this case. On October 4, 1973, the court concluded and stated that this action was frivolous, without merit, and not prosecuted in good faith, while denying leave to plaintiff to appeal the decision of August 15, in forma pauperis. However, we granted plaintiff leave to proceed on appeal a second time in for-ma pauperis for the limited purpose of determining whether the district court had complied fully with our order of remand. Our review of the proceedings below convinces us that the factual investigation undertaken on remand complies with our previous order, and supports the conclusion, stated on October 4, 1973, that this case is frivolous.

Title 28 U.S.C. § 1915(d) provides that a district court may dismiss an action which has proceeded in forma pauperis “if satisfied that the action is frivolous or malicious.” In applying that statute, especially broad discretion has been vested in federal district courts to deny state prisoners the privilege of proceeding in forma pauperis in civil actions against officials of the institution in which they are incarcerated. Shobe v. California, 362 F.2d 545, 546 (9 Cir.), cert. denied, 385 U.S. 887, 87 S.Ct. 185, 17 L.Ed.2d 115 (1966); Conway v. Fugge, 439 F.2d 1397 (9 Cir. 1971). Federal courts must be diligent in acting to prevent state prisoners from calling upon the financial support of the federal government to prosecute frivolous civil suits intended to harass state prison officials.

In exercising its discretion a district court may properly consider court records for the purpose of determining whether an action brought in forma pauperis must be dismissed as frivolous. Conway v. Oliver, 429 F.2d 1307, 1308 (9 Cir. 1970). In the instant case, the district court, in its initial order of dismissal, specifically referred to the record of Daye v. Department of Corrections, No. C — 242—G—70 (M.D.N.C. Sept. 2, 1971), aff’d mem., No. 72-2019 (4 Cir. Oct. 11, 1973), and Daye v. Rice, No. 2237-Civil (E.D.N.C. Oct. 19, 1969), both of which contained allegations virtually identical to those presented in this action and both of which were dismissed as lacking in merit. The court in Daye v. Rice concluded that “[pjlaintiff has clearly viewed the legal process as simply a device or plaything to be used as an instrument for his own entertainment and not as a means of redressing legitimate grievances . . . .” Upon consideration of these two dismissals, the district court concluded that the complaint in the case at bar appeared to be “frivolous and harassing.” Thus, the court utilized official records of past actions brought by this plaintiff in determining .that the allegations were without merit when it first considered the instant case.

We remanded that initial disposition because we were of the opinion that the allegations if proved would state a cause of action and that a summary dismissal was inappropriate. At that time it was unclear from the record whether the examination of the allegations by the district court was sufficient to support the finding that the case was frivolous. The district court held the evidentiary hearing as we directed for the purpose of determining whether the allegations in the complaint had a factual basis or were merely a continuation of the series of meritless allegations presented in the previous actions filed by Daye.

On remand, the district court examined those allegations in some detail. The evidence adduced reveals that Daye’s transfer from Caswell Prison to Central Prison was the result of Daye’s own request to be sent there for medical treatment and not, as alleged, to punish him for his legal writing. Daye also alleged that his request for transfer from Central Prison after he completed his medical treatment was denied to punish him for his writ writing. The evidence adduced at the hearing, however, convincingly demonstrates that Daye was retained at Central Prison because he had assaulted a fellow inmate at Caswell Prison with a deadly wespon and it was deemed necessary to hold him at Central Prison, a maximum security facility. In view of the flood of legal correspondence conducted by the plaintiff with this court as well as others, his allegation that he was denied use of the mails is patently frivolous. Williams v. Field, 394 F.2d 329, 332 (9 Cir. 1968). These facts, revealed in the proceedings upon remand, when viewed in the light of Daye’s prior meritless suits, provide the necessary support for the district court’s initial conclusion that these allegations were merely a continuation of the series of meritless charges presented to federal courts by this plaintiff.

We cannot permit Daye or any other state prisoner to engage in a ceaseless barrage of frivolous civil suits at public expense based upon allegations that have been repeatedly found merit-less. The district court has examined the merits and has now set forth ample reason for its finding that this case is frivolous. Under these circumstances dismissal pursuant to 28 U.S.C. § 1915(d) is warranted. Duhart v. Carlson, 469 F.2d 471, 473 (10 Cir. 1972). Such dismissal is “in accordance with the public policy embodied in the statute, viz. that, while persons who are unable to pay costs or give security therefor should be allowed to prosecute or defend actions for the protection of their rights without being required to pay costs or give security, they should not be allowed under the cover of the statute to abuse the process of the court by prosecuting suits which are frivolous or malicious.” Fletcher v. Young, 222 F.2d 222, 224 (4 Cir. 1955).

Accordingly, the order of the district court terminating this action is affirmed.

Affirmed.

      . 42 U.S.C. § 1983 provides:
      “Every person who, under color of any statute, ordinance, regulation, custom, or usage, of any State or Territory, subjects, or causes to be subjected, any citizen of the United States or other person within the jurisdiction thereof to the deprivation of any rights, privileges, or immunities secured by the Constitution and laws, shall be liable to the party injured in an action at law, suit in equity, or other proper proceeding for redress.”
      We are in agreement with the conclusion of the district court that the State of North Carolina is not a “person” within the meaning of 42 U.S.C. § 1983. Moye v. Raleigh, 503 F.2d 631 (4 Cir. 1974). Therefore, the State should have been dismissed as a defendant. However, this conclusion is not material here in view of the disposition on other grounds assigned in this opinion.

      . 28 U.S.C. § 1915(d) provides:
      “The court may request an attorney to represent any such person unable to employ counsel and may dismiss the case if the allegation of poverty is untrue, or if satisfied that the action is frivolous or malicious." (Emphasis supplied.)


author: SWYGERT, Chief Judge.

text:
    The PROCTER AND GAMBLE COMPANY, an Ohio Corporation, and FMC Corporation, a Delaware Corporation, Plaintiffs-Appellees, v. The CITY OF CHICAGO, a Municipal Corporation of Illinois, Defendant-Appellant.
    No. 73-1650.
    United States Court of Appeals, Seventh Circuit.
    Argued Sept. 9, 1974.
    Decided Jan. 15, 1975.
    Certiorari Denied May 19, 1975.
    See 95 S.Ct. 1980.

      Richard L. Curry, Corp. Counsel, and Edmund Hatfield, Asst. Corp. Counsel, Chicago, Ill., for defendant-appellant.
    James E. Hastings, Chicago, Ill., Alan S. Ward, Allan J. Topol, Washington, D. C., for plaintiffs-appellees.
    Before SWYGERT, Chief Judge, and FAIRCHILD and CUMMINGS, Circuit Judges.
   SWYGERT, Chief Judge.

This appeal presents the question of whether an ordinance of the City of Chicago that bans the use of detergents containing phosphates is unconstitutional on the ground that it results in an impermissible interference with interstate commerce. The district court decided that the ordinance is unconstitutional. We disagree.

The ordinance was adopted by the City Council after its Committee on Environmental Control had held public meetings for three days. The measure provided that the sale of detergents containing any phosphorous after June 30, 1972 constituted a criminal offense. Most detergents sold in this country contain phosphates which are compounds containing the element phosphorous.

The present action was brought seeking declaratory and injunctive relief. Plaintiff-appellee Procter and Gamble Company is a manufacturer of phosphate detergents. Plaintiff-appellee FMC Corporation processes and manufacturers sodium tripolyphosphate and other phosphate products for use in detergents. Three other plaintiffs were dismissed for failure to prove the jurisdictional amount and have not appealed. The second amended complaint alleged only a violation of the Commerce Clause of the Constitution (Article I, Section 8, Clause 3) and the case was tried on that issue.

A substantial amount of evidence, including exhaustive expert scientific and technical testimony by many witnesses, was presented both in court and by depositions. As the district court observed, this evidence is much too extensive to be set out in any detail. We think we need present only a broad outline of the more relevant evidence.

The plaintiffs unquestionably showed that the ordinance has had an adverse effect upon their businesses which admittedly are national in scope. Procter and Gamble was unable to sell any detergents in the Chicago area for five months after June 30, 1972 and lost $4,700,000 in sales as a result. FMC lost $500,000 worth of sales of phosphates as a result of the ordinance. Further, whereas before the ordinance Procter’s Chicago plant was able to supply over 96 percent, of the requirements for the six-state “Chicago Plant Area,” after the ordinance became effective the plant could supply only 51 percent, which necessitated shipments to this area from other Procter plants in Louisiana, Missouri, and Kansas. The result was the establishment of a different and, from the company’s viewpoint, a less efficient interstate system of distribution of its products.

Evidence was also introduced concerning the warehousing practices of the retail grocery chains serving Chicago and the surrounding area. These chains, which include chains of independents, warehouse their products on an area-wide basis as opposed to a city-wide basis. Goods are purchased from the manufacturer and stored in warehouses for eventual distribution to the individual retail stores. In the Chicago area, the same warehouses also service stores in northern Illinois, northern Indiana, southern Wisconsin, and Michigan. At the warehouses, each product is stored in its own particular area called a slot. There was testimony that these warehouses will not “double slot” a product and thus refused to carry both phosphate and non-phosphate versions of the same product. The explanation is that there is not sufficient space in the warehouses and there would be the possibility of a violation of the ordinance if phosphate formulas were accidently shipped to Chicago stores. Of the seventeen major Chicago area customers of Procter and Gamble, fifteen chose to carry only non-phosphate detergents. The result has been that consumers in areas of Illinois or the other adjacent states where the sale of phosphate detergents is legal can purchase only non-phosphate formulas of the major detergents from stores which are part of these fifteen chains. Thus, the Chicago ordinance affected Procter and Gamble’s ability to sell its phosphate detergents in other states.

The bulk of the evidence dealt with the nature and effect of phosphates and particularly their effect on the water moving in the Illinois Waterway. Phosphates are not a problem in and of themselves. They are not harmful to most humans and are even added to water by some communities for the purpose of softening. The aspect of phosphates that causes concern is their nutritive contribution to the eutrophication of rivers or lakes. Eutrophication is a process of aging, whereby a body of water becomes over-nourished in nutrient elements such that there occurs an extensive growth of green plants or nuisance algae. Nuisance algae can result in an unpleasant odor and a bad taste in drinking water. It is the elimination and prevention of these algae that is desirable. Some controversy exists, however, concerning the relationship of phosphorous and eutrophication. An abundance of phosphorous does not always result in increased eutrophication. It is a more complex process and its exact nature is somewhat in dispute. Other nutrients including nitrogen and carbon are needed for eutrophication. So far as the nutrient aspect of eutrophication is concerned the important inquiry centers on the idea of the “limiting nutrient” or “limiting factor.” The “limiting nutrient” is that nutrient that is in the shortest supply relative to the need for it for plant growth. It is the factor which limits any further aquatic growth. The district court found that phosphorous can be a “limiting factor” for nuisance algae only at .02 milligrams per liter or less. There is some evidence, however, that phosphorous is the nutrient that is most easily controlled.

The ordinance’s most direct effect is on the Illinois Waterway because the City’s sewage effluent flows into it. This Waterway, which includes the Illinois River, is a water source for some communities, but not for Chicago. The Waterway has a very high percentage of phosphorous. The district court determined that before the passage of the ordinance the amount of phosphorous present in this Waterway was at least twenty-five times as much as is necessary to sustain nuisance algae. Still, there is a question of whether there is any nuisance algae problem in the Illinois River. Although the City introduced photographs showing the presence of such algae, the district court concluded “that there was no significant amount of nuisance algae in the Illinois River.” Explanations offered for this lack of growth included the excessive turbidity of the river which prevents needed sunlight, periodic flushing, and possibly some undefined trace elements which inhibit such growth. Also, the district court found that the elimination of Chicago phosphates alone would not result in reaching the “limiting factor” level, though a 66 percent reduction did result in at least part of the Waterway after the ordinance had been in effect.

Finally, there is the evidence concerning Lake Michigan which is the source of Chicago’s water supply. The danger of nuisance algae is more pronounced with regard to Lake Michigan because it does not have the flushing quality of a river. Moreover, the phosphorous concentration is at about the “limiting factor” of .02 milligrams per liter. But unlike some of the other communities along the lake, Chicago’s sewage does not normally flow into the lake; only during excessively heavy rainstorms is one of two rivers reversed so that sewage flows into Lake Michigan. The district court determined that such reversals occurred only four times within a ten year period, though there was also testimony that the frequency of such reversals is increasing. As to the amount of phosphates entering the lake during a year in which a back-flow resulted, the conclusion of the district court was that detergents contributed only 250 tons or about three percent of the total entering the lake each year.

Based on this evidence the trial court determined that the phosphate ban was unconstitutional. It decided that the ordinance resulted in increased costs of manufacture and distribution and burdened interstate commerce. Once the plaintiffs had proven this much the court held that the City was then required to justify the ordinance by showing some need to protect the public health, safety, or welfare. Though it found that the “ordinance was enacted in good faith and for laudatory objectives,” the justifications offered for the ordinance were not sufficient to outweigh its interference with interstate commerce. The court held that the City did have the power to protect the water quality for persons living downstream, but the ordinance by itself would not have any beneficial effect on the Illinois Waterway. The actual effect on Lake Michigan was apparently considered too minimal to support the legislation; the theory that the City could enact the ordinance in order to influence other communities to stop dischaiging phosphates into Lake Michigan was rejected. Though the court conceded that such an ordinance might be sustained in some other jurisdiction where the water supply situation is different, it concluded that Chicago could only enact the ordinance on a standby basis to become effective only when other controls have brought the phosphorous content of the Illinois Waterway down to the “limiting level.”

I

It is difficult to discern the precise test that should be used to determine when a state or local legislative enactment’s effect on an area of interstate commerce that has not been preempted by Congressional legislation is violative of the Commerce Clause of the Constitution. It is clear that we must first decide whether there is such an effect and what it is, for if we find no effect our inquiry need not progress. However, if some effect is found then we must proceed to consider whether the legislative body “has acted within its province, and whether the means of regulation chosen are reasonably adapted to the end sought.” The more difficult question is whether our analysis should encompass an additional step if the legislation is found to be a reasonable means of achieving a legitimate end. The predominant test utilized by the Supreme Court appears to require that the burden imposed on interstate commerce be balanced against the local benefit in order to determine the ultimate question of constitutionality. See Bibb v. Navajo Freight Lines, Inc., 359 U.S. 520, 79 S.Ct. 962, 3 L.Ed.2d 1003 (1959), and Southern Pacific Co. v. Arizona, 325 U.S. 761, 65 S.Ct. 1515, 89 L.Ed. 1915 (1945). The Court’s most recent formulation is that contained in Pike v. Bruce Church, Inc., 397 U.S. 137, 142, 90 S.Ct. 844, 847, 25 L.Ed.2d 174 (1970):

Where the statute regulates evenhandedly to effectuate a legitimate local public interest, and its effects on interstate commerce are only incidental, it will be upheld unless the burden imposed on such commerce is clearly excessive in relation to the putative local benefits.

There is some support, though, for the proposition that once it is determined that the legislation is a reasonable means of achieving a nondiscriminatory, legitimate goal it should be deemed constitutional and any further weighing process, need not occur. One commentator has suggested that this “third stage” balancing process is undesirable because it can lead to the usurpation of the legislative role. Moreover, it is argued that in fact the Supreme Court has perhaps eliminated this final balancing step by its opinion in Brotherhood of Locomotive Firemen & Enginemen v. Chicago, Rock Island & Pacific Railroad Co., 393 U.S. 129, 89 S.Ct. 323, 21 L.Ed.2d 289 (1968). Brotherhood involved the validity of the Arkansas “full-crew” laws for railroads. The district court had analyzed conflicting evidence concerning the safety value of such laws and determined that at best they provided for a small increment in safety not worth the cost. This was found not to outweigh the burden on interstate commerce. In reversing, the Supreme Court indicated that the analysis endorsed by the lower court was incorrect:

We think it plain that in striking down the full-crew laws on this basis, the District Court indulged in a legislative judgment wholly beyond its limited authority to review state legislation under the Commerce Clause.

The matter was one properly left for the legislature because the evidence “leaves little room for doubt that the question of safety in the circumstances of this case is essentially a matter of public policy, and public policy can, under our constitutional system, be fixed only by the people acting through their elected representatives.”

The Brotherhood case has been relied upon in cases similar to the one at bar. In discussing the Commerce Clause implications of an environmental statute a state court commented:

The language of Pike v. Bruce Church, Inc., supra, does not mechanically compel a weighing process in every case. The language is instructive in appropriate cases rather than mandatory in all cases. . . The United States Supreme Court recognized the inappropriateness of a weighing process in cases of non-comparable benefit and injury in Firemen v. Chicago, R. I. & P. R. Co.....

Indeed, one court confronted with a challenge to the same type of legislation before us adopted the Brotherhood opinion as the controlling case.

Our case, we believe, has elements that require a compromise between Brotherhood and Pike. Like Brotherhood there is conflicting evidence concerning the value of this legislation. Here the conflict relates more to the question of whether the ordinance will result in preventing nuisance algae, as opposed to the question of how much benefit there is from the removal or prevention of such algae. The latter is the type of “public policy” question that is directly addressed in Brotherhood. The district court did not and should not have evaluated the benefits to be derived from the improved water quality associated with the elimination of nuisance algae. It was proper, however, for the court to consider the “factual” question of whether the ordinance has any relationship to the elimination of nuisance algae. The question that we are faced with is how much weight, if any, should be accorded the legislative body’s determination that the means are reasonably related to achieving the end. In the present case we think that it is at this point that the Pike balancing stage occurs. The district court addressed this issue as if it was an ordinary factual dispute over a technical matter that should be decided without the benefit of a presumption. It is our view, however, that if the burden on interstate commerce is slight, and the area of legislation is one that is properly of local concern, the means chosen to accomplish this end should be deemed reasonably effective unless the party attacking the legislation demonstrates the contrary by clear and convincing proof. If it is determined that this presumption should be applied, no further balancing need be undertaken. The end has already been deemed legitimate and the burden on interstate commerce slight. If the legislation is a reasonable means to that end it is constitutional.

II

Having in mind the framework of our analysis, we begin by considering what, if any, burden was imposed on interstate commerce by this ordinance. The first major argument raised by the plaintiffs, and apparently accepted by the district court, is that the ordinance burdened interstate commerce by impairing the normal operation of companies having interstate sales and requiring these companies to create new, and less direct, shipping routes. This argument is based on the fact that Procter and Gamble’s plant in the Chicago area could not adequately supply its six-state area with detergents because the plant had to manufacture two lines of detergent products and thus reduce its capacity. The result was that products had to be shipped to some of these states from plants which happened to be at different, and often further, locations. The principal cases relied on to support this theory involve interstate carriers' whose ability to efficiently transport other’s goods through particular states was permanently impaired. With our case, we are not confronted with a situation in which legislation has reduced the effectiveness of a means of transportation itself. In this context the ordinance is not a burden on interstate commerce, but is merely a “burden” on a company which happens to have interstate distribution facilities. The effect of the ordinance is that the particular interstate systems of distribution used by Procter and Gamble and other detergent companies before the passage of the ordinance can no longer be used. This is because of the freely chosen geographical locations of their various plants, not because of the requirements of this ordinance. There is no impairment of the ultimate ability to transport in interstate commerce in the most efficient and economical manner possible. While this factor might necessitate a change in certain production facilities, it does not rise to the level of an unconstitutional burden on interstate commerce.

Plaintiffs also argue that the ordinance is a burden on interstate commerce because there is a “potential for conflicting legislation.” Other jurisdictions, including some within the Chicago marketing area, have enacted phosphate detergent legislation, and it is urged that such local legislation might conflict with each other so as to inhibit the uniformity necessary for the national manufacture and distribution of detergents. It is claimed that Milwaukee has an ordinance that not only restricts phosphates, but also prohibits highly alkaline detergents which have been used as substitutes for phosphate detergents. But there is no evidence in the record to prove that any phosphate substitutes used by the appellees in Chicago violate Milwaukee’s ordinance. The Supreme Court has indicated that in a case involving environmental legislation it is actual conflict, not potential conflict, that is relevant. Moreover, once again the plaintiffs have drawn the main support for their argument from the cases involving interstate carriers. The importance of uniformity is not as great in the present type of case in terms of interstate commerce. As Judge Stevens of this circuit has stated:

The primary burden which is placed upon the petitioner Colgate involves nothing more than the changing of production facilities at the point of origin. There is no interference mandated by the County Law with transit across the state lines .
[W]e think it certainly is true where you have a carrier who necessarily goes' from state to state carrying the goods of third parties there is a higher interest in uniformity throughout the nation, but with réspect to a commercial enterprise such as a manufacturer of detergents there is not the same national interest in uniformity throughout the country.

No burden has been shown based on this theory.

Another argument presented by plaintiffs is that the ordinance burdens interstate commerce because it amounts to an embargo on a safe, useful, and unique product of commerce without any corresponding local benefit. We find no merit to this argument. In essence, it is not a Commerce Clause argument but one based on substantive due process, an issue not before us. The only Commerce Clause cases cited for this proposition involve situations in which a state has attempted to achieve a local purpose by discriminating against out-of-state producers or manufacturers. There is no discrimination in this case. The ordinance does not require that detergents be manufactured in Chicago or Illinois and does not benefit manufacturers who are located there.

There is one theory of plaintiffs, however, in which we find some merit. This ordinance does have an extraterritorial effect because of the four-state warehouse marketing system employed by the major wholesale purchasers of detergents. Since a substantial number of the retail grocery stores within a 150 mile radius of Chicago are supplied from seventeen grocery warehouses in or near Chicago, the refusal of these warehouses to “double slot” detergents means that many people outside Chicago cannot buy phosphate detergents even though they wish to use them. Potential purchasers in other states are prevented from obtaining a detergent formula that manufacturers may legally sell in those states. Though the ordinance may not directly dictate such a result, one effect is that the free flow in commerce of a particular product is disrupted. Such a disruption must be deemed a burden on interstate commerce.

Still, there is the question of how substantial is this burden. It is important to realize that this burden is one that was not intended by the City Council, even though that factor is not determinative. The effect is an incidental one due to the nature of the grocery warehouse system over which the City Council has no control.

Moreover, all the potential purchasers of phosphate detergents in this area outside Chicago are not affected by the ordinance. Other jurisdictions in the Chicago marketing zone also have limitations on phosphate detergents. Purchasers in these areas are restricted by their own local legislation. And in the areas without such legislation phosphate detergents assumedly will be available at those stores which are not part of these chains. Two of the seventeen chains chose to carry phosphate formula detergents, so such products will also be available at those stores. While there might be people who cannot buy phosphate detergents in their own towns, the foregoing factors tend to lessen the burden. Indeed, there is the possibility that manufacturers might be able to “drop-ship” directly from the plant to stores in some areas. Although this might not be the customary or most economical procedure, Procter and Gamble distributes its products in this manner for about one percent of its total business.

We are troubled by the contention that these large warehouses absolutely refuse to stock two formulas of the same detergent. Procter and Gamble and the other two large detergent manufacturers are huge companies that could exert at least some “leverage” on these warehouses. Admittedly, there is testimony that Procter and Gamble has tried to convince them to handle both and has had very limited success. But we wonder whether such leverage would not increase when this lawsuit is not a consideration. One would think that the grocery chains would have an incentive to carry both types of detergents in order to compete with those stores selling what Procter and Gamble claims is the “superior” detergent formula.

We are not totally persuaded by the grocery chains’ explanation of why only one type of detergent can be stocked. The major reason presented is lack of space. But it would seem that the total number of boxes of detergents sold would be about the same whether two formulations or only one are offered. The aggregate supply of cartons kept in the warehouse would not increase unless it is necessary to maintain the same amount of product in stock even though less of it is being sold. It is not clear from the record why more actual space in the warehouse would be necessary if the same number of cartons is separated into two types rather than one. Possibly, the explanation is due to the limited availability of warehouse slots which, in at least some warehouses, are metal racks. But again the record does not show why the slots that are used for detergents cannot be split into two smaller slots that could accommodate the stock necessary for each type of detergent, assuming the total number of boxes in stock has not changed.

Nor can we unquestionably accept the contention that carrying both types of detergents would result in a great risk of accidental shipments to and sale of phosphate detergents by stores within Chicago in violation of the ordinance. . If this were the only concern we are sure that some procedure could be arranged to minimize this possibility. For instance, the cartons that contain boxes of phosphate could be made a different col- or so they would be easily distinguishable. Certainly under such a procedure the employees of the individual stores could recognize a mistake and not sell the illegal detergent.

We recognize that the Chicago ordinance combined with the grocery warehousing practice can result in interfering with the full distribution of phosphate detergents to areas outside of Chicago. But many of these consumers would probably have access to such products either at other stores or at chain stores that might receive drop-shipments. Our analysis has indicated that if there was sufficient demand it might even be possible that all the large warehouses would carry phosphate detergents. Overall, we conclude that the ordinance’s effect on full access to certain products by consumers in parts of other states can only be classified as a slight burden on interstate commerce.

Ill

Having determined that the ordinance does impose some burden on interstate commerce, we are required to consider whether the interest sought to be served by the legislation is a legitimate local concern. As with most cases of this type, the goal of this legislation can be stated in its ultimate terms — protection of health and welfare. For purposes of our analysis, we believe that it would be more useful to express the objective simply as the prevention and elimination of nuisance algae. This is an environmental objective toward which local legislation may properly be aimed. In broad terms, this legislation is part of the overall attack on the problem of water pollution. Though there is federal intervention in this general area, this does not prevent local attempts to deal with one of our most immediate and difficult problems. As the Supreme Court has said in regard to a city’s power to enact legislation designed to curb pollution:

In the exercise of that power, the states and their instrumentalities may act, in many areas of interstate commerce and maritime activities, concurrently with the federal government.

Indeed, Congress appears to have specifically encouraged such local legislation. The Federal Water Pollution Control Amendments of 1972 provide:

Except as expressly provided in this chapter, nothing in this chapter shall (1) preclude or deny the right of any State or political subdivision thereof or interstate agency to adopt or enforce (A) any standard or limitation respecting discharges of pollutants, or (B) any requirements respecting control or abatement of pollution;

Moreover, as noted earlier, there are no discriminatory aspects associated with this purpose that might invalidate it. The objective is legitimately local and non-discriminatory which means that it may properly be the end toward which local legislation is addressed.

Finally, we see no problem in the fact that the ordinance is aimed, at least in part, toward nuisance algae downstream from Chicago. We agree with the conclusion of the district court that the City can be legitimately concerned with preventing any damage to its neighbors caused by Chicago’s actions.

IV

We are now at the stage where we must determine whether the ordinance is a reasonable means of reaching the end desired. We have previously concluded that the burden on interstate commerce that results from this ordinance is slight and the objective of this legislation is legitimate. We hold that the burden is so slight compared to the important and properly local objective that the presumption we discussed earlier should apply. We will accept the City Council’s determination that this phosphate ban is a reasonable means of achieving the elimination and prevention of nuisance algae unless we find that the plaintiffs have presented clear and convincing proof to the contrary.

We discuss first the Illinois Waterway because this is the heart of the factual controversy. An initial consideration is whether there is presently a nuisance algae problem in the Illinois River. The City did introduce some testimony and photographs indicating the existence of excessive algae blooms in the Illinois River. But the plaintiffs presented credible evidence to the effect that presently there is,no nuisance algae growth in the Waterway. The district court concluded that there was no “significant” growth. We can at least assume that there is some nuisance algae and the possibility of more in the future, since there was no convincing proof that such an increase will not occur. The testimony that the excessive turbidity and flushing quality of the river prevent algae blooms is far from conclusive. Indeed there are apparently some nuisance algae at present. The inhibitory factor might be a nutrient other than phosphorous that will greatly increase in concentration. The prospect for the future is unknown.

The crux of the matter is actually the question of whether the phosphorous level in the Waterway will ever be relevant to the control or removal of nuisance algae. We do not believe that the plaintiffs have met their burden of showing convincingly that limiting the quantity of phosphorous can never be the key to the problem. Admittedly, the evidence seems clear that phosphorous is not the “limiting factor” in the Waterway at this time. Moreover, even with the elimination of detergent phosphates from the Chicago sewage effluent, the phosphorous level would not reach the limiting point. The Chicago ordinance, by itself, would have no immediate effect on the Waterway. This does not indicate, however, that the ordinance is not a means of dealing with nuisance algae. The plaintiffs introduced evidence to show that the amount of phosphorous in the Illinois River could greatly increase without increasing nuisance algae. Even if this is true, it only proves that phosphorous is presently not the “limiting nutrient.” It does not prove that phosphorous might not be the “limiting nutrient” at some point in time. Indeed, Chicago’s ordinance appears to be a significant first step toward that goal. We do not agree with the district court that it can only be enacted on a stand-by basis. If this were the law, all programs aimed at eliminating phosphorous from the Waterway would have to be enacted at the same time. We can assume that other communities might follow Chicago’s lead and prevent phosphate detergents. Nor do we think that there was clear evidence that if all phosphorous from detergents were eliminated there would still be other uncontrollable sources that would keep the level above the limiting point. There was testimony that indicated that agricultural run-off of phosphorous can be controlled. For Commerce Clause purposes the City Council was justified in believing that eventually its phosphate ban, in conjunction with other actions, would result in eliminating and preventing nuisance algae in the Illinois Waterway.

The effectiveness of the legislation is also shown, to some extent, by the evidence concerning Lake Michigan. There is no question that both eutrophication and phosphorous are serious problems in regard to Lake Michigan. Though Chicago might contribute relatively little phosphorous to the lake, the phosphorous level is at such a precarious point that even this minimal amount takes on added importance. Further, contrary to the district court’s view, we find that Chicago has a legitimate interest in banning phosphate detergents as an example for other communities presently releasing their sewage into Lake Michigan. Chicago is attempting to convince these communities to control their phosphate discharge into the lake. Chicago could reasonably decide that it would be aided in this endeavor if it could show these other jurisdictions that Chicago is willing to endure whatever hardships may be associated with the loss of phosphate detergents. Given the other aspects of the legislation that support its presumption of effectiveness, we need not reach the question of whether this hortatory element by itself could support the conclusion that the ordinance provides a means sufficiently effective to be declared constitutional. Based on all the evidence the presumption afforded the City Council’s judgment has not been overcome.

This case has presented a very difficult constitutional problem. On the basis of the above analysis we have resolved the question in favor of the constitutionality of the ordinance. Accordingly, the judgment of the district court is reversed.

      . Soap and Detergent Ass’n v. Chicago, 357 F.Supp. 44 (N.D.Ill.1973).

      . Chicago, Ill., Code ch. 17, art. VII, § 17-73(b) (1973) provides:
      It shall be unlawful for any person, firm, or corporation to sell, offer or expose for sale, give or furnish any synthetic detergent or detergent containing any phosphorus, expressed as elemental phosphorus, including synthetic detergents or detergents manufactured for machine dishwashers, dairy equipment, beverage equipment, food processing equipment and industrial cleaning equipment, within the City of Chicago from and after June 30, 1972.

      . 357 F.Supp. at 49.

      . 357 F.Supp. at 51.

      . S. C. Highway Dep’t v. Barnwell Bros., 303 U.S. 177, 190, 58 S.Ct. 510, 517, 82 L.Ed. 734 (1938).

      . Obviously, there is some degree of balancing involved in the initial determination of whether the end sought is a legitimate local concern.

      . D. Engdahl, Constitutional Power: Federal and State in a Nutshell (1974). Engdahl’s theory is discussed in Note, Use of the Commerce Clause to Invalidate Anti-Phosphate Legislation: Will it Wash?, 45 U.Colo.L.Rev. 487 (1974).

      . 393 U.S. at 136, 89 S.Ct. at 327.

      . 393 U.S. at 138, 89 S.Ct. at 328.

      . American Can Co. v. Ore. Liquor Control Comm’n, 517 P.2d 691, 697 (Or.App.1974).

      . Soap and Detergent Ass’n v. Clark, 330 F.Supp. 1218 (S.D.Fla.1971).

      . See also the suggestion for a somewhat different presumption in Note, supra, n. 7, at 493.

      . Bibb v. Navajo Freight Lines, Inc., 359 U.S. 520, 79 S.Ct. 962, 3 L.Ed.2d 1003 (1959); Southern Pacific Co. v. Arizona, 325 U.S. 761, 65 S.Ct. 1515, 89 L.Ed. 1915 (1945).

      . A similar conclusion was reached in the analogous case of Colgate-Palmolive Co. v. Erie County, 68 Misc.2d 704, 327 N.Y.S.2d 488, 491 (Sup.Ct.1971):

      . Huron Portland Cement Co. v. Detroit, 362 U.S. 440, 448, 80 S.Ct. 813, 4 LEd2d 852 (1960)

      . Soap and Detergent Ass’n v. Offutt, 3 ERC 1117, 1119 (S.D.Ind.1971).

      . Pike v. Bruce Church, Inc., 397 U.S. 137, 90 S.Ct. 844, 25 L.Ed.2d 174 (1970); West v. Kansas Natural Gas Co., 221 U.S. 229, 31 S.Ct. 564, 55 L.Ed. 716 (1911); Minnesota v. Barber, 136 U.S. 313, 10 S.Ct. 862, 34 L.Ed. 455 (1890).

      . There is no contention in this case that this particular area of legislation has been preempted by Congressional action.

      . Huron Portland Cement Co. v. Detroit, 362 U.S. 440, 442, 80 S.Ct. 813, 815, 4 L.Ed.2d 852 (1960).

      . The relevance of such Congressional encouragement has been recognized in Parker v. Brown, 317 U.S. 341, 367-368, 63 S.Ct. 307, 87 L.Ed. 315 (1943).

      . 33 U.S.C. § 1370 (Supp. II, 1973).

      . We note that even if it is a relevant consideration at this point, there is not a reasonable and less burdensome alternative way to eliminate phosphates from the sewage effluent. Elimination of phosphates by means too great a waste of chemicals to be deemed a constitutionally mandated alternative. See generally Dean Milk Co. v. City of Madison, 340 U.S. 349, 71 S.Ct. 295, 95 L.Ed. 329 (1951).

      . The City has argued in its brief that the ordinance also helps Lake Michigan because it has the result of preventing other areas from receiving phosphate detergents too, and thus these areas are forced to control their discharge^ of phosphorous into the Lake. We totally reject the contention that the effectiveness of the ordinance can be supported on the basis of this extraterritorial coercion. We do not believe that the City Council considered this possibility and we in no way rest our decision on this argument.


author: PER CURIAM.

text:
    Peter J. BRENNAN, Secretary of Labor, United States Department of Labor, Appellant, v. WESTINGHOUSE CREDIT CORPORATION, Appellee.
    No. 74-1197.
    United States Court of Appeals, Sixth Circuit.
    Jan. 17, 1975.

      William J. Kilberg, Sol. of Labor, Marvin Tincher, Regional Atty., U. S. Dept. of Labor, Nashville, Tenn., John L. Bowers, U. S. Atty., Chattanooga, Tenn., for appellant.
    Alfred W. Vadnais, Humphreys & Hutcheson, Chattanooga, Tenn., for appellee.
    Before PHILLIPS, Chief Judge, and LIVELY and ENGEL, Circuit Judges.
   PER CURIAM.

The Secretary of Labor appeals from a holding by the district court that three “unit managers” in the Chattanooga office of Westinghouse Credit Corporation are exempt from the overtime provisions of the Fair Labor Standards Act, 29 U.S.C. § 201 et seq. This holding was based on the District Judge’s finding that the unit managers are “employed in a bona fide executive [and] administrative capacity . . . .” 29 U.S.C. § 213(a)(1).

On appeal, the Secretary seeks to avoid the “clearly erroneous” standard of Rule 52(a), Fed.R.Civ.P. by asserting that the district court applied erroneous standards to undisputed facts.

The decision on this issue depended solely on a determination of whether the unit managers, in the performance of their duties as employees of Westinghouse, met the requirements for exemption from the overtime provisions of the Act. This was a question of fact and there is substantial evidence in the record to support the finding of the district court. Further, there is no support for the claim that the court misapprehended or misapplied controlling principles of law.

The Secretary also sought an injunction against future violations of the Act by Westinghouse. The parties entered into a stipulation prior to trial which, inter alia, contained the terms of a settlement by which Westinghouse agreed to make overtime payments to four non-exempt employees classified as “District Field Representatives” in the Chattanooga office. The Secretary characterizes this agreement as a “stipulation of violations” and urges it as showing the necessity for an injunction. An agreement to settle a disputed claim is not an admission of a violation. The record fully supports the district court’s finding that Westinghouse acted in good faith in its compliance efforts and that an injunction was not justified. The issuance of an injunction to prevent violation of the Fair Labor Standards Act lies in the discretion of the trial court. Wirtz v. Atlas Roofing Manufacturing Company, 377 F.2d 112, 116 (5th Cir. 1967). We perceive no abuse of discretion in the denial of the requested injunction in the present case.

The judgment of the district court is affirmed.