author: JOHN R. BROWN, Chief Judge:

text:
    HARRINGTON MANUFACTURING CO., INC., Plaintiff-Appellant-Cross Appellee, v. Idas B. WHITE, Defendant-Appellee-Cross Appellant.
    No. 71-2032.
    United States Court of Appeals, Fifth Circuit.
    March 13, 1973.
    Rehearing and Rehearing Eh Banc Denied June 7, 1973.

      Fred C. Philpitt, Washington, D. C., Robert D. Canada, Tallahassee, Fla., Elliott I. Pollock, Washington, D. C., for appellant.
    Marion B. Knight, Blountstown, Fla., Harvey B. Jacobson, Jr., Washington, D. C., for appellee.
    Before JOHN R. BROWN, Chief Judge, and GOLDBERG and MORGAN, Circuit Judges.
   JOHN R. BROWN, Chief Judge:

On June 27, 1967, the United States Patent Office issued Patent No. 3,327,745, to Fred W. Meece and Frank B. Dew, both of Plymouth, North Carolina. The patent covered a hydraulically powered “tree cutter device”. On October 2, 1968, this lawsuit was filed by Meece and Dew’s assignee, the Harrington Manufacturing Company, seelcing damages and appropriate injunctive relief from Idas B. White for the latter’s alleged infringement of the Meece-Dew patent. In addition to denying infringement, White asserted the invalidity of the Meece-Dew patent as a positive defense. Upon the conclusion of the non-jury trial, the District Judge entered a memorandum order and opinion 323 F.Supp. 1345, upholding the validity of the Meece-Dew patent, but finding no infringement. Both parties appeal.

Our review of the case convinces us that the Court below properly upheld the validity of the Meece-Dew patent. Upon a close examination of his holding with respect to infringement, however, we are compelled to reverse. It all boils down to the question of how to construe three little words in the patent claims- — “flexible interconnection means”. The trial court applied a common meaning, common sense construction and held that the patent, by expressly contemplating the use of a “flexible interconnection means”, did not envision — and hence would not protect— the use of an interconnection means, like a double acting hydraulic cylinder, which could be locked rigidly in place. But this ignores the basic purpose, the prosecution history, and — most importantly — the actual wording of the claims.' Giving appropriate consideration to these factors, we are convinced that these three little words sufficiently-described the inventive concept of the patent, and in turn, that that concept is invaded by Defendant’s device. The reading which we give to these three little words thus both sustains the trial court’s holding of validity and requires us to reverse his holding of non-infringement.

I. Woodman, Don’t Spare That Tree!

Modern civilization requires vast quantities of lumber and pulpwood for its progress. Originally man satisfied his need for timber by hacking down trees with crudely fashioned hand tools. As his need and sloth increased man invented the saw to cut through the wood more rapidly and efficiently. Even this innovation did not satiate society’s appetite, however, and about twenty-five years ago man began using small gasoline powered chain saws. But even these paragons of technological advance had their problems — among them the fact that tired aching backs refused to wield them at ground level. Thus, by cutting the trees higher than ground level lumberjacks left a considerable amount of wood unused. These uncut stumps also marred the beauty of the landscape and impeded the progress of log removal from the forest.

Meece and Dew

In 1965 Meece and Dew bent their creative ingenuity towards rectifying these problems. They started by constructing the cutting device. It consisted of a fixed jaw, which would press against the backside of the tree, a blade to do the actual cutting, and a pair of hydraulic cylinders to close the blade. They called the whole assembly a “shear head”. (See Figures A and B depicting the shear head in both the open and closed positions.)

Meece and Dew then designed a “C” frame to be used to attach the shear head to the tractor. It consisted principally of two parallel arms which were to be mounted to the sides of the tractor with movable joints. Across the front of these arms they welded a support beam. This beam was horizontal with the ground. In order to be able to elevate the entire shear head another hydraulic cylinder was mounted onto the front of the tractor and attached to the support beam.

The inventors then attached the shear head assembly to the support beam of the “C” assembly by means of several pivotal connections. This would allow the angle of the shear head to be adjusted according to the plane of the ground. This angular adjustment of the shear head was the “basic concept” of the Meece-Dew invention. It was the innovation calculated to solve the problems of stumpage which Meece and Dew had in mind. It was the Meece-Dew shear’s “raison d’etre”.

Only one thing remained. Meece and Dew needed some element which would stabilize the shear head in the angle of the plane of the ground. They conceived of several possible means to accomplish this end. But when they built their first model, Meece and Dew chose the means which appeared to be the most rugged, the easiest to put in place, the easiest to repair, and the least expensive, i. e. they used a chain, which was attached at one end to the shear head and at the other to a supporting post welded perpendicular to the beam. (See Figure C.) In describing the various elements which could perform this task the patentees subsequently applied the fated nomenclature “flexible interconnection means”.

Meece and Dew demonstrated their tree shear to several interested parties in December 1965. By February 1966, the Plaintiff Harrington Manufacturing Company had acquired exclusive rights to the invention in exchange for an agreement to prosecute the patent application in Meece and Dew’s behalf and make continuing royalty payments to them. By May 1966, Harrington was manufacturing the Meece-Dew shear and distributing it to its customers.

White

Meanwhile (that is in May, 1966) in Blountstown, Florida, the defendant Idas B. White was contacted by several unnamed individuals who requested that he build hydraulically operated tree shears for them. The resultant shear was field tested by White on July 30, 1966. The White shear was substantially identical to the Meece-Dew design, including the adjustable cutting head. Significantly, on first testing his shear White used a chain linkage support element. On finding this unsatisfactory he resorted to hydraulic cylinders.

Harrington-White Interaction

As assignee of the Meece-Dew patent rights Harrington was more than normally curious when he heard that someone in Blountstown, Florida, was building a tree shear similar to the Meece-Dew model which his company was then marketing. In August 1966, Joseph J. Harrington, Plaintiff’s president, stopped to meet with White en route to Panama City, Florida, where the Harrington version of the MeeceDew shear had been displayed since June 1966. The trial court found that Harrington made a suggestion that White might manufacture hydraulic cylinders for use on the Meece-Dew shear head (see Figures A and B, supra), that both parties voiced their intentions to seek patents, that Harrington had the opportunity to observe a photograph of the White shear, and ultimately that Harrington offered to purchase White’s patent rights. Negotiations stalled and this suit followed. As first patentee of this design, Harrington has the paramount right to manufacture the Meece-Dew shear. Southern Implement Manufacturing Co. v. McLemore, 5 Cir., 1965, 350 F.2d 244, 248. Unless White can prove that the Meece-Dew patent was invalid, Harrington is entitled to relief if he proves that White’s shear infringed the patent.

II. Up A Tree: Validity

Patents are a favored exception to the antitrust policies of the United States. While many patent advocates argue passionately that since they promote disclosure to society rather than exclusion from society that the term “monopoly” should not be applied patents, the better-reasoned view is that they are monopolies in the sense that they are governmentally protected rights to exclude others from the manufacture or sale of the patented article. Although the seventeen year duration is a built-in safeguard against extended abuse of the patent concession, society demands additional restrictions. One such restriction is the availability of judicial review of the patent. Thus, the Supreme Court of the United States has held:

There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of noninfringement without going into the question of validity of the patent. It has come to be recognized, however, that of the two questions, validity has the greater public importance, and the District Court in this case followed what will usually be the better practice by inquiring fully into the validity of this patent.

Sinclair & Carroll Co. v. Interchemical Corp., 1944, 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 89 L.Ed. 1644, 1646 (citations omitted). See also Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 557; Sterner Lighting Inc. v. Allied Electrical Supply, Inc., 5 Cir., 1970, 431 F.2d 539. Finding the Meece-Dew tree shear patent to be one involving deep public interest, we carefully review the trial court’s decision upholding the validity of the patent.

We start from the proposition that a lawfully issued patent is presumed to be valid. 35 U.S.C.A. § 282; Railex Corp. v. Speed Check Co., 5 Cir., 1972, 457 F.2d 1040, 1043; Beckman Instruments, supra at 560 or 428 F.2d; Foster Cathead Co. v. Hasha, 5 Cir., 1967, 382 F.2d 761, 764. Thus, the “burden of establishing invalidity of a patent shall rest on a party asserting it.” 35 U.S.C.A. § 282.

The presumption of patent validity is rebuttable. 35 U.S.C. § 282; Radio Corp. of America v. Radio Engineering Laboratories, 1934, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163. The courts, however, have not distinguished themselves for consistency in their determination of the quantum of proof necessary to rebut the presumption. For instance, this Court has employed varying statements of the necessary quantum of proof. See, e. g., Kardulas v. Florida Machine Products Co., 5 Cir. 1971, 438 F.2d 1118 (“clear and convincing * * * a mere preponderance of the evidence is insufficient * * * beyond a reasonable doubt”); V & S Ice Machine Co. v. Eastex Poultry Co., 5 Cir. 1971, 437 F.2d 422 (“competent evidence”); Stamicarbon, N. V. v. Escambia Chemical Corp., 5 Cir. 1970, 430 F.2d 920 (reviewing all the standards and approving the use of the beyond-a-reasonable-doubt standard); Kiva Corp. v. Baker Oil Tools, 5 Cir. 1969, 412 F.2d 546 (“beyond a reasonable doubt * * * clear and convincing”); Metal Arts Co. v. Fuller Co., 5 Cir. 1968, 389 F.2d 319 (“clear, satisfactory, and, by some it is said beyond a reasonable doubt”); Zero Mfg. Co. v. Mississippi Milk Producers Assoc., 5 Cir. 1966, 358 F.2d 853 (“strong rebuttal”); Southern Implement Mfg. Co. v. McLemore, 5 Cir. 1965, 350 F.2d 244 (“beyond a reasonable doubt”); Samuelson v. Bethlehem Steel Co., 5 Cir. 1963, 323 F.2d 944 (“Any reasonable doubt will be resolved against the party alleging the invalidity of a patent”); Fairchild v. Poe, 5 Cir. 1958, 259 F.2d 329 (“beyond a reasonable doubt”); Zachos v. Sherwin-Williams Co., 5 Cir. 1949, 177 F.2d 762 (“beyond a reasonable doubt”). We do not attempt to resolve this apparent inconsistency. Rather, we state that the presumption of patent validity may be rebutted only by a quantum of proof — whether it be called clear and convincing or beyond a reasonable doubt — which is greater than a mere preponderance of the evidence. One who seeks to rebut the presumption bears a heavy burden. Cf. Radio Corp. of America v. Radio Engineering Laboratories, 1934, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163.

Hobbs v. United States, 5 Cir., 1971, 451 F.2d 849, 856. See Railex, supra at 1043-1044 of 457 F.2d.

There are essentially three tests for patentability: utility, novelty, and non-obviousness. 35 U.S.C.A. §§ 101, 102, 103; Beckman, supra at 561 of 428 F.2d; Hobbs, supra at 855, of 451 F.2d. It is clear that the constitutionally required element “to promote the useful arts and sciences” is satisfied by the Meece-Dew invention. Likewise, our review of the case satisfies us that the statutorily articulated requirement of non-obviousness is met. In this regard we note that the Meece-Dew shear solved the plaguing problems of the industry with great commercial success. See Graham v. John Deere Co., 1966, 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, 556.

The issue of novelty, or phrased in another way — whether the invention was anticipated by the prior art, is quite another thing. Brandishing prior patents, White strenuously contends that the Meece-Dew concept was anticipated by the relevant prior art. Of the six prior patents listed by the Court and parties as being the relevant prior art it is undisputed that four were before the examiner in the Patent Office. White has clearly not introduced a whit of evidence to rebut the presumption of validity with respect to these patents.

But, in spite of the District Court’s finding of fact to the contrary, White urges that the French Patent No. 1,313,995 and the Burke Patent U.S. No. 638,553, were not before the examiner. Of course the statutory presumption of validity, 35 U.S.C.A. § 282, is diluted when the patent was not issued after a consideration of the prior art. American Seating Co. v. Southeastern Metals Co., 5 Cir., 1969, 412 F.2d 756, 760. Even a cursory examination of these patents, however, dispels the specter of anticipation.

The French Patent consists of a shear head similar to the Meece-Dew design but mounted on a single, elongated, telescopic tubular arm extending from the front of the tractor. It adds nothing to the prior art of record. The ancient 1899 Burke Patent consisted of a steam powered circular saw. Its only potential resemblance to the Meece-Dew design was the presence of a means to limit the downward motion of the cutting head. When one recalls the fact that the major innovation of Meece and Dew was the angular adjustment it becomes apparent that the Burke Patent’s connection with the Meece-Dew patent is severely attenuated, if, indeed, it exists at all. In making this argument White is not only far-afield — he is out of the forest.

In a last ditch effort to salvage something from his invalidity argument White contends that even if the independent claims of the Meece-Dew patent are valid, that Claim 10, which specifically names a hydraulic cylinder as an alternative “flexible interconnection means”, is invalid because either (i) the drawings in the patent application failed to disclose it, or (ii) White was a prior inventor with respect to this element.

A patent application does not have to graphically depict every conceivable element of the invention as long as it details the essential factors. “A rejection of the claim for lack of showing in the drawing alone is not tenable.” Ex parte Taylor, Patent Office Board of Appeals, 1944, 66 U.S.P.Q. 366, 367. 4 Walker on Patents (2d ed. Deller 1965) § 247. Cf. Up-Right, Inc. v. Safway Products, Inc., 5 Cir., 1963, 315 F.2d 23, 27.

Concerning White’s argument that he was a prior inventor we only say that a patentee does not have to manufacture the full range of possible equivalents to his patent to satisfy the 35 U.S. C.A. § 102(g) requirement of reasonable diligence to reduce to practice. If his basic ingenuity is fully disclosed and if he takes expedient steps to utilize his concept, a patentee will be allowed the protection of the law to the extent of his full range of equivalents.

III. Out On A Limb: Infringement

The major premise of the trial court’s holding that the White shear did not infringe the Meece-Dew patent, was his conclusion of law that “the word ‘flexible’ as appears in the Meece patent and as included in the phrase ‘flexible interconnection means’ should be given its ordinary and accustomed meaning. Accordingly, the Meece patent claims in suit all describe tree shears in which the support linkage is flexible or allow the shear head to freely move. The claims are not broad enough to include tree shears in which the support linkage is substantially rigid.”

His minor premise was a finding of fact: “The defendant tree shear employs a double acting hydraulic cylinder as the sole element of the supporting linkage between the shear head and mounting assembly. The testimony of the qualified expert witnesses establishes by a preponderance of the evidence that the double acting hydraulic cylinder and circuit as used in the White tree shear is a rigid and not a flexible intei’connection.”

Thus, from these two premises his obvious conclusion was “the double acting hydraulic cylinder in the White shear structure is not equivalent to the ‘flexible interconnection means’ of the Meece patented tree shear and, therefore, there can be no infringement.”

A patent is infringed only if there is substantial identity between the accused device and the patented invention as to means, operation, and result. Stewart-Warner Corp. v. Lone Star Gas Co., 5 Cir., 1952, 195 F.2d 645, 648; Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 563; Sterner Lighting, Inc. v. Allied Electrical Supply, Inc., 5 Cir., 1970, 431 F.2d 539, 543; U. S. Industries v. Otis Engineering Corp., 5 Cir., 1958, 254 F.2d 198; McCutchen v. Singer Co., 5 Cir., 1967, 386 F.2d 82. Normally this poses a question of fact to be resolved by a jury or Judge sitting as fact-finder under F.R.Civ.P. 52(a), Hughes Tool Co. v. Varel Manufacturing Co., 5 Cir., 1964, 336 F.2d 61; Walker, supra at § 511.

In the present case, our review of the case convinces us that the trial Judge misconstrued the claims of the MeeceDew patent in formulating his major premise. Thus, we reverse without contesting the correctness of his findings of fact. See Sterner Lighting, supra at 543 of 431 F.2d.

It is axiomatic patent law that improvement patents in a crowded art are to be construed narrowly. Since the frequently-asserted “anticipation” ground of invalidity calls for a factual determination, Inglett & Co. v. Everglades Fertilizer Co., 5 Cir., 1958, 255 F.2d 342, 345; Sterner Lighting, supra at 541 of 431 F.2d, the patentee’s narrow contentions in the validity context often dovetail unwelcomed into his broad contentions with respect to infringement. But a “patent may not, like a ‘nose of wax’, be twisted one way to avoid anticipation and another to find infringement.” Sterner Lighting, supra at 544, citing White v. Dunbar, 1886, 119 U.S. 47, 51, 7 S.Ct. 72, 74, 30 L.Ed. 303; Permo, Inc. v. Hudson-Ross, Inc., 7 Cir., 1950, 179 F.2d 386.

Concerning the validity of the patent in suit, the District Court assessed the prior art and determined that

Although certain constituent elements of the Meece patent were known in the prior art, the flexible interconnection means of the Meece patent produced a new and useful result and did not anticipate the prior art. It is this act of selection and arrangement of elements which, if it overcomes defects in the prior. art, produces the invention and renders it novel.

Distilled to its essence, this statement indicates that the district court held that by designing the cutting jaws to pivot axially with respect to the horizontal support beam, Meece and Dew had made a patentable improvement on the prior art of tree-felling. Curiously, it is at this very point of novelty that the alleged infringement took place. But White seeks to distinguish his model from the Meece-Dew shear in two important respects: (i) the Meece-Dew patent specifically calls for a flexible interconnection means while the interconnection means in the White model is rigid, and (ii) the functions performed by the double acting hydraulic cylinder on the White shear were beyond the realm of Meece-Dew inventiveness. We take them up in this order.

Lexicographic License

The central determinant of the infringement issue is whether the use of a hydraulic cylinder to vary the angle of the cutting blade in the White shear constitutes the requisite identity of means to the Meece-Dew patent. Contending that it does not, White directs our attention to the fact that the Meece-Dew patent calls for a “flexible interconnection means” to accomplish this function. He parrots the syllogistic reasoning which the trial Court articulated in its opinion: (i) According to the very words of the Meece-Dew patent only a means which is “flexible” would be an infringing copy; (ii) Once the position of a hydraulic cylinder is set it is rigid; and (iii) Therefore, the hydraulic cylinder cannot possibly be an infringing means.

Harrington counters by strongly urging that the term “flexible interconnection means” means what they choose it to mean, and, accordingly, they are entitied to the mesnes. In support of this argument they cite the handy apothegm that a “patentee may be his own lexicographer and . . . his own grammarian.” Inglett & Co., v. Everglades Fertilizer Co., 5 Cir., 1958, 255 F.2d 342, 347. See Thurber Corp. v. Fairchild Motor Corp., 5 Cir., 1959, 269 F.2d 841, 850; Thermo King Corp. v. White’s Trucking Service, Inc., 5 Cir., 1961, 292 F.2d 668, 675; Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 7 Cir., 1943, 132 F.2d 812, 814; Sockman v. Switzer, 1967, 379 F.2d 996, 1002, 54 C.C.P.A. 1563; Barrett v. United States, 1968, 405 F.2d 502, 507, 186 Ct.Cl. 210.

Because there was no extant generic phrase which would encompass all of the possible means to vary the angle of the cutting head, Meece and Dew’s patent solicitor employed the phrase “flexible interconnection means”. Reading the claims in light of the purpose and function to be served by the “interconnection means” we conclude that the term includes the use of a hydraulic cylinder.

The basic concept of the Meece-Dew patent — indeed, the major innovation which enabled their invention to pass the obviousness and novelty tests of validity — was that the plane of the shear’s cutting head could be angularly adjusted. Perhaps the term “adjustable interconnection means” would have more aptly described the means in terms of the end. But it is not the duty of this Court to rewrite the patent claims for Meece and Dew. Their able counsel, in choosing the term “flexible intcx'connection means” sought to convey the thought that the means could accomplish the end, i. e., vai'iance of the angle of the cutting head. Viewed in the light of the basic concept of the Meece-Dew invention, the prosecution history, and the specific wording of Claim 10, the term necessarily includes the use of a hydraulic cylinder.

White has made much on this appeal about the fact that the Meece-Dew design required some “give” in the interconnection means to withstand the pressure from the natural reaction when the cut is completed and the tree falls. But a careful reading of the specifications reveals that the only time “give” is used in the patent is where the patentee described that quality which would allow the blade to be angularly adjusted so that it would rest on the ground and transmit most of the shock from the falling tree to the ground. Although the patentee cleaxdy extolled the virtues of “give”, it is manifest that “give” or “flexibility” in the sense of a self-adjustment to withstand shock was only an incidental benefit of the design. The basic concept of the Meece-Dew patent was one of adjustability. Thus, a hydraulic cylinder which could be adjusted to vary the angle of the shear head could function as a “flexible intex'connection means” within the purview of the patent claims.

Our conclusion in this regard is compelled by the specific words of Claim 10 that in addition to the chain and the cable which they had previously used as the interconnectioxx means, a hydraulic cylinder might be used. Thus, Claim 10 specifically delineates as a pax't of the Meece-Dew invention the very thing which White’s shear, uses. This, of course, is in keeping with the basic concept of the patent as explained by the specifications:

“Also, whereas a cable has been shown in FIGURES 1-5, a chain in FIGURE 6, and a chain or cable in FIGURES 7 and 8, the basic concept is that of having a means for varying the angle of the plane of the jaw members with respect to the beam. Consequently, no invention would be involved in replacing flexible cable or chain with an obvious equivalentf such as a hydraulic cylinder . . . .” (Emphasis added).

This explication of the basic purpose of the invention puts the three little words —“flexible interconnection means” — in perspective. And given this perspective, we hold that the patentee/lexicographer intended to connote the adjustability of the shear head via the “flexible interconnection means”.

The Cylindrical Argument

White makes much ado about the peculiar nature of the hydraulic cylinder. Specifically, he argues that a double acting hydraulic cylinder, because of its capability of rigidity, could not conceivably be the equivalent of a “flexible interconnection means”. Thus, the argument goes, the Meece-Dew patent cannot be construed to “cover a double acting hydraulic cylinder as the sole element of the support linkage”.

Contrasting the concepts of “rigidity” and “flexibility”, the trial court found this line of reasoning to be persuasive. This is particularly so, according to the Court, where the double acting hydraulic cylinder on the White shear possesses attributes not heretofore proclaimed by Meece and Dew, e. g. the fact that the force of the cylinder can be used to crush brush, snow, or other debris from the base of the tree to order to cut the tree at the lowest possible point. But if the original patentee possessed the novelty of conception, the infringer may not claim non-infringement merely because he put the patented means to a novel use. Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 561; Walker, supra at § 563.

The District Court stated the identity of means test of infringement as follows:

Where a patentee elects to define an element of his claimed combination in terms of a “means” plus a function (as in the Meece claims “flexible interconnection means”) it is essential for infringement that the corresponding means of the accused structure perform the same function in the same way to obtain substantially the same results.

The trial court then found two functions which the interconnection means in the Meece-Dew shear served: [i] to permit free pivotal movement of the shear head, and [ii] to serve to limit the downwardmost position of the arc through which the shear head could move. [(Finding 7)]. In the White shear the pressure of the cylinder against “toter brackets” performed the latter task. Thus, the result was not obtained solely by the hydraulic cylinder. [(Finding 15)].

It was in the former function, however, that the trial Judge found the crucial distinction between the Meece-Dew shear and the accused White shear. The Judge’s interpretation of the Meece-Dew shear was that the interconnection means left the shear head “flexible”. The White shear was “rigid”. Given the antithetical quality of the words “flexible” and “rigid” the trial Judge concluded that there was no infringement as a matter of law. [(Conclusion 29)].

But what was needed was a temporal perspective. Both shear heads were “flexible” at some point in time. Basic to the entire superstructure was the fact that the shear head could be elevated or depressed to attain the proper cutting angle or to maneuver the tractor with the shear assembly. Likewise, both shear heads could be “rigid” when mounted with a hydraulic cylinder and locked into position. The crucial factor for the means was that it could attain the end of “adjustability”. This was the crux of the Meece-Dew design.

This functional approach to patent claim construction is a legacy of Hotchkiss v. Greenwood, 1851, 52 U.S. (11 How.) 248, 13 L.Ed. 683; See Graham v. John Deere Co., 1966, 383 U.S. 1, 12, 86 S.Ct. 684, 691, 15 L.Ed.2d 545, 553; Foster Cathead Co. v. Hasha, 5 Cir., 1967, 382 F.2d 761. We recognized the validity of describing elements of a patent in terms of “means” and function in Bryan v. Sid W. Richardson, Inc., 5 Cir., 1958, 254 F.2d 191, 194, where we observed:

The word “means” is no shibboleth. To be sure, it, or its equivalent synonyms, cannot be used to describe the invention at the very point of novelty for to do so would then be to define invention in terms of the result. But where the novelty of the combination . is adequately disclosed with definable limitations, other and well-known elements need not be described in structural detail.

We have carefully weighed the arguments of both parties over the meaning of the term “hydraulic cylinder”. Harrington contends that the term is a shorthand expression for “double acting hydraulic cylinder”. White, on the other hand, points out the fact that a two-way push can be obtained from a double acting hydraulic cylinder, whereas only a one way action results from a single acting cylinder. This fact has obvious incidental benefits, e. g., the shear head can be both raised and lowered by hydraulic power, the force of the cylinder can crush any brush which surrounds the tree, etc. But the crucial property of the Meece-Dew shear was adjustability. And whatever its other benefits, the White double acting hydraulic cylinder accomplishes this function. Regardless of whether the hydraulic cylinder used as an interconnection means acts singly or doubly, it was contemplated by Meece and Dew as an alternative means to the original chain or cable and specifically delineated in Claim 10.

It is also helpful to consider the manner in which the patentees used the term “hydraulic cylinder”. It appears not only in Claim 10 with respect to the “flexible interconnection means”, But also in Claims 1(c), 2(c), and 5. Claim 5 is illustrative. There the patentees claim a device which employs a hydraulic cylinder to both raise and lower the beam. (See Figure C, supra.) Thus, it is evident that the patentees contemplated by the use of the words “hydraulic cylinder” a cylinder which could push two ways.

Therefore, whether single or double, the use by White of any hydraulic cylinder which could vary the angle of the cutting head with respect to the plane of the ground constitutes an infringement in derogation of the patent rights of Harrington.

IV. Can’t See The Trees for The Forest

Letter patents serve to foster the constitutional mandate to promote the arts and sciences. If courts undermine the rights of patentees, not by a narrow construction of the scope of the invention, but rather on the basis of semantical facades, then the utility of a patent as a stimulus for greater public disclosure of private inventiveness will be greatly minimized and more inventors will resort to whatever protection the trade secrecy law may afford. Cf. United States v. Dubilier Condenser Corp., 1933, 289 U.S. 178, 53 S.Ct. 554, 77 L.Ed. 1114; Sears, Roebuck & Co. v. Stiffel Co., 1964, 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661; Compco Corp. v. Day-Brite Lighting, Inc., 1964, 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669. The main thesis of our patent system is that public disclosure is a worthy goal.

Meece and Dew designed the first tree shear to employ an angularly adjustable cutting head. This invention presented a significant and patentable improvement over the prior art in that it allowed the tree to be cut parallel to the ground at its lowest point. Not only did this provide more useable wood per tree, but it also reduced the logistical problems of reseeding and — for that band of hardy conservationists now tramping the woods in search of nature, the red-cheeked warbler, see Allison v. Froehlke, 5 Cir., 1972, 470 F.2d 1123, a pure environment, and possible class actions — it enhanced the aesthetic quality of a nowstumpless forest.

By marketing a shear employing this basic concept of the Meece-Dew design without a license from the patent owner, the defendant White has infringed on the dominant patent of the Plaintiff. Accordingly, this case is reversed and remanded to the District Court for imposition of the appropriate remedies.

Reversed and remanded.

      . Since the claims of a patent establish, as would a deed an estate in land, the metes and bounds of the grant, Motion Picture Patents Co. v. Universal Film Manufacturing Co., 1917, 243 U.S. 502, 510, 37 S.Ct. 416, 418, 61 L.Ed. 871, 876, we set them out in full for all to road who will:
      1. An improved tree cutting device including:
      (a) a cutting blade.
      (b) one end of said cutting blade being pivotably mounted with respect to a pair of fixed jaw members.
      (c) fluid operated cylinder and piston means interconnecting said pair of jaw members and said cutting blade,
      (d) two generally parallel supporting arms having their roar ends adapted to be pivotably attached to a vehicle,
      (c) pivot means for pivotally interconnecting said two generally parallel supporting arms and said pair of fixed jaw members, so that said pair of fixed jaws can have limited pivotal movement about a horizontal axis,
      (f) flexible interconnection means interconnected between said two generally parallel supporting arms and said pair of fixed jaw members which serves to limit the pivotal arc through which the fixed jaw members can pivot.
      2. An improved tree cutting device including:
      (a) a cutting blade.
      (b) one end of said cutting blade being pivotably mounted with respect to a pair of fixed jaw members,
      (c) fluid operated cylinder and piston moans interconnecting said pair of jaw members and said cutting blade,
      (d) said fixed jaw members being mounted for vertical pivotal movement about an elongated horizontally disposed beam, and said fixed jaw members being additionally connected to said elongated horizontally disposed beam by flexible interconnection means so that said fixed jaw members are free to move through a limited pivotal arc.
      (e) two generally parallel supporting arms having their front ends attached to said beam and having their rear ends adapted to be pivotably attached to a vehicle, and
      (f) means for raising and lowering said beam.

        3. An improved tree cutting device according to claim 2, wherein said flexible interconnection means comprises a cable.
      4. An improved tree cutting device according to claim 2, wherein said flexible interconnection means comprises a chain.
      5. A tree cutting device according to claim 2, wherein said means for raising and lowering said beam comprises a hydraulic cylinder and piston.
      6. A tree cutting device according to claim 2, wherein said jaw members are provided with a plurality of teeth.
      7. An improved tree cutting device according to claim 2, wherein said flexible interconnection means includes an upstanding post on said beam, a connection means on the top of said jaws, and a flexible element interconnecting said upstanding post and said connection means.
      8. An improved tree cutting device according to claim 7, wherein said flexible element comprises a chain.
      9. An improved tree cutting device according to claim 7, wherein said flexible element comprises a cable.
      10. A tree cutting device according to claim 1, wherein said flexible interconnection means comprises an adjustable hydraulic cylinder.
      Plaintiff alleges that defendant White’s shear infringes Claims 1, 2, 5, 7 and 10. He specifically points to the very precise wording of Claim 10 in terms of a hydraulic cylinder.

      . None of the hydraulic cylinders shown in this figure were the subject of this controversy. The While shear used a double acting hydraulic cylinder in plane of the chain and post shown at point 1 in Figure C.

      . On July 10, 1967, the Patent Office issued Patent No. 3,382,899 to Idas B. White covering his shear. Neither the validity nor the construction of that patent is at issue in this litigation.

      . Section 103 of the Patent Act of 1952 added this criterion. In John Deere, supra, the Supreme Court held that it was merely a codification of pre-1952 case law. The test for obviousness under § 103 is whether the design of the patentee would have been a clear extension of previously existing principles to one possessing ordinary skill in the relevant prior art. See Ingersoll-Rand Co. v. Brunner & Lay, Inc., 5 Cir., 1973, 474 F.2d 491. The trial judge here specifically found that no prior inventor had conceived the notion of mounting the cutting head of a shear so that it could pivot to parallel the plane of the ground. The Judge also held that the great commercial success which the Meece-Dew shear enjoyed was indicative of its non-obviousness. While not to be given controlling weight, this is certainly a permissible factor. John Deere, supra; Ingersoll-Rand, supra.

      . The great treatise, in expounding the proper test for infringement, has specifically realized the efficacy of interpreting patent claims in accordance with the purpose and intent of the patentee rather than the common denotations of his choice of words:
      “To allow literality alone to satisfy the infringement test would force patent law to reward literary skill not the inventor’s creativity. Since the law is intended to benefit the inventor’s genius and not the scrivener’s talent, the structures must do the same work in substantially the same way and accomplish substantially the same result . . .”
      7 Walker on Patents (2d ed. Deller 1972) § 531 at 307.

      . The Court of Claims, in first accepting this rule, explained the difficulty which a Court faces when the inventor’s chosen terminology does not adequately embrace the totality of his concept. Thus, the Court in a fascinating opinion by Judge Durfee concluded that resort must often be had to factors beyond the plain meaning of the chosen term:
      Courts occasionally have confined themselves to the language of the claims. When claims have been found clear and unambiguous, courts have not gone beyond them to determine their content. Keystone Bridge Co. v. Phoenix Iron Co., supra, 95 U.S. [274,] at 278, 24 L.Ed. 344; Borg-Warner Corp. v. Mall Tool Co., 217 F.2d 850 (7th Cir. 1954); Zonolite Co. and Insulating Concrete Corp. v. United States, 149 F.Supp. 953, 138 Ct.Cl. 114 (1957). Courts have also held that the fact that claims are free from ambiguity is no reason for limiting the material which may be inspected for the purpose of better understanding the meaning of claims. Warner & Swasey Co. v. Universal Marion Corp., supra, 237 F.Supp. [719,] at 737.
      We find both approaches to be hypothetical. Claims cannot be clear and unambiguous on their face. A comparison must exist. The lucidity of a claim is determined in light of what ideas it is trying to convey. Only by knowing the idea, can one decide how much shadow encumbers the reality.
      The very nature of words would make a clear and unambiguous claim a rare occurrence. Writing on statutory interpretation, Justice Frankfurter commented on the inexactitude of words:
      They are symbols of meaning. But unlike mathematical symbols, the phrasing of a document, especially a complicated enactment, seldom attains more than approximate precision. If individual words are inexact symbols, with shifting variables, their configuration can hardly achieve invariant meaning or assured definiteness.
      Frankfurter, Some Reflections on the Reading of Statutes, 47 Col.L.Rev. 527, 528 (1947). See, also, A Re-Evaluation of the Use of Legislative History in the Federal Courts, 52 Col.L.Rev. 125 (1952).
      The inability of words to achieve precision is none the less extant with patent claims than it is with statutes. The problem is likely more acute with claims. Statutes by definition are the reduction of ideas to print. Since the ability to verbalize is crucial in statutory enactment, legislators develop a facility with words not equally developed in inventors. An invention exists most importantly as a tangible structure or a series of drawings. A verbal portrayal is usually an afterthought written to satisfy the requirements of patent law. This conversion of machine to words allows for unintended idea gaps which cannot be satisfactorily filled. Often the invention is novel and words do not exist to describe it. The dictionary does not always keep abreast of the inventor. It cannot. Things are not made for the sake of words, but words for things. To overcome this lag, patent law allows the inventor to be his own lexicographer. Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812 (7th Cir. 1943); Stuart Oxygen Co. Ltd. v. Josephian, 162 F.2d 857 (9th Cir. 1947); Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th Cir. 3943), aff’d 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 3399 (1944).
      Allowing the patentee verbal license only augments the difficulty of understanding the claims. The sanction of new words or hybrids from old ones not only leaves one unsure what a rose is, but also unsure whether a rose is a rose. Thus we find that a claim cannot be interpreted without going beyond the claim itself. No matter how clear a claim appears to be, lurking in the background are documents that may completely disrupt initial views on its meaning.6
      The necessity for a sensible and systematic approach to claim interpretation is axiomatic. The Alice-in-Wondcrland view that something means whatever one chooses it to mean makes for enjoyable reading, but bad law. Claims are best construed in connection with the other parts of the patent instrument and with the circumstances surrounding the inception of the patent application. Doble Engineering Co. v. Leeds & Northrup Co., 334 F.2d 78 (1st Cir. 1943). In utilizing all the patent documents, one should not sacrifice the value of these references by the “unimaginative adherence to well-worn professional phrases.” Frankfurter, supra, at 529. Patent law is replete with major canons of construction of minor value which have seldom provided useful guidance in the unraveling of comxxlex claims. Instead, these canons have only added confusion to the problem of claim interpretation. Doble Engineering. Co. v. Leeds & Northrup, supra, at 84.
      Autogiro Company of America v. United States, 1967, 384 F.2d 391, 396-397, 181 Ct.Cl. 55 (footnotes omitted).

      . Our disposition on the explicit wording of Claim 10 precludes any foray into the range of protection which might be afforded to Harrington under the doctrine of equivalents. 35 U.S.C.A. § 112. In the past, we have held that “an inventor, with respect to his patent, is entitled to a range of equivalents commensurate with the scope of his invention.” Up-Right, Inc. v. Safway Products, Inc., 5 Cir., 1963, 315 F.2d 23, 26. See Bryan v. Sid W. Richardson, Inc., 5 Cir., 1958, 254 F.2d 191, 194; Southern Saw Service v. Pittsburgh-Erie Saw Corp., 5 Cir., 1956, 239 F.2d 339; Rosen v. Kahlenberg, 5 Cir., 1973, 474 F.2d 858 (Part II). They could have merely shown the chain and the cable in the drawings and thereafter relied on the courts to interpret what was an equivalent.

      . So often the lexicographic license has been abused. In Thurber Corp. v. Fairchild Motor Corp., supra, we gave tribute to the prolixity of patent solicitors by setting forth in the margin 334 word unpunctuated sentence used in a patent claim. 269 F.2d at 850 n. 7. Later, in Thermo King Corp. v. White’s Trucking Service, Inc., supra, we lauded the new practice of drafting patent claims in understandable English with punctuational pauses and explanatory indentations. 292 F.2d at 675 n. 9.
      Juxtaposed with the claims of our past experience the Meece-Dew application is a model of clarity. It specifically states the claims in terms of means to accomplish ends, i. e. function. In the particular regard with which we are now concerned, it explicitly declares that:
      “Said fixed jaw members being additionally connected to said elongated horizontally disposed beam by flexible interconnection means so that said fixed jaw members are freely moved through a limited pivotal arc.” Claim 2(d).


source: Caselaw Access Project

author: WISDOM, Circuit Judge;

license: Public Domain

text:
    In the Matter of HALLMARK MEDICAL SERVICES, INC., et al., Debtors. Isaac MIZRAHI et al., Appellants, v. William H. MARTIN, Trustee, Appellee.
    No. 72-2440.
    United States Court of Appeals, Fifth Circuit.
    March 15, 1973.
    Rehearing and Rehearing En Banc Denied May 18, 1973.

      Charles L. Neustein, Miami, Fla., for Heiman and Crary.
    Marvin E. Barkin, Tampa, Fla., W. K. Zewadski, St. Petersburg, Fla., for trustee.
    Preston O. Cockey, Jr., Leonard H. Gilbert, Tampa, Fla., for debenture holders.
    Before WISDOM, BELL and COLEMAN, Circuit Judges.
   WISDOM, Circuit Judge;

In' this case a group of unsecured creditors in a Chapter X bankruptcy seeks priority ranking under the so-called “six months rule.” The appellant-creditors contend that this rule allows priority to all creditors who furnish credit to a corporate debtor within six months before the appointment of a trustee if such credit is necessary to the continued operation of the debtor. The district court, adopting the recommendations of a special master, disallowed the claim of priority of the six months creditors. Because the district court held as a matter of law that no six months class could exist in this case, the creditors here appealing offered no evidence as to what money or services they rendered to the debtor corporation. We hold that the six months rule may apply to Chapter X reorganizations of quasi-public corporations. We remand for a determination whether under principles of equity these creditors qualify for priority classification under that rule.

I.

Hallmark Medical Services, Inc., built, operated, and sold nursing homes for profit. It operated six nursing homes in Florida with beds for 472 patients and also owned several homes under construction which when completed would have a capacity for 620 patients. Hallmark also owned a hospital in Largo, Florida.

On August 7, 1970, the holders of four million dollars of unsecured debentures filed a petition for involuntary corporate reorganization under Chapter X of the Bankruptcy Act. On December 21, 1970, the petition for reorganization was granted and a trustee was appointed. Proofs of Claim were filed and a ranking of creditors was established. Several unsecured creditors argued that they were entitled to priority for having extended credit to the corporation within the six month period before the appointment of a trustee. The district court ruled that Hallmark was a purely private corporation and that the six months rule did not apply to the reorganization of private corporations. The court denied the creditors’ claims for priority. That conclusion was reached without receipt of any evidence or testimony at the hearing of October 28, 1971, or at the hearing of March 15, 1972. All parties have stipulated that the sole issue on appeal is the applicability of the six months rule to a reorganization under Chapter X of the Bankruptcy Act. No questions of fact are before us.

II.

The function of the six months rule is to encourage the extension of credit to corporations delivering important public services at a time when they are financially weak. The end served is to prevent the interruption of services to the public and to preserve the value of the corporate assets for the other creditors. Without the benefit of preferential ranking, unsecured creditors would have no motivation to risk venture capital. The costs of labor, supplies, and repairs necessary for the continued operation of the corporation, or capital to purchase those items, have been treated as expenses of administration when they are provided within six months before the appointment of a trustee.

The appellee acknowledges that the rule is applicable to public service corporations but argues that the rule does not necessarily apply to every corporation “affected with the public interest.” We conclude that the function, not the characterization, of the corporation and the purpose for the credit are the determining factors.

III.

The six months rule was judicially created and first applied in railroad reorganizations, Fosdick v. Schall, 1878, 99 U.S. 235, 25 L.Ed. 339. It was eventually extended to other public and quasi-public corporations providing the pub-lie with gas, lighting, telephones, irrigation, heating, and transportation.

The application of the rule, however, has not been confined to public service corporations but has also been applied to private corporations under Chapter X of the Bankruptcy Act, 6 Collier on Bankruptcy § 9.13[5] (14th ed.); Remington, Bankruptcy § 4635 (Rev. ed. 1961). Operating expenses such as salaries, supplies, professional services, and workmen’s compensation for private corporations have been included within the ambit of the six months rule.

Judge Learned Hand vividly explained the reason for extending the rule to private corporations:

“ . . . Just as it is recognized that, after insolvency, the expenses of continued operation of a business may be necessary to preserve its value for the secured creditors themselves, and for that reason that the receiver’s creditors have priority, so it may be before insolvency. To take the case at bar, upon the continued operation of a hotel its good will depends; let it once shut down, and it will lose much of its value. Unless the tradesmen with whom it must deal can be protected, as its credit slowly wanes before final insolvency, it must begin to trade upon a cash basis, which may be difficult or even impossible. Some priority to them may be essential to the preservation of the business during that period as it is later. While the interests of the public were no doubt the paramount consideration in the origin of the rule, the interests of the lienors themselves may make equally imperative some protection to supply creditors.”

Dudley v. Mealey, 2 Cir. 1945, 147 F.2d 268, 271. Dudley concluded that services and supplies provided to a hotel within the six month period were entitled to priority. In other cases where the public interest did not demand continued operation of a business and where there was no substantial class of lien-holders whose interests would have been jeopardized had a corporation ceased operation, creditors were denied the priority of six months status. In re North Atlantic & Gulf Steamship Co., Inc., 1962, S.D.N.Y., 200 F.Supp. 818, aff’d sub nom., Schilling v. McAllister Bros., Inc., 2 Cir. 1962, 310 F.2d 123; In re Pusey & Jones Corp., 3 Cir. 1961, 295 F.2d 479. Thus the rule is applied restrictively, rather than presumptively. Johnson Fare Box Co. v. Doyle, 2 Cir. 1958, 250 F.2d 656, 657; In re Yale Express System, Inc., 1972, S.D.N.Y., 342 F.Supp. 972.

IV.

In determining whether a corporation is public or quasi-public it is the function, not the character, of the corporate entity which is significant. Here, Hallmark provided services to 472 patients and was constructing facilities for 620 more. As of December 1971, 298 of Hallmark’s patients were classified as “Medicaid skilled” which meant that the patient was seriously ill and required skilled nursing care. The revenue produced from those patients was in fact less than the cost of the services provided them. Only 134 of Hallmark’s patients were private. The medical expenses of the others were paid by governmental subsidies from various sources including the Division of Family Services of the State of Florida (Medical Assistance for the Needy, Fla.Stat. Ann. 409.266), Medicare (Federal Health Insurance for the Aged, 42 U.S. C. § 1395 et seq.), and Hospital, Domiciliary, and Medical Care for Veterans (38 U.S.C. § 610 et seq.). Furthermore, expert testimony indicated a need for additional nursing homes in central Florida and that the market was underdeveloped. The homes were licensed and regulated by Florida statutes prescribing minimum standards of operation and requiring that inspection be permitted at reasonable times. Fla. Stat.Ann. § 400 et seq. A violation of those state regulations carries criminal penalties. Fla.Stat.Ann. § 400.13.

The closing of these nursing homes would have serious consequences for those under their care. These nursing homes had a direct relation to public health and performed vital public function. It was exigent that these essential therapeutic services would be delivered without interruption.

We conclude that Hallmark performed a quasi-public function that brought it within the ambit of the six months rule. In a Chapter X reorganization, though no statutory priorities exist, a trial judge may equitably apply the six months rule to quasi-public corporations where circumstances justify its application. This conclusion is not inconsistent with the Act’s policy of classifying all unsecured creditors together because a justification for priority is that an extension of credit has preserved a larger fund for the other creditors. Having concluded that a six months class may exist for quasi-public corporations we remand the case for further proceedings to enable the district court to determine whether these appellants merit inclusion within the rule. We do not express any opinion whether equity weighs in favor or against these appellants or whether they should properly be classified as six months creditors.

Reversed and remanded for further proceedings consistent with this opinion.

      . Because of reasons stated in this opinion we do not reach the question whether the six months rule applies to purely private corporations.

      . The plan of reorganization called for sale of all of Hallmark’s assets for over five million dollars. That amount was sufficient to satisfy the claims of the United States, the claims of state and local governments, and the secured creditors in full, but would provide perhaps as little as 33 cents on the dollar for the unsecured creditors. Both the appellants and the debenture holders were unsecured.

      . In refusing to apply the rule to credit extended for original construction, the Supreme Court stated: “The [Fosdick] case lays great emphasis on the consideration that a railroad is a peculiar property, of a public nature, and discharging a great public work. There is a broad distinction between such a case and that of a purely private concern. We do not undertake to decide the question here, but only to point it out.” Wood v. Guarantee Trust & Safe Deposit Co., 1888, 128 U.S. 416, 421, 9 S.Ct. 131, 132, 32 L.Ed. 472, 473. In Wood the Court also emphasized that the credit was not for operating expenses. The six months rule for railroads has been codified at 11 U.S.C. § 205(c). Cf. Johnson Fare Box Co. v. Doyle, 2 Cir. 1958, 250 F.2d 656 where the court refused to equate “new equipment” with operating expenses.

      . In re Madison Railways Co., 7 Cir. 1940, 115 F.2d 586; Crane Co. v. Fidelity Trust Co., 9 Cir. 1916, 238 F. 693; Penn Steel Co. v. New York City Ry. Co., 2 Cir. 1914, 216 F. 458; Louisville and Nashville RR. Co. v. Memphis Gas Light Co., 6 Cir. 1903, 125 F. 97; Keelyn v. Carolina Mutual Telephone & Telegraph Co., 4 Cir. 1898, 90 F. 29; Reyburn v. Consumers Gas, Fuel, and Light Co., 1887, N.D.Ill., 29 F. 561; 6A Collier on Bankruptcy § 9.13(5) p. 249 (1972).

      . Bowen v. Hockley, 4 Cir. 1934, 71 F.2d 781; Dickinson v. Saunders, 1 Cir. 1904, 129 F. 16; Olyphant v. St. Louis Ore and Steel Co., 1884, E.D.Mo., 22 F. 179; L’Hote v. Boyet, 1905, 85 Miss. 636, 38 So. 1; Drennen v. Mercantile Trust & Dep. Co., 1897, 115 Ala. 592, 23 So. 164.

      . Regardless of equitable considerations, other courts have held that the six month rule cannot in any case apply to a Chapter XI bankruptcy. Priorities in a Chapter XI bankruptcy are determined by § 64 of the Act, 11 U.S.C. § 104 whereas Chapter X priorities are determined by principles of equity under § 115, 11 U.S.C. § 515, There are no statutory priorities under Chapter X. Section 102, 11 U.S.C. § 502 of the Act expressly excludes § 64 ranking. In re Chicago Express, Inc., 2 Cir. 1964, 332 F.2d 276. In Chapter X a court is empowered to classify creditors, § 197, 11 U.S.C. § 597. We do not here make any ruling with respect to a Chapter XI proceeding. See also Reading Co. v. Brown, 1968, 391 U.S. 471, 485, 88 S.Ct. 1759, 20 L.Ed.2d 751 (Dissenting opinion of Chief Justice Warren).
      Another Chapter XI proceeding where the six month rule was rejected is In re Pusey & Jones Corp., 3 Cir. 1961, 295 F.2d 479, affirming, 1961, D.Del., 192 F.Supp. 233, which involved a paper-making machine company. The rationale of Pusey was that this corporation did not serve a vital public interest and that the statute did not expressly allow priority. The court stated: “Considered reflection leads to the view the exception of the six months’ rule should not be extended to all private corporations.” Another case cited by the appellee, but which was decided on the basis of § 64 is In re Warner Coal Corp., 1949, N.D.W.Va., 83 F.Supp. 961, aff’d sub nom. Wheeling Electric Co. v. Mead, 4 Cir. 1949, 177 F.2d 718.

      . Hallmark received only $11.60 per day for the Medicaid patients and only $18.75 per day for the Medicare patients whereas private patients paid between $20 and $30 per day. A reduction in the number of beds available could tend to displace the welfare patients.

      . Findings of Fact, Referee in Bankruptcy, p. 6, October 27, 1970 (Exhibit Q, #18).

      . Compare the policy of this priority with the high ranking lien for salvage in admiralty. Gilmore and Black, The Law of Admiralty, § 9-20, p. 514 (1957). The rank is granted because of the “benefit conferred in preserving the value of the ship and cargo.”


author: EAST, District Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Robert W. PETERSON, Defendant-Appellant. UNITED STATES of America, Plaintiff-Appellee, v. Wayne B. CLIZER, Defendant-Appellant.
    Nos. 72-2480, 72-2481.
    United States Court of Appeals, Ninth Circuit.
    March 13, 1973.
    Rehearing Denied May 1, 1973.

      C. E. Monty Hormel (argued), Ephrata, Wash., for defendants-appellants.
    Dean C. Smith, U. S. Atty. (argued), Carroll D. Gray, Asst. U. S. Atty., Spokane, Wash., for plaintiff-appellee.
    Before KOELSCH and WRIGHT, Circuit Judges, and EAST, District Judge.

       Honorable William G. East, Senior United States District Judge for the District of Oregon, sitting by designation.

   EAST, District Judge:

Defendant-Appellant Robert W. Peterson (Peterson) was indicted on one count of violation of Title 26 U.S.C. Section 5845(a) and Section 5861(d) (National Firearm Act).

Defendant-Appellant Wayne B. Clizer (Clizer) and Peterson were jointly indicted on an additional count of violation of the same sections and together with others an additional count of violation of Title 18 U.S.C. Section 371 (Conspiracy) .

Peterson was convicted on all three counts and sentenced to custody on each, the terms to run concurrently. Clizer was convicted on Counts II and III and likewise sentenced. Each appeals and is at liberty on bail. We affirm.

STATUTES

Title 26 U.S.C.:

Section 5841 — Registration of firearms.

(a) . . Secretary .. shall maintain a central registry of all firearms.

(b) .. Each manufacturer . . and maker shall register each firearm he .. makes.

Section 5845 — Definitions.

For the purpose of this chapter—

(a) Firearm — The term “firearm” means (1) a shotgun having a barrel or barrels .. (Here follows through sub-paragraph (7) meticulous description of items of military ordnance and instrumentalities of crime.) .. and (8) a destructive device.

(f) Destructive Device — The term “destructive device” means (1) any .. incendiary, .. (A) bomb, (B) grenade .. or (F) similar device;

(3) any combination of parts either designed or intended for use in converting any device into a destructive device as defined in subparagraphs (1) .. and from which a destructive device may be readily assembled. The term “destructive device” shall not include any device which is neither designed nor redesigned for use as a weapon;

INDICTMENT

The Grand Jury charges:

Count I

“In or about July 1970, .. at the James Thornton ranch .. , Peterson did knowingly, wilfully and unlawfully possess an incendiary and destructive device as the same is defined in 26 U.S.C. Section 5845(f) and 26 U.S.C. Section 5845(a) (7), to-wit: an object composed of segments of fusees with gunpowder and incendiary ingredients and rope fuses attached, and the combination of said segments, gunpowder, ingredients and fuses, which were designed and intended for use as such a device and from which said device might be readily assembled, not registered to him in the National Firearms Registration and Transfer Record in violation of Section 5861(d) of Title 26, United States Code.”

In Count II the grand jury charged Peterson and Clizer and others not named as defendants of an additional crime in identical words set forth in Count I.

In Count III the grand jury charged that Peterson and Clizer with others “did unlawfully conspire, combine, confederate and agree with each other to commit offenses against the United States of America, that is: to knowingly, wilfully and unlawfully receive, possess, transfer and make incendiary and destructive devices as the same arc defined in 26 U.S.C. Section 5845, to-wit: objects composed of segments of fusees with gunpowder and incendiary ingredients and rope fuses attached, and the combination of said segments, gunpowder, ingredients and fuses, which were designed and intended for use as such devices and from which said devices might be readily assembled; which would not be and were not registered to them or any of them in the National Firearms Registration and Transfer Record, which would not be and were not the subject of any application to the Secretary of the Treasury of the United States or his delegate, and for which no tax would be or was paid, in violation of 26 U.S.C. Section 5861; and in pursuance of said conspiracy and to effect the objects thereof; the said defendants performed the following overt acts, among others, to-wit:

4. In or about July, 1970 . . Peterson and . . Clizer ignited and demonstrated said incendiary and destructive devices at the Oscar Tschirky farm;

6. In or about July, 1970 . . Peterson, . . Clizer, Oscar Tschirky and three other persons met at the Oscar Tschirky potato warehouse and discussed the burning of haystacks with said incendiary devices in Franklin County on the same night as haystacks were to be burned in Grant County;”

(For brevity, the allegations of numbers 1, 2, 3, 5 and 7 additional overt acts are omitted.)

ASSIGNMENT OF ERRORS

Peterson and Clizer assert the trial court erred in:

1) Failing to dismiss all counts in the indictment on the grounds that the respective counts allege and describe incendiary and destructive devices which do not fall within the purview of Section 5845 or any of those subdivisions or subclassifications or otherwise constitute “firearms” proscribed by the section;

2) Failing to dismiss the cause on the grounds that the government failed to prove the alleged incendiary or destructive device was in fact a firearm proscribed by the section ;

3) Failing to grant the motion for a new trial or judgment of acquittal on the identical grounds asserted in assignment 2).

4) Giving its instruction number 9 to the jury on the grounds the instruction was fatally defective in defining the term destructive device, an erroneous statement of the law and tended to be confusing, misleading and prejudicial to Peterson and Clizer;

5) (a) Permitting the government the introduction or attempted introduction of evidence of other inflammatory well-publicized infamous events or crimes, distinct and separate to the crimes charged in the indictment and permitting evidence of malicious intent or “bad” motive to be introduced by the government regarding other matters of a prejudicial nature not necessary to proof of the crime charged and designed to show the appellants as “bad guys” or infamous personalities;

(b) Spotlighting and connecting the distinct and separate crimes of malicious acts not shown to have been perpetrated by the appellants;

6) Failing to individually and extensively examine each juror on voir dire for possible prejudice resulting from the wide-spread publicity and in exploring the background of each, failing to permit counsel to conduct such voir dire, where all or substantially all of the prospective jury panel admitted having been exposed to possible prejudicial wide-spread news media publicity concerning a well-known series of multiple arson or crimes, which the Court preliminarily informed the panelmen were related to the crimes charged in the indictment.

FACTS

In July of 1970, Peterson, accompanied by Oscar Tsehirky, came to the farm of James Thornton located near Mesa in Franklin County, Washington. Peterson advised Thornton that they were there for the purpose of demonstrating a device to be used in setting fires. He explained how the device worked and set one off to demonstrate how it would work. For the explanation and demonstration he had a piece of fusee flare into which he poured flammable granulated material containing gun powder to which he added a short length of cotton rope. He lit the cotton rope to show how the cotton rope timed the igniting of the powder. When it ignited, there was a fast, fiercely-burning fire.

Subsequently, in the latter part of July of 1970, Peterson and Clizer came to the potato cellar of Tsehirky near Mesa. They traveled in Peterson’s car, where he again had gun powder, fusee material and rope fuse in the back. Tsehirky summoned others to his potato cellar and a meeting then took place between Clizer and Peterson, Tsehirky and three others. At this meeting, Peterson and Clizer discussed with the others in attendance plans for a large burning of hay in Grant County and stated that they wanted the Franklin County National Farmers Organization to participate, too.

Peterson and Clizer then showed to the others at the meeting a box containing fusees and segments of fusees, and proceeded to use these segments, gun powder and cotton rope in assembling and putting together devices as before.

Approximately three or four of these devices were prepared, lit and allowed to burn. In each case, the fuse was lit and when the rope fuse burned down to the point of contact with the material in the fusee casing it ignited and burned. Peterson and Clizer explained that they had experimented at length with the use of the cotton rope fuse and determined that the length of time it took to ignite the device could be controlled by the length of the rope fuse.

The defendants explained how the devices could be used for the purpose of setting haystacks on fire and discussed a list of haystacks that they intended to burn and the route which they intended to follow in burning these haystacks.

THE DEVICES

From the evidence in the record we draw this narrative picture of the device prepared and demonstrated by Peterson and Clizer:

A three to four inch long casing and fuel segment of a fusee flare (commonly used as a highway or railroad hazard red visual warning signal) from which a portion of the fuel material inside the casing segment was removed. The removed fuel material was then mixed with an equal amount of gun powder. This mixture of material along with a piece of cotton rope was then inserted and tamped into the casing. The casing fragment, its impregnated fuel and the cotton rope were made tight with binding tape.

Charles Caswell, an explosive expert with the Treasury Department, was called as an expert witness in the field of clandestine do-it-yourself devices used to destroy property. He related that he had experimentally constructed the type of' device described by the other witnesses. He stated that the device constructed by these defendants had all of the characteristics of any conventional incendiary device, that is, a fuse, a priming mixture which ignited the main fuel, the fuel itself and a container for the device. He also stated that it produced an intensely hot flame burning at 18,000-20,800 degrees and is highly effective for use in the destruction of property or material.

He then compared the device in question with commercially manufactured and homemade-type military ordnance and weapons of crimes and violence, and explained that the device is comparable to a “Molotov cocktail” as well as certain types of incendiary grenades, and further gave the opinion that this device was a more efficient incendiary device for the purpose of setting haystacks afire than a “Molotov cocktail.”

DISCUSSION

While neither Peterson nor Clizer have raised a constitutional issue on the act, we note that the registration of firearms requirement does not involve self-incrimination. United States v. Freed, 401 U.S. 601, 91 S.Ct. 1112, 28 L.Ed.2d 356 (1971).

Assignments of Error I, II and III

At the threshold we point out our ultimate conclusion as to the necessary and material elements of the crimes alleged in the three counts, leaving out the conspiracy element of Count III over which we have no issue. These material elements are:

1. The commercial materials mentioned, segments of fusee, gun powder and cotton rope, could be readily assembled into an incendiary bomb, grenade, . or “destructive device”;

2. The respective defendants intended to use and did convert the materials into a bomb, grenade, ... or “destructive device”; and

3. He or they dealt with the materials and objects so assembled (destructive device) in a manner prohibited by law (possession of unregistered firearms). See United States v. Morningstar, 456 F.2d 278, pp. 281-282 (4th Cir., 1972).

Also, we conclude from the record that the government produced sufficient evidence, if believed, to prove the necessary and material elements of the crimes and the allegations of each of the counts as an issue of fact.

Accordingly, we consider the only issue raised under each of the assignments is that of the single issue of law raised in assignment I.

Peterson and Clizer urge, in short, that Section 5845 in its entirety outlaws only an incendiary bomb, grenade, missile, mine or destructive devices of military type weaponry which are dangerous or deleterious to human life and limb, hence the premise asserted in assignment I.

We have concluded from a perusal of the legislative history of the act that Congress was well aware of the rampant destruction of property and dangers to life and limb faced by the public through the use of converted military type weaponry and the street variety of homemade instruments and weapons of crime and violence. And with this awareness Congress intended to foster law and order among the public by the proscription of original and converted military type weapons and, also, the do-it-yourself type of similar devices and weapons of crime, violence and destruction.

Again, it is manifest from a reading of the various definitions of “firearms” set forth in Section 5845(a)(1) through (6) that Congress intended thereby to proscribe modified or altered firearms commonly known as military type ordnance.

It is likewise manifest that Congress proscribed devices other than military type ordnance through the language in subsection (a) (7) — a gangster type firearm attachment (silencer) and (8) — -a “destructive device.”

A “destructive device” under its definitions in Section 5845(f) is: (1) any incendiary, ... (A) bomb, (B) grenade, . . . or (F) similar device (italics supplied). While the words “incendiary . . . (A) bomb, (B) grenade, . . .’’do have a military type ordnance connotation, it is not necessarily so and particularly with “similar device.” Else why was the phrase “similar device” added to the specifically named items. The device designed and put together by Peterson and Clizer as above delineated is in our opinion similar to and likened to an incendiary bomb or grenade dropped by a military plane or thrown by a soldier.

The “device” produced by Peterson and Clizer is a common street do-it-yourself variety of a readily hand-thrown incendiary bomb or grenade and a weapon or instrumentality of crime and violence capable of destroying property by fire.

Furthermore, Congress manifestly intended to proscribe friendly things when with evil intent they are combined or joined together to produce a hostile object or device through the language used in subsections (a), (f)(3). “Any combination of parts either designed or intended for use in converting any device into a destructive device as defined in subparagraphs (1) and (2) and from which a destructive device may be readily assembled. The term ‘destructive device’ shall not include any device which is neither designed nor redesigned for use as a weapon.”

Peterson and Clizer did just that. They took fusee flare segments, black powder, cotton rope and binding tape, each separately a friendly item, then with evil intent combined them and “readily assembled” a hostile destructive device likened to a Molotov cocktail of military ingenuity but a commonly used civilian weapon of crime and violence. They did not register the weapon and they exercised dominion and control of it.

The counts in the indictment so alleged and the government’s evidence so showed.

We conclude the District Court did not err in overruling the two motions to dismiss the indictment and the motion for a new trial or judgment of acquittal. The foregoing construction and interpretation of Section 5845 in its entirety under the facts of this case and our conclusion has support in the rationale of these authorities: United States v. Oba, 448 F.2d 892 (9th Cir., 1971) (Seven sticks of dynamite wrapped in copper wire and equipped with fuses and blasting caps intended for use in destroying property of others. Judge Browning dissenting, p. 892); United States v. Davis, 313 F.Supp. 710 (D.Conn., 1970) (Empty bottles, strips of cotton, and can of gasoline held with intent to assemble a Molotov cocktail.); and Morningstar, supra (Four sticks of black powder pellet explosive fastened together with electric tape and several unattached blasting caps.) Citing Langel v. United States, 451 F.2d 957, 962 (8th Cir., 1971) (dynamite, fuse and cap); Oba, supra; Davis, supra; and United States v. Harflinger, 436 F.2d 928, 929 n. 1 (8th Cir., 1970) (by implication — dynamite, fuse, cap, wire, clock, and battery). See, also, United States v. Posnjak, 457 F.2d 1110, note 10, p. 1119 (2nd Cir., 1972), distinguishable on facts. Apparently contra, see Judge Browning’s dissent, supra, citing United States v. Schofer, 310 F.Supp. 1292 (E.D.N.Y., 1970), both distinguishable on facts, here an assembled device.

Issue No. IV

The trial court rejected two government requested instructions on the definition of a “destructive device” and gave its own instruction number 9 as follows:

“Now, the laws of the United States provide in part as follows, that it shall be unlawful to possess a destructive device. A destructive device includes any incendiary device, or components thereof, which may be readily assembled, the function of which device is to ignite and destroy property. It must be similar to an incendiary or fire bomb, or grenade, but need not be identical. Any article or device composed of a combustible material capable of producing sufficient heat to destroy property of any kind, and having components designed to ignite that combustible material, is under the laws an incendiary device similar to a fire or incendiary bomb or grenade. The term destructive device ¿hall not include any device which is neither designed nor redesigned as a weapon for destruction of property.”

Petebson and Clizer excepted to the instruction. In short, the grounds urged were basically identical with those urged in Asáignments I, II, and III which we have cóncluded to be without merit.

We approve the instruction when linked with appropriate instructions on unlawful intent and nonregistry as was done here.

Issue No. V

We consider the language of this assignment an overword play of the nature of the facts and circumstances surrounding Peterson and Clizer. The "well publicized infamous events or crimes” associated with “bad guys” refers to the so called “Columbia Basin hay fires incident” given widespread publicity and concern at the time. As the evidence developed, it was those “infamous events or crimes” which became the sum and substance of the conspiracy count. The facts focused their spotlight upon Peterson and Clizer and they had to suffer the brilliance.

Issue No. VI

Basically, this assignment attacks the so-called “Arizona system” of selection of jury and the trial court’s conduct of the voir dire thereunder. The system is extensively used in this Circuit and was approved in Amsler v. United States, 381 F.2d 37 (9th Cir., 1967), Haslam v. United States, 431 F.2d 362 (9th Cir., 1970), cert. den., 402 U.S. 912, 91 S.Ct. 1391, 28 L.Ed.2d 653 and United States v. Erickson, 472 F.2d 505 (9th Cir. 1973).

If it be that the prospective jurors were not examined personally one by one to the satisfaction of Peterson and Clizer, such is attributable to their failure to accept the trial court’s invitation to submit questions aimed at eliciting the prospective juror’s frame of mind. The facts and the trial court’s rulings here just do not add up to the situation and picture presented in Silverthorne v. United States, 400 F.2d 627 (9th Cir., 1968), cert. den., 400 U.S. 1022, 91 S.Ct. 585, 27 L.Ed.2d 633. In Silverthorne, the free press had contaminated the public with prejudicial material and the trial court had made rulings on objections and exceptions held to be prejudicial to basic and constitutional rights of the defendants. Our perusal of the record of the voir dire here places the trial court’s conduct and examination of the prospective jurors well within the test of Haslam, supra, stated 431 F.2d at page 364:

“This court has repeatedly held that the scope of voir dire examination and the procedures to be used are matters within the sound discretion of the trial judge, and will not be disturbed on appeal unless the procedures used or the questions propounded are so unreasonable or devoid of the constitutional purpose as to constitute an abuse of that discretion. Rodgers v. United States, 402 F.2d 830 (9th Cir. 1968); Amsler v. United States, 381 F.2d 37 (9th Cir. 1967); Alverez v. United States, 282 F.2d 435 (9th Cir., 1960); Johnson v. United States, 270 F.2d 721 (9th Cir. 1959), cert. denied 362 U.S. 937, 80 S.Ct. 759, 4 L.Ed.2d 751. An examination of the record does not show that appellant was restricted in any manner from propounding further questions to the jury through the trial judge, or that a refusal to ask any specific question was prejudicial to him. The record does not disclose that there was an abuse of discretion by the trial court.”

Peterson and Clizer’s several enlargements on bail are revoked, effective now.

Affirmed.

      . At argument on the motion to dismiss the indictment, the trial court ordered the deletion and obliterated in his own hand the numeral (7) pursuant to Rule 7 (c) Federal Rules of Criminal Procedure: Error in the “citation of the statute or other provision of law . . . alleged . . . to have (been) violated . . . shall not be a grounds for dismissal . or reversal ... if the error . . . did not mislead ... defendant to his prejudice.” The full scope of Section 5845 was under consideration and no party was misled by the erroneous numeral (7).


author: PER CURIAM:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Eric SIMON, Defendant-Appellant.
    No. 72-2371.
    United States Court of Appeals, Ninth Circuit.
    March 16, 1973.
    Ron Le Mieux, Los Angeles, Cal., for defendant-appellant.
    William D. Keller, U. S. Atty., Eric A. Nobles, John Cameron, Asst. U. S. Attys., Los Angeles, Cal., for plaintiffappellee.
    Before HAMLEY and MERRILL, Circuit Judges, and SCHNACKE, District Judge.

       Honorable Robert H. Schnacke, United States District Judge, Northern District of California, sitting by designation.

   PER CURIAM:

Defendant was found guilty by a jury on five counts of violation of the Selective Service Act, 50 U.S.C. App. § 462, for making false representations as to the condition of his teeth. We affirm.

Army Regulation 40-501, para. 7-12, provides generally that persons who wear orthodontic appliances are unacceptable for induction “as long as active treatment is required.”

While defendant was undoubtedly wearing braces, there was ample evidence that, far from requiring “active treatment”, he required no treatment at all, and that he knew it.

The business records of the dentist and the testimony of his assistant were properly received in evidence.

Affirmed.


author: PER CURIAM.

text:
    Robert GRIFFIN, Petitioner-Appellant, v. W. E. HUDSON, Respondent-Appellee.
    No. 72-1945.
    United States Court of Appeals, Sixth Circuit.
    Argued Feb. 13, 1973.
    Decided March 28, 1973.
    Joseph O’Leary, Akron, Ohio, for petitioner-appellant.
    Jeffrey L. McClelland, Asst. Atty. Gen., Columbus, Ohio, for respondentappellee; William J. Brown, Atty. Gen. of Ohio, Columbus, Ohio, on brief.
    Before EDWARDS, PECK and McCREE, Circuit Judges.
   PER CURIAM.

This is an appeal from the denial of the appellant’s petition for a writ of habeas corpus. In 1968, the appellant was convicted on each of four counts on an indictment charging him with display and possession of four obscene films. The arrest occurred on February 2, 1968, after the Sheriff of the county raided the appellant’s photography studio where one of the four films was being shown to a “stag party.” Deputy Sheriff Jones had been invited to attend this party, and during an intermission in the showing he left the party to advise the Sheriff, who had stationed himself outside by prearrangement, that obscene films were being exhibited. The deputy then returned to the party and seized the film in the projector when the Sheriff and others raided the premises a few minutes later. Assuming the interpretation most favorable to the appellee, the record discloses that as the Sheriff approached the door of the studio, he observed through a window the appellant putting what appeared to be film cans into a safe in his office. Upon gaining entrance, he arrested the appellant and asked him to open the safe, informing him that if he refused, the safe would be transported to the Barberton Safety-Building and opened there under court order. The appellant thereupon .opened the safe, from which three films were seized.

At trial, the appellant stipulated that all four films were obscene, and his defense was that they were improperly seized. His motions to suppress were overruled, and he was convicted on all four counts. The District Court concluded that the search was incident to a lawful arrest, and denied the appellant’s petition for habeas corpus relief. The petitioner has perfected this appeal from that judgment.

Inasmuch as this arrest and search occurred prior to the decision of Chimel v. California, 395 U.S. 752, 89 S.Ct. 2034, 23 L.Ed.2d 685 (1969), the constitutionality of the search is to be judged under the standards in effect prior to that decision. Williams v. United States, 401 U.S. 646, 91 S.Ct. 1148, 28 L.Ed.2d 388 (1971). The leading -pve-Chimel cases of Harris v. United States, 331 U.S. 145, 67 S.Ct. 1098, 91 L.Ed. 1399 (1947), and United States v. Rabinowitz, 339 U.S. 56, 70 S.Ct. 430, 94 L.Ed. 653 (1950), indicate that the Fourth Amendment protects only against unreasonable searches and that the reasonableness of each search is to be judged upon its own facts.

Judged by any standard, the seizure of the film in the projector by Deputy Jones was proper; the Deputy was legally on the premises as an invitee, had seen a showing of the admittedly obscene film and thus he had observed the commission of an offense. Carroll v. United States, 267 U.S. 132, 156-157, 45 S.Ct. 280, 69 L.Ed. 543 (1925). Accordingly, the District Court’s denial of the writ in regards to this count of the indictment, Count Two, is affirmed.

A different problem is presented with respect to the films seized from the safe. A search incident to an arrest authorizes a search of the individual validly placed in custody, Weeks v. United States, 232 U.S. 383, 392, 34 S.Ct. 341, 58 L.Ed. 652 (1914), and extends to a search of the place where the arrest is made in order to find and seize things connected with the crime or the means by which the crime was committed, and weapons and other things which might pose a threat to the arresting officer or aid an escape from custody. Agnello v. United States, 269 U.S. 20, 30, 46 S.Ct. 4, 70 L.Ed. 145 (1925). The rationale for concluding that such searches are reasonable and may be carried out in the absence of a search warrant is necessity. 339 U.S. at 72, 70 S.Ct. 430 (dissenting opinion). Officers must protect themselves from the threat of concealed weapons, and must avoid the destruction of evidence by the arrested person. These considerations are not present here where the Sheriff suspected that obscene films had been placed in a safe and locked.

We can find no justification for the search of the safe over the objection of the appellant. The Trial Court indicated from the bench that the actions of the Sheriff in opening the safe constituted coercion. In addition, we note that there was some dispute concerning the question of whether the Sheriff did in fact see the appellant placing the film cans in the safe. The question of whether the Sheriff had sufficient grounds to justify opening the safe under court order were for the determination of a magistrate.

“To promote neutral and objective determination of the necessity to invade people's privacy, law enforcement officials should be encouraged to seek warrants. See Chapman v. United States, 365 U.S. 610, 613-616, 81 S.Ct. 776, 5 L.Ed.2d 828 (1961).” United States v. Lewis, 392 F.2d 377, 379 (2d Cir. 1968).

Only in exceptional cases may this decision be made by the police. Cash v. Williams, 455 F.2d 1227 (6th Cir. 1972). As noted in that opinion, the increased use of warrants is fostered by the assurance to law enforcement officials that when a warrant is obtained in a close case, its- validity will be upheld. United States v. Ventresca, 380 U.S. 102, 108-109, 85 S.Ct. 741, 13 L.Ed.2d 684 (1965); United States v. Desist, 384 F.2d 889, 897 (2d Cir. 1967), aff’d, 394 U.S. 244, 89 S.Ct. 1030, 22 L.Ed.2d 248, reh. denied, 395 U.S. 931, 89 S.Ct. 1766, 23 L.Ed.2d 251 (1969); United States v. Freeman, 358 F.2d 459, 461-462 (2d Cir.), cert. denied, 385 U.S. 882, 87 S.Ct. 168, 17 L.Ed.2d 109 (1966).

We conclude that the coercive and warrantless search of the appellant’s safe was unreasonable and therefore unconstitutional, and that the three films seized therefrom were improperly admitted into evidence at the appellant’s trial. Accordingly, the appellant’s conviction on those three counts of the indictment, Counts 1, 3 and 4, must be vacated, and the judgment of the District Court is reversed as to those three counts. It is affirmed with respect to Count 2 of the indictment concerning the film seized from the projector.

The cause is remanded to the District Court with instructions to grant the writ unless the conviction of the appellant on Counts 1, 3 and 4 of the indictment are vacated, and the appellant’s sentence on the remaining count is reconsidered in light of its being a single conviction.


author: CELEBREZZE, Circuit Judge.

text:
    Robyn CRUMMETT, Plaintiff-Appellant, v. Donald J. CORBIN, Defendant-Appellee.
    No. 72-1756.
    United States Court of Appeals, Sixth Circuit.
    Argued Feb. 1, 1973.
    Decided March 30, 1973.
    Frank J. Neff, Columbus, Ohio, for plaintiff-appellant; Barkan, Barkan & Neff, Columbus, Ohio, on brief.

      Robert F. Howarth, Jr., Columbus, Ohio, for defendant-appellee; Charles E. Brown, Crabbe, Brown, Jones, Potts & Schmidt, Columbus, Ohio, on brief.
    Before CELEBREZZE and MILLER, Circuit Judges, and KENNEDY, District Judge.

       The Honorable Cornelia K. Kennedy, United States District Judge for the Eastern District of Michigan, sitting by designation.

   CELEBREZZE, Circuit Judge.

This is an appeal from the District Court’s denial of Plaintiff-Appellant’s motion for a new trial after the jury returned a verdict for Defendant-Appellee on the question of liability in a personal injury suit arising out of an auto accident. Federal jurisdiction is based on diversity of citizenship. For the reasons set forth below, we vacate the judgment of the District Court and remand the case for a new trial.

The accident occurred on November 25, 1967, at about 5:00 a. m. when Appellant was operating a Volkswagen Microbus in an easterly direction on U. S. Route 40, approaching the intersection of Route 38 at a speed of about 50 to 55 M.P.H. At this point, Route 40 is a four-lane, divided highway with a grass median strip. The intersection is controlled by flashing yellow lights facing traffic on Route 40 and flashing red lights and stop signs facing traffic on Route 38.

Appellee was operating a tractor-trailer unit, with an overall length of 52 feet, loaded with hogs, in a northerly direction on Route 38. He stopped at the stop sign, saw the headlights of Appellant’s vehicle approaching approximately 700 to 800 feet to his left, and proceeded uninterruptedly across the intersection.

Seeing the tractor-trailer unit in the intersection, Appellant turned her vehicle to the right onto the berm, passed behind the unit, lost control, and rolled over. There was no contact between Appellee’s unit and Appellant’s vehicle.

As her first issue on appeal, Appellant asserts that the District Court erred in separating for trial the issues of liability and damages. In Moss v. Associated Transport, Inc., 344 F.2d 23 (6th Cir. 1965), this Court recognized that under Rule 42(b), F.R.Civ.P., the ordering of separate trials on the issues of liability and damages is within the sound discretion of the trial judge. Here Appellant contends that she was prejudiced by the fact that the jury was unable to consider evidence respecting her injuries in making its findings on the question of liability. Such consideration of evidence not related to the question of liability appears to be a type of prejudice which is to be avoided by separating the issues of liability and damages under Rule 42(b). We are thus unable to conclude that the District Court in any way abused its discretion in conducting a separate trial on the issue of liability.

As her second issue, Appellant contends that the District Court erred in instructing the jury on Ohio’s assured-clear-distanee-ahead statute, Ohio Revised Code, Section 4511.21. The Court instructed the jury as follows:

“. . . [N]o motorist may operate a vehicle at a greater speed then will permit him to bring it to a complete stop within the assured clear distance ahead. Assured clear distance is the distance between the vehicle he is operating and a visible object in his path of travel. As a motorist proceeds the assured clear distance constantly changes. It is measured at any moment by the distance between the motorist’s car and any visible object ahead in the same lane in which the motorist is proceeding.”

With respect to Ohio’s assured-clear-distance-ahead statute, the Supreme Court of Ohio has stated as follows:

“The ‘assured clear distance ahead’ referred to in Section 4511.21, Revised Code, constantly changes as the motorist proceeds, and is measured at any moment by the distance between the motorist’s car and any intermediate discernible static or forward-moving object in the street or highway ahead constituting an obstruction in the motorist’s path or lane of travel. (Paragraph one of the syllabus of Erdman v. Mestrovich, 155 Ohio St. 85, 97 N.E.2d 674, approved and followed.)” Cerny v. Domer, 13 Ohio St.2d 117, 235 N.E.2d 132 (1968) (paragraph two of the syllabus).

That the statute may be applicable where a discernible object moves across a driver’s path has been established by the same Court’s decisions involving a pedestrian’s entry into a driver’s path. Paragraph two of the syllabus in Glasco v. Mendelman, 143 Ohio St. 649, 56 N.E.2d 210 (1944), provides as follows:

“Where an automobile, in the night season, struck a pedestrian crossing a public highway at a place other than an intersection or cross-walk, and the evidence is to the effect that the street was well lighted; that the headlights on the automobile were burning; that the automobile was being driven in low gear for a distance of more than 75 feet before the collision; that she was struck by the right front bumper or fender; and that there was no other traffic upon the street, the question of whether the driver of such automobile was guilty of a violation of ‘the assured clear disanee ahead’ provision of the then existing statute, was properly submitted to the jury.”

See also Erdman v. Mestrovich, 155 Ohio St. 85, 97 N.E.2d 674 (1951), recognizing in dictum that the statute would be applicable where “there is evidence tending to show that the pedestrian came into the operator’s assured clear distance ahead at a point sufficiently distant ahead of the motor vehicle as to have permitted the operator, in the exercise of ordinary care, to have stopped his motor vehicle before striking the pedestrian.”

We are not referred to, nor do we find, any decisions by the Supreme Court of Ohio applying the statute to collisions involving vehicles traveling on intersecting roads. See Blackford v. Kaplan, 135 Ohio St. 268, 272, 20 N.E.2d 522, 525 (1939) (“The doctrine of assured clear distance has no application to drivers of automobiles approaching an intersection on different intersecting roads under ordinary circumstances.”) In Sherer v. Smith, 155 Ohio St. 567, 99 N.E.2d 763 (1951), however, application of the rule was precluded only by the fact that the defendant did not observe the plaintiff’s automobile approaching on an intersecting street until a second before the crash, affording the defendant no reasonable opportunity to stop his vehicle.

We conclude that the District Court correctly determined that the evidence in the present case supported a jury instruction respecting Appellant’s duty under the assured-clear-distance-ahead statute. It was stipulated that Appellee saw Appellant’s vehicle approaching at a distance of approximately 700 to 800 feet when he pulled from the stop sign on Route 38 and proceeded uninterruptedly across the intersection. Moreover, Appellant testified that she was approximately 600 feet west of the intersection when she first observed Appellee’s vehicle, which was blocking both eastbound lanes of Route 40 at that point in time. This evidence created a question of fact as to Appellant’s compliance with the assured-clear-distance-ahead statute, warranting a jury instruction with respect thereto.

We do, however, find merit in Appellant’s further claim that the District Court erred in failing to instruct the jury respecting the exception to the assured-elear-distance-ahead doctrine where another vehicle suddenly enters the driver’s path. This exception was recognized in Sherer v. Smith, 155 Ohio St. 567, 99 N.E.2d 763 (1951) (paragraph one of the syllabus) as follows:

“The ‘assured-clear-distance-ahead’ rule contained in Section 6307-21, General Code, has no application in a situation where a person, motor vehicle or other object suddenly enters the path of another motor vehicle in such manner that the operator of such other motor vehicle is afforded no reasonable opportunity to stop his vehicle and avoid a collision.”

The inverse of this exception was set forth in Sherer v. Smith, 155 Ohio St. 567, 99 N.E.2d 763 (1951) (paragraph two of the syllabus):

“For such rule to apply it must appear that a person, motor vehicle or other object came into the view of the operator at a point sufficiently distant ahead to enable such operator, in the exercise of ordinary care, to stop his vehicle and avoid a collision. (Erdman v. Mestrovich, 155 Ohio St., 85, 97 N.E.2d 674 approved and followed.)”

The evidence before the District Court established that Appellee proceeded into the path of Appellant after Appellee observed Appellant’s vehicle approaching at a distance of approximately 700 to 800 feet. Appellant testified that after first observing Appellee’s unit across both eastbound lanes when she was approximately 600 feet west of the intersection, she attempted to stop but was unable to, and she therefore swerved to the right, passing behind Appellee’s unit and losing control as she returned to the roadway.

This evidence created a question of fact as to whether or not Appellant had a reasonable opportunity to stop her vehicle and thereby avoid a collision with Appellee’s unit. A finding that Appellee’s entry into Appellant’s path afforded Appellant no such opportunity would remove her from the duty otherwise imposed by the assured-clear-distance-ahead statute. The jury, however, was precluded from making such a finding on this question by the District Court’s failure to give an instruction respecting the sudden entry exception to the statute.

The judgment of the District Court is therefore vacated and the case is remanded for a new trial.

      . It should be noted that the District Court also instructed the jury on Ohio’s right-of-way, through-highway statute and Ohio’s doctrine of contributory negligence. Under the latter, a plaintiff whose contributory negligence proximately caused the accident is totally barred from recovery.

      . There was nothing in the evidence which precluded a jury determination that Appellant, through the exercise of ordinary care, could or could not have stopped within the distance separating her vehicle from Appellee’s unit under the prevailing conditions.

      . In view of our disposition of this appeal, we find it unnecessary to expressly rule upon Appellant’s additional claim that the District Court erred in refusing to give a requested instruction on the sudden emergency doctrine. Suffice it to say that the substance of this doctrine is incorporated in the sudden entry exception to the assured-clear-distance-ahead rule discussed in the text.