Petition — Howmet Corp. v. Mercantile National Bank of Chicago
Supreme Court brief1976
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IN THE
Supreme Court of the United Stateg!5 1976
OCTOBER TERM, 1975;
HOWMET CORPORATION, HOWMEDICA, INC., and
WAYNE PHARMACAL SUPPLY CO., INC.,
Petitioners,
v.
MERCANTILE NATIONAL BANK OF CHICAGO,
HAROLD I. SNYDER, SNYDER MANUFACTURING
CO., INCORPORATED, ZIMMER MANUFACTUR-
ING COMPANY,
Respondents.
——
PETITION FOR WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR
THE SEVENTH CIRCUIT
JoserH J. C. RANALLI
Counsel for all Petitioners
330 Madison Avenue
New York, New York 10017
Of Counsel
Cuar.es J. BRowN
Main Street
Windham, New York 12496
Attorney for all Petitioners
Pennie & EpMoNDsS
330 Madison Avenue
New York, New York 10017
Attorneys for all Petitioners
Barrett, Barrett & McNacny
Fort Wayne, Indiana 46802
Counsel for Petitioner Wayne Pharmacal
Supply Company, Inc.
INDEX
PAGE
es eat ce ected ilu haseeewies-ee 2
I ee el oe ee eben ehaeéeen
I ee eeu aew ees heneee 2
a oo teen ee cuban ube ke 3
es ead s cece hsnseeee pes 3
A. History of the Litigation .................. 3
a ea ee ee eee etek ees 4
Ee PS. ce densedasdnuescus 5)
Reasons for Allowance of the Writ .................
A. The Trial Court Has Failed To Comply With
The Strict Requirements Set Out In Graham 7
B. The Court of Appeals Has Made A Serious
Departure From The Analytical Standards
Which This Court Has Mandated For The De-
termination Of The Issue Of Obviousness .... 9
C. Federal Courts Should Not Refuse To Hear
Evidence That The Plaintiff Seeking To En-
force A Patent Misappropriated Legal Title
ay GEE PEE 0c 0's. ude cednaneseseess 11
~
RR EE Ape ane a He ee ape eae Eee 14
INDEX TO APPENDIX
PAGE
Opinion of the Court of Appeals .................. Al
Order of Affirmance of Court of Appeals ........... A8
Order of Court of Appeals Denying Petition for
EE d:cnnseh ease sieenkadessscueees knee A9
Order of the District Court on Amending Judgment A10
PI ED 6.4.6 406054 CisEbcacecnnssdseeess All
Order Adopting Proposed Findings ................ Al3
Judgment of the District Court .................... Ald
Memorandum and Opinion of the District Court .... A16
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment
DE 24.5 sk vebENNidesucanneescauesresetense; A38
The Relevant Statute Involved (35 U.S.C. as | .. ASE
CITATIONS
PAGE
Cases:
Cloud v. Standard Packing Corporation, 376 F.2d 384
ee ees Oecd et lege s dene vecw see 9
Diversey Corporation v. Charles Pfizer and Co., 255
F.2d 60 (7th Cir.) cert. den., 358 U.S. 876
NS ee ee (idishehheK Cavuennvs 12,13
Gass v. Montgomery Ward & Co., 387 F.2d 129 (7th
EE, PASE wh ca bon Von widin be ke eb es cae 9,11
Graham v. John Deere Co., 383 U.S. i (1966) . .2, 5, 7, 8, 9,
10, 11
In re Frost, —— F. Supp. ——, 185 U.S.P.Q. 729
ee 12
Mercantile National Bank et al. v. Quest Inc. et al.,
303 F. Supp. 926 (N.D. Ind. 1969), aff’d, 431 F.2d
261 (7th Cir. 1970), cert. den., 401 U.S. 956
EE Shhh Gia k 4 Conde ns ua cuneesense o:3 5, 8, 10
Monsanto v. Rohm ¢ Hass Company, 456 F.2d 592
(3rd Cir.), cert. den., 407 U.S. 934 (1972) ...... 12
Norton v. Curtis, 433 F.2d 779 (CCPA Ee. 12
Pfizer, Inc. v. International Rectifier Corp., F,
Supp. , 186 U.S.P.Q. 511 (D. Minn. July 16,
SE” MAGais CACO CUE Aida Sede ou 600d vec ducncc<. 12
Popiel Bros., Inc. v. Schick Electric Inc., 494 F.2d 162
EE MN i be ink co ecckuscakendeccnc<. 9
Precision Co. v. Automotive Maintenance Mach. Co.,
ee 11,12
Seismograph Service Corp. v. Offshore Raydis, 135
F. Supp. 342 (E.D. La. 1955), aff'd, 263 F.2d 5
RNR REGRET ga a 12
Statutes:
ee Oe 2
I EE cine hb ch oduwkeacwtns codkdisiwccan 2,3, 7
IN THE
Supreme Court of the United States
OCTOBER TERM, 1975
Howmet Corporation, Howmenica, Inc., and
Wayne PxHarmacat Suppty Co., Inc.,
Petitioners,
Vv.
MercanTILE National Bank or Cuicaco, Harotp I. Snyper,
Syyper Manvracturine Co., IncorporaTep, ZIMMER
Manvuvacrurinc Company,
Respondents.
-s
vr
PETITION FOR WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR
THE SEVENTH CIRCUIT
Petitioners, Howmet Corporation, Howmedica, Inc., and
Wayne Pharmacal Supply Co., Inc. pray that a Writ of
Certiorari issue to review:
[. The November 21, 1974 Judgment and November 29,
1974 Amended Judgment of the United States District
Court for the Northern District of Indiana, South Bend Di-
vision in the above-entitled case;
II. The October 16, 1975 Opinion of the United States
Court of Appeals for the Seventh Cireuit which affirmed
said Judgment and Amended Judgment; and
III. The November 24, 1975 Order of the Court of
Appeals which denied defendants’ Petition For Rehearing
With Suggestion For Rehearing En Banc.
Opinions Below
The Judgment, Amended Judgment and the Memoran-
dum and Opinion together with the Findings of Facts and
Conclusions of Law of the District Court are unreported,
however they are reprinted in the Appendix at pages Al0
to Ad3’. The October 16, 1975 Opinion of the Court of
Appeals is also unreported, however it is reprinted in the
Appendix at pages Al to A8. The November 24, 1975
Order of the Court of Appeals is reprinted at page AQ.
Jurisdiction
The judgment of the Court of Appeals was entered on
October 16, 1975. A timely Petition For Rehearing With
Suggestion For Rehearing En Banc was denied on No-
vember 24, 1975. The jurisdiction of this Court is invoked
pursuant to 28 U.S.C. § 1254(i).
Questions Presented
1. Whether the Trial Court must itself perform the
mandated step-by-step analysis delineated by this Court
in Graham v. John Deere Co., 383 U.S. 1 (1966) in deter-
mining the issue of obviousness under 35 U.S.C. 103?
Il. Whether, in the absence of findings by the Trial
Court is sufficient to meet the mandate of Graham, the
findings from an earlier suit on the patent, where the par-
ties of the prior art were different, can be incorporated
by reference in order to correct the error?
Ill. Whether compliance with the clean hands doctrine
in a patent action for an injunction and an accounting can
be circumvented on the theory that third party equities
are insufficient in law to permit a claim of unenforceability,
3
in the face of persuasive evidence that the plaintiff-
patentees obtained their rights to the patent by a fraud
perpetuated on its rightful owner?
Statutes Involved
Title 35 U.S.C. § 103, which may require consideration
in reviewing this Petition, is printed in the Appendix at
page A54.
Statement of Facts
A. History of the Litigation
This action was commenced on November 21, 1969 with
the filing of a Complaint in which plaintiffs sought a judg-
ment holding valid and infringed claims 3 to 14 of United
States Letters Patent No. 3,115,138 issued December 24,
1963 to Dr. Robert T. McElvenny, Harold I. Snyder and
Gregory B. Sullivan (hereinafter ‘‘McElvenny et al.
patent”) and further sought damages and an injunction.
Defendants by their answer and supplemental answer
denied infringement and raised affirmative defenses of
validity and unenforceability. Discovery was extensive
and involved depositions of thirty-two witnesses in five
states and also three foreign countries.
Trial was held from March 20 through March 24, 1972,
the transcript of those proceedings numbered some 1826
pages. There were numerous documents and physical
exhibits and extensive post-trial briefs.
On March 15, 1974 the District Court handed down a
Memorandum and Opinion (A16-A37) holding for plain-
tiffs on the issues of validity and infringement, denying
claims for attorneys fees and exemplary damages, and
inviting plaintiffs to submit proposed Findings of Facts
and Conclusions of Law. Plaintiffs did so on May 13, 1974
(A38-A53). The District Court adopted those findings
4
and conclusions without change and entered a judgment
in plaintiffs’ favor on November 21, 1974 (Al5). A fur-
ther order and an amended judgment was entered on No-
vember 29, 1974 (Al11-A12) providing for an injunction
and an accounting omitted from the first judgment.
Defendants appealed from the District Court’s judg-
ment and amended judgment to the United States Circuit
Court for the Seventh Circuit and on October 16, 1975
that Court affirmed the District Court’s judgment (A1-A8).
Defendants then sought a rehearing with a suggestion for
the rehearing to be held en banc. The Court of Appeals
denied the request for rehearing in an Order dated
November 24, 1975 (A9).
B. The Parties
Plaintiff Mercantile National Bank of Chieago is the
executor of the estate of patentee-assignee® McElvenny,
now deceased. Plaintiff Harold I. Snyder is one of the
patentees. Plaintiff Snyder Manufacturing Company, Ine.
is the licensee under the McElvenny et al. patent. Plaintiff
Zimmer Manufacturing Company is the exclusive sales
licensee under the patent.
Defendant Howmedica Inc. manufactures and sells medi-
cal equipment in the United States and elsewhere through-
out the world. Defendant Howmet Corporation has been
substituted in this action for another company of the
same name and had transferred to defendant Howmedica
all assets and liabilities in connection with the manufac-
ture annd sale of the wound suction devices here in issue.
Defendant Wayne Pharmacal Supply Company is a dis-
tributor of the products accused of infringement.
* Gregory Sullivan, the third inventor on the McElvenny e? al.
patent, assigned his interest in the patent to Robert E. McElvenny
by an agreement executed in 1961.
C. Background
The McElvenny et al. patent here in suit deals with a
so-called “evacuator” employed in surgery for post opera-
tive wound drainage (Al6). District Judge Grant in a
prior suit entitled Mercantile National Bank et al. v. Quest
Inc. et al., 303 F. Supp. 926 (N.D. Ind. 1969) held the
McElvenny et al. patent valid and infringed. The United
States Court of Appeals for the Seventh Circuit affirmed
the Quest decision at 431 F.2d, 261 (7th Cir. 1970) and
certiorari was denied at 401 U.S. 956 (1971) (Al).
In the trial of the present suit the defendants introduced
evidence of prior art not before the Court in the Quest
suit and in addition introduced two new issues.
The new prior art relied upon by the defendants deals
with an article written by an English plastic surgeon, Dr.
John Barron (A25). Dr. Barron sometime in 1955 had
began to experiment with a simple wound suction pump
for close wound evacuation which would be low in cost,
noiseless, breakage free, reasonably dependable and most
importantly, permit the patient to ambulate. The device
became known as the Barron Squeeze Bottle (A45). It
was translucent, deposable, simple to operate, continuously
operable and cost considerably less than any other device
then known. On September 10, 1959 Dr. Barron published
an article (A45) describing the Barron Squeeze Bottle
and its method of operation which defendants principally
relied upon as being applicable prior art that a Court
must consider in any mandated Graham analysis to deter-
mine the issue of obviousness.
The District Court (Finding No. 13, A41) found, how-
ever, that there was no device at the time the patentees
made their invention for closed wound evacuation (the
patent was filed July 14, 1960) which was “continuously
operable, self-acting, closed wound suction device for
ambulatory human use”; and went on to hold, in the Court’s
only comment on the issue of obviousness of McElvenny
kK
et al. patent in view of the Barron article, that:
“The differences between the claimed subject matter
and the prior art Barron Squeeze Bottle would not
have been obvious to a personal or ordinary skill in
the art of medical appliances in the period of 1959-60
when the invention covered by U.S. Patent No.
3,115,138 was made.” (Finding 33, A45)
The new issues introduced by defendants in the trial of
this suit were: (a) whether or not the patentees had
derived their invention from another (A27-A29); and (b)
whether the present title holders of the patent in suit
were unable to enforce their rights under the patent be-
cause they, or their privies in interest, did not come into
Court with clean hands since they had obtained their rights
to the patent by fraud and misconduct (A29-37).
Defendants in attempting to substantiate the defense
of unenforceability due to plaintiffs’ unclean hands relied
on the fact that at least one of the joint inventors (Gregory
Sullivan) had breached his duty to assign his interest in
the patent to his employer Richey Manufacturing Corpo-
ration (hereinafter “Richey”) for which he was hired to
invent (A34). This breach of duty to assign was but the be-
ginning of a series of nefarious acts, including back dating
an assignment more than three months before the declared
bankruptey of Richey Manufacturing Corporation, which
ultimately led to the secreting of Richey’s right—to at
least Sullivan’s one-third interest in the McElvenny et al.
patent from the Trustee in bankruptcy, and in fact insured
his ignorance of its existence (A36-37).
Most, if not all, of the activity in conjunction with secret-
ing the McElvenny et al. patent from the other assets of
bankrupt Richey, and the assigning of Sullivan’s one-third
interest to Robert E. McElvenny, was carried out when
Dr. Robert T. McElvenny was the Chairman of the Board
of Richey.* Further, the other named patentee, Harold
* It is also interesting to note that almost all of the hundreds
of Richey stockholders were professional colleagues of Dr. McEl-
venny who had invested in Richey at his behest.
: 7
I. Snyder, was President of Richey for that period of time
just before the petition for bankruptcy was filed.
_ Reasons for Allowance of the Writ
This writ should be allowed in order to:
(1) Grant a remand so that the Trial Court may comply
with the strict requirements delineated by this Court in
Graham in the proper determination of the issue of valid-
ity ;
(2) To permit this Court to rectify what defendants re-
spectfully suggest comprises a serious departure by the
United States Court of Appeals for the Seventh Circuit
from the mandated standards which govern the manner of
determining the issue of obviousness prescribed by this
Court in Graham; and
(3) To remand the Seventh Circuit's Opinion in that it
cominitted error in finding that the equitable defense of un-
clean hands on the part of the plaintiffs or their privies in
interest which would render the patent unenforceable was
unavailable, as a matter of law, to the present defendants.
A. The Trial Court Has Failed To Comply With The Strict
Requirements Set Out In Granam
According to the mandate of this Court in Graham vy.
John Deere & Co., supra, the findings of fact in a determina-
tion of obviousness under 35 U.S.C. § 103 must proceed as
follows:
“. .. the scope and content of the prior art are to be
determined; differences between the prior art and the
claims at issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved. Against
this background the obviousness or non-obviousness of
the subject matter is determined.” 383 U.S. at 17.
8
This Court then went on to hold:
‘*We believe that stric’ observance of the requirements
laid down here will result in that uniformity and
definitiveness which Congress called for in the 1952
Act.’’ 363 U.S. at 18. (Emphasis added.)
The only finding by the Trial Court directed to the
“scope and content” of the prior art is Finding 12 (A40)
and it is taken almost verbatim from the prior District
Court's decision in Quest (303 F. Supp. at 928-29). It does
not even mention the Barron article nor any of the other
prior art references cited by defendants in this case.
The Trial Court also failed to compare claims 3 to 14 of
the MecElvenny ef al. patent (the claims in suit) to the
prior art, particularly to the Barron article, and further
the Court made no findings as to the differences between
the prior art and the claims. The only finding as to the
differences between the Barron article and the claims to
determine whether or not the claims would be obvious are
wholly conelusionary (Finding 33, A45). The Court then
merely stated that the Barron article does ‘‘not affect
. validity” of the claims (Finding 35, A45) and that the
other cited patents do not render the claimed subject matter
obvious (Finding 37, A46). At no point did the Trial Court
make any finding on the specific differences between the
elaims and the prior art.
As to findings regarding the level of skill in the art, there
simply are none. In the prior Quest case, plaintiffs had
offered the expert testimony of three doctors and a nurse
to establish the level of ordinary skill in the art (431 F.2d
at 266). There was no such expert witnesses’ testimony
presented in this case. The only expert witness who testi-
fied for plaintiffs was a patent attorney (Finding 38, A46)
who admitted he was unqualified to give opinion testimony
as to this subject.
9
Heretofore the Graham analysis clearly delineated by
this Court had been consistently followed in the Seventh
Cireuit. See Cloud v. Standard Packing Corporation, 376
F.2d 384 (7th Cir. 1967), Gass v. Montgomery Ward € Co.,
387 F.2d 129 (7th Cir. 1967), Popiel Bros., Inc. v. Schick
Electric Inc., 494 F.2d 162 (7th Cir. 1974). In fact ina
recent pronouncement by that Court in Poptel Bros., Inc., it
set forth the mandated step-by-step analysis of Graham
as follows:
“In determining the obviousness or non-obviousness of
a purported invention, the Trial Court must make a
number of factual inquiries and specifically express, as
did the District Court herein, its findings as to
each. ... The Court must determine (1) the scope and
content of prior art; (2) the differences between the
prior art and the claim or claims at issue; (3) the level
or ordinary skill in the pertinent art; (4) the presence
or absence of such secondary factors as commercial
success, long felt but unsolved needs and failure of
others.” 494 F.2d at 167. (Emphasis added.)
Where the Trial Court has wholly failed to apply the
Graham analytical technique, in a Circuit whose under-
standing and direction in requiring strict compliance with
the dictates of Graham are so clear, the matter should be
remanded for a determination of the issue of obviousness.
B. The Court Of Appeals Has Made A Serious Departure
From The Analytical Standards Which This Court Has
Mandated For The Determination Of The Issue Of
Obviousness
The Court of Appeals’ entire comment on the matter
of the Trial Court’s Graham analysis in this case is set
forth in its Opinion at pages A5 to A6 in the Appendix
as follows:
“Defendants also argue that the District Court neg-
lected to make the step-by-step prior art analysis pre-
|
10
scribed by Graham v. John Deere Co., 338 U.S. 1, 17-
18 (1966); see also Popiel Brothers, Inc. v. Schick
Electric, Inc., 494 F.2d 162 (7th Cir. 1974). Here
again, it must be remembered that this is the second
time the patent and the prior art have been con-
sidered by the District Court and this court. That
which has been done before need not be done again
except to the extent the earlier analysis can be dem-
onstrated to have been based on incomplete or errone-
ous information, Considering the two cases together
we think there has been substantial compliance with
the requirement of the Graham case.”
added.) ~ Gaeta
Barron article was not of record in that case and as dis-
cussed above it was not done in this ease.
It must be borne in mind that the Graham analysis is a
rational thought process which must be carried out by the
Trial Court. Certain observations are necessary (e.g. the
content of the art), certain judgments must be made (e.g.
the difference between the claims in issue and the prior
art), certain conclusions then must be reached. This
process cannot somehow be split between two cases where
conclusions reached in Quest on the Dakin syringe cannot
compensate for the absence of such analysis as to the
Barron article in this case.
It is inconceiveable that the high degree of orderly
analysis mandated by Graham, can possibly be achieved
by this quiltwork piecing together of two Separate deci-
sions,
11
There is no authority for it known to defendants nor
has the Court of Appeals cited any.
As discussed above, the Seventh Circuit has been con-
sistent in requiring strict compliance with the Graham
analytical process, in fact in Gass the majority of the
Court there rejected Judge Knoch’s attempt to shore up
the deficiency of the District Court’s failure to comply
with Graham, where in his diserting opinion he stated:
“Reluctantly I find myself in disagreement with the
majority. It seems clear to me that the District Judge
did follow through the requisite analytical steps in
determining that the subject matter here was a new,
original and nonobvious combination, despite his
omission to say so in so many words. From a con-
sideration of his opinion as a whole . . . I would
affirm the judgment of the District Court.” 387 F.2d
132. (Emphasis added.)
Where a Court has refused to find compliance with
Graham by viewing a single District Court’s opinion “as a
whole”, it certainly should not be permitted to find com-
pliance by relying on a prior decision to shore up a Dis-
trict Court’s opinion that has completely failed to comply.
This then not only runs contra to Graham but also the
law as it presently exists in the Seventh Circuit.
C. Federal Courts Should Not Refuse To Hear Evidence
That The Plaintiff Seeking To Enforce A Patent Mis-
appropriated Legal Title From A Third Party
This Court in Precision Co. v. Automotive Maintenance
Mach. Co., 324 U.S. 806 (1945), laid down the basic equit-
able principle defining the climate from which a patent is
expected to spring, as follows:
“The far-reaching social and economic consequence of
a patent, ... give the public a paramount interest in
seeing that patent monopolies spring from backgrounds
12
free fraud or other inequitable conduct .. .’’ 324 US.
at 816. (Emphasis added.)
The equitable doctrine espoused in Precision, has con-
sistently heen followed to the present day, see Pfizer, Inc. v.
International Rectifier Corp., F. Supp. ——, 186
U.S.P.Q. 511 (D. Minn. July 16, 1975); In re Frost, ——
F. Supp. ——, 185 U.S.P.Q. 729 (D. Del. April 11, 1975);
Monsanto v. Rohm ¢ Hass Company, 456 F.2d 592 (3rd Cir.
1972), cert. den., 407 U.S. 934 (1972) ; Sewsmograph Service
Corp. v. Offshore Raydis, 135 F. Supp. 342 (E.D. La. 1955),
aff'd, 263 F.2d 5, (5th Cir. 1959): and Norton v. Curtis, 433
F.2d 779 (CCPA 1970).
The Court in Seismograph emphasizes the breadth of the
standard the Federal Courts are now seeking to establish
to measure the integrity expected to be exercised by some-
one seeking the powers a patent has to offer, where it
stated:
“The robber baron morality of another day is no
longer acceptable. Courts are insisting on increasingly
higher standards of commercial integrity. [cases cited].
It has been long recognized that any patent obtained
through fraud and dishonest dealings is unenforceable
in a court of equity. [cases and authorities cited, in-
cluding Pomeroy’s Equity Jurisprudence, 5th Ed.,
§§ 385, 397, 401 and 402a]” 135 F. Supp. at 354.
. It would seem that with the merging of the activities and
Jurisdiction of many of the Chancery Courts with Courts
of Law many Judges have lost sight of the fact that in their
dealings with matters before them they are not paralyzed
by precedent to the extent that they cannot exercise their
equitable powers when faced with a unique or unusual
situation. The Seventh Cireuit had no difficulty in recog-
nizing this fact in Diversey Corporation v. Charles Pfizer
and Co., 255 F.2d 60 (7th Cir.), cert. den., 358 U.S. 876
(1958), where in affirming the District Court ’s dismissal of
13
a plaintiff’s complaint in a patent infringement suit the
Court stated:
“A court of equity will not entertain the suit of one
who by deceit or any unfair means has gained an ad-
vantage as plaintiff has here. To aid this plaintiff
would make the court an abettor of inequity. Bein v.
Heath, 1848, 6 How. 228, 47 U.S. 228, 247 [Reprint
241, 261] 12 L.Ed. 416; Precision Instrument Mfg. Co.
v. Automative Maintenance Machinery Co., 1945, 324
U.S. 806, 814-815, 65 S.Ct. 993, 89 L.Ed. 1381.
It is obvious from this record that the conduct of
Diversey was willful and morally reprehensible. The
District Court was justified in finding, as it did, that
Diversey was guilty of unclean hands and in dismiss-
ing the complaint for that reason.” 255 F.2d at 62.
The Court of Appeals in reviewing defendants’ defense
of unenforceability held the defense was “insufficient as a
matter of law” (A6) and went on to state:
“Tt has long been settled that a third party’s equitable
rights in a patent may not be asserted as a defense in
an action for infringement brought by the owner of
[present legal] title to the patent.” Appendix page A6.
The Court then, in a footnote, analogized this rule to an
action to quiet title or for trespass to land as though one
could equate private realty questions to the public interest
in fair enforcement of patent rights.
Under the circumstances of this case it would be un-
conscionable for this Court to continue to lend aid to such
reprehensible inequities by allowing the plaintiffs to con-
tinue to enforce this patent, when the genesis of the Mc-
Elvenny et al. patent is crowded with gross misconduct
and where the proponents or their privies possess such un-
clean hands. This is especially true here because the in-
equity which forms the basis of defendants’ claim of un-
enforceability is wholly purgeable. Plaintiffs are presently
————
14
engaged in suit with both the trustee in bankruptcy and
the former stockholders of Richey concerning the miscon-
duct which forms the basis for defendants’ assertion of un-
clean hands.
Defendants cannot conceive of a more fitting set of cir-
cumstances for the invocation of the age old equity maxim
that “he who comes into Court seeking equity [injunction
and accounting] must come into Court with clean hands.”’
This is certainly true where the parties seeking equity are
patentees or their privies, persons this Court has con-
sistently held to a very high level of moral conduct because
of their adverse relationship to the public interest.
In view of the above this Court should remand this case
to the Court of Appeals with direction to review the issue
of unenforceability of the McElvenny et al. patent.
CONCLUSION
For the reasons presented, this Petition for a Writ
of Certiorari should be granted.
JoserH J. C. Ranatu
Counsel for all Petitioners
Of Counsel
Cuartes J. Brown
Main Street
Windham, New York 12496
Attorney for all Petitioners
Pennie & Epmonps
330 Madison Avenue
New York, New York 10017
Attorneys for all Petitioners
Barrett, Barrett & MeNaeny
Fort Wayne, Indiana 46802
Counsel for Petitioner Wayne Pharmacal
Supply Company, Inc.
— eS ee
Al
Opinion of the Court of Appeals.
IN THE
UNITED STATES COURT OF APPEALS
For tHe Seventn Circuit
No. 75-1081
MercantILe Nationau Bank or Cuicaco, Haro.tp I. Syyper,
Snyper Manvuracturtrne Co., INcorporaTeD, ZIMMER
Manvuracturnine, Company,
Plaintiffs-Appellees,
Vv.
Howmet Corporatron, Howmenica, Inc., and Wayne
PuHarmacaL Suppty Co., Ivc.,
Defendants-Appellants.
On Appeal from the United States District Court,
or the Northern District of Indiana,
South Bend Division—No. 69 S 194
Jesse E. Escusacn, Judge.
ArGvuep Sepremser 15, 1975 — Decipep Ocroser 16, 1975
Before Castie, Senior Circuit Judge, and Swycert and
Tong, Circuit Judges.
Tone, Circuit Judge. We are asked in this appeal to
reexamine the issue of the validity of the patent held
valid by this court five years ago in Mercantile National
Bank of Chicago v. Quest, Inc., 431 F.2d 261 (7th Cir.
1970), cert. denied, 401 U.S. 956 (1971). The District Court
decided this issue, as well as issues of infringement,
inventorship, and enforceability, in favor of the patent
owner. We affirm.
Ce
A2
Opinion of the Court of Appeals.
The patent, which covers a portable device for pro-
viding continuous-suction evacuation of a closed surgical
wound through a needle and tube connected to a spring-
loaded plastic chamber, is adequately described in our
earlier opinion. With the exception noted below, the same
may be said of the prior art against which its obviousness
must be judged.
A litigant who attacks the validity of a patent before
a court that has held the patent valid in a prior case has
the burden of persuading the court that there is a ‘‘ma-
terial distinction’’ between that case and the case at bar.
See American Photocopy Equipment Co. v. Rovico, Inc.,
384 F.2d 813, 815-816 (7th Cir. 1967), cert. denied, 390
U.S. 945 (1968). For reasons of stability in the law and
judicial economy, we ordinarily will not reexamine de novo
the decision of the court in the prior case but rather will
limit ourselves to a consideration of whether, assuming
the correctness of the earlier decision, additional facts
not before the court in the prior case require a different
result. This is but an application of the doctrine of stare
decists.
In the case at bar, defendants argue that the material
distinction between the facts relating to validity in this
and the earlier Quest decision, supra, is that a relevant
portion of the prior art, namely, the Barron bottle, was
not before the court in that case. The Barron bottle was
disclosed in an article by Dr. J. N. Barron in the July
1959 issue of the British Journal of Plastic Surgery and
was therefore a part of the prior art, if, as we assume
for present purposes, the determinative date of the inven-
tion of the patent was the date of the application, July
14, 1960. The device described by Barron used a cylin-
drical plastic bottle as the chamber in which the negative
pressure is created and maintained. After being squeezed,
or compressed, the bottle slowly returned to its original
A3
Opinion of the Court of Appeals.
shape and, as it did so, developed a negative pressure
which caused fluid in the wound to be drawn through a
connecting tube into the bottle. Defendants argue that
this device renders obvious the device disclosed in the
patent, which uses a chamber resembling a concertina,
with spring-loaded end pieces and bellows-type sidewalls,
to develop the negative pressure and receive the fluid
from the wound.
While the Barron bottle was not a part of the prior
art shown in the earlier case, that art did include a device
known as the Dakin syringe. Though somewhat different
in shape, the Dakin syringe is nonetheless very similar
to the Barron bottle in operation and principle. Defend-
ants’ counsel, in fact, conceded this at oral argument but
argued that the prior art references before the court in
the earlier case did not disclose the use of the Dakin
syringe for continuous wound evacuation, while the
Barron article showed the use of the Barron bottle for
this purpose.
The issue is thus narrowed to whether the record in
Quest discloses that the Dakin syringe could be used for
continuous wound evacuation.’ Clearly it does. As this
court there observed, after describing the surgical tech-
nique of post-operative wound evacuation by negative
pressure,
‘‘This surgical technique is now commonly used by
surgeons; however, the method of providing the suc-
tion or negative pressure has varied. Compressed bulb
syringes may in some cases be satisfactory but are
not generally used.’’ 431 F.2d at 264.
1 Whether it was actually so used is, as defendants concede, im-
material, since mere publication of information rendering the sub-
ject matter of the patent obvious would cause the patent to be
invalid. See 1 Walker, Patents, § 60 (2d ed. 1964).
A4
Opinion of the Court of Appeals.
The court also referred to an article contained in the
prior art exhibits:
‘Defendant further relies on the Maloney article,
defendants’ exhibit as prior art. The article describes
‘Apposition and Drainage of Large Skin Flaps by
Suction,’ and is a further development of this tech-
nique. However, the suction pressure recommended
by Maloney is ‘either a bottle with a negative under-
water seal or an electric or water pump’ or ‘the use
of a syringe of the Dakin variety * * *.’’’ Jd. at 265.
The article itself, which appeared in The Australian and
New Zealand Journal of Surgery, describes the technique
of continuous wound evacuation by suction and various
devices that can be used for that purpose and states as
follows:
‘Another method of obtaining a negative pressure
is by the use of a syringe of the Dakin variety which
is attached to the drainage tube after the rubber bulb
has been compressed. It gives a means of suction
which is readily portable for ambulant patients.’’
Defendants argue that the Dakin syringe appeared from
the record in the Quest case to be less satisfactory than
the Barron bottle appears from this record to have been,
and that the belief that the syringe was not satisfactory
was the basis for the court’s finding of invention in the
Quest case. It is true that the court found the results of
the methods of obtaining negative pressure shown in the
prior art not to be ‘‘as advantageous as the results
obtained from the patent at issue.’’ 431 F.2d at 265. But
neither has it been shown in the case at bar that the
Barron bottle achieved results as advantageous as those
obtained from the patent. Moreover, in the Quest case
the court acknowledged that “[c]ompressed bulb syringes
may in some cases be satisfctory but are not generally
SOB ew et ee ed ee
A5
Opinion of the Court of Appeals.
used.’’ 431 F.2d at 264. Defendants have not given us
reason to believe otherwise with respect to the Barron
bottle, nor have they actually demonstrated that the
Dakin syringe was any less satisfactory than the Barron
bottle, or that the Barron bottle was ever in general use.
At most, the record shows that Barron bottles or similar
devices were used by some surgeons who now appear to
have abandoned them. The evidence falls far short of
demonstrating surgical use of the Barron bottle so suc-
cessful as to undercut the court’s conclusion in Quest on
the patent’s improvement over the prior art.
Since the only prior art claimed to be significant which
was not before the court in the earlier case is the Barron
bottle, and yet the use of the very similar Dakin syringe
for continuous wound evacuation was a part of the prior
art before the court in that ease, defendants have failed
to make the necessary showing of a material distinction
between the facts relating to obviousness in the two
eases. We therefore adhere to the holding of Quest that
the subject of the patent was not obvious. In view of
this, it is unnecessary to consider whether the agreed
date of conception, which antedated the Barron article,
is controlling, and the issue whether after conception the
inventors used reasonable diligence in reducing their in-
vention to practice thus becomes academic.
Defendants also argue that the District Court neglected
to make the step-by-step prior art analysis prescribed by
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see
also Popiel Brothers, Inc, v. Schick Electric, Inc., 494
F.2d 162 (7th Cir. 1974). Here again it must be remem-
bered that this is the second time the patent and the prior
art have been considered by the District Court and this
eourt. That which has been done before need not be done
again, except to the extent the earlier analysis can be
demonstrated to have been based on incomplete or erro-
neous information. Considering the two cases together,
A6
Opinion of the Court of Appeals.
we think there has been substantial compliance with the
requirements of the Graham case.
We turn now to the other defense that merits discussion
here, viz., that the patent is unenforceable because one of
the joint inventors breached an equitable duty to assign
his interest in the patent to a third party. Unfortunately
considerable time and expense appear to have been
devoted to discovery and trial on the fact questions
relating to this defense. All this was unnecessary in our
view, because the defense was insufficient in law. It has
long been settled that a third party’s equitable rights
in a patent may not be asserted as a defense in an action
for infringement brought by the owner of title to the
patent. McMichael & Wildman Mfg. Co. v. Ruth, 128 F.
706, 707 (3d Cir. 1904); Yablick vy. Protecto Safety Appli-
ance Corp., 21 F.2d 885, 889 (3d Cir. 1927); Dubilier
Condenser Corp. v. Radio Corp. of America, 34 F.2d 450,
463-464 (D. Del. 1929), rev’d on other grounds, 59 F.2d
305, 59 F.2d 309 (3d Cir. 1932), cert. denied, 287 U.S. 648
(1932); Berghane v. Radio Corp. of America, 6 F.R.D.
561, 563 (D. Del. 1947). We think the rule of these cases
is not affected by the doctrine of Precision Instrument
Mfg. Co, y. Automatic Maintenance Machinery Co., 324
U.S. 806 (1945), which recognizes the right to assert fraud
in the procurement of the patent as an unclean hands
defense. Fraud in the procurement of the patent bears
not merely on the ownership of the patent but on its
* An analogous rule is stated in United States y. Oregon, 295
U.S. 1, 24 (1935) :
“A bill to quiet title may not be defeated by showing that the
plaintiff's interest, otherwise sufficient to support the bil!, is
subject to possibly superior rights in third persons not parties
to the suit.” '
The rule is the same with respect to trespass to land. See, ¢.g.,
Duck Island Hunting & Fishing Club v. Whitnah, 306 Ill. 284,
291, 137 N.E. 840, 843 (1923).
SE
SO Cte 46 — OR ome
AZ
Opinion of the Court of Appeals.
substance and validity, and, moreover, offends the public’s
‘‘paramount interest in seeing that patent monopolies
spring from backgrounds free from fraud or othe. inequit-
able conduct and that such monopolies are kept within
their legitimate scope.” 324 U.S. at 816. No similar con-
siderations support an attempt to assert that a third party
has an ownership interest in the patent.
The remaining questions raised on appeal, infringement
and inventorship,’ are not of sufficient genera! interest or
importance to justify treating them in a published opinion,
under the standards stated in Cireuit Rule 28. They are
adequately disposed of by the findings and conclusions
relating to them contained in the memorandum opinion
of the District Court, which we adopt.
Plaintiffs have not cross-appealed from the District
Court’s denial of damages or attorneys’ fees. Their motion
in this court for an allowance of attorneys’ fees on appeal
is denied, but they will recover their costs.
Judgment of the District Court is affirmed.
AFFIRMED.
A true Copy:
Teste:
Clerk of the United States Court of
Appeals for the Seventh Circuit
On the issue of inventorship, defendants ask us to undertake
an independent analysis of the facts, since the findings below were
based largely upon documentary evidence rather than oral testi-
mony. While the “clearly erroneous” standard of review of Fed.
R. Civ. P. 52(a) as less inhibiting when documentary rather than
demeanor evidence is the basis for the District Corut’s findings
(see Wright & Miller, Federal Practice and Procedure, § 2587
(1971) ), those findings are nevertheless entitled to deference, and
we are unable to say that we have come to a definite and firm con-
vietion that an error has been committed in the findings on in-
ventorship.
A8
Order of Affirmance of Court of Appeals.
Opinion by Judge Tone
UNITED STATES COURT OF APPEALS
For tHE StventH CIRCUIT
Chicago, Illinois 60604
October 16, 1975
Before
Hon. LarHam Castie, Senior Cireuit Judge
Hon. Luruer M. Swyeert, Cireuit Judge
Hon. Puuir W. Toye, Cireuit Judge
Appeal from the United States District Court
for the Northern District of Indiana
South Bend Division
No. 69 8S 194
Eschbach, Judge.
»™
~
MercaNTILE NationaL Bank oF CHIcaco, et al.,
Plaintiffs-Appellees,
No. 75-1081
vs.
Howmet Corporation, et al.,
Defendants-Appellants.
a.
aA
This cause came on to be heard on the transcript of the
record from the United States District Court for the
Northern District of Indiana, South Bend Division, and
was argued by counsel.
cae whereof, it is ordered and adjudged
by this court that the judgment of the said District Court
in this cause appealed from be, and the same is hereby,
AFFirMeED, with costs, in accordance with the opinion of
this Court filed this date.
oneness
A9
Order of Court of Appeals Denying Petition
for Rehearing.
UNITED STATES COURT OF APPEALS
For tHe Sevents Circuit
Chicago, Illinois 60604
November 24, 19....
Before
Hon. LatHam Castie, Sr. Cireuit Judge
Hon. Luruer M. Swyeerr, Cirenit Judge
Hon. Pamir W. Tone, Circuit Judge
Appeal from the United States District Court
for the Northern District of Indiana.
South Bend Division.
(69 S 194)
Qauw
> —
MercanTILE Nationa, Bank oF CHIcAGo, et al.,
Plaintiffs-Appellees,
No. 75-1081
Vs.
Howmet Corporation, et al.,
Defendants-Appellants.
+.
~ 4
On consideration of the petition for rehearing and sug-
gestion that it be reheard en banc filed in the above-
entitled cause, no judge in active service having requested
a vote thereon, nor any judge having voted to grant the
suggestion, and all of the members of the panel having
voted to deny a rehearing,
Ir 1s onpERED that the petition for a rehearing in the
above-entitled cause be, and the same is hereby, Dentep.
A10
Order of the District Court on Amending Judgment.
UNITED STATES DISTRICT COURT
FOR THE
NortHERN District oF INDIANA
SoutH Benp Division
Crvim No. 69 S 194
»
4
MercantiLe NationaL Bank or Cuicaco, Haroup I. SNYDER,
Syyper Manvracrurinc Company, Ivc., ZommerR Manv-
FACTURING COMPANY,
Plaintiffs,
Vv .
Hower Corporation, Howmenica, Inc., and WayNE
PuHarMacaL Suppty Company, Inc.,
Defendants.
ORDER
Pursuant to Fev. R. Civ. P., it is ORDERED that Judgment
on Decision by the Court entered by the Clerk of this Court
on November 21, 1974, be amended to inelude the details of
the Proposed Judgment Order filed May 13, 1974, which
were inadvertently omitted in said Judgment of November
21, 1974.
Rospert A. GRANT
United States District Judge
Enter: November 29, 1974.
All
Amended Judgment.
JUDGMENT ON DECISION BY THE COURT civ 32 (7-63)
UNITED STATES DISTRICT COURT
FOR THE
NortuHern Disrrict or INDIANA
Civil Action File No. 69 S 194
+
MercanTILeE NationaL Bank or Cuicaco, Harotp I. Snyper,
SyypeR Manuracturtnc Company, Inc., and Zimmer
MANUFACTURING CoMPANY
V.
Howmet Corporation, Howmenica, Inc., and WayNrE
PHARMACAL SuppLy CoMPANY.
+
a
This action came on for trial (hearing) before the Court,
Honorable Robert A. Grant, United States District Judge,
presiding, and the issues having been duly tried (heard)
and a decision having been duly rendered.
It is Ordered and Adjudged that pursuant to this Court’s
Order entered November 29, 1974, judgment entered
November 21, 1974, is amended to include the following:
Ten days after entry of this amended judgment a Writ
of Perpetual Injunction shall issue out of and under the
seal of this Court. An accounting shall be made and
rendered as to the extent of the manufacture and sale of
infringing devices by the Defendants, and as to the amount
of damages suffered by the Plaintiffs by reason of the
Defendants’ infringement of Claims 3 through 14 of U.S.
Letter’s Patent No. 3,115,138.
Al2
Amended Judgment.
Defendants and their officers, directors, attorneys,
servants, agents, workmen and employees are hereby di-
rected and required to attend before this Court, or 8
Special Master appointed by the Court, from time to time
as required and to produce such relevant devices, objects,
books, documents, and papers as requested and to submit
to examination, oral or otherwise.
The Plaintiffs shall recover their damages, together with
interest, and costs, as determined by the Court with respect
to the issues raised by the Defendants’ challenge to the
validity of Claims 3 through 14 of U.S. Letters Patent No.
3,115,138, and by the Defendants’ infringement of said
claims.
Dated at South Bend, Indiana this 29th day November,
1974.
Francis T. GRANDYS
Clerk of Court
Al3
Order Adopting Proposed Findings.
IN THE UNITED STATES DISTRICT COURT
NorTHERN District oF INDIANA
Soutu Benp Drvision
Civil Action No. 69 S 194
i.
a
MercanTILE NationaL Bank or Cuicaco, Haroup I. Syyper,
SyypeR Manuracturtne Company, Inc., ZommMer Manv-
FACTURING CoMPANY,
Plaintiffs,
v.
Howmet Corporation, Howmenica, Inc., and WAYNE
PHARMACAL SuppLy Company, Inc.,
Defendants.
...
A
ORDER
Upon consideration of the Proposed Findings of Fact
and Conclusions of Law as heretofore submitted on 13
May 1974, and finding that they do, in fact, conform in all
respects to this court’s Memorandum and Opinion thereto-
fore filed herein; and having afforded defendants ample
time and opportunity to be heard by filing any objections
to said Proposed Findings; and having carefully exam-
ined said Proposed Findings and finding that they do, in
fact, accurately reflect the basic issues in this case; and
inasmuch as the case itself deals with a scientific or tech-
nical matter involving very technical evidence, it is, there-
fore, now
Al4
Order Adopting Proposed Findings.
OrpvereD that the court does hereby approve and adopt
as its own the Findings of Fact and Conclusions of Law
heretofore filed herein on 13 May 1974.
Ir IS FURTHER ORDERED that the Clerk of this court is
hereby directed to enter judgment in accordance with the
Proposed Judgment Order filed herein on 13 May 1974.
Rosert A. GRANT
District Judge
Enter: November 21, 1974
Ald
Judgment of the District Court.
UNITED STATES DISTRICT COURT
FOR THE
NorTHern District or INDIANA
Sovtu Benp Drvision
Crvm Action Fite No. 698194
JUDGMENT
,
v
Mercantitr Nationa Bank or Curcaco, Harotp I. Sxyper.
Snyper Manvracturtnec Company, Inc., and Zimmer
Manvracturinc Company,
vs.
Howmet Corporation, Howmenica, Inc., and Wayne
PHARMACAL Suppiy Company, Inc.
+
>
This action came on for trial before the Court, Honor-
able Robert A. Grant, United States District Judge, pre-
siding, and the issues having been duly tried and a deci-
sion having been duly rendered,
It is Ordered and Adjudged that the Plaintiffs have
and recover of and from the Defendants pursuant to the
Proposed Judgment Order filed on May 13, 1974.
Dated at South Bend, Indiana, this 21st day of Novem-
ber, 1974.
Francis T. Granpys
Clerk of Court
Al6
Memorandum and Opinion of the District Court.
IN THE UNITED STATES DISTRICT COURT
NorTHERN District oF INDIANA
Souta Benp Drviston
Crvtt No. 69 S 194
— *
v
MercantiLe NationaL Bank or Curcaco, Harnorp I. SyyDER,
Snyper Manvuracturine Company, Ivc., and ZIMMER
MaNvuFACcTURING CoMPANY, ae
Plaintiffs,
Vv.
Howwet Corporation, Howmenica, Inc., and WaYNE
PuHarMacaL Supp.ty Company, Inc.,
Defendants.
-.
4
MemoRANDUM and OPINION
This is an action for damages and injunction for in-
fringement of a patent for an “evacuator”, a pump used in
surgery to remove fluid from the human body. Plaintiffs,
as patentees and licensees under United States Letters
Patent No. 3,115,138, bring this action against the defend-
ants Howmet Corporation, Howmedica, Inc., and Wayne
Pharmacal Supply Company, Ine. Plaintiffs allege that
the defendants’ infringement was willful and deliberate,
and therefore seek treble damages. The defendants in their
answer denied the charge of infringement, denied that the
patent was duly and legally issued or that it eoncerned an
invention, and alleged that the plaintiffs’ patent is invalid
and void.
Al7
Memorandum and Opinion of the District Court.
The patent here in suit was issued to plaintiffs on 24
December 1963. It covered a device labeled “Evacuator”,
an “invention” relating “particularly to surgical evacuators
for the removal of fluid from the human body and the like.”
This device of plaintiffs, the Hemovac, as well as defend-
ants’ device, the Porto-Vae (and the earlier Auste-Vac
model), are self-contained, independently operable evacua-
tors designed for the extraction of body fluids while the
patients who use them are ambulatory.
The defendants admit the jurisdiction of this Court: that
defendants Howmet Corporation and Wayne Pharmacal
have sold a product known as Porto-Vac within the North-
ern District of Indiana; that defendants at one time sold
a product designated Auste-Vac in the United States: and
that Howmet Corporation did engage in certain foreign
sales of a surgical evacuator (Surgivac) manufactured by
plaintiff Snyder Manufacturing Company. Thus, these
questions are not in issue here. However, defendants do
raise issues with respect to the equitable ownership, inven-
torship, validity, and enforceability of the patent.
A trial having been conducted and the issues having been
briefed by counsel, this Court, after a careful study of all
the issues involved, finds Patent No. 3,115,138 to be valid
and infringed by the defendants.
Facts:
Post-operative bleeding is one of the chief complications
which faces the plastic surgeon. Many forms of pressure
dressing have been devised in order to prevent fluid from
collecting in wounds. In the past, the evacuation of fluids
from a closed wound after surgery had been accomplished
by: (1) gravity drainage, (2) pressure dressings or com-
pression bandages, and (3) suction or negative pressure.
However, the first two methods, namely, gravity drainage
and compression vandages, involved certain inherent dis-
A18
Memorandum and Opinion of the District Court.
advantages. On the other hand, negative pressure drain-
age has offered several advantages. Most notably, it facili-
tates the evacuation of fluids from 7 types of wounds and
cour the healing or knitting of tissues. .
“Before plaintiffs’ device arrived on the market, continu-
ous wound suction was accomplished by power-driven
pumps, central suction systems, and the evacuated bottle.
These systems also had many disadvantages. In addition
to cost and undependability, the major disadvantage of
vacuum pumps and suction systems was that the ‘post-
operative activity of the patient was severely restricted ;
and, also, this delayed the patient’s recuperation. _
The evacuated bottle permitted greater human activity
inasmuch as the patient could carry the device around
with him. .
In 1959 Dr. Robert T. McElvenny and his partners, Mr.
Gregory Sullivan and Mr. Harold Snyder, set out to devise
a better apparatus for continuous wound suction. In par-
ticular, their goal was to develop a device which would
be self-actuating, which could be carried on the person of
the patient, and which could be constructed at a relatively
low cost. Dr. McElvenny discussed the subject of closed
wound suction on several occasions with a Swiss orthopedic
surgeon named Maurice Mueller. The first meeting be-
tween the two occurred in May of 1959 in Chicago. Also,
in September of that same year, Dr. McElvenny and
Gregory Sullivan visited Dr. Mueller in Switzerland.
Again, in September of 1960, Doctors MeElvenny and
Mueller met at the SICOT meeting, a surgeon’s convention
in New York. ; .
After conducting numerous experiments using plastic
bottles, McElvenny and his associates incorporated a
spring into their device to accomplish continuous wound
suction. This device evolved into, and such experimenta-
tion culminated in, the patented Hemovac.
~~ Yee
Al19
Memorandum and Opinion of the District Court.
Beginning in August of 1962, the defendant Howmet
Corporation, through its predecessor Austenal, became the
foreign distributor for the Hemovae (designated for
foreign sales as the Surgivac). In January of 1963,
Austenal began to consider the prospect of developing its
own wound suction pump, which was to rely on the re-
siliency of the walls of the container for its spring effect
rather than on a spring assembly itself. This decision of
Austenal to develop its own unit was not communicated
to Snyder or McElvenny. In fact, it is admitted that
while Austenal had been distributing Surgivae in Europe,
it received advertising material and marketing information
from Snyder. Also, Austenal knew that the McElvenny,
et al., patent application was pending when it was engaged
in the development of its unit.
On 24 December 1963 the McElvenny, et al., Patent No.
3,115,138 here in suit was issued by the United States
Patent Office. When this oceurred, Austenal sought the
advice of its patent counsel as to whether the McElvenny
patent was valid and infringed by the Auste-Vae product
then under development. Upon counsel’s opinion to
Austenal that its product would not constitute an infringe-
ment upon the McElvenny patent, Austenal continued its
work on Auste-Vae (the equivalent of the porto-Vac)
until it appeared on the market for the first time in 1965.
Plaintiffs formally notified defendants of infringement,
and on 21 November 1969 filed this action alleging in-
fringement of their patent by the present defendants.
INFRINGEMENT IssveE:
Plaintiffs allege that Claims 3 through 14 of their patent
are infringed by the defendants’ accused device. First of
all, plaintiffs charge that claims 4, 5, and 7 through 14 are
directly infringed by defendants’ device. Secondly, plain-
tiffs contend that Claims 3 and 6 of their patent are in-
A20
Memorandum and Opinion of the District Court.
fringed by defendants’ device under the ‘‘doctrine of
equivalents’’.
Claims 4, 5, and 7 through 14:
The thrust of plaintiffs’ argument as to these claims is
that defendants’ Porto-Vac infringes their patent because
the Porto-Vac is identical with the Bel-O-Pac, and the
Bel-O-Paec was held by this Court to infringe plaintiffs’
patent in Mercantile National Bank of Chicago v. Quest,
Inc., 303 F.Supp. 926 (N.D.Ind. 1969); aff’d 431 F.2d 261
(7th Cir. 1970). Plaintiffs maintain that their patent
claims read verbatim upon defendants’ structure and that
the similarities between plaintiffs’ Hemovae and defend-
ants’ Porto-Vae are not accidental, but rather are a re-
sult of defendants’ plan to copy their device. In rebuttal,
defendants contend that their Porto-Vae design stands
closer to that of the Barron Squeeze Bottle, a prior art
structure, than it does to Hemovac.
The first step that the Court must take in evaluating
plaintiffs’ allegations of direct infringement is to resort to
the words of the claim. As stated in Graver Mfg. Co. v.
Linde Co., 339 U.S. 605, 607 (1950), ‘‘If accused matter
falls clearly within the claim, infringement is made out
and that is the end of it’’.
On the basis of the evidence, this Court is of the opinion
that Claims 4, 5, and 7 through 14 of plaintiffs’ patent do,
in fact, read directly upon defendants’ Porto-Vac. In
support of this opinion, and pursuant to the test of Graver,
supra, the Court refers to the particular patent claims
involved and their application to defendants’ structure:
Claim 4 of plaintiffs’ patent, in pertinent part, states that
the patent involves a ‘‘self-contained, independently
operable, evacuator for the extraction of body fluids, for
ambulatory human use . . . comprising in combination,
a container formed of flexible material . . . having a pair
of oppositely facing end walls and a connecting side wall
A21
Memorandum and Opinion of the District Court.
. . for movement of the end walls . . . toward each
other . . . said container being resiliently compressible
. and. . . expansible”. An examination of defend-
ants’ structure reveals that it is identical in its purpose
and structure. Claim 5 of plaintiffs’ patent calls for the
use of “flexible tubing” which has “a multiplicity of juxta-
posed openings for insertion into [a] body wound”.
Defendants’ accused structure employs the exact same use
of such flexible tubing. Patent Claim 7 calls for a ‘‘strap
fastening means” by which the container is to be secured
to the human body for purposes of ambulation. Defend-
ants’ device employs a similar fastening mechanism also
for the purpose of facilitating the ambulation of the
patient. As to Claim 8 of plaintiffs’ patent, it calls for a
“closure means” for the exhaust opening on the container.
Likewise, defendants’ Porto-Vac is equipped with a similar
device. Patent Claims 9 through 14, respectively, employ
tlie use of a valve plug and strap, a needle sharpened at
one end for the purpose of entering the body, and a con-
duit of flexible tubing with a Y-shaped connector for the
accommodation of different size tubing and for the inter-
fitting of single and multiple tubing “reaches”. The Court
finds that defendants’ Porto-Vac is a mirror structure of
these claims as well.
With the above observations in mind, the Court finds
merit in plaintiffs’ argument that defendants’ Porto-Vac in
the present case is identical in means, operation, and struc-
ture with the infringing Bel-O-Pac in the Quest case, supra,
and with the patented Hemovac. Therefore, we find that
Claims 4, 5, and 7 through 14 of plaintiffs’ patent are
directly infringed by defendants’ aceused structure, the
Porto-Vac.
Claims 3 and 6:
As to Claims 3 and 6, plaintiffs support their charge
of infringement by invoking the “doctrine of equivalents”.
A22
Memorandum and Opinion of the District Court.
This doctrine says, in effect, that if two devices do the
same work in substantially the same way, and accomplish
the same result, they are the same, even though they
differ in name, form, or shape. Graver, supra, 339 U.S.
at 608. This means that a patent is infringed only if
there is substantial identity between the accused device
and the patented invention as to means, operation, and
result. Harrington Manufacturing Co., Inc. v. White, 475
F.2d 788, 796 (5th Cir. 1973). The Seventh Cireuit Court
of Appeals has accepted this principle in Hunt v. Armour
é Co., 185 F.2d 722, 728 (7th Cir. 1950), where the Court
said:
It is well established that the test of infringement
{under the doctrine of equivalents] is whether the ac-
cused device does the same work in substantially the
same way and accomplishes the same result. See also
Quest, supra, 303 F.Supp. at 931.
Claims 3 and 6 of plaintiffs’ patent call for a ‘‘plurality
of springs”’, the compression of which creates a negative
pressure in the container for the purpose of drawing
fluids out of the body and the release of which allows for
the expansion of the container to its original size and
shape. Plaintiffs argue that a spring is anything which
recovers its original shape, Defendants, however, counter
this by maintaining that it is the lack of springs in its
device which, in fact, distinguishes their structure from
plaintiffs’ Hemovae. They argue that since their device
does not rely on separate springs as the Hemovace does,
but rather on the resiliency of the container wall instead,
their structure cannot infringe any of plaintiffs’ patent
claims.
The resolution of this question under the doctrine of
equivalents depends on whether or not the operation of
defendants’ Porto-Vae is substantially equivaient to the
le On ae ne
A23
Memorandum and Opinion of the District Court.
operation of plaintiffs’ Hemovac despite the fact that one
device, the Hemovac, employs springs to return the con-
tainer to its original shape after it is compressed, and
the other device, the Porto-Vac, does not. Stated another
way, does the lack of springs in the Porto-Vae distinguish
it sufficiently from the spring-operated Hemovac to cir-
cumvent the doctrine of equivalents?
This Court is of the opinion that the operation of the
accused Porto-Vac is exactly the same as the operation of
the Hemovac even though the Porto-Vae does not rely on
separate springs and that therefore the doctrine of equiva-
lents applies. Both the Hemovae and the Porto-Vac in-
volve an identical function and purpose, i.e., the removal
of body fluids f- 1 a closed wound after surgery. They
both do this worx in substantially the same way and ac-
complish substantially the same result. It is inconsequen-
tial, in the Court’s view, that one device employs springs
and the other does not when, as here, the same result is
accomplished in substantially the same way. It is the
‘‘spring effect’’ in both devices which accomplishes wound
suction, and that is the important factor. Therefore, the
Court holds the Claims 3 and 6 of plaintiffs’ patent, under
the present facts and circumstances, are indeed infringed
by defendants’ Porto-Vac.
Willful and Wanton:
Plaintiffs allege that defendants’ infringement of their
patent was willful and deliberate, and that they are there-
fore entitled to multiple damages pursuant to 35 U.S.C.
§ 284. In support of this argument, plaintiffs cite defend-
ants’ failure to inform plaintiffs of defendants’ decision
to develop their own device while defendant was still the
foreign distributor of plaintiffs’ product. Further, plain-
tiffs argue that defendants’ conduct in this regard should,
in any event, have ceased after defendants became aware
A24
Memorandum and Opinion of the District Court.
of the Court’s decision in Quest, supra. The evidence
shows, however, that the defendants, before marketing
their structure, sought the advice of patent counsel as to
the possibility of their device infringing upon plaintiffs’
device. It was the opinion of defendants’ counsel that the
claims of plaintiffs’ patent would not be infringed by any
wound suction pump that relied upon the resiliency of its
side walls for a spring effect rather than upon separate
internal springs. In view of this opinion of counsel, de-
fendants continued their developmental work on Auste-Vac
until it appeared on the market in 1965. In light of this
fact, it appears to the Court that the defendants had a
bona fide and reasonable belief that their structure would
not infringe plaintiffs’ patent. Therefore, this Court finds
that plaintiffs have not met the burden of showing that
defendants’ conduct was willful and wanton which is re-
quired for the recovery of multiple damages. Anderson
Company vy. Sears, Roebuck and Co., 265 F.2d 758, 763 (7th
Cir. 1959): Artmoor Co. v. Dayless Mfg. Co., 208 F.2d 1, 5
(7th Cir. 1953); Quest, supra, 303 F.Supp. at 931.
Vatipiry Issue:
In their answer and supplemental answer, defendants
have denied infringement and have raised affirmative de-
fenses of the invalidity and unenforceability of plaintiffs’
patent. In particular, defendants make the following al-
legations: (1) that plaintiffs’ patent is invalid because of
prior art, anticipation, and for obviousness; (2) that the
inventors did not themselves invent the subject matter
patented; and (3) that the patent is unenforceable because
of plaintiffs’ fraud and unclean hands in procuring it.
Initially, the Court notes that it is a well settled prin-
ciple that the granting of a patent by the United States
Patent Office carries with it a strong presumption that the
patent so issued is valid. 35 U.S.C. § 282; General Foods
A25
Memorandum and Opinion of the District Court.
Corporation v. Perk Foods Co., 419 F.2d 944, 947 (7th
Cir. 1969). It is also free from dispute that a party who
alleges the invalidity of a patent or of certain claims
within the patent has a “heavy burden” of establishing
such invalidity by “clear and convincing’’ evidence. King-
Seeley Thermos Co. v. Tastee Freez Industries, Inc., 357
F.2d 875, 879 (7th Cir. 1966). The defendants have prof-
fered several arguments which they maintain satisfy their
burden on the issues of invalidity and unenforceability.
Prior Art, Anticipation, and Obviousness:
The first argument that defendants propound is that
plaintiffs’ patent is invalid because the basie concept of
the Hemovac was anticipated and obvious with reference
to the prior art. In particular, defendants refer to the
Barron Squeeze Bottle and the Barron Article of 10 Sep-
tember 1959. It is contended by defendants that plaintiffs’
patent reads directly on the Barron Article as does the
basie concept of the invention; that plaintiffs’ device is
the same as the Barron Bottle; and that plaintiffs’ device
was fully anticipated by Dr. John Barron, an English
plastic surgeon. Further, defendants maintain that plain-
tiffs must demonstrate that they worked on the develop-
ment of their patented device with a diligence from the
date of the Barron Article to the eventual first date of
construction and use.
The Court has carefully and attentively examined the
testimony relating to the Barron Bottle and its relevance,
if any, to the Hemovac and concludes that there is no rea-
sonable interpretation of the two structures which would
make the Barron Bottle an anticipation of plaintiffs’ de-
vice. In this regard, the Court takes particular note of the
fact that plaintiffs in their experimentation phase re-
jected the use of plastic bottles which had many of the
same physical, operative, and structural characteristics as
A26
Memorandum and Opinion of the District Court.
the Barron Squeeze Bottle. As a matter of fact, the Court
is inclined to see the Hemovac as a definite improvement
upon the prior art. See Quest, supra, 303 F.Supp. at 932.
Therefore, the Court finds that defendants’ argument of
anticipation under 35 U.S.C. § 102(a) is without merit in
light of the present facts and circumstances.
Moreover, taking into account the many significant dif-
ferences between the Barron Bottle and the patented
Hemovac, we find that the patent is not invalid under 35
U.S.C. § 103 for obviousness. This Court perceives that the
patented subject matter as a whole would not be obvious
at the time of invention to a person having ordinary skill
in the art to which the subject matter pertains. Another
permissible consideration which the Court deems worthy
of merit in regard to the claim of obviousness is the fact
that plaintiffs’ Hemovae has made great strides in the
furtherance of medical science to the general benefit of
mankind. See generally Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966).
Finally, as to the Barron Article, the medical literature
upon which defendants rely as being prior art, the Court
notes that the technique, method, or procedure of closed
wound suction had been known to the medical profession
for years. Quest, supra, 303 F.Supp. at 932. As stated in
that opinion, however, at page 933:
This fact . . . does not affect the validity of the patent
in suit, for the invention covered by the patent does
not claim the technique or method of closed wound
suction .... The patent we are concerned with con-
tains apparatus, not method claims.
In the case at bar, as in Quest, supra, plaintiffs’ patent
concerns apparatus and not method claims, and therefore
the Barron Article does not affect its validity. In any
event, this Court is satisfied that the plaintiffs have demon-
strated the required “reasonable diligence” in developing
A27
Memorandum and Opinion of the District Court.
their device from 12 August 1959 until its eventual reduc-
tion into practice. See Texas Co. v. Globe Oil & Refining
Co., 112 F.Supp. 455, 482 (N.D.Ill. 1953). The testimony
has shown that subsequent to August of 1959 until Hem-
ovac was commercially produced, there was no time that
the inventors stopped working (Snyder Tr. 198-200).
Inventorship:
The defendants next assert that plaintiffs’ patent should
be declared invalid under 35 U.S.C. § 102(f) beeause they
allege that Dr. Mueller originated the idea of a separate
spring in a resilient wound suction pump, and Dr. McEI-
venny appropriated that idea from him. Therefore, the
contention is that the patentees are not the original or true
inventors of the patented article.
The Court notes with regard to this issue that there is
substantial conflict of testimony in the record and in the
briefs as submitted by counsel. Defendants question the
honesty and integrity of Dr. McElvenny, particularly in his
dealings with Dr. Mueller, and emphasize the falsity of
Dr. McElvenny’s oath to the Patent Office. Also, defend-
ants strongly urge that the evidence shows that Dr. Mueller
made significant contributions to the design of Hemovace.
Plaintiffs, on the other hand, deny any questionable con-
duct on the part of Dr. McElvenny in his association with
Dr. Mueller, and emphatically state that although Dr.
McElvenny may have obtained the impetus for his work
from Dr. Mueller, he did not wrongfully misappropriate
the idea of Hemovae from Dr. Mueller. Furthermore,
plaintiffs contend that Dr. McElvenny never obtained any
specific structure or apparatus from Dr. Mueller in relation
to Hemovae.
The Court perceives in resolving the question of inven-
torship that it must rely exclusively upon the testimony
as it appears in the record and the statements made in the
A28
Memorandum and Opinion of the District Court.
numerous depositions. Admittedly, the evidence on this
issue is conflicting. However, the granting of letters patent
raises a prime facie presumption not only that the patent
itself is valid, but that the named persons are inventors
of the patented device as well, and the burden is on the
defendant to show otherwise by “strong, clear, and convine-
ing evidence”. 35 U.S.C. § 282; Porter-Cable Machine Co.
vy. Black and Decker Mfg. Co., 274 F.Supp. 905, 913 (D.C.
Md. 1967); aff’d 402 F.2d 517 (4th Cir. 1968) ; Ever-Wear,
Inc. v. Wieboldt Stores, Inc., 427 F.2d 373, 375 (7th Cir.
1970); Dart Industries, Inc. v. E. 1. DuPont DeNemours &
Co., 348 F.Supp. 1338, 1355 (N.D.Ill. 1972). The question
for the Court to determine, then, is whether defendants
have, in fact, satisfied their burden of proof with respect
to the inventorship of Hemovac.
In support of their position that Dr. McElvenny was not
the true inventor of Hemovac, defendants rely on the testi-
mony of Dr. Michael P. Mandarino (Tr. 1033), Mr. John
Markham Ahern (Tr. 1241), and Mr. Jerome Joss (Tr.
1215-1216), which, taken together, indicates that on several
oceasions Dr. McElvenny allegedly admitted that he had
gotten the idea of Hemovac from Dr. Mueller. Defendants
also refer the Court to the testimony of Mr. George Baxter
(Tr. 1139) who indicated that he was skeptical of Dr.
McElvenny’s veracity. Contrasted with the above, how-
ever, is the letter of Mr. John Chalakani, (PX-19-G, page
2), in which he wrote that it was Dr. Robert T. McElverny
who had developed the Surgivae evacuator, and the inter-
oftice memorandum of Mr. John H. Bregert (PX-19-K) in
which he wrote that the Snyder Hemovac was the “brain
child” of Dr. McElvenny.
Plaintiffs in their Post-Trial Brief in Reply on the
Issue of Validity (pp. 45-48) attempt to discredit the tes-
timony of Dr. Mandarino in that they allege that he is
interested in an outcome of this litigation that is adverse
to plaintiffs because, among other things, he was elected
A29
Memorandum and Opinion of the District Court.
to the Board of Directors of the reactivated Richey Com-
pany, the company which defendants claim is entitled to
the assignment of Gregory Sullivan’s one-third title inter-
est in the patent that is the subject matter of this law
suit. Further, in their brief, plaictiffs question the valid-
ity of George Baxter’s testimony by pointing out that such
testimony was based solely on certain statements that
were made to him by Dr. Mueller and upon that alone, and
not upon any other information communicated to him.
After careful consideration of the conflicting evidence
above, and after examination of the pertinent correspond-
ence in relation to the issue of the inventorship of the
Hemovac, this Court finds, on the weight of the credible
evidence, that defendants have not produced the “strong,
clear, and convincing evidence” that is required to over-
come the presumption that the patentees were the true
inventors of the subject matter of the patent. See Porter-
Cable, supra. Although the Court notes, in ali candor, that
the issue is not clear, the fact that defendants have not
met their burden is, in the opinion of the Court, fatal to
their claim of the invalidity of plaintiffs’ patent under
35 U.S.C. § 102(f).
Equity/Unclean Hands:
Defendants contend, finally, that plaintiffs’ patent is
unenforceable because of plaintiffs’ fraud and misconduct,
particularly with reference to Dr. McElvenny’s alleged
inequitable misappropriation of Gregory Sullivan’s one-
third title interest in the patent from the Richey Manu-
facturing Company before the company went bankrupt.
The conflict centers around the fact that much of Suili-
van’s work on the evacuator was allegedly done during
the period of his employment at Richey and at Richey’s
considerable expense. Defendants argue that since it was
one of Gregory Sullivan’s duties while an employee of the
A30
Memorandum and Opinion of the District Court.
Richey Company to “dream up new surgical equipment
for the medical field” (Sullivan Tr. 854), he had the con-
sequent duty and obligation to assign his one-third title
interest in the resulting invention to his employer. The
failure to do so, defendants maintain, has done violence
to the basic equitable principles that underlie the entire
patent system and makes plaintiffs guilty of unclean
hands.
In addition, it is argued by defendants that Dr. Me-
Elvenny consciously misled and deceived Mr. Alfred H.
Greening, the Richey Company's bankruptcy trustee, as
to the value and probable commercial success of the evacu-
ator, thus influencing him to abandon the evacuator as a
Richey Company asset. Such concealment and deception,
defendants maintain, is further evidence that the patent
in suit springs from a history of inequity and unclean
hands and amply demonstrates that patentees have acted
in so reprehensible a fashion as to deny them the equi-
table remedies they are seeking from this Court.
The plaintiffs rebut the defendants’ equity defenses by
maintaining, first of all, that Gregory Sullivan was under
no duty or obligation to assign his interest to the Richey
Company. In support of this, plaintiffs allege that there
was no fraud perpetrated on Richey because the Richey
Company Board of Directors was fully informed that
Sullivan was, in fact, one of the inventors of the patent
in suit. Furthermore, it is argued that since Sullivan was
not expressly required by the employment contract to
assign any invention that he might make while on the job
to his employer, he was not impliedly required to do so.
With respect to the bankruptcy trustee, plaintiffs con-
tend that Mr. Greening was not misled by Dr. McElvenny,
but it was his own lack of dilegence in acquiring informa-
tion about the evacuator from McElvenny and other pos-
sible sources which resulted in his abandoning the evacua-
A31
Memorandum and Opinion of the District Court.
tor as an asset of the Richey Company. Plaintiffs main-
tain that no fraud whatsoever was involved in the Me-
Elvenny/Greening relationship and that, therefore, there
was no misconduct on the part of Dr. McElvenny which
— possibly give rise to defendants’ argument of unclean
ands.
Finally, plaintiffs make the argument that, in any event,
defendants cannot properly inject themselves into a private
controversy relating to the matter of private title which
exists between plaintiffs and the bankruptcy trustee or
between plaintiffs and the reactivated Richey Company.
Therefore, plaintiffs conclude that defendants cannot rely
on the alleged rights of either of those litigants to further
their own cause whether the defense is viewed as alleged
lack of title or alleged unenforceability because of unclean
hands.
The basic equitable principle underlying the United
States patent system as set down by the Supreme Court
is that patent monopolies must spring from backgrounds
free from fraud or other inequitable conduct. Precision
Co. v. Automotive Co., 324 U.S. 806, 816 (1945). It has
long been recognized that any patent obtained through
fraud and dishonest dealings is unenforceable in a court
of equity. Setsmograph Service Corp. v. Offshore Raydist,
135 F.Supp. 342, 354 (E.D.La. 1955). However, equity is
always reluctant to work a forfeiture of the patentee’s
property in the absence of unconscionable or morally
reprehensible conduct. A patent will not be rendered un-
enforceable in equity against an alleged infringer absent
fraudulent, intentional, and willful conduct on the part of
the patentee or his assignee. Tractor Supply Co. v. Inter-
national Harvester Company, 155 U.S.P.Q. 420, 433 (N.D.
Ill. 1967). In the case at bar, defendants have alleged
that the patent in suit was procured by fraud and numer-
ous dishonest dealings. Once again, of course, defendants
—————— SS UT
A32
Memorandum and Opinion of the District Court.
have the burden of proving that the patentees acted fradu-
lently by clear and convincing evidence in order to over-
come the patent’s presumed validity. Monsanto Company
v. Rohm & Haas Company, footnote 14, 456 F.2d 592, 601
(3rd Cir. 1972); Untted States v. Marifarms, Inc., 345
F.Supp. 858, 862 (D.C.Del. 1972).
Turning immediately to the question of Gregory Sul-
livan’s alleged obligation to assign his title interest in
the patent to the Richey Company, the Court notes that
it has been said that courts are reluctant to imply or infer
an agreement by an employee to assign his patent to his
employer due to the particular nature of the act of in-
vention in the absence of an express agreement to assign.
However, one who is employed to make an invention and
who succeeds, during his term of service, in accomplishing
that task is bound to assign to his employer any patent
obtained. This applies though, only if the employee’s in-
vention is the precise subject of the contract of employ-
ment, and he has produced only that which he was em-
ployed to invent. United States vy. Dubilier Condenser
Corp., 289 U.S. 178, 187-188 (1933); Standard Parts Co. v.
Peck, 264 U.S. 52, 59 (1924). No assignment of the patent
to the employer is required in a situation where an em-
ployee, who is not assigned the specific task of inventing,
makes an invention, even though the invention relates to
the employee’s field of employment and the employer’s
time and resources are utilized in making the invention.
This is especially so where the employee, on his own time
and outside of his regular working hours, engages in ac-
tivities to refine and improve his device. Melin v. United
States, 478 F.2d 1210, 1213 (Ct.Cl. 1973).
The Seventh Cireuit Court of Appeals has held that
where a person was employed as an “idea man” to devise
new uses for paperboard or paperstock, and in a situation
where he was authorized to patent at his employer’s ex-
pense any inventions and improvements he might make in
A33
Memorandum and Opinion of the District Court.
the paperboard field, any inventions made and patents ac-
quired by him relating to paperboard during his term of
employment belonged to his employer, and he was required
to assign any such inventions and patents thereon to his
employer. Belanger v. Alton Box Board Co., 180 F.2d 87,
88 (7th Cir. 1950). On the other hand, if the employment
is general, and it covers a field of labor and effort in the
performance of which an employee conceives an invention
for which he obtains a patent, the contract is not so broadly
construed as to require an assignment of the patent.
Dubilier, supra, 289 U.S. at 187; Hapgood v. Hewitt, 119
U.S. 226 (1886); Dalzeli v. Dueber Manufacturing Co., 149
U.S. 315 (1893).
It cannot be questioned, in determining whether Gregory
Sullivan was obligated to assign his interest in the patent
to the Richey Company, that the terms and conditions of
his employment and the understanding of those terms and
conditions by the parties are of utmost importance. Since
there is not a plethora of testimony as to this issue in the
record, however, the determination becomes primarily a
matter of law.
This Court, in evaluating the above and other legal
precedents with respect to the assignment issue, notes that
there is a common element present. That is, in order for
an employee’s invention to be assignable to his employer,
the employee must be employed to develop a “specific”
process or product for his employer. Muenzer v. W. F. &
John Barnes Co., 133 N.E.2d 312, 318-319 (1956). The
employee must be employed to accomplish a “specific” task,
or to solve a “specific” problem within the scope of his gen-
eral employment. Dubilier, supra, 289 U.S. at 187;
Belanger, supra, 180 F.2d at 93; United States v. Hough-
ton, 20 F.2d 434, 437 (D.C.Md. 1927); aff'd 23 F.2d 386
(4th Cir. 1928). Furthermore, the employee must be en-
gaged to devote his time to developing a (meaning specific)
device. Lion Mfg. Corporation v. Chicago Flexible Shaft
A34
Memorandum and Opinion of the District Court.
Co., 106 F.2d 930, 933-934 (7tn Cir. 1939). Again, the em-
ployee must be hired to invent the “precise subject” of
the contract of employment; namely, to produce that “spe-
cific thing” which he was employed to invent. Standard
Parts, supra, 264 U.S. at 59. Stated otherwise, it appears
to still be the rule that a contract of general employment to
develop ideas in a certain field will not serve to expand
the terms of the employment contract so as to make a
specific invention developed by an employee assignable to
his employer unless, of course, the terms of the employment
contract expressly so provide, Dubilier, supra, 289 U.S. at
187-188, and such is the clear and unambiguous intention
of the parties to the contract. Standard Parts, supra, 264
U.S. at 53.
With the above in mind, although Richey’s employment
of Gregory Sullivan to “dream up new surgical equipment
for the medical field” relates to inventing in the broad
sense, the Court sees such employment as being general in
nature. The employment was not for the stated purpose of
developing a “specific” or “particular” product within the
medical field, or to do a task in relation to a certain device,
as was the case in all of the above-cited authorities.
Gregory Sullivan was not under a contract to make a “par-
ticular” invention or solve a “particular” problem for the
Richey Company. His prescribed duty was merely to use
his inventive or creative ability generally within the vast
boundaries of the entire medical field in relation to the de-
velopment of surgical equipment. In this regard, the Court
notes that there was testimony to the effect that Gregory
Sullivan did not understand at any time that he was ob
ligated in any way to assign inventions to the Richey Com-
pany. (Snyder Tr. 148.) Thus, even though Sullivan’s
employment by Richey related generally to invention in
the medical field, the evidence indicates that it was not the
intention of the parties that Sullivan should assign any in-
ventions or patents to Richey during his term of employ-
A35
Memorandum and Opinion of the District Court.
ment. In fact, not until after the contract was entered
into and, in particular, not until the prosecution of this law
suit, did the question even arise as to the assignment of
any patentable inventions that Sullivan might have made
while an employee of the Richey Company. See generally
Standard Parts, supra, 264 U.S. at 53. Furthermore, the
evidence is clouded as to whether Sullivan’s work in de-
veloping the patent was entirely at Richey’s expense and
whether Sullivan actually used Richey’s facilities and
equipment. Most notable here is the testimony to the ef-
feet that Sullivan did his development work “in his work
shop... in town” (Compare Tr. 1510), and that he worked
nights “at home” testing materials for Dr. McElvenny
(Snyder Tr. 1801). In such circumstances, the Court holds
that it is less compelling to require that any resulting in-
vention and patent thereon be assigned to the employer.
Melin, supra, 478 F.2d at 1213.
Accordingly, this Court finds that since the employment
agreement then existing between Sullivan and Richey was
a general agreement to develop ideas in the medical field,
and more importantly, since the parties did not appear to
expressly or clearly contemplate the assignment of any
patentable invention that Gregory Sullivan might obtain
from his performing the work for which he was employed,
and since there is evidence that Gregory Sullivan did some
developmental work on his own time using his own labora-
tory facilities and equipment, he was not, under the circum-
stances, required to assign his one-third interest in the
patent to the Richey Manufacturing Company as claimed
by defendants. If the Richey Company had any interest at
all in any product that Sullivan might develop, that in-
terest, according to the intention of the parties, was a
right to distribute the product (PX-18-0), thus leaving the
manufacturing rights to the Snyder Manufacturing Com-
pany (Snyder Tr. 144), and preserving the title interest in
Gregory Sullivan.
A36
Memorandum and Opinion of the District Court.
Therefore, the Court now holds that defendants’ equity
defense based on Gregory Sullivan’s failure to assign his
patent interest to the Richey Company must fail because,
taking into account Sullivan’s understanding that he was
not obligated to assign any invention or patent thereon
along with the other circumstances of his employment
heretofore discussed, defendants have neglected to show
by the necessary clear and convincing evidence that his con-
duct ascended to that level of unconscionability or bad faith
which is required in equity to render the patent in suit
unenforceable.
Likewise, the Court finds that defendants have not met
their burden of proving that Dr. McElvenny fradulently
misled and deceived Mr. Greening, the Richey bankruptcy
trustee, with respect to the abandonment of the evacuator.
In the Court’s opinion, because of the sketchy testimony
in the record, defendants have not shown by clear and con-
vineing evidence that Dr. McElvenny acted in so repre-
hensible a fashion as to warrant a determination that the
patent in suit be declared unenforceable. It may well be
true that not enough information about the evacuator was
communicated to Greening by McElvenny. But this, in
itself, is not sufficient, in the opinion of this Court, to sus-
tain defendants’ allegation of fraudulent concealment
especially where Greening had the opportunity to obtain
more information regarding the ‘‘heinotoma pump”’ from
other easily accessible sources, and more importantly,
where the record does not clearly disclose whether
McElvenny’s conduct in this regard was intentionally and
willfully designed to deceive Mr. Greening. The record is
not entirely clear, moreover, whether the ‘‘hemotoma
pump’’ which McElvenny mentioned to Greening in
September of 1960 was a prototype model which had, in
fact, been abandoned or whether it was the device that was
to become a highly successful commercial reslity. It
A37
Memorandum and Opinion of the District Court.
should not be forgotten in this regard that plaintiffs did
experiment with and disregard many prototype devices
before the Hemovac evolved into its final form. It is
quite likely that Dr. McElvenny was referring to one of
these earlier prototype models when he mentioned the
abandonment of the hemotoma pump to Mr. Greening.
The evidence is just not all that clear. Finally, if the only
interest which Richey had in the patented article was a
shop-right as contended by plaintiffs, then that interest
would not qualify as an asset of the Company to be
scheduled by the bankruptcy trustee since such an interest
does not involve a conveyance of title. Dubilier, supra, 289
U.S. at 188-189.
In conclusion and with regard to the awarding of at-
torney fees, the Court notes that such an award may be
made to the prevailing party in a so-called ‘‘exceptional
ease’’. 35 U.S.C. § 285. An exceptional case is one which
contemplates such unfair and reckless conduct on the part
of the losing party as to make it unconscionable for the
prevailing party to sustain the expense of counsel. Q-
Panel Company v. Newfield, 482 F.2d 210, 211 (10th Cir.
1973). The Court observes, however, that the present case
is not an appropriate one in which to award attorney fees
to either party, and therefore holds accordingly.
Counsel for the plaintiffs are hereby invited to submit
proposed findings of fact and conclusions of law in con-
formity with this opinion.
Rosert A. GRaNnt
District Judge
Enter: March 15, 1974
A38
Plaintiffs’ Proposed Findings of Fact,
Proposed Conclusions of Law,
and Proposed Judgment Order.
IN THE UNITED STATES DISTRICT COURT
For THE NortHERN District oF INDIANA
Soutu Benp Drvtsion
Civil Action
No. 69 S 194
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MercantiLte Nationat Bank oF Cuicaco, Harorp I. Snyper,
Syyper Manvuracrurtne Company, Inc., Zimmer Manv-
FACTURING COMPANY,
Plaintiffs,
vs.
Howmet Corporation, Howmenica, Inc., and Wayne
PHarMacaL Suppty Company, Inc.,
Defendants.
>
sd
Proposep Finpincs oF Fact
The Parties
1. Plaintiff Mercantile National Bank of Chicago is
trustee of Robert T. McElvenny deceased, one of the
patentees named in United States Letters Patent No.
3,115,138, the patent in suit, and is a co-owner of the legal
title to said patent. During his lifetime, Robert T.
McElvenny became assignee of the interest of Gregory B.
Sullivan, another of the patentees, now also deceased.
2. Plaintiff Harold I. Snyder is a citizen of the United
States and a resident of Dover, Ohio, is another patentee
A39
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
named in United States Letters Patent No. 3,115,138, and
is a co-owner of the legal title to said patent.
3. Plaintiff Snyder Manufacturing Co., Inc., is a cor-
poration organized and existing under the laws of the
State of Ohio, has its offices and principal place of busi-
ness at New Philadelphia, Ohio, and is the exclusive licen-
see under United States Letters Patent No. 3,115,138.
4. Plaintiff Zimmer Manufacturing Co. is a corporation
organized and existing under the laws of the State of
Indiana, has its offices and principal place of business at
Warsaw, Indiana, and has exclusive sales rights to devices
as set forth and claimed in United States Letters Patent
No. 3,115,138 by virtue of a grant from Snyder Manufac-
turing Co., Ine. .
5. Defendant Howmet Corporation (successor) is a cor-
poration organized and existing under the laws of the
State of Delaware and has its principal office and place
of business at New York, New York. Defendant How-
medica, Inc., is a corporation of the State of Delaware;
and Defendants Howmet Corporation (successor) and
Howmedica, Inc., were substituted for Howmet Corpora-
tion (original).
6. Defendant Wayne Pharmacal Supply Co., Ine., is a
corporation organized and existing under the laws of the
State of Indiana and has a regular and established office
and place of business at South Bend, Indiana, within this
District and Division.
7. United States Letters Patent No. 3,115,138 duly and
legally issued on December 24, 1963; and Plaintiffs are
entitled to bring this action for its infringement.
A40
Plaintiff's’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
8. Plaintiff Snyder Manufacturing Co., Inc., manufac-
tures and Plaintiff Zimmer Manufacturing Co. sells a
surgical evacuator, embodying the invention of United
States Letters Patent No. 3,115,138, under the trademark
“Hemovac”; and the proper statutory patent notice has
been placed on the surgical evacuators so manufactured
and sold.
9. This Court has jurisdiction over the parties and the
subject matter of Plaintiff’s [sic] Complaint. Venue in
this judicial District and Division is proper.
10. The patent in suit has been before this Court pre-
viously in Mercantile National Bank of Chicago, et al. v.
Quest, Inc., et al., 303 F. Supp. 926 (N. D. Ind., 1969) ;
aff'd. 431 F. 2d 261 (7th Cir., 1970).
Background of the Invention
11. Closed wound suction is a surgical technique in
which negative pressure (suction) is applied to a surgical
wound that has been closed to the atmosphere by such
means as sutures. A hollow tube is used as the suction
connection communicating from the wound to a vaccum
source. Closed: wound suction has important advantages
over other wound drainage techniques, such as gravity
drainage and pressure dressings (compression bandages).
12. Before the invention of the patent in suit, closed
wound suction was practiced by means of (1) an electric
or other power-driven vacuum pump, (2) a central suc-
tion system, or (3) an evacuated bottle. Each of these
systems has disadvantages. Absent portability in the suc-
tion device, the physical activity of the patient is re-
A4l
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
stricted and post-operative exercise, ambulation and
rehabilitation are delayed.
13. In 1959, Plaintiffs’ decedent, Dr. Robert T. Mc-
Elvenny, an orthopedic surgeon, took up the challenge of
providing a continuously operable, self-acting, closed
wound suction device for ambulatory human use, and
worked on this project with Mr. Gregory Sullivan and
with Mr. Harold I. Snyder. At that time, there were no
known closed wound suction devices which were reliable,
and at the same time self-contained, portable and both
independently and continuously operable.
14. Dr. McElvenny discussed the subject of closed
wound suction on several occasions with a Swiss ortho-
pedic surgeon named Maurice Mueller. The first meeting
between the two occurred in May of 1959 in Chicago while
Dr. Mueller was touring the United States. During his
stay in the United States in the late spring of 1959, Dr.
Mueller did not discuss the subject of closed wound suc-
tion with anyone until after he visited Dr. McElvenny.
In September of that same year, Dr. McElvenny and
Gregory Sullivan visited Dr. Mueller in Switzerland.
15. After conducting numerous experiments using plas-
tic squeeze bottles, Dr. McElvenny and his coinventors
incorporated a spring into their device to accomplish con-
tinuous wound suction. This device evolved into, and such
experimentation culminated in, the patented “Hemovac”
unit.
Infringement
16. Claims 4, 5 and 7 through 14 inclusive of Plaintiffs’
patent in suit read directly and verbatim on the Defend-
ants’ accused “Porto-Vac” units.
A42
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
17. Claim 4 of the patent in suit states that the essence
of the patented device is a “self-contained, independently
operable evacuator for the extraction of body fluids, for
ambulatory human use . . . comprising in combination, a
container formed of flexible material . . . having a pair of
oppositely facing end walls and a connecting side wall. . .
for movement of the end walls . . . toward each other. . .
said container being resiliently compressible ... and...
expansible”. Defendants’ accused devices are identical in
their purpose and structure.
18. Patent Claim 5 ealls for the use of “flexible tubing”
which has “a multiplicity of juxtaposed openings for inser-
tion into [a] body wound”. Defendants’ accused struc-
tures employ the exact same use of flexible tubing.
19. Patent Claim 7 calls for a “strap fastening means”
by which the container is to be secured to the human body
for purposes of ambulation. Defendants’ devices employ
a similar fastening mechanism for the like purpose of facil-
itating the ambulation of the patient.
20. Patent Claim 8 calls for a “closure means” for the
exhaust opening on the container. Defendants’ “Porto-
Vac” units are equipped with a like device.
21. Patent Claims 9 through 14, respectively, recite the
use of a valve plug and strap, a needle sharpened at one
end for the purpose of entering the body, and a conduit
of flexible tubing with a Y-shaped connector for the accom-
modation of different size tubing and for the interfitting of
single and multiple tubing “reaches”. Defendants’ “Porto-
Vac” devices present a mirror structure of these claims.
A43
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
22. Defendants’ “Porto-Vac” devices are identical in
means, operation, and structure with the infringing “Bel-O-
Pak” units in the Quest case supra, and with the patented
“Hemovac” evacuator.
23. Claims 3 and 6 are infringed by the accused devices,
under the doctrine of equivalents, because the accused de
vices include therein the equivalent of a spring as required
by these latter claims. It is the “spring effect” in the ac-
cused devices and in the patented device which accom-
plishes wound suction, and that is the important factor.
24. While Defendants’ accused “Porto-Vae” devices dif-
fer somewhat in form from the device shown in the draw-
ings of the patent in suit, the accused devices do the same
work and accomplish the same result in substantially the
same way as the device disclosed and claimed in the patent
and there is a real identity of means, operation, structure
and result.
25. Defendants’ accused “Auste-Vac” units are the full
equivalents of Defendants’ “Porto-Vac” devices insofar as
concerns infringement of Claims 3 through 14 of the patent
in suit.
26. Defendants’ accused “Porto-Vac” and “Auste-Vac”
devices are unlike the prior art Barron Squeeze Bottle.
The end walls of the Barron Squeeze Bottle are not ar-
ranged for movement toward each other to effect resilient
compression of the container.
Willful and Wanton
27. Beginning in August of 1962, Defendant Howmet
Corporation, through its predecessor Austenal, became the
¢
A44
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
foreign distributor for the “Hemovae” device (designated
“Surgivac” for foreign sales). In January of 1963, Aus-
tenal began to consider the prospect of developing its own
wound suction pump, which was to rely on the resiliency of
the walls of the container for its spring effect rather than
on a spring assembly. This decision of Austenal to de
velop its own unit was not communicated to Plaintiff Sny-
der or to Dr. McElvenny. Furthermore, while Austenal
was distributing “Surgivac” units in Europe, it received
advertising material and marketing information from
Plaintiff Snyder Manufacturing Company. Also, Austenal
knew that the McElvenny et al patent application was pend-
ing when it was engaged in the development of its units.
28. On December 24, 1963, the McElvenny et al Patent
No. 3,115,138 here in suit was issued by the United States
Patent Office. When this occurred, Austenal sought the
advice of its patent counsel as to whether the McElvenny
et al patent was valid and infringed by the ‘‘Auste-Vac”
product then under development. Upon counsel’s opinion
to Austenal that its product would not constitute an in-
fringement upon the McElvenny et al patent, Austenal
continued its work on “Auste-Vac” until it appeared on
the market for the first time in 1965.
29. Plaintiffs formally notified Defendants of infringe-
ment on November 21, 1969, by filing this action for in-
fringement of their patent.
30. Because Defendants had a reasonable belief that
their structure would not infringe Plaintiffs’ patent,
Plaintiffs have not met their burden of showing that
Defendants’ conduct was willful and wanton which is re-
quired for the recovery of multiple damages.
A45
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
Prior Art, Anticipation, and Obviousness
31. A British surgeon, John Barron, used a plastic
squeeze bottle for closed wound suction in England and
wrote an article about his work in a periodical which was
published September 10, 1959.
32. Plaintiffs’ patentees, in their experimentation
phase, rejected the use of plastic squeeze bottles which
had many of the same physical, operative and structural
characteristics and deficiencies as the Barron Squeeze
Bottle. Plaintiffs’ patented device is a definite improve-
ment upon and advancement over the Barron Squeeze
Bottle. The Barron Squeeze Bottle work did not antici-
pate the invention of the patent in suit.
33. The differences between the claimed subject matter
and the prior art Barron Squeeze Bottle would not have
been obvious to a personal of ordinary skill in the art of
medical appliances in the period of 1959-60 when the in-
vention covered by U. S. Patent No. 3,115,138 was made.
34. The invention disclosed and claimed in Patent No.
3,115,138 made a valuable contribution to medical science
and to the benefit of mankind in that it provided the first
self-contained, reliable, continuously acting, lightweight,
surgical evacuator device that could be economically
manufactured and presterilized; and thus, it put the tech-
nique of closed wound suction into general use.
35. The patient in suit does not claim the technique or
method of closed wound suction but rather relates to appa-
ratus. The Barron Article does not affect its validity.
36. Plaintiffs’ patentees conceived the invention of the
patent in suit at least as early as August 12, 1959, and
A46
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
were thereafter reasonably diligent in developing it until
its eventual reduction to practice. From August 1959 until
the patented “Hemovae” device was commercially pro-
duced, there was no ime that the inventors stopped work-
ing.
37. The prior patents relied on by Defendants were
either considered by the Patent Office or were no better
than the patents which were considered by the Patent
Office. None renders obvious the invention of the patent
in suit.
38. The testimony of Plaintiffs’ expert witness was more
persuasive and provides more than a preponderance of
the evidence on each of the issues. Defendants’ live expert
testimony about the prior art and its applicability to the
validity of Plaintiffs’ patent claims was the result of hind-
sight observation and speculation, and is not convincing.
Inventorship
39. The patentees named in U. S. Patent No. 3,115,138
are the true, original inventors of the invention described
and claimed therein. Patentee Dr. Robert McElvenny did
not derive his contributions to the invention from Dr.
Mueller or from any one else.
40. The most that can be said for Defendants’ Mueller
defense is that Patentee McElvenny may have been in-
spired in the ‘‘Hemovac” development work by his con-
tacts with Dr. Mueller.
41. There is confusion and contradiction in the deposi-
tion testimony regarding possible admissions by Dr. Me-
Elvenny to the effect that he had gotten the idea of
“Hemovac” from Dr. Mueller. Contemporaneous writings
A47
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
by Defendants’ employees Begert and Chalakani, who
were well acquainted with both Dr. Mueller and Dr. Me-
Elvenny, on the other hand, clearly attribute the
“Hemovac’ to Dr. McElvenny. The Court resolves the
conflicting evidence in favor of Plaintiffs.
Title and Enforceability
42. Patentee Gregory Sullivan was an employee of the
Richey Manufacturing Company during the development
of the patented ‘‘Hemovac’’ wound exacuator. He was
under an oral contract of general employment without any
intent or understanding, express or implied, that he was
obligated in any way to assign inventions or patents to
the Richey company. He was not employed to develop or
invent a specific or particular product in the medical field.
43. Gregory Sullivan did developmental work on the
‘*Hemovac’’ evacuator on his own time using his own
facilities.
44. Gregory Sullivan was under no contractual duty,
express or implied, to assign his interest in the patent in
suit to the Richey Manufacturing Company. Neither were
the other inventors.
45. It was the intention of the parties that the Richey
Manufacturing Company was to have a right to distribute
the ‘‘Hemovac” wound evacuator or “hematoma pump”
This right was not an asset of the company, and scheduling
of it in the bankruptcy of the company was not required.
46. The information transmitted by Dr. McElvenny to
the bankruptcy trustee Greening was not incomplete so as
to amount to fraudulent concealment, especially since
A48
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
Greening had ample opportunities to obtain information
from other easily accessible sources.
47. The Defendants have not met their burden of proof
on the issues of unenforceability.
48. However, this is not an “exceptional case” so as to
require the award of attorneys’ fees to Plaintiffs.
Proposep Conc.usions oF Law
1. This Court has jurisdiction over the parties and over
the subject matter of this suit. Venue is properly laid in
this District and Division.
2. Plaintiffs have title to United States Letters Patent
No. 3,115,138 and are the owners of all rights thereunder,
including the rights to sue for writ of injunction and to
recover damages for past infringement.
3. Plaintiffs have maintained their burden of proving
the essential facts alleged in the Complaint. The De-
fendants have not maintained their burden of proving the
essential facts of any of their affirmative defenses. The
law is with the Plaintiffs and against the Defendants on
each of the issues raised by the Complaint and by Defend-
ants’ affirmative defenses.
4. A United States Letters Patent regularly issued, is
presumed to be valid; and the named patentees are pre-
sumed to be the inventors of the patented device.
5. A party who alleges the invalidity of a patent has a
heavy burden of establishing such invalidity by clear and
convincing evidence.
A49
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
6. Claims 3 through 14 of Plaintiffs’ United States
Letters Patent No. 3,115,138 are good and valid in law.
7. The prior art relied upon by the Defendants, includ-
ing the Barron Squeeze Bottle, does not constitute an
anticipation of Plaintiffs’ patent claims under 35 U.S.C.
102.
8. The prior art relied upon by the Defendants, includ-
ing the Barron Squeeze Bottle, does not render Plaintiffs’
claims invalid for obviousness under 35 U.S.C. 103.
9. The patentees of U. S. Patent No. 3,115,138 were
reasonably diligent in developing their device from August
12, 1959, until its eventual reduction to practice.
10. Claims 4, 5 and 7 through 14 in suit are infringed
by Defendants’ accused structures, and are directly read-
able thereon.
11. Claims 3 and 6 in suit are infringed by the Defend-
ants’ accused structures under the doctrine of equivalents.
12. The function and purpose of the patented and
accused devices are identical, and equivalent, doing the
same work in substantially the same way to accomplish
substantially the same result.
13. The burden is on the Defendants to show by strong,
clear and convincing evidence that the named patentees
are not the true inventors of the patented device.
14. A patent will not be rendered unenforceable in
equity against an alleged infringer absent fraudulent,
intentional and willful conduct by the patentee or his
assignee.
A50
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
15. In order to overcome the patent’s presumed valid-
ity, Defendants have the burden of proving by clear and
convincing evidence that the patentees acted fraudulently.
16. An employee is not obligated to assign his inven-
tions to his employer unless the terms of the employment
contract expressly so provide or unless he was hired
specifically to invent a particular device.
17. A “shop right” will not be implied where an em-
ployee engages in activities to refine or improve his device
on his own time and outside of his regular working hours.
18. A “shop right” is non-transferable and is not a
property interest subject to a conveyance.
19. Plaintiff’s patent in suit is free of fraud and is en-
forceable by them against Defendants.
20. Plaintiffs are entitled to an injunction restraining
Defendants against further infringement of United States
Letters Patent No. 3,115,138 as to Claims 3-14 inclusive.
21. Plaintiffs are entitled to an award of damages for
Defendants’ infringement of United States Letters Patent
No. 3,115,138, together with interest and costs. Plaintiffs
are entitled to an accounting by this Court to determine
these amounts, and the cause should be continued as to the
accounting issues pursuant to Rule 42 of the Federal Rules
of Civil Procedure.
22. The Court finds against the Plaintiffs on the issue
of treble damages for willful infringement, under 35 U.S.C.
284.
A5l
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
93. The Defendants’ affirmative defenses are without
merit.
24. Every finding of fact deemed a conclusion of law
is hereby adopted as a conclusion of law.
PRoPOsED JUDGMENT ORDER
This cause having come on to be heard on Plaintiffs’
Complaint, and on Defendants’ Answer, and the Court
having heard the testimony of the witnesses for the re-
spective parties in open court and having examined the
depositions made of record, the exhibits received in evi-
dence, and the briefs of the respective parties, and the
Court having filed its Memorandum of Decision on March
15, 1974, and on this day the Court’s Findings of Fact and
Conclusions of Law within the meaning of Rule 52 of the
Federal Rules of Civil Procedure,
Iv IS HEREBY ORDERED, ADJUDGED AND DECREED as follows:
1. The Court has jurisdiction of the parties and of the
subject matter of this action.
2. Venue is properly laid in this District and Division.
3. Plaintiffs Mercantile National Bank of Chicago and
Harold I. Snyder are the owners of United States Letters
Patent No. 3,115,138 and all rights thereunder, including
the right to sue for a writ of injunction and to recover
damages for past infringement; and Plaintiff Snyder
Manufacturing Company, Inc., is the exclusive licensee
under said patent.
4. Judgment on the Complaint is entered for the Plain-
tiffs.
A52
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
5. United States Letters Patent No. 3,115,138 as to
Claims 3 through 14 inclusive, is in all respects valid and
subsisting in law.
6. Defendants have infringed Claims 3 through 14 of
Plaintiffs’ patent by making and selling closed wound suc-
tion devices embodying the inventions of said claims.
7. Ten days after entry of this Judgment Order, a Writ
of Perpetual Injunction shall issue out of and under the
seal of this Court directed to the Defendants, and to each
of their officers, agents, employees, servants, and attor-
neys, and to all persons under their control or in’ privity
with them, permanently restraining them, and each of
them, from directly or indirectly making, using or selling,
causing to be made, used or sold or offering to make, use
or sell closed wound suction devices embodying the inven-
tions of any of the Claims 3 through 14 of the United
States Letters Patent No. 3,115,138 and from infringing
upon, inducing or contributing to the infringement of any
of said claims during the term of said patent.
8. An accounting shall be made and rendered as to the
extent of the manufacture and sale of infringing devices
by the Defendants, and as to the amount of damages suf-
fered by the Plaintiffs by reason of the Defendants’ in-
fringement of Claims 3 through 14 of United States
Letters Patent No. 3,115,138.
9. The said Defendants and their officers, directors,
attorneys, servants, agents, workmen and employees are
hereby directed and required to attend before this Court,
or a Special Master appointed by the Court, from time to
time as required and to produce such relevant devices,
A53
Plaintiffs’ Proposed Findings of Fact, Proposed
Conclusions of Law, and Proposed Judgment Order.
objects, books, documents and papers as requested and to
submit to examination, oral or otherwise.
10. The Plaintiffs shall recover their damages, together
with interest, and costs, as determined by the Court with
respect to the issues raised by the Defendants’ challenge
to the validity of Claims 3 through 14 of United States
Letters Patent No. 3,115,138 and by the Defendants’ in-
fringement of said claims.
Respectfully submitted,
Ricwarp R. TREXLER
Richard R. Trexler
Joun S. Fosse
John S. Fosse
Oxson, TREXLER, WOLTERS,
BusHne.t & Fosse, Lp.
141 West Jackson Boulevard
Chicago, Illinois 60604
Telephone: (312) 427-8082
Of Counsel:
Robert L. Rasor, Esq.
Rasor, Harris, Garrard & Lemon
210 North Buffalo Street
Warsaw, Indiana 46480
Ad4
Statute Involved
35 U.S.C. § 103
Conditions for patentability; non-obvious subject matter
A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102
of this title, if the differences between the subject matter
sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which
the invention was made.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.