Petition — E-T Industries, Inc. v. Whittaker Corp.
Supreme Court brief1976
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Supreme C dt. n Se
‘2 FILED %,
| JUN T 1976
IN THE WECHAEL RODAK, JR., @LERK
Supreme Court of the Gnited States
OcTOBER TERM, 1975.
Ne 45-1744
E-T INDUSTRIES, INC.,
Petitioner,
VS.
WHITTAKER CORP. anp DES PLAINES GRAND
AUTOMOTIVE SPEED CENTER, INC.,
Respondents.
PETITION FOR A WRIT OF CERTIORARI TO THY
UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT.
IRWIN C. ALTER,
PHILLIP A. WEISS,
ALTER AND WEISS,
2460 John Hancock Center,
Chicago, Illinois 60611,
Attorneys for Petitioner.
Of Counsel:
MELVIN E. PEARL,
DONALD E. EGAN,
4100 Mid-Continentai Plaza,
55 East Monroe Street,
Chicago, Illinois 60603,
RICHARD EUGENE DICK,
2460 John Hancock Center,
Chicago, Illinois 60611.
Gunthorp-Warren Printing Company, Chicago e Financial 6-6565
TABLE OF CONTENTS.
PAGE
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SE Es oc éenddeee te ctaeesensacduokas 3
Reasons for Allowance of Writ ...............e00.- 6
1. The Conflict Among the Circuits as to the Extent
of Review of the Issue of Non-Obviousness Should
SD SR aie bc dc edie could deuce 6
A. Appeals Court Retrial of Scope and Content
Oe GT PD 0.0.0 env Op ewes Sanm eeameeves 10
B. Appeals Court Retrial of the Differences Be-
Oe Ce SNS EN Se Ee Cee
BE ak cncuch dad Mheicah telah cise enies 14
C. Appeals Court Retrial of the Level of Ord-
inary Skill in the Pertinent Act .......... 15
2. The Decision of the Appeals Court in Reviewing
the Trial Court’s Findings of Patent Validity Is in
Conflict with the Pronouncements of This Court
Relating to 35 U. S. C. Section 103 .......... 16
3. The Appeals Court Incorrectly “peneguaines
Case at Bar from U. S. v. Adams ............ 20
APPENDIX.
Opinion of the Court of Appeals for the Seventh
GY oh wade a Ris 040s SRO Ee Secs ec cceaeecces App. 1
Opinion of the District Court for the Northern District of
Illinois, Eastern Division ........cccccessceees App. 9
Order of the Court of Appeals for the Seventh Circuit
Denying Rehearing en banc ..........20eeee08: App. 18
Sakraida v. Ag Pro, Inc., Opinion of the United States
Supreme Court, Dated April 20, 1976 .......... App. 19
SUPPLEMENTAL APPENDIX.
es tees TE, DD 8 kc reccvescnvesedvecwe's App. 24
TABLE OF AUTHORITIES.
Cases.
Anderson’s-Black Rock, Inc. v. Pavement Salvage Com-
pany, 396 U. S. 57 (1969) ......0..eeeeeeees 17, 18, 20
Blair v. Dowd’s, Inc., 438 F. 2d 136 (D.C. Cir. 1970) .. 9
Blohm & Voss A. G. v. The Prudential-Grace Lines, Inc.,
489 F. 2d 231 (4th Cir. 1973) cert. denied 419 U. S.
i PPE ET TLE ere TTT Ter TT Tee 8
Graham v. John Deere Co., 383 U.S. 1 (1966) .......
error er TT TTTT Te Te TTT Tt 6, 7, 9, 10, 17, 18, 19, 20
Hadfield v. Ryan Equipment Company, 456 F. 2d 1218
Cs Ge. GUD 0 0.00 0 cde Sew os sc Five pesdesices 8
Hensley v. Esco, 375 F. 2d 432 (8th Cir. 1967) Tete 8
Hotchkiss v. Greenwood, 52 U. S. 248 (1851) ....... 17, 18
Illinois Tool Works, Inc. v. Continental Can Company,
273 F. Supp. 94 (N. D. Ill. 1967), affd. 397 F. 2d 517
Ce PTT a ee rer Ter 11
Koppers Company, Inc. v. S & S Corrugated Paper Machin-
ery Company, Inc., 517 F. 2d 1182 (2nd Cir. 1975) .. 9
Moore v. Shultz, 491 F. 2d 294 (10th Cir. 1974) cert
GES Gee We Ee COO OEE ccc tees cee etescce 8
Panther Pumps & Equipment Company, Inc. v. Hydrocraft,
Inc., 468 F. 2d 225 (7th Cir. 1972) .........2.05. 8
Sakraida v. Ag Pro, Inc.., ......... . U.S. ...... 189 U. S. P. Q.
GP WE o.d'e'b sv 000s 00b0006s00000060Wes 17, 18, 20
Shanklin Corp. v. Springfield Photo Mount Company, 521
F, 2d 609 (ist Cir. 1975), cert. denied, 44 L. W. 3471
SUEY 44046900 b0k6b.0kbdddeeeabdess ks Colmes 9
Trio Process Corporation v. L. Goldstein’s Sons, Inc., 461
ee, Ce ee EE ncvecsnenanessescons se, §
United States v. Adams, 383 U. S. 39 (1966) ...... 2, 20, 21
Westwood Chemical, Inc. v. The Owens-Corning Fiberglas
Corp., 445 F. 2d 911 (6th Cir. 1971), cert. denied,
Ga We Eee, GHPED 6 co nccncccccsenasecesecess 8
White v. Mar-Bel, Inc., 509 F. 2d 287 (Sth Cir. 1975)... 8
Statutes of the United States.
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ees Oe rn ci a cebbewekbse deel uses 66 2
ee Os es SED 9 0040 0:0 0665000655006 6005068 2
3 & ER rrr, shee aad 1-2, 3, 6, 7, 19
Constitution of the United States.
Ray B Bea GS GES si iiiccctctsccccucvests’
iv
Federal Rules of Civil Procedure.
gi IN THE
ASA Pe eee eee 8,18 ,
Supreme Court of the Anited States
Publications. OcTOBER TERM, 1976.
5 Fabens Law PURI. «os.6s 0k000 cans tusneeenne 7
3 Patent Law and Practice, White, Patent Litigation: No.
PUeeeeD GG THUG oun 04450080 000 0n aennnens 7
Sherman, “Obviousness: A Question of Law or Fact?” 51 J.
Pat. Off. Soc'y 547 (1969) ....--.ccccceeceeece. 7 ET INDUSTRIES, INC., iets
Wepner, “Appellate Review of Patentability,” 56 J. Pat. vs.
Ge Say Bee CHSC ee 6+ cesdeenesecue see 7
WHITTAKER CORP. AND DES PLAINES GRAND
AUTOMOTIVE SPEED CENTER, INC.,
Respondents.
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT.
PETITION FOR WRIT OF CERTIORARI.
Petitioner respectfully prays that a Writ of Certiorari be
granted to review the Judgment and Opinion of the United
States Court of Appeals for the Seventh Circuit entered on
September 23, 1975, petition for rehearing denied March
4, 1976 in Appeal No. 74-1924 entitled E-T Industries, Inc. v.
Whittaker Corporation and Des Plaines Grand Automotive
Speed Center, Inc.
OPINIONS BELOW.
The opinion of the Court of Appeals reprinted in the
Appendix at App. 1 through App. 8 is officially reported at
523 F. 2d 636 (7th Cir. 1975). The opinion and order of
2
the United States District Court for the Northern District of
Illinois, Eastern Division, dated October 31, 1974, reprinted in
the Appendix at App. 9 through App. 17, is unofficially re-
ported at 183 U. S. P. Q. 690 (N. D. Ill. 1974).'
The decision of the United States Court of Appeals for the
Seventh Circuit reversing the Trial Court was entered on
September 25, 1975 and the Petition for Rehearing en banc was
denied on March 4, 1976. The Order denying the Petition for
Rehearing is reprinted at App. 18.
The jurisdiction of this Court is invoked under 28 U. S. C.
Sections 1254(1), 2101(c) and 2101(e).
QUESTIONS PRESENTED.
1. Whether the conflict of decisions that exists among the
Circuits as to the standard of Appellate review to be applied in
judging Graham findings dealing with the issue of non-obvious-
ness should be resolved?
2. Whether the decision of the Appeals Court in reversing
the Trial Court is in conflict with the recent pronouncements of
this Court that interpret 35 U. S. C. Section 103?
3. Whether in reversing the Trial Court, the Appeals Court
erroneously distinguished the case at bar from this Court’s pro-
nouncement in United States v. Adams?
STATUTES INVOLVED.
Title 35 U. S. C. Section 103, which requires consideration
in reviewing this Petition states that:
“A patent may not be obtained though the invention is
not identically disclosed or described as set forth in Section
1. Hereinafter, references to the Appendix are designated as
“App.” with a page number.
3
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 the subject matter
pertains.”
STATEMENT OF FACTS.
This action was commenced on October 29, 1969 with the
filing of a complaint in which the petitioner herein, as plaintiff,
sought an injunction and damages arising from defendants’
infringement of United States Letters Patent No. 3,329,468
issued on July 4, 1967 to Richard D. Beith.? Defendants by
their answer denied infringement and raised the affirmative
defense of invalidity. Trial was held in April of 1974 wherein
there were numerous witnesses for both sides, documents and
physical exhibits and extensive post-trial briefs. On October 31,
1974 the District Court handed down its opinion holding that
the Beith patent was both valid and infringed (App. 9-17).
Defendants appealed from the Trial Court’s Decision to the
Appeals Court for the Seventh Circuit and on September 23,
1975 that Court reversed the Trial Court’s Judgment on the
ground that the subject matter of the Beith patent was obvious
and therefore the patent was invalid under 35 U. S. C. Section
103 (App. 1-8). Plaintiff then sought a rehearing en banc.
The Court of Appeals denied the request for rehearing in an
order dated March 11, 1976 (App. 18).
This Petition for a Writ of Certiorari seeks review of the
Appeals Court’s errors of law, as well as clarification of the
conflict that exists among the Circuits concerning the issue of
non-obviousness.
E-T Industries, Inc. (hereinafter called “Plaintiff’ or “E-T”)
is a California corporation having its principal place of business
——r A ,
on 24-29 and ia hereinafter Bede wb mp as the Beith
patent.
4
in California. It is now a division of F. D. I. Inc., an automotive
after-market manufacturer. Originally, the action was brought
against Ansen Automotive Engineering, a wholly-owned sub-
sidiary of Whittaker Corporation. Sometime after commence-
ment of the litigation, Ansen was merged into Whittaker as a
division. After trial, Whittaker Corporation was substituted as a
defendant for Ansen. The other defendant, Des Plaines Grand
Automotive Speed Center, Inc., is an Illinois corporation having
its principal place of business in Illinois (hereinafter Whittaker
and its distributor, Grand, will be referred to as “Ansen” or
“defendants” ).
As the Beith patent (App. 19-24) sets forth, wheels are
commonly secured to automobiles by means of a plurality of
bolts or lugs projecting from a brake drum or axle flange, and
cooperating lug nuts. There has been no standardization of the
arrangement of such wheel lugs among different auto makers.
The patent states that a main objective of the invention is to
provide a wheel that is both decorative and universal. The
wheel incorporates means for mounting it on brake drums hav-
ing lug bolts arranged in bolt circles of the three most popular
diameters for automobiles, i.e., 4% inches, 4% inches and
5 inches.
The specification sets forth several specific embodiments of
the invention wherein a plurality of elongated rabbeted lug
apertures are formed in the wheel. Adapters are used to posi-
tively index the wheel on the lug bolts as well as to clamp the
wheel to the brake drum. The adapters are utilized in coopera-
tion with the lug apertures and rabbeted seats of the wheel for
selecting a desired one of three lug bolt circle patterns. The
patent also teaches the concept of obtaining three different lug
bolt patterns by reorienting adapters which have off-center
holes formed therein to obtain two lug bolt diameters (4% in.
and 5 in.) and by utilizing adapters with centered holes in
place of the adapters with off-center holes to obtain the middle
diameter of 4% in.
5
Prior to the Beith invention, the industry had failed to
provide an acceptable system that would eliminate the necessity
of providing a different wheel for each lug bolt circle. One un-
successful solution proposed and used in the past featured a mas-
sive adapter plate providing circularly spaced pre-drilled aper-
tures to fit on lug bolts of a specified lug bolt circle diameter, as
well as lug bolts arranged in a circle of another standard
diameter, such as 5% in. This required the manufacturer to
stock wheels having apertures suited for fitting onto lug
bolts arranged in a circle of 5% in. diameter. Rather than
stocking three sizes of wheels, three sizes of adapter plates were
stocked. Defendant Ansen chose this unsuccessful solution
for adapting its wheels to the three different bolt circle
diameters. Subsequently, Ansen abandoned the adapter plate
device and deliberately infringed the Beith patent. Another
unsuccessful attempt at a universal wheel is the Adair patent,
No. 2,590,363, cited and considered by the Patent Office which
taught an emergency wheel for temporary use with elongated
slots but lacking, for example, the positive locating and selecting
features taught in the Beith patent.
At trial, defendants offered evidence regarding alleged activ-
ities with respect to an isolated, abandoned experiment in the
form of the alleged Exhibit A-1 wheel (hereinafter also referred
to as the “Fujii wheel”). Defendants attempted to show that
the alleged Fujii wheel was devised by Ansen as a universal
wheel prior to the Beith invention. Extensive testimony at trial
revealed great doubt as to the time of manufacture, and even the
very existence of the Fujii wheel. Consequently, the Trial Court
found that the alleged activities of Ansen with respect to the
Fujii wheel did not meet the required evidentiary standard of
“clear and convincing” proof to be considered as invalidating
the Beith patent. The Trial Court found that there was no
documentary evidence which confirmed the existence of the
Fujii wheel at the time alleged. The Court further found that
the oral testimony of defendants’ witnesses, Johnson and Fujii,
6
was unreliable in view of the many inconsistent and impeaching
statements made under oath by both of the witnesses.
The Trial Court found that the Beith patent was valid and
infringed. Specific factual findings were made by the Trial Court
on the various factual underpinnings identified in Graham v. John
Deere, 383 U. S. 1 (1966): scope and content of the prior art;
differences between the prior art and the claims at issue; and the
leve! of ordinary skill of the pertinent art (see Findings 21
through 31, App. 13-14).
Defendants appealed the Trial Court’s decision to the Appeals
Court which, after retrying al! the factual findings of the
Trial Court, reversed the Trial Court as well as the Patent Office,
and held the Beith patent invalid for obviousness under 35
U. S. C. 103. In holding that the patent was obvious, the
Appeals Court, without finding the Trial Court's findings of fact
clearly erroneous or even erroneous at all, reversed the Trial
Court’s factual findings on the scope and content of the prior art,
the differences between the prior art, and the level of ordinary
skill. It is these unwarranted and arbitrary actions that are the
subject of this Petition.
REASONS FOR ALLOWANCE OF WRIT.
1. The Conflict Among the Circuits as to the Extent of Review
of the Issue of Non-obviousness Should Be Resolved.
Ten years after the Graham decision which was supposed to
clarify matters, there is still a conflict among the decisions of
the Circuits as to the standard of Appellate review of the
issue of non-obviousness under 35 U. S. C. 103. One group of
Circuits utilizes the “clearly erroneous” standard considering the
determination of non-obviousness as purely factual; another
group views the standard of review as being equivalent to that
used for purely legal questions; finally, there are still other
Circuits that employ standards of review that vacillate between
7
these two extremes as well as deal with patent validity as a
mixed question of fact and law.
Both the law commentators as well as this Court have recog-
nized the confusion that has been engendered by these various
interpretations for the Graham case as to what extent the
elements of patent validity are to be considered questions of
law or questions of fact.* A review of the Appeals Court decision
in the case at bar clearly shows that the Court erroneously
3. The Commission on Revision of the Federal Court Appellate
System, in its report entitled “Structure and Internal Procedures;
Recommendations for Change” 67 FRD 195 (June, 1975) recog-
nized the conflict by stating:
“The validity of a I ng depends on several components, in-
cluding novelty, utility, and non-obviousness (invention). The
first two are customarily held to present issues of fact. How-
ever, the circuits are dividend on whether the element of non-
obviousness is a factual question that may be submitted to a jury,
or an issue of law to be decided by the judge alone. The ques-
tion turns in large part on the proper interpretation of the
relevant Supreme Court decisions. At least three circuits have
held that non-obviousness is an issue of law, while the Tenth
Circuit has adhered to its view that non-obviousness is a factual
question. The issue is litigated frequently, as a review of the
decisions in a recent Fifth Circuit opinion makes clear. In the
most recent Tenth Circuit case, in which the court acknowledged
the conflict, the Supreme Court denied certiorari. Justice
Douglas, in an opinion dissenting from the denial, took note of
the differing views among the circuits.” (supra, at 297) [Cita-
tions omitted; emphasis ours.]
Existence of the inter-circuit inconsistency in dealing with the issue
of non-obviousness has drawn considerable attention from the law
commentators. See 3 Patent Law and Practice, White, Patent Litiga-
tion: Procedure and Tactics § 7.05 [3]; 1 Patent Law Perspectives
§ A.1 [1] (Rel. No. 6/1974); Sherman, “Obviousness: A tion
of Law or Fact?”, 51 J. Pat. Off. Soc’y. 547 (1969); Wepner,
Appellate Review of Patentability, 56 J. Pat. Off. Soc’y, 216 (1974).
A survey of recent circuit decisions highlights the conflict:
Tenth Circuit: Moore v. Shultz, 491, F. 2d 294 (10th Cir. 1974),
cert. denied, 419 U. S. 930, at 300 (1974); “Thus, within the Tenth
Circuit, novelty, utility, and non-obviousness are held to ~—
factual determinations.” See also the dissent to the denial for Writ
of Certiorari, 419 U. S. 930, at 932 (1974) wherein Justice Douglas
(Continued on next page)
justified its excursion into the realm of fact finding regarding the
Graham factual underpinnings on the ground that obviousness
is ultimately a question of law, thereby clearly violating the
mandate of Graham as to factual underpinnings as well as
accepted rules of Appellate review. Initially, the Appeals Court
expressly complimented the Trial Court’s analysis of the issue
of non-obviousness:
(Continued from preceding page)
argued in favor of granting Certiorari to prevent “haphazard appli-
cation of the statutory and Constitutional standard”.
Ninth Circuit: Hensley v. Esco, 375 F. 2d 432 (9th Cir. 1967);
here, the question of non-obviousness was held to be a question of
law, and the Appeals Court upheld the lower Court’s application of
the law to the Graham factual underpinnings.
Eighth Circuit: Hadfield v. Ryan Equipment Company, 456 F. 2d
1218, at 1219 (8th Cir. 1972); “. . . we observed that while the
‘several basic factual inquiries’ are to be reviewed within the con-
fines of Rule 52(a) as findings of fact, the ultimate determination
of obviousness vel nan, is to be reviewed as a question of law.
[Citation omitted.] Under these principles the district court’s findings
with respect to the basic factual inquiries will be sustained unless
clearly erroneous, and we will render an independent judgment on
the issuc of obviousness.”
Seventh Circuit: Panther Pumps & Equipment Co., Inc. v. Hydro-
craft, Inc., 468 F. 2d 225, at 227 (7th Cir. 1972); “Unquestionably,
the issue of validity is a question of law. Moreover, as this Court
squarely held, after considering the matter en banc, the issue of ob-
viousness is also a question of law.”
Sixth Circuit: Westwood Chemical, Inc. v. The Owens-Corning
Fiberglas Corp., 445 F.2d 911 (6th Cir. 1971), cert denied, 405
U. S. 917 (1972); non-obviousness is held to be a question of law
based on the Graham factual determinations.
Fifth Circuit: White v. Mar-Bel, Inc., 509 F. 2d 287, at 290 (Sth
Cir. 1975); “That obviousness is a question of law cannot be
doubted, but it must rest upon factual underpinning.”
Fourth Circuit: Blohm and Voss A. G. Vv. The Prudential-Grace
Lines, Inc., 489 F. 2d 231 (4th Cir. 1973), cert. denied 419 U. S.
840 (1974); non-obviousness is characterized as a question of law.
The dissent in Blohm, however, characterizes the majority’s analysis
cf non-obviousness as “a de novo factual inquiry”, upsetting the
trial court’s findings, thus encapsulating and perhaps best typifying
the confused approach taken in resolving the question non-
obviousness in view of the required factual determinations set forth
in Graham (supra, at 248).
(Continued on next page)
9
“There is no basis for criticizing the district court’s analy-
sis of this invention. He followed the procedure man-
dated by Graham vs. John Deere Co., 383 U.S. 1, 17-18,
86 S.Ct. 684, 15 L.Ed. 2d 545, [sic] his findings evi-
denced a thorough understanding of the invention and
the prior art, and his judgment on the ultimate issue of
validity is entitled to special respect because of his better
opportunity to have the exhibits explained to him by expert
witnesses and by the arguments of counsel. Nevertheless,
(Continued from preceding page)
Third Circuit: Trio Process Corporation v. L. Goldstein’s Sons,
Inc., 461 F. 2d 66 (3rd Cir. 1972); Non-obviousness is an ultimate
legal conclusion, and the trial judge’s ultimate legal conclusion as
to validity carried with it the necessary implication that the differ-
ences between the invention and the prior art were obvious to a
rson having ordinary skill in the pertinent art, since the trial
judge’s findings indicate that he followed the tests mandated by
Gr
Second Circuit: Koppers Co., Inc. v. S & S Corrugated Paper
Machinery Co., Inc., 517 F. 2d 1182, at 1189 (2nd Cir. 1975);
“This latter conclusion of obviousness is a matter of law for appel-
late review rather than a finding of fact. [Citations omitted.] We
rr reviewed the record to reach an independent cenclu-
sion aw”.
First Circuit: Shanklin Cork vy. Springfield Photo Mount Com-
pany, 521 F. 2d 609, at 616 (ist Cir. 1975), cert. denied, 44
L. W. 3471 (1975); “Within this context [factual underpinnings
required by Graham] the determination of non obviousness is a
_——_ of fact [citations omitted] and this court may not set aside’
e district court’s findings unless they are clearly erroneous [cita-
tions omitted)”.
D. C. Circuit: Blair vy. Dowd’s Inc., 438 F. 2d 136 (D. C. Cir.
1970); Non-obviousness is a question of law, and the trial judge
correctly made findings of fact mandated by Graham and drew a
proper legal conclusion therefrom.
The view a non-obviousness to be a question of law has
found support in the D. C., Second, Third, Fourth, Fifth, Sixth,
Seventh, Eighth, and Ninth Circuits. The First and Tenth Circuits
persist in treating the issue as one of fact. However, even among —
those circuits treating the question as one of law, application of
a standard of Appellate review is far from consistent, resulting in
instances where Appeals Courts have been tempted to form their own
judgments as to fact issues more properly relegated to the trial courts
which should properly be disturbed only if clearly erroneous. See
23 ALR Fed. 326 at 352 for a discussion of the ofttimes tortuous
and inconsistent approach taken by the courts.
10
the obviousness question raises an issue of law on which
we have an opportunity to make an independent judg-
ment.” (523 F. 2d at 641, App. 6.)
The Appeals Court used an erroneous standard of review in
making its own independent findings with respect to the Graham
“factual underpinnings” on the scope and content of the prior
art, the differences between the prior art and the subject matter
of the Beith patent, and the level of ordinary skill in the
pertinent art.
A. Appeals Court Retrial of Scope and Content of Prior Art.
As to the matter of scope and content of the prior art, the
Appeals Court erroneously found that the rejected teachings of
the Fujii wheel (Exhibit A-1) and the other activities of
Ansen were part of the prior art. See, for example, the Appeals
Court Opinion wherein the court stated:
“At about the same time that Beith developed the patented
wheel, several employees of defendant Ansen were experi-
menting with the ‘Fujii wheel’ . . .” (523 F. 2d at 638,
App. 3.)
Also, the court stated that:
“We have also considered the relevance of the Fujii wheel.
The fact that Ansen also experimented with enlarged lug
Openings and inserts is consistent with our conclusion
that the concept was obvious . . .” (523 F. 2d at 642,
App. 7.)
The Trial Court had specifically found that the Fujii wheel
was not part of the prior art:
“Defendant sought to invalidate the Beith patent on the
grounds that Ansen’s ‘Fujii’ [A-1] wheel constituted prior
art in the public sphere as contemplated in 35 U.S.C.
§ 102(a). This contention is rejected for several reasons.
First, Ansen did not sufficiently establish that the A-1
wheel, assuming arguendo that it was anticipatory, was
in the public domain one year prior to the date of Beith’s
invention. This is highlighted by the conflicting testimony
11
of Ansen’s employees as to dates and exactly what was
done to the wheel. Also, the lack of documentation and
the casual manner in which the wheel was haudled detract
from the testimony’s credibility and weight.
“Second, the Court believes that Ansen’s use of the A-1
wheel, assuming its existence at the time claimed, was
merely an abandoned experiment. No records were kept
or formal tests made. The wheel was out of Ansen’s control
for several years and was kept in a storage room. It was
not shown to Ostergaard, who was aiding Ansen in its
wheel development program. Ansen never pursued the
manufacture of the wheel nor did it sell or attempt to sell
even one wheel, and in fact abandoned it in favor of other
types of wheels. See, e.g., Illinois Tool Works, Inc. v.
Continental Can Co., 273 F. Supp. 94, 154 USPQ 401
(N. D. Ill. 1967), affd, 397 F.2d 517, 158 USPQ 437
(7th Cir. 1968).
“Third, the Court believes that the evidence is not sufficient
to show that the Fujii wheel ‘anticipated’ Beith’s inven-
tion... .” (183 U. S. P. Q. at 697, App. 16) (Emphasis
ours. )
In further redeterminating the scope and content of the
prior art the Appeals Court erroneously relied on the Adair
and Siler patents—patents cited, considered and rejected by
the Patent Office as well as by the Trial Court. The Trial Court’s
Findings of Fact 21, 22, 28, 30 and 31 stated inter alia:
“21. The most pertinent patents relied on by the defend-
ants are demonstrative of the scope and content of the
prior art. These were the Adair patent (No. 2,590,363,
issued in March 1952); the Vachon et al. patent (No.
3,166,357, issued in January 1965); the Martin patent
(No. 3,025,109, issued in March 1962); the Hunter patent
(No. 3,207,557, issued in September 1965); the Laycock
British patent (No. 859,193, issued in January 1961);
the Italian patent (No. 579,294, issued in May 1958);
and the Crowther patent (No. 1,940,675, issued in Decem-
ber 1933). All of these patents, except Crowther, were
cited by the U.S. Patent Office during the prosecution of
the Beith patent.
12
“22. The Adair patent discloses a universal emergency
wheel having elongated lug bolt apertures in the web.
The apertures are radially elongated. Certain of the aper-
tures are enlarged, i.e., the width thereof is much larger
than the diameter of the lug bolt so that the lug bolts
fit juxtaposed to one side of the apertures. There is no
easy way of positively locating and centering the Adair
wheel on the hub. Also, there is no adapter utilized or
taught by Adair; this is noticeably lacking. Since there
is no adapter, there can be no seat region for an adapter.
The lug bolt apertures each have a separate chamfer
at each end and a separate chamfer in the middie. The
chamfers are to match the frusto-conical portion of the
lug bolt nuts, but act to bend the lug bolts if the lug
bolt nuts are tightened to the required torque. The inventor
Adair testified that the sample wheels which were manu-
factured did not have chamfers. Accordingly, Adair could
not possibly have looked on the chamfers shown in the
patent as necessary in his wheel for location.
Furthermore, the Adair wheel does not provide a reliable
wheel location, since it depends on the visual placement
of the bolts on the enlarged opening and the friction
created by the nut on the opening for positioning. The test
which defendant ran on the Adair wheel disclosed that
the wheel did not have a high level of reliability. Its rate
of malfunction also was high. This supports plaintiffs’ {sic}
proposition and the inventor's conception that the wheel
was meant only for emergency use and could not be relied
upon as a permanent wheel.
“28. The Crowther patent was not cited by the United
States Patent Office; however, it is far less important or
pertinent than those patents that were cited by the Patent
Office. Crowther is not concerned with a universal wheel;
rather, it is concerned merely with detachably mounting
wheels on hubs. Crowther provides a bolt nut having a
convex split collar which cooperates with the concave
contour of the seat around the lug bolt aperture to over-
come any eccentricity caused by the attachment of the
wheel to the hub. Crowther’s collar is neitner designed
to, nor does it perform the function of the Beith adapter.
Therefore, it is neither the adapter nor the equivalent of
13
the adapter. Also, Crowther fails to teach lug bolt apertures
of a size to accommodate lug bolts arranged in different
lug bolt circle patterns. The statutory presumption of
validity of the Beith patent is strengthened since the most
pertinent prior art relied upon by the defendants consists
of patents cited and considered by the Patent Office plus
- others that were less pertinent than what was considered
in the prosecution of the Beith patent in the Patent Office.
“30. After studying all of the prior art in the record, in
addition to the aforementioned patents, the Court finds that
there has been shown no prior art of record that includes
any patents or written publications which overcome the
statutory presumption of patent validity by clearly and con-
vincingly proving that all the elements of the Beith patent
were ever used or taught as claimed in the Beith patent
prior to Beith’s invention.
“31. Nowhere in the prior art shown is there any prior
patent or any combination of prior art patents that would
enable one skilled in the art to construct the Beith inven-
tion. Further, there is no justification for combining and
modifying the patents for anticipation as the defendants
assert. The prior art patents do not suggest or teach how
they can be combined and modified in one particular way
as Beith taught without utilizing the teachings of the Beith
patent or without exercising invention. It should also be
noted that there was no pattern in the development of the
art which led to Beith’s invention. In fact, the trend in
development was toward the use of adapter plates rather
than working with the lug bolt apertures themselves. Thus,
even if individually the component parts of Beith were
known, they are combined in such a way as to create a
synergistic effect.” (183 U. S. P. Q. at 694-695, App.
13-14) (Emphasis ours.)
Despite these specific determinations, the Appeals Court, with-
out setting these findings aside as clearly erroneous, decided that
the Adair and Siler patents taught “the essential parts [features]”
of the Beith invention (523 F. 2d at 641, App. 6).
Further, the Appeals Court, without setting aside any findings
of fact, also relied on an allegedly erased drawing of an inde-
14
pendent engineer, Ostergaard, who did some work for Ansen
(523 F. 2d at 638, App. 3). The Trial Court had found that this
evidence was of doubtful reliability (183 U. S. P. Q. at 693,
App. 12).
B. Appeals Court Retrial of the Differences Between the Claimed
Subject Matter and Prior Art.
The Appeals Court’s erroneous retrial of the differences be-
tween the claims of the Beith invention and the prior art is in
sharp contrast to the pertinent findings of the Trial Court. For
example, the Trial Court found that an essential difference is the
capability of using the adapter to selectively enable the wheel to
fit a plurality of standard bolt diameters when the adapters
are reoriented and seated in different positions (183 U. S. P. Q.
at 695, App. 14). The Appeals Court. on the same characteris-
tic, stated:
“No particular importance is attached to the reversible
character of the insert containing the eccentric hole because
the patent would equally cover the use of three or more
separate inserts, none of which was reversible.” (523 F. 2d
at 641, Footnote 14, App. 6.)
The Appeals Court relied on a misapprehension of fact as to
the lack of importance of the dual orientation capability of the
adapters where it characterized Beith’s conception as having only
“two essential parts [features]” (523 F. 2d at 641, App. 6).
(1) enlarging the lug [bolt] apertures; and
(2) effectively reducing the size of the lug bolt apertures
to enable them to receive the normal lug bolts.
The Appeals Court completely ignored the unique features
provided by the rabbetted apertured seat region of the wheel and
adapter combination as defined in the claims, such as: (1) the
selectivity or different bolt patterns due to the capability of seat-
ing the adapters in at least two orientations; and (2) the auto-
matic selectivity provided by non-circular adapters without visual
15
orientation. In this regard, the Court is directed, for example, to
Claim 1 of the patent in suit which contains the following
language:
“.. , the adapter receiving seat region and adapter means
formed to allow the seat region to snugly receive the
adapter means in at least two orientations . . .” (App. 29).
Both of these differences which were totally overlooked by the
Appeals Court are set forth in Findings of Fact 32 and 33 as
well as in the claims of the Beith patent (183 U. S. P. Q. at
695, App. 14).
Cc. ee
Findings 34 and 35 of the Trial Court distinctly and clearly
resolved the “level of ordinary skill” based on many factual find-
ings. The Appeals Court seemingly agreed with Finding 34
which states inter alia:
“The level of ordinary skill in the automotive wheel field
is such that those skilled in the art would not have gone in
the direction that Beith went at the time of his inven-
tion...” (183 U. S. P. Q. at 695, App. 14).
Finding 35 states inter alia:
“. . . In addition, as required by 35 U.S.C. 103, this Court
has given full and careful consideration to the scope and
content of the prior art, with respect to universal wheels,
and therefore, to the differences between the prior art and
the claimed subject matter of the patent, and to the level of
ordinary skill in the art, with emphasis on the actual per-
formance of men of at least ordinary skill. Against this
background, the Court finds that the claimed subject matter
would not have been obvious to a man of ordinary skill in
the art at the time the invention was made, in view of the
prior art asserted by defendants, taken either singly or in
combination. Moreover, the finding by this Court of non-
obviousness is reinforced by the objective evidence of
patentability present in this case, including the recognition
16
of great merit paid to the invention by Filter Dynamics
International, Inc., as shown by their investment in the
patent, and by the commercial success of the patented
invention, the long-felt need for an acceptable universal
wheel, the prior failures on the part of workers (such as
Johnson) of at least ordinary skill in the art, and failure on
the part of the defendants to find more pertinent prior art
than that which was cited in the United States Patent Office,
even after an exhaustive search for such prior art.” (183
U. S. P. Q. at 696, App. 15) (Emphasis ours.)
The Appeals Court, in its erroneous retrial of the facts, went
on to reject the impressive array of historical facts as found
above, when it stated:
“. . . The [Beith] combination . . . would therefore be
patentable . . . if a person skilled in the art, fully aware of
the separate elements of Beith’s concept would not be ex-
pected to combine them . . . In this case . . . it seems rather
clear that an artisan who conceived of the first step in his
consideration of the problem of making an interchangeable
wheel would readily recognize the need for an adapter . . .”
(523 F. 2d at 641, App. 6) (Emphasis ours.)
The Appeals Court, by its action, implicitly rejected Findings
34 and 35 without finding them clearly erroneous, and substi-
tuted its own subjective feeling to evaluate the “level of skill”.
The erroneous conclusion that the Beith invention was obvious
was therefore based upon the treatment by the Appeals Court
of the issue as purely legal, consequentially retrying almost
every factual finding of the Trial Court, thereby violating the
accepted rules of Appellate review.
2. The Decision of the Appeals Court in Reviewing the Trial
Court’s Finding of Patent Validity Is in Conflict with the
Pronouncements of This Court Relating to 35 U. S. C.
Section 103.
The Appeals Court standard of review in the face of the
Trial Court’s findings of fact demonstrates that the Seventh
Circuit Appeals Court is one of a group of Circuits which
17
consider the issue of obviousness as a purely legal issue, and,
as such, is in conflict with this Court’s interpretation of 35
U. S. C. Section 103 as set forth in Graham v. John Deere Co.,
383 U. S. 1 (1966), Anderson’s-Black Rock Inc. v. Pavement
Salvage Co., 396 U. S. 57 (1969), and Sakraida v. Ag Pro, Inc.,
— , 189 U. S. P. Q. 449 (1976) (App. 19-23).
In Ag Pro, this Court reaffirmed the Graham and Anderson's-
Black Rock decisions as authority for the proposition that while
the ultimate issue of the validity of a patent is one of law, it
depends on several factual questions.
To apply the Graham doctrine, in the case at bar, in the man-
ner that the Appeals Court did, renders the doctrine meaning-
less. If the objective, pragmatic evidence which formed the find-
ings of fact of the Trial Court regarding the Graham factual con-
siderations can be ignored in favor of the subjective reaction
of the Appeals Court, then one of the most important objec-
tives of this Court in the Graham decision, i.e., to achieve
uniformity and definiteness in the trial and review of the issue
of obviousness, will be defeated.
In particular, this Court held that the standard of invention
to be applied to determine the validity of a patent had been
codified by Section 103 of the Patent Act of 1952 in the con-
cept of “non-obviousness” which took the place of the “less
definite [term] ‘invention’ ” (383 U. S. at 14) that had grown to
be widely used in the more than one hundred decisions since
the decision in Hotchkiss v. Greenwood, 52 U. S. 248 (1851).
This Honorable Court extensively analyzed the background
and legislative history of Section 103 in Graham and stated
that:
“Under § 103, the scope and content of the prior art
are to be determined; differences between the prior art
and the claims at issue are to be ascertained; and the
level of ordinary ski. in the pertinent art resolved. Against
this background the obviousness or nonobviousness of
the subject matter is determined.” (383 U. S. at 17.)
18
The purpose of requiring the Courts to follow this decisional
process was clear. It was to prevent an empty, meaningless
procedure that would provide no greater uniformity or definite-
ness than had been the case under the Hotchkiss rule. The
purpose was to make the determination of non-obviousness a
“functional” decision (383 U. S. at 12) based as much as pos-
sible on objective evidence resulting from “factual inquiries”
(383 U.S. at 17) made in “factual context” (383 U. S. at 18).
The express goal was to bring “more stability and predictability
in determining patentability and validity” (383 U. S. at 16),
thus assuring achievement insofar as possible of “that uni-
formity and definiteness which Congress called for in the 1952
Act” (383 U. S. at 15, 18).
The Court specifically stated that:
“While the ultimate question of patentability is one of
law . . . the Section 103 condition which is but one of
three conditions, each of which must be satisfied, lends
itself to several basic factual inquiries.” (383 U. S. at 17.)
Following Graham in the Anderson’s-Black Rock case, this
Honorable Court restated that “strict observance” of the requi
site factual findings of Graham is necessary in determining non-
cbviousness under Section 103. In its recent pronouncement
in Ag Pro, this Court again reaffirmed that the Appeals Court
cannot reverse findings of fact dealing with patent validity unless
there isn’t support in the record and therefore is clearly er-
roneous. Thus, Rule 52(a) F. R. C. P. was followed by this
Court in Ag Pro in reviewing findings of fact of the Trial Court.
Yet in the case at bar, after complimenting the Trial Court
on its findings, the Appeals Court retried substantially all
the facts on the ground that “obviousness is an issue of law’.
As has happened in many other cases, the Court “justified” its
retrial of the facts on the basis that obviousness or non-obvious-
ness is ultimately a question of law. By reforming or “retrying”
the factual findings regarding scope and content of the prior
art, the differences between tlhe prior art and the claims in
issue, and the level of ordinary skill in the art, while praising
19
the findings of the Trial Court, the Appeals Court has defeated
the purpose of the Graham doctrine.
The question of obviousness was one of the foremost issues at
the trial as is evidenced by the treatment of the subject in the
Trial Court’s Opinion. The late Honorable Richard W. McClaren
recognized the applicability of Section 103 and acknowledged
this Court’s mandate for a thorough consideration of the issue.
The Trial Court extensively reviewed the prior art in order to
determine the scope and content thereof in Findings 21 through
31 (183 U. S. P. Q. at 694-695, App. 13-14). Next, the Trial
Court reviewed the differences between the prior art and claims
at issue in Findings 32 and 33 (183 U. S. P. Q. at 695, App.
14). Then the Trial Court made specific findings as to the level
of ordinary skill in the art in Findings 34 and 35 (183 U.S. P.Q.
at 695-696, App. 14-15).
In making its factual determinations leading to the conclu-
sions of non-obviousness, the Trial Court clearly recognized that
its primary responsibility was to evaluate the invention in light
of the prior art and also in light of the secondary considerations
of Graham. As the trial record shows, each of the items of prior
art was the subject of testimony and documentary evidence
which underwent careful scrutiny by the trial judge. From a
review of the Trial Court’s decision, it is clear that the Trial
Court considered and determined the guestion of non-obvious-
ness in precisely the method ordained in Section 103 and decreed
by this Court.
Despite the Appeals Court’s praise of the Trial Court, it is
evident that the Court chose to substitute its own judgment for
the Trial Court’s evaluation of the witnesses’ testimony based
upon the cold record on appeal. It is also clear that the Appeals
Court read things into the exhibits and the testimony that are
simply not there, leading to results at substantial variance with
the evidence and findings of the Trial Court. Petitioner submits
that the Trial Court went beyond its jurisdiction to review the
20
ultimate question of non-obviousness. Therefore, this Petition
should be granted to make this decision consistent with the
decisions in Graham, Anderson's-Black Rock, as well as Ag Pro.
3. The Appeals Court Incorrectly Distinguished the Case at
Bar from U. S. v. Adams.
The Appeals Court’s decision was completely contrary to the
case of U. S. v. Adams, 383 U. S. 39 (1966). In that case, this
Court stated that known disadvantages in old devices which
would naturally discourage the search for new inventions may
be taken into account in determining obviousness. Further, this
Court stated that disbelief by experts in the art would also be
evidence of non-obviousness. In the case at bar, both the Trial
Court and the Appeals Court found that Beith had gone in a
direction opposite to good engineering practice, since the part of
the wheel where the elongated slots were to be formed was
structurally the weakest part of the wheel. Much concern had
been shown for the strength of wheels in this critical area.
The Appeals Court agreed with the Trial Court's finding that
Beith took a step in a direction opposed to the teachings of the
prior art and stated that:
“. . . Beith’s invention took a step in a direction opposed
to the teaching in the prior art, are supported not only by
Siler and by Beith’s testimony describing the first foundry’s
objection to sandcasting a wheel with larger openings in
the web, but also by Plaintiff's expert Nass, who testified
that enlarging the holes to accept different lug patterns
would be considered ‘a pretty brash move’ likely to pro-
duce ‘some kind of trouble’” (523 F. 2d at 640, App. 5).
Even with these statements, the Appeals Court went on to
distinguish this case from Adams based on its erroneous view of
the facts as well as the law. The Appeals Court, in its erroneous
reevaluation of the evidence, attempted to distinguish this case
from Adams on the ground that the expert Nass testified that
there is always sOme trouble with a new design which can be
——
re ee
21
overcome; the by-word was to “be careful with the new design”.
In Petitioner's view, a reading of the Opinions below and the
Record, confirms that neither Nass’ testimony nor the Trial
Court’s view of it can be interpreted to mean that the known
problems with Beith’s proposed design should have been taken
as routine design problems capable of routine solutions. Other-
wise, Nass or the Trial Court or even the Appeals Court would
not have confirmed that Beith’s invention went against good
“engineering principles” and it was a “brash move” bound to
produce some “kind of trouble” (523 F. 2d at 640, App. 5).
Thus, the Appeals Court took Nass’ testimony out of context
and unjustifiably reshaped it in a manner that was not intended
by Nass or the Trial Court. This is yet another example of what
happens when an Appeals Court retries facts most properly
determined at the trial level.
Further, in finding for the defendants, the Appeals Court
erroneously limited the teachings of Adams to a situation where
investigation into the area in which the invention was made
would have been “purposeiess” (523 F. 2d at 642, App. 7).
The proper test in the Adams case is whether known dis-
advantages in the prior art would discourage the search for new
inventions in a particular area, that is, were artisans at the
time of the invention discouraged from further effort. The test
is not whether artisans were barred by a feeling of “purpose-
lessness” from investigating in the direction that the inventor
had taken. If “purposelessness” were the standard to be used to
judge whether an investigation was inventive or unobvious, all
inventions, including Adams’ invention, would have to be con-
sidered obvious! Certainly such an impossible standard was not
intended by this Court in the Adams case.
Since the Appeals Court relied heavily on this erroneous
limited interpretation of the Adams case as well as on an er-
roneous reshaping of the facts in reaching its conclusion of ob-
viousness, it is clear that the Appeals Court would have sustained
the validity of the patent had it not made these errors. Thus,
the Appeals Court decision should be reversed.
22
CONCLUSION.
While it should be noted that the Beith patent was pur-
chased by the Petitioner for $1,375,000.00 and approximately
$7,500,000.00 had been invested in its commercial exploitation
prior to trial, the decision of the Appeals Court goes beyond the
plight of the parties involved, since the legal criteria of patent-
ability used by the Trial and Reviewing Courts is of grave
public concern. It has long been recognized that arbitrary and
subjective methods in trying and reviewing patent cases will
eventually destroy the essence of the patent system and thereby
destroy any meaning to Article I, Section 8, Clause 8 of the
Constitution, the purpose of which is to promote and stimulate
the progress of science and the arts.
Even 200 years after the adoption of the Constitution, it is
well recognized that the United States should preserve the patent
system “to provide a maximum of growth effort at the least cost
to the taxpayer” (speech of Patent Examiner C. Marshall Dann,
as reviewed in BNA’s Patent, Trademark and Copyright Journal,
No. 278, May 13, 1976).
Respectfully submitted,
IRWIN C. ALTER,
Putte A. WEISS,
ALTER AND WEISS,
2460 John Hancock Center,
Chicago, Illinois 60611,
Attorneys for Petitioner.
Of Counsel:
MELVIN E. PEARL,
DONALD E. EGAN,
4100 Mid-Continental Plaza,
55 East Monroe Street,
Chicago, Illinois 60603,
RICHARD EUGENE DICK
2469 John Hancock Center,
Chicago, Illinois 60611.
Appendix
Note:
Appendix pages App. 1 through App. 23 are in this volume.
Appendix pages App. 24 through App. 29 [Beith Patent No.
3,329,468] are in a separate, larger Supplemental Appendix.
- it
686 --.° ERAL.
sre ~ ;
° pl
E-T INDUSTRIES, INC, .
Plaintiff-Defendant-Appellee,
Vv.
- WHITTAKER CORP. and Des Plaines
Grand Automotive Speed Center, Inc,
Defendants-Plaintiffs-Appellants.
N 0. 74-1924.
ams States Court of Appeals, .
Seventh Circuit. .
asgued Feb. 24, 1975.
z,, Decided Sept. 25, 1975. ©
sf In patent case involving competing
manufacturers of “mag wheels,”.. the
. United: States District Court for- the
- Northern District of Illinois, Eastern Di-
'- vision, Richard W. McLaren, J., entered
judgment from which appeal was taken.
- The Court of Appeals, Stevens, Circuit
Judge, held that subject matter of pat-
ent on automobile wheel that would fit
: L ‘it would appear, inom, that the fuee
vania regulation may not be enforced insofar
as it predicates eligibility for medical assist-
ance payments on conditions that were specifi-
cally invalidated in Doe v. Bolton, 410 U.S.
523 FEDERAL. REPORTER, 2d SERIES
different makes of cars was obvious, and
accordingly the patent was invalid.
Reversed. .
_—
L Patents @°324.55(3, 4)
District court’s judgment on ulti-
mate issue of validity of patent was enti-
tled to special respect because of his bet.
ter opportunity to have the exhibits ex.
plained to him by expert witnesses and
by arguments of counsel, but obviousness
question raised an issue of law on which
the Court of Appeals had a responsibility
to make an independent judgment.
2 Patents 18
Subject matter of patent on automo-
bile wheel that would fit different
makes of cars was obvious, and accord-
ingly the patent was invalid. 3S U.S.
C.A. § 103.
Richard Bushnell, Chicago, Ill., for de
fendants-plaintiffs-appellants.
Irwin C. Alter, Chicago, IIl., for plain-
tiff~iefendant-appellee.
Before CASTLE,.Senior Circuit Judge,
and SWYGERT and va Circuit
oung. .- an
- = SU LA mete
lon
STEVENS, Cirenit Judge.
Were it not for the fact that the in-
vention was a step in’a direction oppo-
site to what was considered good engi-
neering practice, Beith’s discovery of an
automobile wheel that would fit differ-
ent makes of cars would surely be con-
-sidered obvious.. The principal question
presented by this appeal is whether the
district court’s- findings that Beith ig-
‘nored the risks that would have deterred
others skilled in the art saves the patent- -
ability of an otherwise rete om
tion, 2+ % ne ae
ed s - a
" 479, $3:S.cz. 739, 35 LEd24 201 (1973), name
ly, a concurrence of two doctors and perform-
ance of the procedure in an accredited hospi-
APP, 1
| E-T INDUSTRIES, INC. +. WHITTAKER CORP. * . 637
hed Cite as £23 F.24 636 (1975)
.. 2 . 4 ‘ , oo ogee
The parties are competing manufac-
turers of “mag wheels.” Mag wheels
are specially designed wheels, usually
cast aluminum and sometimes containing
& magnesium alloy, intended to enhance
the appearance of a car. They are more
expensive than normal wheels. A buyer
of such wheels, especially one who fre-
quently changes cars, often wants to use
the same wheels on successive cars. Car
wheels, however, are not interchangeable
because there has been no standardiza-
tion among automobile manufacturers on
the arrangement of ‘the lugs which _
axle to.
project from the brake drum or axle sine o cmall eompeny uf ing
secure the wheel. The lugs, of course,
are arranged in. a circle and usually
there are five for each wheel. The most
popular makes of cars, however, employ
lug bolt circles of three different radii
—4'% inches for Ford and Chrysler cars;
4% inches for Chevrolets; and 5 inches
for the larger General Motors cars. The
marketability of 2 mag wheel is signifi-
cantly greater -if it will fit all three of
tne most frequently used lug bolt ar-
rangements than if it will fit only one’
The purpose of Beith’s invention was to
ere a wheel that would fit = bolt
eles of different radii. ~
Beith's solution to the problem ++ was
simple. He elongated the lug apertures
in the wheel sufficiently to accommodate
lug bolts arranged in circles of different
radii; he then inserted adapters to fit
snugly into the enlarged lug apertures;
ech adapter, in turn, contained a hole
‘nrough which the lug projected. One
et of adapters contained off~enter
soles. If such an adapter was turned in
L Puntiff E-T Industries is a wholly-owned
“Suchary of Filter Dynamics International,
ine, which purchased E-T’s stock from the
Sweator Beith in 1970. Ansen Automotive In-
owoed su
— Ansen was merged into Whittaker,
Steen then substituted as a defendant
a Des Plaines Grand Automotive
wena, - Inc., is a distributor of Ansen’s
APP, 2
was at the time of the irial a wholly- .
Dsidiary of Whittaker Corporation... -
one direction, the opening would be 4’
inches from the zxJe; reversed, the radi-
us would be 5 inches. In a second set of
adapters a centra] hole would accommo-
date a radius of 4% inches.
‘The patent describes various s shapes of
lug openings and adapters to fit them.
The basic idea, however, was simply an
enlarged lug opening to be fitted snugly
with one or more inserted adapters, the
position of which would determine the
lug circle radius which the whee would
‘fit , a — .
— a... @
ary of 1965. At that time he was run-
custom wheels with three different pre-
drilled bolt patterns.*
those wheels and enlarged the lug aper-
ture by drilling all three standard lug
patterns into it and then experimented
with cardboard inserts to make sure that
the wheel would fit all three sizes.
He requested the foundry which was
casting wheels for his company to sand-
cast the new wheel for him with the
enlarged lug openings._ Beith testified
that executives of the foundry expressed
concern about their ability to sandcast
the holes accurately and about the possi-
bility that the wheel would be weakened
.by the elimination of additional metal,
which in turn might subject the company _
. to product liability problems. A second
foundry, which used a permanent mold
process rather than sandcasting, agreed
to make wheels for Beith That compa-
ny insisted, however, that Beith make
better drawings and recommended an
engineer to review the project. .
>
2. Because of the high cost of custom wheels,
the variety which a dealer could carry in in-
ventory was limited: Thus, a wheel which
could be used interchangeably on al] three
. Sized lug patterns provided the dealer, as well
, 35 the customer, with significant economies.
3. Beith graduated from college in 1958, ‘taught me ee
school for about five years, and apparently
- formed his wheel company about a year or
two before he Gnomes the parent inven-
tion. =—
Beith conceived his saientton in Janu-- ~~.
‘He took one of
BEST COPY AVAILABLE
.
. .- ° ot
"Beith panne the wo of ‘aa
ening the wheel by enlarging the lug
apertures, but the engineer “felt that it
could be accomplished, or at least we
could certainly experiment; .
the only
. Way we would really know was to-go -
_ ahead and’ make the drawings, ‘have
’ “molds made, cast some wheels and really,”
_ because there was no testing at that
time, market the product and find out
the real test, the real proof. It was all
-- eonjective at that point as to whether
ter could have been reversed.
” clear, however, that the invention described in= *~ 25, 1952, covering “wheel adaptable to differ. -
7 three different inserts to.fit the three wheel == 10-2 0 82 SED am sa
to almost $13,000,000 in three years. *
developed the patented wheel, several -
employees of defendant Ansen were ex-
_ perimenting with the “Fujii wheel”—so
* named because it was placed on the 1951
the product would function out on the
highway, on the eutemenaen, § in oe mar-
” ketplace.” we Tt. : Pet? és
/ ‘
Beith filed his ostetinad patent applica-
tion in July. In October, 1965, he tested
the new wheel in operation, found that
it worked, and_ began to sell it commer-
cially.
Plaintiff had commenced operation on an
investment of $750; in 1970, Beith sold
the company to Filter
stock valued at $1,375,000. Thereafter,
Sales increased dramatically.-
amics for FDI
annual sales grew from about $2,500,000
‘At about the same time that Beith
Chevrolet which an Ansen employee
named Dennis Fujii drove to work every
day. The Fujii wheel was -a-standard
‘ wheel von which, the > lug apertases were * “te a six
_ 523 FEDERAL REPORTER, 2d SERIES :
enlarged to hold an insert which enabled
the wheel to fit the 4% inch lug & circle
The insert used in the Fujii whee! —
fit only a Chevrolet, but it is apparen
that the Fujii concept, just like Beith’s
would be equally useful with different
inserts for different sizes. Defendant
edduced oral testimony to prove that the
Fujii wheel was in public use more than
a year before Beith filed his patent ap
plication. The district court found this
evidence of doubtful reliability More.
over, he noted that Ansen did not Ppro-
ceed with the development of an inter.
changeable. wheel employing the Fujii
concept, but instead developed an entire-
ly different wheel embodying a so~alled
“knock-off lug” modeled after wheels
used on racing cars.
Later, after acquiring Ansen, defend-
ant investigated the Beith patent and
started to manufacture and sell wheels
‘which the district court found to in-
fringe. . |
. The district court reviewed the prior
art in detail: We need mention only two
items, Adair * and Siler.’ -
-- Adair disclosed a wheel which will fit
lug circles not only, o of different diame-
“ters but also containing different num-
bers of lugs. Like Beith, it had elongat-
ed lug apertures to accommodate differ-
ent sizes, but it also had extra openings,
‘some of double width, to. make it possible
as well as five ‘lugs. with the
-*. ae
«=~
YY Gino tesent- eal bs tao Ose wheel enumlans " .
mn ama tae, mate ten tat Samo |
_- Chevrolet.- Since the Tug circle radius- on a.
~ Chevrolet is 4% inches, reversal of that insert ~
. would accommodate_a radius -of 5'4 inches...
“No American car uses that Jug arrangement’ -
- ‘and, therefore, as the district court-found, the -
. actual Fujii wheel fit only one sized car. The ~
* district court also noted doubt as to whether,
“the insert actually used with the Fujii wheel -
It seems ‘quite _
‘the patent would "cover a wheel which: used .~
‘sizes, as well as one which uses two inserts, .
one containing a concentric hole and the other
: " Containing an eccentric hole useful in two po-
- sitions to accommodate three sizes. -
-
: 5 The evidence established that Ansen initiated
a wheel development. program in 1964. An”
?
abeee S oe
Bee iabiedahie Sains ‘hemmed Ostgaard prepar-
eda number of design drawings for Ansen
during the period between May and Novem-
ber, 1964., Since he was not told about the
. Fujii wheel, it seems likely that that wheel was
made later." On-the ether hand, one of Ost-
‘ gaard’s early pencilled drawings originally de-
~ picted enlarged jug. apertures which were
erased when a design change was .made.
6 Adair ‘ak Gin ascasen’ a a on March
7 ont be. ae hai ta ak ol
7. Siler ‘Patent No. 3, 006,443, ‘issued
* Attaching Juxtaposed Members.”
APP, 3 “2
October
31, 1961, covering “Method and Apertures for -
E-T INDUSTRIES, INC. y. WHITTAKER CORP.
oo -*
-_
639
Cite as 523 F.2d 636 (1975) -
Same wheel’ Adair merely disclosed the-
ides—which we think would be obvious
even without Adair—that. enlarged lug
#pertures would enable a wheel to fit
lug circles of different Gamoters: .
‘The Siler invention “aia not “relate to.
lem of securely attaching two parts, such
2s metal plates or sheets, which contain
holes that are somewhat misaligned, and
therefore will not accommodate a fasten-.
er such as a rivet or. a. bolt of the same .
size as the holes. The patent teaches
that it is. undesirable simply to enlarge-
the hole in one of the two plates and =
then to use a rivet or bolt of the same
size as the original hole’.
& Adair’s basic idea was to have a universal
emergency wheel which could be substituted
for a damaged wheel on aimosi any vehicle in
order that the vehicle could be driven instead
of towed to a repair facility.
% The Siler specifications state, in part: ~
“Frequently, the mechanic working with
supposedy exac: and interchangeabie parts
Smcs some members deviating so far from
the desired standard that they cannot be
bolted or riveted or otherwise properiy fixed
together. Thereupon, he frequently resorts
to an undesurabie expedient which will forev-
er theresher preclude the replacement and
integration into the device (as when under-
S0ing repairs) of a truly stancardized-part or ~
“In such undesirabie practice, the mechan-
ic proceeds to drill new holes by hand or |.
ream and enlarge the misaligned holes, so
that they will receive bolts-or other fasten-
ing elernents. .
“Such expediency and il] considered prac-
tice will produce a weakened structure be-
Cause it has been provided with irregular or
enlarged holes greatly exceeding the limits
of tolerance allowed by the Gesigning eng)-
neers and/or failing to meet the fequire-
yn andards in strength and stabili-
ty.” "
to. The relevant findin :
rim £2 are Nos. 9 and 34,
which read as foliows:
war, ht approach Beith decided to take
“5 Opposite to what was considered good
ae ving Practice,‘ because the part of
wheel where the elongated slots were to
Soe Lote ae |
| _—
wheels. It was concerned with the prob-
Instead, the”
_-—
- patent teaches the use “of etesten con-
taining small off-center holes which can
be aligned with one another, and
through which a smaller bolt or pin can.
be inserted ‘to fasten the members to-.,
im *
i + wel *e-- «, 0c was —--
+e -" -
sae ~~,
“The Siler patent is otiina to the’.
: Beith invention in two different ways.
On the one hand, its admonition not to.
enlarge bolt holes unnecessarily supports
the district court’s findings that Beith’s- me
conception, insofar as it enlarged the lug |
apertures in the web of the wheel, was 5
contrary to accepted engineering prac-"
tice.* On the.otber hand, Siler also
taught that an adapter, or insert, could -
be used to secure a relatively small bolt -
_—- —_ —
be formed was structurally the weakes: part
of the wheel. Much concern had been
shown for the strength of wheeis in this crit- -
ical area. His solution to the long-existing
problem was an unexpected and unobvious
acceptable solution since ¢ vuple with ordi-
nary ski would have sought an acceptabie
solution by using large adapter pilates.”
“3A. The level of ordinary skill in the au-
tormotve wheel field is such that those
skilled in the art would not have gone in the .
direction that Beith went at the time of his
invention’ Beith removed material from
what is considered a critical portion of the ~
wheel—the centr>] mounting portion or web
bear the central hub opening Thus, Beith
went in a direction opposite to the direction
that was being taken by those having ordi-
nary skill in the art By doing so, the public
Was provided with a universal wheel that
was smart looking, in-that the elongated
slots were directly in-the web of the wheel
itself and small adapter means were used to
“ -.. obtain universality. Such wheels could be
manufactured and operated easily while stil!
_ shaving a pleasing appearance as weil as reli-
ably locating and attaching the ae to = .
brake drum 2 a::
Se w& |...
"4 CL U.S. Letters Patent No. 3,006,443 (Siler) ~-
- sot ¥ lines 50-60.
i . ve
“* This is brought home by the fact that An-
sen rejected the idea of elongated apertures
SS Me 6 Cee O eee Se
same time as_ Beith was ES ee
wheel.” -
The footnotes ‘are the coat... te TF,
APP, 4 re
- . ee
a o% “ae
> ee
o%. © . =
. 2 ° |
-
-
640... ~~~.” 523:FEDERAL.REPORTER, 2d: SERIES
in a large opening.” Thus, if we con-
sider the two parts of the Beith inven-
tion separately, in effect Siler taught (a)
that the lug epertures should not be en-
larged, but (b) if-they should be en-
larged, the oversized openings could
nevertheless be secured to a normal lug
by using an adapter, or insert, contain-
ing a smaller hole fitting the lug bolt.
The | district court’s findings that
Beith’s invention took a step in @ di-
“IL The adapter, or insert (44) in Fig
rection opposed to the teaching in the
prior art are supported, not only by
Siler ** and by Beith’s testimony describ-
ing the first foundry’s objection to sand.
casting a wheel with larger openings in
the web, but also by ‘plaintiff's expert
Nass, who testified that enlarging the
holes to accept different lug patterns
would be considered “a pretty brash
move” likely to produce “some kind of
trouble.” He further explained that to
9 of Beith’s patent (shown be-
- low on the left) is similar to the adapter, or insert (15) in Figs. I and
TV of the Siler patent (shown on the right). .
”~;
[Siler]
[Beith] , :
q } f ¢e . ; ss |
Tig: or
aa yn af
0 23 ‘
’ :
we rT; fag- LZ
* - *-
> . - ° *s:e he wed a
on “a2. -
12. Actually, the portion of the Siler specifica. -
tions on which the district court relied is a- -
comment on the undesirability of enlarging @ -
hol in a prefabricated part, rather than a
- ™ comment on the possible consequences of de-
signing an entirely new product containing
larger holes than those found in a previous
IX. He testified at Tr. 299-301:: -
smal) circle as a pre-drilled whee) had?
“No. If I might state your question the way
] understand it, we assume we start with a
whee! that merely has drilled holes in it in
“Q In your opinion would it be good design...
to remove the amount of material that has
been rermoved there as opposed to just as
“A Well, in my opinion that would be a
pretty brash move because it is in an area
where
Would you say that that would be go
in
~—
E-T INDUSTRIES, INC. v. WHITTAKER CORP. 641
Cite as 523 F.2d 36 (1975)
' determine whether a change like that
would be acceptable, it would be neces-
sary to make several tests, and then add-
ed: ote:
Well, I can state that by my experi-
ence, that is the typical way that al-
- * terations and modifications to wheels
are made. Frequently there is very
little what~ you might call rigorous
' analysis involved in it. -They will
make a modification and then the
wheels will be sent down to me for an
evaluation.and certain road levels are
applied to the wheels, and sometimes
the wheels are what is known as stress
coated to study the stress: pattern in
the wheel to gain a ‘knowledge of
what is going on in the wheel, and
then from that knowledge further
changes may.be-made. There could be
an alloy section change-made. There
could be a. section thickness change
made or some other changes made to
get the wheel up to a point where it
would be satisfactory again structural-
ly. a,
Tr. 301-302. On cross-examination he
testified that if a wheel or any other
Structure is weakened by removing .ma-
tertal, the weakness could be counteract-
U.S. 1, 17-18, 86:°S.Ct. 684, 15 LEd2d
545, his findings evidence a thorough
understanding of the invention and the
prior art, and his judgment on the ulti-
mate issue of validity is entitled\to spe-
cial respect because of his better oppor-
tunity to have the exhibits explained to
- him by expert witnesses and by the ar-~
guments of counsel. Nevertheless, the
obviousne3s question raises an. issue of
‘ law on which we have a responsibility to
make an independent judgment. In this
case that judgment involves a three-step _
consideration: first, whether each ele-
ment of the invention is obvious; second,
if so, whether the combination is obvi-
ous; and third, if the combination seems
obvious in itself, whether the rejection
of the contrary teaching in the prior art
_Fequires a different conclusion.
Each of the two essential parts of
Beith’s conception—first, enlarging the
lug apertures to receive bolt arrange-
ments of different radii; and second, ef-
fectively. reducing the size of the en-
larged openings to enable them to re-
ceive normal lug bolts—was unquestion-
ably taught by the prior.art. The combi-
‘nation, however, was new. It. would
therefore be patentable if it produced a
ed by adding or repositioning other ma- Tesult other than the anticipated sum of
terial For example, he said:
The strength of any structure depends
on two things, basically—what the ma-
terial is that you are using, the quality
of the material, and No. 2, on the ge-
ometry. Between those two variables
you can generally get about every-
thing you need in structure. Tr. 411
‘Tt. = <.
(1] There is no basis for criticizing
the district court’s analysis of this inven-
ton. He followed the procedure man-
by Graham v. John Deere Co., 383
go in that direction to reach the result
obtained with the UNI-LUG system?
. oe . ° e'..e -
~My feeling in the matter is that a person, if
he appreciated what was going on stress-
wise in a wheel, he would soon. realize that
a a8é & move of this kind, he would proba-
¥ Set into some kind of trouble.”
323 F 29g)
—the separate parts, or if a pe: on skilled
in the art, fully aware of the separate
elements of Beith’s.concept, would not
be expected to combine them when look-
ing for the solution to the problem of
making an interchangeable wheel. In
this case, the combination cannot be de-
scribed as synergistic, and it seems rath-
er clear that an artisan who conceived of
the first step in his consideration of the
probiem of making an interchangeable
wheel would readily recognize the-need |
for an adapter or an insert.“ We. are
persuaded that the ultimate conclusion
of non-obviousness can only be supported
14. No particular importance is attached to the
reversible character of the insert containing
. the eccentric hole because_the patent would
' .@qually cover the use of three or more sepa-
rate inserts, none of which was reversibie ~
/
AP?P.S ive ”.
— oh
_ eee
eo
642 . | “523 FanenAL REPORTER, | 2d SERIES
by~the district court’s yellenee on the
adverse teaching in the prior art.’®
“In United States v. Adams, 383 US. .
39, 86 S.Ct 708, 15 LEd2d 572, the
. Court’s conclusion that the discovery of a
water activated battery, using magnesi-
um cuprous chloride electrodes, was non-
obvious rested heavily on evidence that
long accepted factors would deter any
investigation into the combination used
by Adams."* The reasoning of the Ad-
ams case is not applicable _ to Beith’s in-
. vention.
The Adams battery. generated eee
quantities of heat during normal opera-
tion and the prior art taught that such a
battery was not practicable. Moreover,
the prior art also taught that water acti-
vated batteries were only successful
when used with electrolytes harmful to .
magnesium. The court was persuaded |
that both of these long-accepted factors -
would deter any investigation of the ~
- combination which Adams ‘found. to be:
unexpectedly successful -. ~~
In this case, the contrary ‘factor was
‘merely the rather obvious notion: that
enlarging holes in a structural member ,
will weaken it to some extent. But the
record establishes that it was equally
“-clear that some enlargement might _be
tolerated and thet modifications in de
— we ae ling oe au
15. We. ‘do pot ignore the substantial ' evidence.
of commercial Success which buttresses the
‘district court’s conclusion of validity, but such
success is not by itself sufficient to show non-.
obviousness. Rather, it must be weighed with
~ all the other evidence in the record. sie
‘Novo Industrial Corporation © v. Standard.
- Screw Company, 374 F.2d &24 (7th Cir. 1967);
Application of Chne, 345 F.26-847, 8 CCPA
| 1404 (1965). 23. st =e ge
_
1 “We ecnstude ths Adignn baitary wes alee.
nonobvious. As we have seen, the operating
ty
~ been shown to have been unexpected and to
. have far surpassed then-existing wet batter-
ies. Despite the fact that each of the ele-
_ ‘ments of the Adams battery was well known:
~. im the prior art; to combine tiem as did
.. Adams required that a person reasonably
skilled in the prior are must ignore that (1)
~ batteries which continued to operate on an
= open circuit and which heated in normal use
“ ‘were mot practical and (2) water-activated —
sign or. material strength might ove.
come the effect of the loss of some ma.
terial. As the testimony of plaintiffs
own expert indicates, the problem was
not so serious as to deter any investiga.
tion at all of enlarged lug apertures, but
rather it was a problem typical of almost
any new wheel design which would nor-
mally require careful testing and per-
haps further cuperimentation and modi-
fication.
The prior art taught that interchange-
ability might be achieved. by using en-
larged lug apertures, but that any such
new design should be carefully tested to
be sure it was safe. This prior art warn-
ing to be careful with the new design is
not, in our judgment, equivalent to the
uniform prior art teaching in Adams
that any investigation of the use of the
Magnesium electrode in a-water activat-
ed battery would be purposeless.
We have’ alo considered the relevance
‘ofthe Fujii wheel. The fact that Ansen
-.. also experimented with enlarged lug
openings and inserts is consistent with
_our conclusion that the concept was obvi-
ous, whereas the fact that Ansen did not
go forward with the development of this
kind of whee] Until] after Beith had dem-
_ onstrated its feasibility tends to under-
mine ® that conclusion. It does not, how-
a ee
vee
bined with electrolytes detrimental .to the
.. use of magnesium These long-accepted fac-
2... tors, when taken together, would, we be-
~t— lieve, deter any investigation into such a
™> combination as is used by Adams. This is
5s". a © aay Sas cnet manty Sade Sor
uses for old inventions by shutting his eyes -
‘to their prior disadvantages thereby dis-
covers a patentabie innovation. We do say,
.. however, that known disadvantages in old
”_ devices . which would naturally discourage
the search for new inventions may be taken
te into account in determining obviousness. -
a, “Nor gre these the only factors bearing on
the question of obviousness. We have seen
—- that at the time Adams perfected his inven-
tion noted experts expressed disbelief in it
‘> * ©. © Furthermore, in a crowded art re.
- plete with a century and a half of advance
ment, the Patent Office found not one refer-
ence to cite against the Adamis application.”
_ 383 U.S. at 51-52, 86 S.Cr at 715. - -.
APP. 7
ever, support the applicability of the Ad-
arms rationale to this case because there
is no evidence that Ansen’s decision not
to go forward with the Fujii wheel rest-
ed on any concern about weakness
caused by enlarging the lug. openings.
On the contrary, the fact that the Fujii
wheel was in fact made and actually
tested indicates that the prior art did not
completely deter "any experimentation
with this comcept "=. Push. ot,
[2] We conclude that the “subject
matter of the Beith patent was obvious
within the meaning of 35 US.C- § 103
end, sccordingty, that the patent-is in-
valid. 2: tae:
Reversed. - sabe @ "0" ee. ot
~~
BEST COPY AVAILABLE
APP. 8
District: Court, N. D. Illinois, E. Div.
E-T Lnoustrues, Inc. v. WHITTAKER
CORPORATION et al.
70 C 2498, 71 © 3133
Decided Oct. 31, 1974
PATENTS
1. Patentability — Anticipation ~— Ex-
periments ($51.209)
Defendant’s abandonment of experimental
device, which is alleged to anticipate plain-
tiffs patent, confirms that patented inven-
tion was not obvious to defendant, who is
skilled in the art.
2. Presumption from patent grant —
Patent Office consideration of
prior art ($55.5)
Statutory presumption of patent validity is
strengthened where the most pertinent prior
art was cited and considered by Patent Of-
fice.
3. Patentability — Anticipation —
Combining references (351.205)
There is no justification for combining
and modifying prior art patents for anti ipa-
tuon since they do not suggest or teach hiew
thev can be combined and modified without
utilizing teachings of patent in suit of wiun-
Out exercising invention; even if indivicuaiiv
the component parts of patented device were
known, they are combined in such 2 wav 23
to create a synergistic effect.
4. Patentabilirv — Evidence of — In
. general ($51.451)
Patentabiliry — Evidence of — Com
mercial success — In genera
($51.4551)
Patentability — Evidence of — Deby
and failure of others to product
invention (§51.459)
Finding of nonobviousness is reinforces ©
plaintiff's substantial investment in purr
APP. 9
183 USPQ E-T Industries, Inc. v. Whittaker Corp. 691
ing patent from inventor and in commer-
cially ry it, its commercial success,
felt need for patented device and prior
failures of those skilled in the art to solve
problem, and defendants’ failure to find
more pertinent prior art than that cited by
Patent Office, even after an exhaustive
search.
5. Accounting — Increased or treble
damages or profits (§11.35)
Costs — Attorney’s fees ($25.5)
Infringer’s lack of a written opinion of
counsel! and its continued infringement after
notice of infringement do not make case an
exceptional one where punitive damages
under 35 U.S.C. 284 or attorney's fees
under section 285 would be appropriate.
6. Patentability — Anticipation — In
general ($51.201)
In order to have anticipation, prior object
must be substantially identical to patented
device; this occurs when they perform same
function in same way and produce same re-
sult.
Particular patents—Wheel
3,329,468, Beith, Wheel Structure, claims |
to 4, 7, 9, 10, 15 to 17, and 19 valid and in-
fringed.
Action by E-T Industries, Inc., against
Whittaker Corporation and Des Plaines
Grand Automotive Speed Center. Inc., for pat-
ent and trademark infringement and unfair
competition. Judgment for plaintiff in part
and for defendants in part.
Irwin C. Atter, Pumure A. Wess, RicHarp
E. Diex, Atrer, Wess, Wurreser &
LarF, Metvin E. Peart, and Kat®ten,
Mucnuwm, Grrzes, Zavis, Peart & GaLLer,
all of Chicago, IIl., for plaintiff.
RicHarp BUSHNELL and O son, TREXLER,
Wotters, Busunett & Fosse, Lrp., both
of Chicago, IIl., and Donaxp Nist, Los An-
geles, Cailif., for defendants.
McLaren, District Judge.
Introduction
This matter arose as an action by E-T In-
dustries, Inc. (“E-T”) for infringement of
U. S. Letters Patent No. 3,329,468 (“Beith’’).
The case was tried to the Court without a
jury. The Court has examined all of the testi-
mony and exhibits presented, and being fully
advised in the premises, finds that the Beith
patent is valid and that it is infringed by Ansen
Automotive Engineering's (““Ansen’’) device.
The Court further finds that plaintiff has not
been guilty of unfair competition and that the
defendants Ansen and Des Piaines Grand Au-
tomotive Speed Center, Inc. (“Grand”) have
not committed acts of trademark dilution or
unfair competition.
The original complaint in this case, 70 C
2498, was ied by E-T in this district on Octo-
ber 8, 1970. An amended complaint was filed
on December 31, 1970. Count 1 of the
amended complaint alleges that Ansen and
Grand are —— the Beith patent. Counts
2 and 3 alleged that the defendants committed
acts of unfair competition and trademark dilu-
tion in connection with E-T’s “Unilug” trade-
mark. Plaintiff sought both monetary and in-
jum ve relief.! On January 28, 1971, Ansen
filea a declaratory judgment action against
E-T in the Northern District of California
seeking to have the Beith patent declared in-
valid. It also stated in that action a second
claim: for relief based upon alleged acts by E-T
of unfair competition. E-T denied the allega-
tions in its answer and counterclaimed for pat-
ent infringement. That action was sub-
sequently transferred to this district, given
docket number 71 C 3133 and was consoli-
dated with 70 C 2498.2
The following shall constitute the Court’s
findings of fact and conclusions of law pur-
suant to F. R. Civ. P. 52(a).
Findings of Fact
1. The plaintiff herein, E-T Industries, Inc.,
is a corporation of the State of California, with
its principal place of business there, and is a
wholly-owned subsidiary of Filter Dynamics
International, Inc. (FDI), a corporation of the
State of Delaware, having its principal place
of business in Ohio.
E-T regularly does business in Illinois. E-T
is principally engaged in the manufacture and
sale of custom wheels for automobiles.
2. The defendants herein are Des Plaines
Grand Automotive Speed Center, Inc., a cor-
poration of the State of Illinois, having its
principal place of business in Illinois, and An-
sen Automotive Engineering, a corporation of
the State of California, having its principal
place of business in California, and a wholly
owned subsidiary of Whittaker Corporation,
with its principal place of business in Califor-
' Several amendments to the ad damnum clause
have been allowed. E-T now seeks patent infringe-
ment damages of $2,810,101! plus interest and costs
as compensatory damages as well as treble exem-
plary damages, througn October 28, 1973. This
does not limit E-T"s ability to recover damages after
that date in this suit.
* For clarity’s sake, E-T will be referred to as
plaintiff and Ansen and Grand will be referred to as
defendants even though Ansen is the plaintiff in the
deciaratory judgment action.
APP. 10
692 E-T Industries, Inc. v. Whittaker Corp.
183 USPQ
nia.** Ansen is engaged in the business of
manufacturing and selling a line of specialty
speed shop items for automobiles including
custom wheels. Grand is a retail speed shop
selling a variety of automotive products in-
aw $7] wheels.
- On July 4, 1967, U. S. Letters Patent
No. 3,329,468 were duly and legally issued to
Richard D. Beith. Plaintiff gained title to the
pom with the full right to sue for past in-
ringement.
4. On October 29, 1969 plaintiff gave An-
sen actual notification of its accusation of in-
fringement and warned that continued manu-
facture of the accused wheels would be
considered a willful and wanton infringement.
Defendants continued to manufacture and sell
the accused infringing device after being noti-
fied. On October 8, 1970 plaintiff brought suit
for patent infringement, unfair competition
and trademark dilution against Ansen and
Grand. Ansen had actual notice of the patent
in suit in 1968.
The Patent in Suit
_3. Wheels are commonly secured to automo-
biles by means of a plurality of bolts or lugs
projecting from a brake drum or axle flange
and cooperating lug nuts. There has been no
standardization of the arrangement of such
wheel tugs among the different auto makers.
6. The Beith patent teaches a universal
wheel system for automobiles having tiree
possible bolt diameter patterns—4-1/2”,
+-3/4° and 5”*—by providing two different
sets of adapters; one set of adapters has cen-
tered apertures and the other set of adapters
has off-centered apertures. The patent teaches
the concept of obtaining three different lug
bolt patterns by reorienting one set of the
adapters (which has the off-centered holes) to
obtain two lug bolt diameters (4-1/2” and 5”)
and utilizing the set of adapters with centered
apertures in substitution for the adapter with
the off-centered apertures to obtain the middle
position of 4-3/4".
7. Custom wheels for automobiles have been
made since at least the early 1960's. Such
wheels include cast aluminum or “mag’’
wheels of various designs, and chrome-plated
steel wheels, and are intended to enhance the
appearance of the vehicle.
As a general rule, such wheels were ex-
pensive and their costs made it prohibitive for
a dealer in wheels to inventory a wide variety
of such wheels. Also, the prohibitive costs de-
terred consumers from buying such wheels
since they could not use them on more than
*@ After trial, the Whittaker Co w
, . Was sub-
stituted as a defendant fur Ansen. tl cides on
— a applicable to Whittaker.
ese three diameters are those
automobiles. oo
one type of car. This is especially importan
since it appears that the pial buyer of. jon
wheels frequently changed automobiles. One
of the objectives of the Beith invention was to
provide an acceptable universal wheel which
incorporates means for accommodating the
bolt circles of the three different popular auto-
mobiles, i.e., 4-1/2", 4-3/4" and 3°.
8. There had been a long existing need for
an adaptable wheel. Several unsuccessful at-
tempts to fulfill this need included utilizing
adapter plates providing both circularly
spaced pre-drilled apertures to fit on lug bolt
Patterns of a specified diameter and lug bolt
Patterns arranged in a circle of another stand-
ard diameter, such as 5-1/2". This required
the manufacturer to supply wheels having
apertures suited for fitting onto lug oolts circu-
larly arranged in a circle of 5-1/2" diameter.
Rather than stocking three sizes of wheels
three sizes of adapter plates were stocked. An-
other unsuccessful solution included drilling a
plurality of holes-in the web of the wheels. The
holes were drilled in a manner so that different
groups of holes aligned with different lug bolt
patterns; adapter plates were used for select-
ing the holes and reinforcing the web of the
wheel. Where this solution used plates it
needed different adapter plates for each bolt
diameter that the wheel accommodated.
_ Other solutions included cutting radial or
circumferential slots in the wheels to accom-
modate lug bolts arranged on circles of differ-
ent radii. The customary way of fulfilling the
need was to use adapter plates attached to the
wheels.
9. The approach Beith decided to take was
Opposite to what was considered good engi-
neering practice,* because the part of the
wheel where the elongated slots were to be
formed was structurally the weakest part of
the wheel. Much concern had been shown for
the strength of wheels in ¢!..s critical area. His
solution to the long-existing problem was an
unexpected and unobvious acceptable solutiun
since people with ordinary skill would have
sought an acceptable solution by using large
adapter plates.
_ 10. Once the invention got out of the pre-
liminary stage, it was a commercial success.
Beith’s original investmen: of $750 ultimately
led to the $1,375,000 that he received upun
selling out to FDI. E-T sales grew to
$2,500,000 in 1970 when Beith sold out to
FDI and thereafter E-T more than quadru-
pled its sales to $13,000,000 while the resi of
the industry only grew at the rate of 50% per
year. The universal system of the Beith whee?
was the single most important factor in con-
tributing to this commercial success.
*Cf. U.S. Letters Patent No. 3,006,445 (Siler’ 2
column 1, lines 50-60.
APP, 11
E-T Industries, Inc. v. Whittaker Corp.
693
183 USPQ
11. FDI, a sophisticated automotive after-
market manufacturer, recognized the merits of
the patented product and bought the patent
from Beith. At the time of purchasing the com-
pany, new facilities were necessary and further
extensive investment had to be made in tooling
and other items to enable the true potential of
the patented Beith wheel to be fulfilled. Thus,
in addition to paying a premium price for the
atent, FDI relied on the patent to the extent of
their further heavy investment in E-T. This
investment to date of trial was about
$7,500,000.
The “Fujii” Wheel
12. The alleged activities of Ansen in rela-
tion to the defendant Exhibit A-1 wheel (here-
inafter also referred to as the “Fujii wheel’’)
do not meet the required evidentiary standards
to be considered as invalidating the Beith pat-
ent. There was no documentary evidence
which confirmed the existence of the Fujii
wheel at the time alleged. The oral testimony
of Johnson and Fujii. in addition to being un-
corroborated by documents, is regarded by the
Court as unreliable in view of manv inconsist-
ent and impeaching statements made under
oath by both of them. The testimony and
wheel do not fulfill the defendant’s required
burden of establishing clear and convincing in-
validating evidence.
13. The Court is first concerned with the
lack of evidence. other than testimonial, to es-
tablish the existence of the A-1 wheel at the
time alleged. There were no written records.
In addition, there was confusion as to when
the wheel was tested.’ Furthermore, at about
the same time Ansen entered into a wheel de-
velopment program with John T. Ostgaard,
resulting in defendants’ Exhibits A-34 as weil
as the plans submitted by Ostgaard. Yet, Ost-
gaard was never shown, or even told of, the A-
I wheel.
14. Ansen’s witnesses may be personally
biased in that they were cither employees or
former employees of Ansen. This tends to
lessen their credibility.
15. The A-1 wheel was allegedly put on
Fujii’s car to test for stress and public reaction.
However, no tests were conducted and no re-
ports were made by Fujii, or sought by Ansen,
as to the wheel's popularity or its ability to
“T'Ansen’s own witnesses testified that the alleged
Fujii wheel was tested on a race track shortly before
the race track was destroved and that the race track
was destroyed between 1966 and 1967 according to
Soliy Harris; between 1965 and 1966 according to
Samuel Harris; in 1965 according to Tom Finney;
and in 1967 according to Alfred H. Butler. Thus, it
is quite conceivable that the test took place after
Beith’s invention. Also, Tom Finney, one of Ansen’s
employees at the time. testified, by deposition, that
he had signed certain documents relating to the A-1
wheel. These were not produced by defendant.
withstand stress. Further, Fujii’s demonstra-
tion of the wheel consisted at the most of
merely showing it to a few of his friends.
16. The adapters in the A-1 wheel were
never reversed, nor is there sufficient evidence
to establish that such a capability was con-
templated. Not only were the washers made so
they could not be reoriented but also Johnson
admitted that Ansen never tried to reorient the
washers until many years later.* The wheel
was only tried on Fujii’s car and not on any
automobile with a different bolt diameter and
could only fit a 4-3/4” pattern. Finally, only
one whee] was made, it was never put up for
sale, and it was abandoned for several years
until hunted up after this action was com-
menced.
17. The alleged isolated use of the Fujii
wheel was supposedly for testing the wheel for
stress and determining the public reaction. In
addition to the fact that testing of the alleged
wheel was never completed, | find no evidence
that could serve as a basis for concluding that
the Fujii wheel, if it did exist at the time
claimed, was anything other than a concealed
or abandoned model that never was publicly
disclosed. Accordingly, the Fujii wheel cannot
be considered as invalidating prior art.
18. The A-1 wheel even if it did exist at the
time alleged by the defendants required modi-
fication to accomplish the functions periormed
by the patent in question. Thus, it was not a
reduction to practice, since it was not complete
and was not capable of producing the results
that are accomplished by the Beith patented
wheel.
19. Even after allegedly having the A-1
wheel, the defendants’ actions confirmed that
such a wheel could not be considered a reduc-
tion to practice. Immediately after allegedly
developing the A-1 wheel the defendants
adopted a rear adapter plate system requiring
three plates to obtain a universal wheel. It was
not until five years after they allegedly had the
A-1 wheel that the defendants began manufac-
turing the infringing Sprint II wheel.
[1] 20. The alleged isolated use of the
Fujii wheel was an abandoned experimental
step that was rejected in favor of an unsatisfac-
tory adapter plate type solution by Johnson
and as such it did not have any value for teach-
ing those skilled in the art, nor was it a reduc-
tion to practice. Also, the subsequent aban-
donment by Ansen of the experiment confirms
that the Beith invention was not obvious to
Johnson who is skilled in the art. Therefore,
* The Court was ted with only one insert
for the A-! wheel. In atrempting to orient it, the
Court discovered that the insert fit in only two of the
five holes and could not be reoriented in one of them.
Further, when reoriented, the washer created a
5-1/4° bolt diameter pattern, which fit no Ameri-
can-made car.
APP, 12
694 E-T Industries, Inc. v. Whittaker Corp.
183 USPQ
the Fujii wheel cannot be used to anticipate
under 35 U.S.C. 102 or make a patent invalid
for obviousness under 35 U.S.C. 103.
Pnor Art
21. The most pertinent patents relied on by
the defendants are demonstrative of the scope
and content of the prior art. These were the
Adair patent (No. 2,590,363, issued in March
1952); the Vachon et al. patent (No.
3,166,357, issued in January 1965); the Mar-
tin rae (No. 3,025,109 issued in March
1962); the Hunter patent (No. 3,207,557, is-
sued in September 1965); the Laycock British
patent (No. 859,193, issued in January 1961);
the Italian patent (No. $79,294, issued in May
1958); and the Crowther patent (No.
1,940,675, issued in December 1933). All of
these patents, except Crowther, were cited by
the U. S. Patent Office during the prosecution
of the Beith patent.
22. The Adair patent discloses a universal
emergency wheel having elongated jug bolt
a ni in the web. The apertures are radi-
ly elongated. Certain of the apertures are en-
larged, i.e., the width thereof is much larger
than the diameter of the lug bolt so that the lug
bolts fit juxtaposed to one side of the aper-
tures. There is no easy way of positively locat-
ing and centering the Adair wheel on the hub.
Also, there is no adapter utilized or taught by
Adair; this is noticeably lacking. Since there is
no adapter, there can be no seat region for an
adapter. The lug bolt apertures each have a
separate chamier at each end and a separate
chamfer in the middle. The chamfers are to
match the frusto-conical portion of the lug bolt
muts, but act to bend the lug bolts if the lug
bolt nuts are tightened to the required torque.
The inventor Adair testified that the sample
wheels which were manufactured did not have
chamfers. Accordingly, Adair could not possi-
bly have looked on the chamfers shown in the
patent as necessary in his wheel for location.
_ Furthermore, the Adair wheel does not pro-
vide a reliable whee! location, since it depends
on the visual placement of the bolts on the en-
larged opening and the friction created by the
mut on the opening for positioning. The tests
which defendant ran on the Adair wheel ’ dis-
closed that the wheel did not have a high level
of reliability. Its rate of malfunction also was
high. This supports plaintiffs’ proposition and
the inventor’s conception that the wheel was
only meant for emergency use and could not be
relied mee as a permanent wheel.
23. The Vachon et al. patent also shows a
universal wheel. There are two sets of holes
drilled in the wheel—one is radially outside of
the other so that using one set of holes, the
wheel can be mounted on one make of brake
drum while the other set of holes makes it
? See note 11, infra.
mountable on another make of brake drum.
The patent states that an annular plate is used
to reinforce the wheel hub and aiso to select
the group of holes to be used in mounting the
wheel to the hub. It is to be noted that the
holes are neither radially elongated nor are
there any seats therearound or adapters for fit-
ting into the seats; therefore, the Vachon et al.
wheel is basically a different structure.
24. The Martin patent teaches an annular
adapter plate that Acs between the wheel and
the hub lor use in mounting wheels having one
set of apertures therein to hubs having differ-
ent lug bolt patterns. The Martin adapter
plate uses a series of pivotable lugs to attach
the plate to the hub. First, the lugs are
mounted directly onto the hub using a hole in
each lug to put a screw through it. The lug has
another threaded opening; a screw
ney ag lug onto a big adapter plate. The
plate five further tap holes on it. These
holes match the holes of the wheel. The whee!
is mounted to the holes, using a threaded
member. This fails to teach enlarged holes,
seat regions thereabout, or adapters in the seat
regions, and it does not teach anything antici-
pating or making Beith’s invention obvious.
25. The Hunter patent does not teach a uni-
versal wheel. It teaches, instead, a system for
aligning wheels. The assumption of the
Hunter patent is that the lug boits are not con-
centric with the wheel bearing. Therefore. the
inventor sought to avoid using the lug bolts as
a reference point for mounting the wheel. The
operation of Hunter first begins when the car
is jacked up and a concentric spacer is fitted
over the hub. Then, the wheel is rotated to
check for runout, and if the wheel is not con-
centric, the eccentricity is measured. An eccen-
tric washer is put over the hub. The washer
is used to diminish the eccentricity on the
wheel. Thus, the Hunter patent does not
teach lug bolt apertures of a size for receiving
therethrough lug bolts in different circle pat-
terms, seats about the lug bolt apertures or
adapters fitting in the seat.
26. The Laycock British patent does not re-
late to the universal wheel or even to 2 wheel.
It relates to a mounting plate for use on whee!
balancing machines. The mounting plate 23
adapt to wheels that are made for any of the
well known lug bolt circles. Figure ! of tr
Laycock shows thar the plates have racinlir
elongated apertures. Slidable inserts arr
mounted in the apertures. Each of the :nsero
has a pair of threaded holes. one at the imaace
and one at the outside of the inserts. The insert
is locked into position with a set screw st O
center ofthe insert. There are bolt c:rrs>
marked on the plate. The inserts are moved ‘#
place the inner hole or the outer hole at or
desired bolt circle and studs are thresded ==
the desired holes. The wheels are mounics
APP, 13
183 USPQ
E-T Industnes, Inc. v. Whittaker Corp. 695
the studs. [t must be noted that to adjust the
inserts of Laycock requires visual matching of
the desired threaded hole of the insert with the
marked circles. By comparison, in Beith the
adjustment of the lug bolt diameter is auto-
matic and is obtained merely by placing the
adapter into the seat around the lug bolt aper-
cure of the wheel.
27. There is nothing in the Italian patent
even faintly hinting at a universal wheel con-
cept. The patent is concerned with a light-
weight wheel having cooling apertures therein
for enabling cooling air to reach the brakes.
The lug bolt apertures have hard metallic lin-
ings to protect the light metal wheels. With
linings in the apertures, there is no possibility
of receiving lug bolts arranged in more than
one pattern. Thus, there are no lug bolt aper-
tures to receive lug bolts arranged in different
circle patterns and no adapters for selecting
the desired lug bolt patterns.
[2] 28. The Crowther patent was not cited
by the United States Patent Office; however, it
is far less important or pertinent than those
patents that w re cited by the Patent Office.
Crowther is not concerned with a universal
wheel; rather, it is concerned merely with de-
tachably mounting wheels on hubs. Crowther
provides a bolt nut having a convex split collar
which cooperates with the concave contour of
the seat around the lug bolt aperture to over-
come any eccentricity caused bv the attach-
ment of the wheel to the hub. Crowther’s coi-
lar is neither designed to, nor does it perform
the function of the Beith adapter. Therefore, it
is neither the adapter nor the equivalent of the
adapter. Also, Crowther fails to teach lug boit
apertures of a size to accommodate lug bolts
arranged in different lug bolt circle patterns.
The statutory presumption of validity of the
Beith patent is strengthened since the most
pertinent prior art relied upon by the defend-
ants consists of patents cited and considered by
the Patent Office plus others that were less
pertinent than what was considered in the
prosecition of the Beith patent in the Patent
Office.
30. After studying all of the prior art in the
record, in addition to the aforementioned pat-
ents, the Court finds that there has been
shown no prior art of record that includes any
patents or written publications which over-
come the statutory presumption of patent va-
lidity by clearly and convincingly proving that
all the elements of the Beith patent were ever
used or taught as claimed in the Beith patent
prior to Beith’s invention.
[3] 31. Nowhere in the prior art shown is
there any prior patent or any combination of
prior art patents that would enable one skilled
in the art to construct the Beith invention.
Further, there is no justification for combining
and modifying the patents for anticipation as
the defendants assert. The prior art patents do
not suggest or teach how they can be combined
and modified in one particular way as Beith
taught without utilizing the teachings of the
Beith patent or without exercising invention.
It should also be noted that there was no pat-
tern in the development of the art which led to
Beith’s invention. In faci, the trend in devel-
opment was toward the use of adapter plates
rather than working with the lug bolt aper-
tures themselves. Thus, even if individually
the component parts of Beith were known,
they are combined in such a way as to create a
synergistic effect.®
32. Among the differences between the
prior art and the claimed invention is that
none of the wheels of the prior art show the
combination of elongated lug apertures in a
central wheel mounting portion that has rab-
beted portions formed around the lug aper-
tures for seating adapters, with the adapters
having apertures forme therein that make the
wheel universal when adapters are seated
in different positions. For example, the adapt-
ers of Claims 1, 2, 3, 4, 7, 9 and 10 are, among
other things, defined as being capable of being
seated in at least two orientations with the
apertures and the adapters defining a lug bolt
circle of selected radii in each of the two orien-
tations. |
33. Among the differences between the
prior art and the claimed invention is that
none of the prior art references taught or made
obvious a non-circular adapter and seat system
in the central mounting portion of a wheel
whereby the adapters can be seated to produce
a universal wheel by selecting different ones of
a plurality of possible lug bolt circle patterns
with the apertures of the adapters. (See
Claims 3, 10, 15, 16, 17 and 19.) Where the
adapter system described in the patent is circu-
lar, the adapters must be aligned by eye and
they move while installing the wheel. When
the adapters and seats are non-circular and
they are fitted together, they automatically
and positively locate the wheel for installation
and mounting for each of the desired multiple
lug bolt circle patterns.
34. The level of ordinary skill in the auto-
motive wheel field is such that those skilled in
the art would not have gone in the direction
that Beith went at the time of his invention.’
Beith removed material from what is consid-
ered a critical portion of the wheel—the cen-
tral mounting portion or web near the central
hub opening. Thus, Beith went in a direction
opposite to the direction that was being taken
*See Blaw-Knox Co. v. I. D. Lain Co., 230 F.2d
373, 108 USPQ 356 (7th Cir. 1956).
* This is brought home bv the fact that Ansen re-
jected the idea of elongated apertures and opted for a
plate svstern at around the same time as Beith was
deveioping his wheel.
APP, 14
696 E-T Industrie:, Inc. v. Whittaker Corp.
183 USPQ
by those having ordinary skill in the art. By
doing so, the public was provided with a uni-
versal wheel that was smart looking, in that
the elongated slots were directly in the web of
the wheel itself and small adapter means were
used to obtain universality. Such wheels could
be manufactured and operated easily while
still having a pleasing appearance as well as
reliably locating and attaching the wheel to
the brake drum.
( 4] 35. This Court finds that the patented
wheel disclosed in the Beith patent in suit is a
basic invention which is not anticipated by any
of the prior art cited by defendants. In addi-
tion, as required by 35 U.S.C. 103, this Court
has given full and careful consideration to the
scope and content of the prior art, with respect
to universal wheels, and therefore, to the dif-
ferences between the prior art and the claimed
subject matter of the patent, and to the level of
ordinary skill in the art, with emphasis on the
actual performance of men of at least ordinary
skill. Against this background, the Court finds
that the claimed subject matter would not have
been obvious to a man of ordinary skill in the
art at the time the invention was made, in view
of the prior art asserted by defendants, taken
either singly or in combination. Moreover, the
finding by this Court of non-obviousness is re-
inforced by the objective evidence of pacent-
ability present in this case, including the rec-
ognition of great merit paid to the invention by
Filter Dynamics International, Inc. as shown
by their investment in the patent, and by the
commercial success of the patented invention.
the long-felt need for an acceptable universal
wheel, the prior failures on the part of workers
(such as Johnson) of at least ordinary skill in
the art, and failure on the part of the defend-
ants to find more pertinent prior art than that
which was cited in the United States Patenc
Office, even after an exhaustive search for such
prior art.
Infringement
36. The defendants Ansen and Grand in-
fringed and are infringing the Beith patent by
manufacuturing and/or selling the Ansen
Sorint I] wheel. The Sprint II infringes
Claims 1, 2, 3, 4, 7, 9, 10, 15, 16, 17 and 19 of
Beith.
37. Ansen’s front washers and the rear in-
serts respond to the term washers as used in
some of the claims of the Beith patent."
Therefore, the Sprint II wheel responds to the
Beith claims regardless of whether such re-
sponse is attributed to the front washers or the
1 The fact that the rear insert is thicker than the
E.T insert is only a matter of construction and does
not go to the function or purpose to which the
washer is used. It operates the same way and has the
same shape as the Er washer and can be deemed a
“washer” for purposes of this case.
rear inserts, or both used as a set, since they
perform both a locating and clamping func-
tion. Despite the fact that the front washers of
the Sprint II are circular, rather than oval-
shaped, the offset washer can be used only in
two positions. Any attempt to utilize them in a
position other than the +1/2° or 5° diameter
creates a situation in which the lug nut cannot
engage the lug bolt, because the wheel blocks
the opening. Thus, the front washer does pro-
vide a positive locating function, when com-
bined with the non-circular aperture.
Defendant's contention that the wheel with
the 4-3/4" diameter (or centrally drilled) ine
serts does not infringe is without merit in that
the wheel is adaptable for use on automobiles
with varying radii and the adapters are sold as
sets to accomplish universality.
38. This Court finds that the Ansen Sprint
Il wheels have adapter means that are snugly
seated in the seat regions about the lug aper-
tures. This finding is supported by tests of the
expert Walter Nass made on a randomly sam-
pled group of Ansen Sprint II wheels. The
tests confirmed the snug dimensional relation-
ship of the washers and inserts with their re-
spective seats. Whether used alone or together.
the washers or inserts more than meet the re-
quirements of concentricity and runout as ¢s-
tablished by the industry. Therefore, the
Sprint I] wheel responds to the Beith claims
regardless of whether such response is attrib-
uted to the front or the tear of the wheel.
39. Both the washers and the rear inserts of
the Sprint II wheel are_in covering relation
with the lug apertures. Therefore, the Sprint
Il wheel responds to the Beith claims regard-
less of whether such response is attributed to
the front washers or the rear inserts.
40. The Sprint 11 wheel copies and infringes
the Beith patent not only in its means for pro-
viding universality, but also copies non-
functional features, such as the style and ap-
pearance of the E-T deep-dish. highly
polished, die cast, universal wheel.
41. Defendants have actively induced others
to infringe plaintiff's pacent by: (2) selling the
accused wheels with specific instructions on
how to install same to form the infringing
combination; (b) advertising and otherwise
promoting the use of the accused wheels in the
infringing combination; and (c) assisting. ¢%-
couraging and abetting others in the resale of
the accused wheels. Ansen’s and Grand s ass
of distributing the advertising instructions on
how to use the adapter kits with the Sprint it
wheel are acts of inducing the infringement of
the Beith patent. '
42. Ansen has sold to Grand. 2 distributor
for Ansen, about $100,000 worth of wheels.
Grand was a distributor of Ansen when the
suit was filed and is still a distributor of Ansen
APP, 15
183 USPQ
E-T Industries, Inc. v. Whittaker Corp. 697
and, therefore, continues to infringe and in-
duce the infringement of the Beith patent.
[5] 43. The Court does not helieve that
defendant’s lack of a written opinion of coun-
sel, continued manufacture of the wheels after
notice of infringement, or any other facts
herein, make this an exceptional case where
punitive damages under 35 U.S.C. § 284 or at-
torney’s fees under 35 U.S.C. 285 would be
appropriate."
Ansen's Unfair Competition Claim
44. No evidence was introduced in suppor
of in claim of unfair competition against
E-T.
E-T’s Claim of Unfair Competition ana
Trademark Dilution
45. The sole evidence with respect to these
claims consisted of the testimony of Denise
Blasingame, an employee of E-T’s counsel.
She testified that her emplover sen: her to
Grand to purchase a set of Ansen wheels. Dur-
ing the course of her transaction, an employee
of Grand, “Ken,” told her that the product
was a “Unilug.”” However, he did not say it
was an E-T wheel and she was aware it was
an Ansen wheel. Ken is no longer emploved by
Grand. The Court does not believe that this
one isolated incident. if it in fact occurred as
described, is sufficient evidence to warrant in-
junctive or monetary relief for unfair com-
petition and trademark dilution.
Conclusions of Law
1. The Court has jurisdiction over the par-
ties and over the subject matter of this suit.
2 Venue is prover in this district.
3. The plaintiff, E-T Industries, Inc., is the
owner of United States Letters Patent No.
3,329,468 and ail rights thereunder, including
the rights to sue and to recover for past in-
fringement.
4. Plaintiff, E-T Industries, Inc., has main-
tained its burden of proving by a pre-
ene of evidence that the defendants in-
ringed U.S. Patent No. 3,329,468.
Defendants Ansen and Grand have not main-
tained the burden of clearly and convincingly
overcoming the presumption of validity and
it While the Court does not believe that attorneys’
fees are appropriate in this case, mention should be
made of certain activities of Ansen and its counsel.
First. defendant at trial introduced evidence of cer-
tain tests conducted on the Adair wheels. Plaintiff's
counsel was not given notice of these tests. The
Court believes that this was contrary to the under-
standing reached with the Court that all tests would
be doce under joint auspices. At trial, defendant at-
tempted to use whee! drums other than those pre-
viously agreed to. Defendant has attempted to in-
troduce evidence that the Ansen wheel had been
patented, despite the fact that this had not been di-
vulged to plaintiff.
proving the invalidity of the patent, as re-
quired by Title 35 U.S.C. § 282, nor have An-
sen and Grand proven that they avoid in-
fringement of U.S. Paient No. 3,329,468. See
Reese v. Elkhart Welding & Boiler Works,
Inc., 447 F.2d 517, 526, 171 USPQ 129, 135-
136 (7th Cir. 1971).
5. Defendant sought to invalidate the Beith
patent on the grounds that Ansen’s “Fujii”
wheel constituted prior art in the public
— as contemplated in 35 U.S.C. § 102(a).
is contention is rejected for several reasons.
First, Ansen did not sufficiently establish that
the A-1 wheel, assuming arguendo that it was
anticipatory, was in the public domain one
year prior to the date of Beith’s invention.
This is highlighted by the conflicting testi-
mony of Ansen's emplovees as to dates and ex-
actly what was done to the wheel. Also, the
lack of documentation and the casual manner
in which the wheel was handled detract from
the testimony’s credibility and weight.
Second, the Court believes that Ansen’s use
of the A-1 wheel, assuming its existence at the
time claimed, was merely an abandoned ex-
periment. No records were kept or formal tests
made. The whee! was out of Ansen’s control
for several years and was kept in a storage
room. It was not shown to Ostergaard, who
was aiding Ansen in its wheel development
program. Ansen never pursued the manufac-
ture of the wheel nor did it sell or attempt to
sell even one wheel, and in fact abandoned it
in favor of other types of wheels. See, e.g., Illi-
nois Tool Works, Inc. v. Continental Can Co.,
273 F.Supp. 94, 154 USPQ 401 (N.D. Ill.
1967), afd, 397 F.2d 517, 158 USPQ 437
(7th Cir. 1968).
[6] Third, the Court believes that the evi-
dence is not sufficient to show that the Fujii
wheel “anticipated” Beith's invention. In or-
der to have anticipation, it is necessary that
the prior object be “substantially identical” to
the patented device. This occurs when they
perform the same function in the same way
and produce the same result. Id. at 105, 154
USPQ at 410-411. In the instant case, no at-
tempt was made to perform the function of
universality of the wheel, nor is the evidence
sufficient to show that this could be done. This
being so, the Ansen wheel cannot be deemed to
be anticipatory under § 102.
6. The Court, after examining the entire
record, finds that the E-T wheel was not obvi-
ous in light of the prior art under the tests
enunciated in Graham v. John Deere Co., 383
U.S. 1, 148 USPQ 459 (1966).
7. U.S. Letters Patent 3,329,468 entitled
“Wheel Structure” as to Claims 1, 2, 3, 4, 7,
9, 10, 15, 16, 17 and 19 is in all respects valid
and subsisting in law.
8. U.S. Leuers Patent 3,329,468 as to
Claims 1, 2, 3, 4, 7, 9. 10, 15, 16, 17 and 19 is
APP, 16
6938 Quaker Oats Cut A2lstan Purina Co. roe ____183 USPQ
infringed by the defendants by their manufae- — : 323 stn; Siztos is tri ot A 353 pofc ,
ture and s::!y of the accused wheels ; dieiiel ee — o aye ae
9. Befenunts hase infringed the CLS To: ee —_— es .
ters Parent 3.329.465 as to Claims 1,2,3,4.7, For the Sevens Cireui: :
9, 10, 15, 16, 17 and 19. : Chicago, Ilinois 60604
10. Ptsintifl is entizled to an injunction re- :
straining defendianis against further infringe-
ment of U.S. Letters Patent 3,329,468 as to | ‘ Mawch & 10 76
Claims 1, 2, 3,4, 7,9, 10, 15, 16, 17 and 19. == , 19
lt. The Court believes that further evi- | a
dence should be taken on the issues of dam- | Befere
2ges. This evidence should include the terms of © :
the license agreement proposed by E-T and re- | ; Boz. JOEN PAUL STEVENS, Cizrcuis Juscice*
jected by Ansen, the profits Ansen made on the . - _
—wheels it sold, and further evidence as to E-T’s =c=. LAtsat: CASTLE. Sz. Cireuis Ivudee
lost sales, with particular emphasis on the | :
profitability factors E-T used in determining =o. LUTSER M. SWYCGERT. Circuic Judee '
eits lest profits. Also an accounting will be aa
made to determine damages to date. After fur- |
ther evidence is tnken. the Court will better be |
abie to evaluate the measure of damages it , Z-T INDUSTRIES, Isc.,
should use. ; , ma Plaincizi-Defencexc-Aspellee,
12. The Court holds that this is not an ex- . Aseeal fren the Usiced
° ha ie P 2 joan =ne =
eeptional case requiring punitive damages un- - Stetes Distr: cama
der 35 U.S.C. 3 254 or attornevs’ fees uncer : vO. 7S-1S24 v5. q segs 4 - lint “OGe
35 U.S.C. $ 285. | =o> cane Northern Discriss |
k dilution | of filinois, Zase Divs:
13. E-T’s claims for trademark dilution | . WETTTAMER CORP. ane DES 2rLrxes ” mOsS, S8S0ESR VevEr
and unfair competition are not supported by | Stat atoMacrvS Serta crccte om 9 — , .
he evidence f ust he and } “ dis. | CRAs AUSONUCAVE SPSS) CaecER, SC., | - (70 © 2498 & 72 C 3233).
the evidence and must he and hereby are cis na Gandeneact ataet 64a.hena? Lane ) ;
. : . - . { 76, 66k. SS 5 athanee > ~~ EF yy Re WL ? ad
missed. Each party shall bear its own costs on | we
14. Ansen’s claim of unfair competition
asainst £-T is dismissed. No evidence at all
was introduced to support this count. Costs
these counts. | :
will be awarded to E-T. |
|
13. Any finding of fact entered herein Cn consicerasion of she pesicion Ser seheasin Ser
which may be construed in whole or in part 2s Ziled in the edcove-enziz! ec cause, n0 jue @ in acrive saeee
; wir _—- wes , oa we" —-_ =o , - SCE pay | Sta e=v-.ce H
a conciusion of law shall be so deemed and waving tequescec 2 vote shereon, nor any jucse having voted <o ;
treated as if set forth as a conclusion of law , ssanc che pesicion, anc ali cf she nexdess of ch 1 havin
herein and any conclusion of law entered | ‘sted to deny 2 rehearing, = aaa ac ca a
herein which may be construed in whole or in | statis . ey
part as a finding of fact shall beso deemed and | I= IS CRDERED that the petision sor rehearing en be Cc :
— . — —* -—— ~ ows - - — * - . ry} °
7 : = the above-ensicled cause be, and che same is heresy, Danza.
. » :
e ‘
a * le send — , . . < oo . *
UE Juszice Stevens marticisated initiaily as Circuic Judge,
md on and afters December 19, 1975 as Cireuitc Juscice.
sa
| | | PPT et Se «
APP. 18
189 USPQ
Sakraida v. Ag Pro, Inc. 449
Supreme Court of the United States
_ Sakraida v. Ag Pro, inc.
No. 75-110 Decided Apr. 20, 1976
PATENTS
1. Patentability — Invention — In
general (§51.501)
Constitution requires that there be some
“invention” to be entitled to patent protec-
tion; there is absence of that degree of skill
and ingenuity that constitutes essential
elements of every invention unless more skill
and ingenuity were required than were
essed by ordinary mechanic acquainted
with business.
4 Patentability — Invention — Law or
fact question (§51.507)
Ultimate test of patent validity is one of
law. but resolution of obviousness issue
necessarily entails basic factual inquiries.
3. Patentabiliry — Aggregation or com-
Conien = Of old elements
(§51.159)
Courts should scrutinize patent claims for
combinations of old elements with care
proportioned to difficulty and im probability
of finding invention in assembly of old
elements; patent for combination that only
unites old elements with no change in their
respective functions withdraws what is
already known into field of its monopoly and
diminishes resources available to skillful
men.
egation or com-
4. Patentability — A
old elements
bination —
(§51.159)
Patentability — Aggregation or com-
bination — Spontiie cases (§51.163)
Combination of old elements that
produces abrupt release of water directly
from storage tanks or pools to sloping barn
floor to wash away animal wastes is not syn-
ergistic, that is, resulting in effect greater
than sum of several effects taken separately;
arrangement of old elements with each per-
forming same function it had been known to
perform, although perhaps producing more
striking result than in previous com-
binations. is not patentable: assembly of old
elements that delivers water directly rather
than through pipes or hoses to barn floor is
work of skillful mechanic, not inventor; ex-
ploiting principle of gravity adds nothing to
sum of useful knowledge where there is no
change in respective functions of com-
bination s elements.
egation or com-
5. Patentability — A
i old elements
bination —
(§51.159)
Patentability — Evidence of —
Commercial success — In general
(§51.4551)
Patentability — Evidence of —
Economy, efficiency and simplicity
(§51.461)
Desirable benefits of combination of old
elements, which was great convenience,
produced desired result in cheaper and
faster way and enjoved commercial success,
but that did not tape new or different
function within validity test for combination
patents, do not make patentability, without
invention.
Particular patents — Dairy Establish-
ment
3,223,070, Gribble and Bennett, Dairy
Establishment, claims 1 and 3 invalid.
On writ of certiorari to Court of Appeals
for the Fifth Circuit; 185 USPQ 642.
Action by Ag Pro. Inc., against Bernard
A. Sakraida for patent infringement. On
writ of certiorari to review judgment for
plaintiff. Reversed.
See also 168 USPQ 481. 177 USPQ 106.
179 USPQ 385, 187 USPQ 480.
James F. Hulse and Stephen B. Tatem. Jr..
both of E] Paso. Tex.. and R. Douglas
Lyon, and Lyon & Lyon, both of Los
Angeles. Calif. (Scott, Hulse, Marshall &
Feuille. El] Paso, Tex., of counsel) for
petitioner.
J. Pierre Kolisch. Portland, Ore. (John W.
Stuam. Portland, Ore., of counsel) for
respondent.
Helen W. Nies, Donald R. Dunner, Herbert
H. Mintz, and David N. Webster, all of
Washington, D.C., for The Bar Associa-
tion of the District of Columbia, amicus
curiae.
Mary Helen Sears, and Irons & Sears, both
of Washington, D.C., for The Texas
Farmers Union, amicus curiae.
Mr. Justice Brennan delivered the opi-
nion of the Court.
Respondent Ag Pro, Inc.. filed this action
a petitioner Sakraida on October 8,
1968, in the District Court for the Western
District of Texas for infringement of United
States Letters Patent 3,223,070, entitled
‘Dairy Establishment,”’ covering a water
APP. 19
450 Sakraide v. Ag Pro, Inc.
189 USPQ
flush systern to remove cow suanure from the
floor of a dairy barn. The patent was issued
December 14, 1965, 10 Gribbie and Bennett,
who later assigned it 10 respondent.
The District Court's initial gram of sum-
mary judgement for petitioner was reversed
by the Court of Appeals for the Fifth Cir-
cuit. 437 F.2d 99, 168 US 481 (1971).
After a tria] on remand, the District Court
again emered a judgment for petitioner. The
District Court held that the patem ‘“‘does
NOt constitute invention, is not patemabie,
and is not a valid patent, it being a combina-
tion patemt. all of the elements of which are
old in the dairy business. long prior to 1963,
and the combination of them as described in
the said paiem being neither new nor
meeting the test of non-obviousness.” The
Court of Appeals again reversed and held
the patemt valid. 474 F.2d 167, 177 USPQ
106 (1973). On rehearing. the court
remanded “with directions to enter a jude-
ment holding the patent valid. subject.
however. 10 * * * consideration of a motion
under Fed. Rule Civ. Proc. 60(b)(2). 10 be
filed in the Districi Court by the |petitioner)
Sakraida on the issue of patent validity bas-
ed on newly discovered evidence.” 48) F.2d
668, 669, 179 USPQ 385, 386 (1973). The
District Court gramed the motion and
ordered a new trial. The Court of Appeals
again reversed. holding that the grant of the
mouon was error. because “the record on
the mouon establishes that |petitioner| fail-
ec 10 exercise Gue Giligence to discover the
new evidence prior 10 entry of the former
yudermem ~ 512 F.2¢ 141. 142. 183 USPQ
642. 643 (1975). The Court of Appeais
further held that *‘|ojur prior de1ermination
of patent validity is reaffirmed.” I¢.. at 144.
1€5 USPQ a: 644. We eramied ceniorari.
423 U.S. 891. 187 USPQ 480 (1975). We
hold tha: the Cour: of Appeals erred in
hoiding the paten: valid and also in reaffir-
ming its determination of patent validity.
We therefore reverse and direct the
reinstatement of the Distric: Court's jude-
ment for petitioner. anc thus we have no oc-
casion 10 Gecide whether the Court of
Appeals properly found that petitioner had
not established a case for a ..ew trial under
Rule 60(b) (2).
Systems using water 10 clean anima!
wastes from barn floors have been familiar
on dairy farms since ancient times.’ The
_ * Among the labors of Hercules is the follow-
ing:
“Hercules was next sent to Augeas King of Elis,
who had immense droves of cattle. The stables
usually occupied by these animals were in an in-
credibly filthy state, as they had not been cleaned
APP. 20
District Court found, and respondent con-
cedes, that none of the 13 elements of the
Dairy Establishmemt combination is new,’
im years; and now Hercules was given the task to
remove the accumulated filth, and make a com-
plete purification of The premises.
“Close by these stables rushed a torrent, or
rather a river. the Al s. Hercules, with one
glance, saw the use he could make of this rushing
stream, which he dammed and turned aside from
its course, so that the waters passed directly
—— the stables. carrying away al) mnpurities,
and finaliv washing them ectly clean.”
Guerber, Myths of Greece and Rome 221 (1893).
* The District Cour found as follows reflecting
Ciaims 1 and 3, the only claims involved in the
case:
“1. |] find tha: the ‘dairy establishment’ as
described in Unined States Letters Patent
3.233.07C is composed of 13 separate items, as
foliows:
(a) ** © * a smooth, evenly contoured, paved
yy forming a ficor providing a walking sur-
ace = Bh
*“(b) ** * * drain means for draining wash
sour, from such floor opening to the top of the
r.
*“(c) ** * * said srmooth, eveniv comoured sur-
ya which forms such floor sloping toward said
Tain see
“(¢d) ** * * muhipie rest areas with individua!
stalls for each cow and with each of said stalis
having 2 botiom which is also 2 smooth pavement
“(e) “* * * which 1s disposed at an elevation
above the paved surface forming the floor * * °."
“(f* © © said sialls being dimensioned so that
2 com can comionabiv stanc or lie in the stall. but
ofia! from the cow falls outside the sta!) borom
anc onto the floor providing the walking surface
in the barn ® ° °
**(g) ** * © said barn further including defined
feeding areas having feeding troughs * * *.’
“(h) ** * © a cow-holding area’
“(i) ** * © a milking area.
“G) ** * © 2 transfer area al) botromed with
the walking surface forming said floor in the barn
“(k) ** * * and floor washing means for
washing the floor providing the walking surface in
the barn where said floor bottom, said feeding,
holding, milking and transfer areas operabie to
send wash water flowing over the floor with such
water washing any cow offa) thereon into the said
drain means. said floor washing means including
‘means locaied over a region of said floor which is
uphill from said drain means constructed to
coliect water as a poo! above said floor and
operable after such collection of water as a poo! to
dispense the water as a sheet of water over said
T.
_“(1) A tank on a mounting, so that in can be
tihed. and the water poured out 10 cascade on the
floor 10 form a sheet.
“(m) A floor-washing means comprising a
dam for damming or collecting water as a poo!
directly on the floor, which such dam abruptly
--—- rr—— —-— .ll iC —— =
+189 USPQ
Sakraide vr. Ag Pro, Inc. 451
and many of those eiements. including
storage of the water in tanks or pools.
- appear in at least six prior patented
systems.’ The prior art involved spot
Gelivery of water from tanks or pools to the
barn floor by means of nigh pressure hoses
of pipes. That svstern required supplemen-
tal hand labor. using tractor blades, shovels,
and brooms. and cleaning by these meiscds
took several hours. The only claimed inven-
tive feature of the Dairy Establishment com-
bination of old elements is the provision for
abrupt release of the water from the tanks or
poois directivy onto the barn floor, which
causes the fiow of a sheet of water that
washes al! anima! waste into drains within
minutes and requires no supplemental hand
labor. As an expert witness for respondent
testified concerning the effect of Dairy
Establishment’s combination, ‘‘water at the
potiom has more friction than this water at
the top and it keeps moving ahead anc as
this water keeps moving ahead we get a roll
ing action of this water which proaucec the
cieaning action * * *. You donot get this in
a hose ° * *. [Ujniess that water is con-
tinuousiy directed toward the cieaning arez
the cleaning action almost ceases insian-
*taneousiv * * * ™
* openaDdie 10 senc water CasCacing as 2 sneet Over
tne floor towaras the Crain.
“2 | fumner fine that each of the items
above-oescribec were not new. Out had been usec
In tne Cairy DusiMess DMOr 10 Ine time the apdica-
- jor tne said Grilsic catemt. mace tne sudrect
nis action. had been filed in the Patent Office
of tne Unnec States on November 5. 1963."
The District Cour: found “tnai many of the
items going 10 make up Plaintiff's cian for a
satent were disciosed 1m pMmor patents, known
respectively as tne \icCornack paren. the Holz
patent. the !ngranam patent. the Kreutzer patent.
the Bogem paten:. anc the Luks patent; anc that
the statements of the Examiner's opinions refus-
ing 10 issue a Patent are true as all mems tbere
stated 10 be covered in prior patents or
publications” = *
' This witness testified that
“water has energy and it can be usec in many
different wavs. In a hose the energy is used Ds
impact, under pressure. externa) force that is
applied 10 this pressure — to this water.
whereas the warer that comes down as 2 sheet
or wal! of water has built in v because of
its elevation and as this water is released i Goes
the same thing water does in a flooded stream.
As this water — | will try to make this clear.
and | hope | can. on the surface of this pave-
* ment there are these piles of manure droppings.
This pavement is smooth anc this water moves
down over this manure. The water at the dot-
tom has more [riction than this water on the top
and it keeps moving ahead and as this water
keeps moving ohend we get a rolling action of
The District Court found that “ |[njeither
the tank which holds the water. nor the
means of releasing the water Quickly is new,
but embraces tanks and doors which have
long been known,” and further that “their
use in this connection is one that is obvious,
and the patent in that respect is lacking in
novelty. The patent does not meet the non-
obvious requirements of the law.”” The
District Court therefore held that Dairy
Establishment “‘may be relevant to commer-
cial success, but not to invention,” because
the combination “was reasonably obvious to
one with ordinary skili in the art.”
Moreover, even if the combination filled a
“long-felt want and © * * has enjoyed com-
mercial] success, those matters, without in-
vention, will not make patentability.” Final-
iy, the District Court concluded “that to
those skilled in the art. the use of the old
elements in combination was not an inven-
tion by the obvious-nonobvious standard.
Even tnough the dairy barn in question al-
tains the posture of a successiul venture.
more than that is needed for invention.’”
The Court of Appeals disagreed with the
District Coum’s conclusion on the crucial
issue of obviousness.
[1] It has long been clear that the
Constitution requires that there be some
“invention” to de entitled to patent protec-
tion. Dann v. Johnston, U.S . 189
USPQ 257 (1976). As we explainec in
Hotcnkiss v.. Greenwood. 1] How. 248. 267
(1851). “[U]niess more ingenuity and skill
* * * were required “© * " than were
possessed by an ordinary mechanic ac-
Quainted with the business. there was an
absence of that Gegree of skil] and ingenuity
which constitute essential elements of every
this water which produced the clearung acuon.
That is the kev to this method of cleaning. You
do not get this in a hose. You do not get it ina
gutter as has been used in the past. | might just
mention a little bit about the hose. This squir-
ung water on a floor — probably have done it
on our own sidewalks or walkwavs. and | just
mention that. that uniess that water 1s con-
tunuousiv directed towards the cleaning area
the cleaning action aimost ceases instan-
taneousiv. Now the movie that was shown
earlier very dramatically illustrated that point.
The cleaning action — as soon as the hoses
moved 10 one side the cleaning action ceased
here and that is why this hose was moved back
and forth, to drive this stuff on down to where
we want it.”
‘ The court also “conciude|d) that while the
combination of old elements may have performed
a useful function. it added nothing to the nature
and quality of dairy barns theretofore used.”
APP. 21
~~ —— ogee
452 ; Sokraide v. Ag Pro, Inc.
189 USPQ
invention. In other words, the improvement
is the work of the skillful mechamic. not that
of the inventor.” This standard was enacted
in 1952 by Congress in 35 U.S.C. §103 “asa
codification of judicial precedents * * °
with Congressiona! directions that inquiries
imo the obviousness of the subject matter
sought 10 be patemied are a prerequisite to
patentability. "Graham v. John Deere Co..
383 U.S. 1, 17, 148 USPQ 459, 466 (1966).
Section 103 provides:
“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 mat-
ter as 2 whole would have been obvious-at
the time the invention was made to a per-
son having ordinary skil) in the am to
which said subject matter pertains. Pai-
entability shall not be nmegatived by the
manner in which the invention was
made.”
{2} The ultimate test of pavemt validity is
one of law. A&P Tez Co. v Supermarket
Corp.. 340 U.S. 147. 155. 87 USPQ 303. 307
(1950), but resolution of ihe obviousness
issue necessarily emails severa) basic factua)
inquires. Graham v. John Deere Co.. supra.
a1 17, 148 USPQ ai 466-467.
““Linoer §103. the scope and conten: of
the prior art are 10 be Gelerminec:
Gifierences between the prior ari anc the
Claims a1 issue are 10 be ascertainec. anc
tne jeve) of ordimary skil! in the pertinent
arm resolved ~ Ibic
The Cour of Appeals concluded tha:
“the facts presemiec at tria) clearly do not
suppor: ithe District Court's} finding of ob-
viousness under the three-proneed Graham
rest * * °." £74 F.2d. ar 172.177 USPQ ar
110. We disagree and hoid tha: the Court of
Appeals erroneousiy set aside the District
Court's findings
[3] The scope of the prior art was shown
by prior patents. prior am publications. al-
fidavits of people having knowledge of prior
flush svsiems analogous to respondent's.
and the testimony of a dairy operator with
22 years’ experience who described flush
svstems he had seen on visits 10 dairy farms
throughout the country. Our independent
examination of that evidence persuades us of
its sufficiency to support the District Court's
finding “as a fact that each and all of the
component parts of this patent * ° ° were
old and well-known throughout the dairy in-
dustry long prior to the date of the filing of
the application for the Gribble patent * ~ *
|w}hat Mr. Gribble referred to * * * as the
APP.
essence of the patent, to wit, the manure
flush system. was old, various means for
flushing manure from dairy barns having
been used long before the filing of the
application * * *.™™ Indeed, respondent ac-
mitted at tria) “that the patent is made up of
a combination of old e nts” and “that
all elements are individually old * * *.” Ac-
cordingly. the District Court properly
followed our admonition in A&P Tea Co. v.
Supermarket Corp.. supra, at 152,87 USPQ
at 305-306: “Courts should scrutinize com-
bination patent claims with a care propor-
tioned to the difficulty and improbabiliry of
finding invention in an assembly of old
elements * * *. A patemt for a combination
which only unites old elements with no
change in their respective functions * ° °
obviousiv withdraws what already is known
into the field of its monopoly and diminishes
the resources available 10 skillful men
The Court of Appeals recognized that the
patent combined old elements for applying
water 10 a conventiona! sloped floor in a
dairv barn equipped with drains at the bot-
tom of the slope and that the purpose of the
storage tank — 10 accumulate 2 la
volume of water capable of being released in
a cascade or surge — was eQualiy conven-
tional. 474 F.2d. at 169, 177 USPQ at 108.
lt concluded. however. that the element
lacking in the prior ari was any evidence of
an arrangement of the old elements to effect
the abrupt release of a flow of water to wash
anima! wastes from the floor of a dairy barn.
Ibid. Therefore. ‘‘although the
irespondent'’s; flush svsem does noi em-
brace a compiicated techmica! improvement.
it does achieve a svnergistic result through 2
novel combination.” Id.. at 173, 177 USPQ
at 111.
[4] We canno: agree that the combina-
tion of these old elements 10 produce an
* The cour stated:
**) therefore find as 2 faci that each and al) of
_ the component parts of this patent as bsted under
the applicant's claims set out in said patent. were
old and well-known throughout the dairy in-
dustry jong prior 10 the date of the filing of the
application for the Gribble patent. | further find
that what Mr. Gribbie referred to in his deposi-
tion as the essence of the patemt, to wit, the
manure flush system. was old, various means for
flushing manure from the dairy barns having been
used lo
the Gribble patemt. the genera) idea in that con-
nection being a hard surfaced sloping floor omto
which the cows’ offal] was dropped, and some
svstem of introducing water in sufficient quan-
tities and force omto said floor 10 wash the offa!
therefrom, with a ditch or drain 10 carry the offal
so washed away from the barn, either imo a
manure comainer or otherwise.”
22
before the filing of the application for —
>
189 USPQ
Rober! Shgwood Group Lid. vr. O'Reilly
453
brupt release of water directly on the barn
eer from storage tanks or pools can proper-
'\ be characterized as synergistic, that is,
“resultjing] in an effect greater than the
sum of the severa] effects taken separately.”
Angderson’s-Black Rock v. Pavement Co..
396 U.S. 57. 61, 163 USPQ 673. 674 (1960).
Rather. this patent simply arranges old
elements with each performing the same
function it had been known to perform,
although perhaps producing a more striking
result than in previous combinations. Such
combinations are not patentable under stan-
dards appropriate for a combination patent.
A&P Tea Co. v. Supermarket, Equipment
Corp., supra; Anderson’s-Black Rock v.
Pavement Co., supra. Linder those authori-
ties this assembly of old elernents that deli-
vers water directiv rather than through pipes
or hoses to the barn floor falls under the head
af “the work of the skillful mechanic, not that
of the invemor.”’ Hotchkiss v. Greenwood.
supra. at 267. Exploitation of the principle of
eravity adds nothing to the sum of useful)
knowleage where there is no change in the
respective functions of the elements of the
combination: this paruicular use of the
assembiv of old elements would be obvious
‘o any person skilled in the arm of
mechanica!l application. See Dann v.
johnston. slip op.. at 11. 189 USPQ at
26 1-262
{5} Tnough doubtiess 2 matter of great
fonvenience. producing a desired result inz
cheaper anc faster way. and enjoving com-
mercia! success. Dairy Establishment “did
noi produce 2 ‘new or different function’
* * within the test of validity of combina-
. patents.” Anderson’s-Black Rock v.
ravemem Co.. supra. at 60. 163 USPQ ar
674. These desirable benefits “‘without in-
envon wil] not make patentabilirv."" A&P
Tea Co. v. Supermarkei. Eouipment Corp..
supra. at 133. & USPQ at 306. See Dann v.
Johnston. supra. at — n.4, 189 USPQ at
261.
BEST COPY AVAILABLE
Court of Appeals, Second Circuit
The Robert Suigwood Group Limited. et al.
v. O'Reilly, et al.
Track Music, Inc., et al.
v. Comemporary Mission, Inc., et al.
Nos. 75-7076, 75-7077 and 75-7091
Decided Jan. 19, 1976
COPYRIGHTS
1. Accounting — Damages — Copyrights
($1 1.253 g Pytig
Infringement — In genera! (§24.201)
Federa) district court erred in taking
“baseline figure of 50” as number of un-
authorized performances of copyrighted
work simply because figure had been con-
ceded by accused infringers.
2. Infringement — In general (§24.201)
Rights embraced in copyright (§24.50)
Ephemera! public performance on stage is
not like film negative that can be reproduc-
ed; Section i(d) provides that exclusive
right to make “‘any transcription or record”
belongs 10 copyright owner.
5. Infringement — In genera) (§24.201)
17 U.S.C. 10i(e) makes unauthorized
manufacture of tape recordings containing
renditions of copyrighted musica) com-
posiuons infringemeni of musical copyright.
4. Accounting — Damages — Copyrights
(611.253) —
infringement — In genera! (§24.201)
Oniv when rvype of copyright infringement
permits further reproduction abroad is ex-
plonation abroad subject of constructive
trust, federa) district court properly exclud-
ed unauthorized Canadian performances of
copyrighted works in assessing damages.
since copyright laws do not have ex-
traterritoria] operation.
5. Accounti
(§11.253
There are three wavs of getting damages
— Damages — Copyrights
| for copyright infringememt under 17 U.S.C.
191: (1) actual damages to —-
proprietor, (2) profits that infringer has
made from such infringement, or (3) in lieu
‘of actual damages and profits, damages as
appear to court to be just. which shall not
exceed $5.000 nor be less than $250 and
shal! noi be regarded as penalty.
APP. 23
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