# Petition — E-T Industries, Inc. v. Whittaker Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_0032%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1976 - **Citation:** 429 U.S. 870 ## Text ee 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 es I in oe. cock hebdeitiuck ited 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. = 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 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 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_0032%3A1. Public record. Not legal advice.