Petition — Litton Industrial Products, Inc. v. Jamesbury Corp.

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IN THE

Supreme Court of the auth Staten

October Term, 1978

No —#8=1149

JAMESBURY CORPORATION,

Respondent,

LITTON INDUSTRIAL PRODUCTS, INC.,

Petitioner.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

Joun A. Diaz

Attorney for Petitioner

345 Park Avenue

New York, New York 10022

Of Counsel:

Morcan, FInneGAN, Prinz, Foutey & Lee

J. Ropert Damery

345 Park Avenue

New York, New York 10022

Gross, Hypr & WILLIAMS

Tuomas F.. ParKER

799 Main Street

Hartford, Connecticut 06103

January 21, 1979

|. Supreme Court, U. S

HE D

JAN 79 1979

4 4

omen

TABLE OF CONTENTS

PAGE

Opinions Below i Nant oe: 1

Jurisdiction ah iaeackeXs “ 2

The Question Presented .... Ns a 2

Coustitutional Provisions and Statutes Involved 3

Statement of the Case eerettta : 3

Argument

Reason for Granting the Writ

1. A Conflict Among the Circuits Exists . 6

2. The Rule Against Patent Overclaiming Pro-

tects the Public from an Inventor Who Claims

More Than He Invented ............... hae . 6

3. The Public Policy Underlying the Patent Laws

Requires that the Second Circuit’s Interpreta-

tion of the Doctrine of Patent Overclaiming

Be Reversed A Se eT EE ie 9

4. Conclusion EES PEL ROT pte aa |

Appendix ......... PMA eet ALCL ica fash vais . Al

TABLE OF AUTHORITIES

PAGE

Cases:

Deep South Packing Co. v. Laitram Corp., 406 U.S.

Re esl Gata geen Ere eam Oe OE 10

Duplan Corp. v. Deering-Milliken, Inc., 444 F. Supp.

I I NN ioe oeandes iy tasercdeat vey css cas exseeeteas 5, 6,8

Evans v. Eaton, 20 U.S. 356 (1822) . es 5, 6, 7, 9

Graham v. John Deere, 383 U.S. 1 (1966) ....... 10

Holstensson v. V-M Corp., 325 F.2d 109 (6th Cir.

| Blea e he NR AIP AEN cal Rie Me Ai Were 5, 8

Jamesbury Corp. v. United States, 518 F.2d 1384

ARI Reese ip aes Bagge hes MERU MBS AS 4

Jamesbury Corp. v. Worcester Valve, Inc., 318 F.

Supp. 1 (D. Mass. 1970) ..... ERE Feist RAS) Soe eke 3

Lincoln Engineering Co. v. Stewart-Warner Corp.,

Bee RUS NE LEME so eriialio en utr nkasesi Reims Ae ew

Morton Salt v. G. S. Suppiger Co., 314 U.S. 488 (1942) 6

Parker v. Flook, 46 U.S. L.W. 4791 (1978) 0000000... =10

Williams Mfg. Co. v. United Shoe Machinery Corp.,

gg _* EUR EI RUN Bina Bic arses iy ania. 5, 7

Statutes:

Be UT MED | oiccitscseserscccrcaalpseoristrovcssvoatattenocesstdihnlces, 2

Se I I os dsszern sieesatiante heccovttlieneinieeereic, 2

Other Authorities:

Constitution, Article 1, Section 8, Clause 8............... 3

IN THE

Supreme Court of the United States

October Term, 1978

No.

<p Sime

JAMESBURY CORPORATION,

Respondent,

Lirron InpustriaL Propvucts, Inc.,

Petitioner.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT

Petitioner prays that a writ of certiorari issue to review

the judgment of the United States Court of Appeals for the

Second Circuit in the above-entitled case.

Opinions Below

In its Complaint respondent Jamesbury Corporation

(‘‘ Jamesbury’’) accused petitioner Litton Industrial Prod-

ucts, Inc. (‘‘Litton’’) of direct infringement of Claims 7

and 8 of U.S. Patent No. 2,945,666, which expired on July 19,

1977.

On November 18, 1977, the Honorable M. Joseph Blu-

menfeld, United States District Judge for the District of

Connecticut, applied the doctrine of patent overclaiming

and granted petitioner’s Motion for Summary Judgment of

Patent Invalidity based thereon. Judge Blumenfeld’s opin-

ion is reported at 442 F. Supp. 266 and is reproduced in

the Appendix, Al to A5.

On October 23, 1978, the Second Cireuit Court of Ap-

peals reversed ‘‘on the law.’’ The decision of the Second

Cireuit Court of Appeals is reported unofficially at 199

U.S.P.Q. 641 and reproduced in the Appendix, A6 to A21.

Jurisdiction

Jurisdiction to review the judgment below by writ of

certiorari is conferred by 28 U.S.C. §1254(1). Jurisdiction

of the Trial Court was based upon 28 U.S.C. §1338(a).

fhe Question Presented

Should this Court resolve the conflict among the Circuits

as to whether the doctrine of patent overclaiming applies to

cases of direct infringement as well as cases of contributory

infringement?

The rule in the Sixth Cireuit is that application of the

‘doctrine of patent overclaiming does not depend on the

nature of the claimed infringement, i.e., it applies to cases

of direct as well as contributory infringement. The rule

in the Second Circuit is that application of the doctrine of

patent overclaiming does depend on the nature of the

claimed infringement, i.e., it is limited to cases of contribu-

tory infringement and should not be expanded to cases of

direct infringement.

The rule in the Sixth Circuit is followed by courts in the

Fourth Circuit. The rule in the Second Circuit is appar-

ently followed by the Court of Claims. Jamesbury advised

the Court below that if the Sixth Circuit rule applied, thou-

sands of patents issued by the U.S. Patent Office might be

invalid. Thus, the question presented is one of overriding

public importance and this Court should resolve the basic

conflict among the Circuits thereon.

Constitutional Provisions and Statutes Involved

The limited issue raised by this petition is the proper

scope to be accorded the doctrine of patent overclaiming

which is based upon the Constitution, Article 1, Section 8,

Clause 8:

‘‘The Congress shall have power... To promote

the progress of science and useful arts, by securing for

limited times to authors and inventors the exclusive

right to their respective writings and discoveries.’’

Statement of the Case

The patent in suit is directed to a ball valve comprising

three parts: (1) a casing; (2) a ball; and (3) a valve seat,

also referred to as a sealing ring. It stands admitted that

ball valves comprising a casing, a ball and a valve seat have

been known for over fifty (50) years.

In Jamesbury Corp. v. Worcester Valve, Inc., 318 F.

Supp. 1 (D. Mass. 1970), aff’d, 443 F.2d 205 (1st Cir. 1971),

the Court found that the ‘‘essence’’ of the invention of the

patent here in suit resided in the improved valve seat (318

F.Supp. at 5), and in Jamesbury Corp. v. United States,

518 F'.2d 1384 (Ct. Cl. 1975), the Court found that the pat-

ented ball valve employs ‘‘a novel sealing ring’’ (518 F.2d

at 1387). Like Judge Blumenfeld (App. A8), Litton as-

sumes that the sealing ring is inventive.

The patent in suit states that both the ball and the

valve casing are ‘‘conventional’’ and that the valve seat is

improved (App. A3). At the hearing before Judge Blumen-

feld on October 11, 1977, Jamesbury admitted that: ‘‘The

only thing that’s new is the seat.’’ Nevertheless, James-

bury insisted that it was entitled to a patent on ‘‘the whole

works,’’

‘Mr. Neustadt [Counsel for Jamesbury]: The de-

fendant’s statement that Judge Garrity [in Jamesbury

Corp. v. Worcester Valve Co.] found the essence of the

invention to be the valve seat is really nothing more

than the patentee said in his patent. He said that the

casing is old and he also said that the ball is old. The

only thing that’s new is the seat. And that’s what

Judge Garrity said by saying, well, the essence of the

invention is the seat.

‘The Court: All right. Now so that I’ll get it

straight, I guess, you do claim that the whole valve as

set forth in—I don’t know, claim 7 or claim 8?

‘*Mr, Neustadt: Yes, your Honor.

‘‘The Court: You do claim it. So it isn’t a question

now of my having to decide that you don’t claim it;

that, in effect, all you claim is the seal.

‘Mr, Neustadt: That’s correct, your Honor.

‘The Court: You claim the whole works.

‘‘Mr. Neustadt: Yes, sir.’’

Judge Blumenfeld, relying upon Lincoln Engineering

Co. v. Stewart-Warner Corp., 303 U.S. 545, 549-550 (1938),

held Claims 7 and 8, on ‘‘the whole works,’’ to be invalid

for overclaiming. In so doing he expressly adopted Wil-

liams Mfg. Co. v. United Shoe Mach. Corp., 121 F.2d 273

(6th Cir. 1941), aff’d, 316 U.S. 364 (1942) and Holstensson

v. V-M Corp., 325 F.2d 109 (6th Cir. 1963), cert. denied, 377

U.S. 966 (1964), both of which applied the doctrine of

patent overclaiming in cases of direct infringement and

held patents invalid for overclaiming.

The Second Circuit recognized that if it ‘‘were to apply

the premise of the District Court,’’ i.e., that Lincoln En-

gineering applied, then Judge Blumenfeld’s reasoning

‘would be unassailable’’ and the patent in suit would be

invalid as a matter of law (App. Al4). The Second Circuit,

however, refused to apply Lincoln Engineering to this case

of direct infringement and reversed ‘‘on the law’’ (App.

A6).

In its reversal, the Second Circuit completely ignored

Evans v. Eaton, 20 U.S. 356 (1822), which was briefed to

the Court by petitioner. In Evans v. Eaton this Court more

than 150 years ago applied the doctrine of patent overclaim-

ing to invalidate a patent in a case of direct infringement.

In its reversal the Second Circuit also ignored Duplan

Corp. v. Deering-Milliken, Inc., 444 F. Supp. 648 (D.S.C,.

1977), also briefed to the Court by petitioner. In Duplan,

the Court also applied the doctrine of patent overclaiming

to invalidate a patent in a case of direct infringement.

It should be noted that the same patent firm represents

both the patentee in Duplan and the alleged infringer here.

And yet in Duplan the Court held the patent invalid, ruling

that the doctrine of patent overclaiming was not limited to

cases of contributory infringement, whereas the Court here

reversed a holding of invalidity, ruling that the doctrine

of patent overclaiming is limited to cases of contributory

infringement.

ARGUMENT

Reason for Granting the Writ

1. A Conflict Among the Circuits Exists.

The Sixth Circuit rule, followed by courts of the Fourth

Circuit, is that application of the doctrine of patent over-

claiming does not depend on the nature of the claimed in-

fringement. The Second Circuit rule, apparently followed

by the Court of Claims, is that application of the doctrine

of patent overclaiming does depend on the nature of the

claimed infringement.

This Court has traditionally granted certiorari to re-

solve a conflict among the Circuits on a question of public

importance which has not been but should be settled by this

Court. Morton Salt v. G. S. Suppiger Co., 314 U.S. 488, 490

(1942).

2. The Rule Against Patent Overclaiming

Protects the Public from an Inventor

Who Claims More Than He Invented.

The rule against overclaiming goes back more than a

century and a half to Evans v. Eaton, supra, a case of direct

infringement. There the patent related to a device called a

‘‘Hopperboy’’ which was employed in the manufacture of

flour. Although the patentee had improved one part of the

machine, he nevertheless claimed the whole machine. This

Court held the patent invalid, stating:

‘+. |, If the same combination existed before in

machines of the same nature, up to a certain point, and

the party’s invention consists in adding some new

machinery, or some improved mode of operation, to

the old, the patent should be limited to such improve-

ment, for if it includes the whole machinery, it includes

more than his invention, and therefore cannot be sup-

ported....’’ (20 U.S. at 430-31).

Lincoln Engineering Co. v. Stewart-Warner Corp., su-

pra, was an action for contributory infringement of a pat-

ent on a device for lubricating automobile bearings. Lub-

ricating devices comprising the combination of a grease

pump, a hose, a coupler and a fitting connected to the bear-

ing to be lubricated were old (303 U.S. at 547). Although

the patentee had improved the coupler (303 U.S. at 549),

the claims were not limited to the improvement. This Court

invalidated the patent, holding that it was ‘‘void as claim-

ing more than the applicant invented’’ (Ibid.).

Williams Mfg. Co. v. United Shoe Mach. Corp., supra,

was a case of direct infringement involving two patents

(121 F.2d at 274). The Sixth Circuit applied the doctrine

of overclaiming and invalidated one of the patents while

sustaining the second patent over that same defense. This

Court affirmed the ruling with respect to the second patent,

holding that although the patentee had recited in his claim

the environment of ‘‘mechanical parts’’ in which the im-

provement was to operate, he did not ‘‘purport to embody

them as elements of the claimed combination’’ (316 U.S.

at 369).

In Holstensson v. V-M Corp., supra, also a case of direct

infringement, the Sixth Circuit refused to limit the doctrine

of patent overclaiming to cases of contributory infringe-

ment and invalidated the patent (325 F.2d at 122),

In Duplan vy. Deering-Milliken, supra, also a case of

direct infringement, the Court rejected the contention that

the doctrine of patent overclaiming was limited to cases of

contributory infringement and invalidated the patent.

‘‘Defendant’s attempt to distinguish Lincoln En-

gineering on the grounds that it invloved a suit for

contributory infringement is rejected.” (444 F’. Supp.

at 716).

In reversing Judge Blumenfeld, the Second Cireuit ac-

knowledged Lincoln Engineering but refused to apply it to

this case of direct infringement. Instead, it adopted James-

bury’s argument that the application of the doctrine of

patent overclaiming depends on the nature of the claimed

infringement and reversed ‘‘on the law”? (App. A6),

‘*...A claim for direct infringement would lie only

against one who infringes a ball valve containing the

specified sealing ring. Guide v. Desperak, supra, 249

F.2d at 147.

‘‘Of course, that limitation might not apply to a

contributory infringer, who manufactured a conven-

tional valve or ball which the direct infringer then

combined with an infringing sealing ring to make an

entire infringing device. If such a contributory in-

fringer were to be held liable, there would be an argu-

ment on policy that the claim was unfairly overbroad.

We are not dealing here with such a contributory in-

fringer, and older cases, including Lincoln Engineering,

supra, in which contributory infringers were suppliers

of conventional elements, must be read with that dis-

tinction in mind. When we juxtapose Williams, supra,

a direct infringement case, with Lincoln Engineering,

one gets the impression that the nature of the claimed

infringement, though not the sole basis for decision,

substantially affected the result. We need not go so

far as the Patent and Trademark Board of Appeals

has gone in ruling that, since it is now a defense to

contributory infringement that a product is capable of

substantial non-infringing use, 35 U.S.C. §271(e), stat-

utory amendments may have deprived Lincoln Engi-

neering of force on its own ground. Ex parte Barber,

187 U.S.P.Q. (BNA) 244 (1974). We find it unneces-

sary to determine whether we agree with the suggestion

in that opinion that Lincoln Engineering has been

legislatively overruled, but we do find that subsequent

history militates against an expansive application of

the Court’s reasoning in Lincoln Engineering.’ (Em-

phasis in original) [ App. A20-A21}.

Thus, the Second Circuit refrained from ruling that the

doctrine of patent overclaiming had been legislated com-

pletely out of existence, as was urged below by J amesbury,

it being sufficient for a reversal to hold that it did not

extend to cases of direct infringement.

3. The Public Policy Underlying the Patent

Laws Requires that the Second Circuit’s

Interpretation of the Doctrine of Patent

Overclaiming Be Reversed.

The Sixth Cireuit’s holding that the doctrine of patent

overclaiming is applicable to cases of direct as well as

contributory infringement is based upon more than 150

years of judicial precedent dating back to the direct in-

fringement case of Evans v. Eaton, decided by this Court

in 1822. That decision recognizes that a patent which

claims more than the patentee invented is void.

The Sixth Circuit’s interpretation is consonant with the

principles enunciated by this Court in Graham v. John

Deere, 383 U.S. 1, 6 (1966) :

‘*. .. Congress may not authorize the issuance of pat-

ents whose effects are to remove existent knowledge

from the public domain or to restrict free access to

materials already available. ...’’

The Sixth Circuit’s interpretation is also consonant with

this Court’s holding in Deep South Packing Co. v. Latrim

Corp., 406 U.S. 518, 531 (1972):

‘¢. .. [WJe should not expand patent rights by over-

ruling or modifying our prior cases construing the

patent statutes unless the argument for expansion of

privilege is based on more than mere inference from

ambiguous statutory language. ...’’

Finally, the Sixth Circuit’s interpretation is consonant with

this Court’s holding in Parker v. Flook, 46 U.S.L.W. 4791,

4794 (1978), that the patent statutes must be construed as

they now read in light of this Court’s prior decisions.

As brought out swpra, the doctrine of patent overclaim-

ing was first enunciated by this Court more than 150 years

ago in Evans v. Eaton, a case of direct infringement. Since

then, neither Congress nor this Court has ever decided that

the application of the doctrine of patent overclaiming de-

pends on the nature of the claimed infringement and the

Second Circuit’s holding to the contrary is in error.

4. Conclusion

Under the Sixth Circuit rule the defense of patent in-

validity for overclaiming does not depend on the nature of

the claimed infringement and is available in cases of both

direct and contributory infringement.

Under the Second Circuit rule the application of the

defense of patent invalidity for overclaiming depends on

the nature of the claimed infringement, is limited to cases

of contributory infringement, and cannot be expanded to.

eases of direct ir’ringement.

The Second Circuit’s holding that the validity of a pat-

ent depends on the nature of the claimed infringement finds

no support either in logic or in law and should not be per-

mitted to stand.

January 21, 1979

Respectfully submitted,

Jonn A. Dtaz

Attorney for Petitioner

345 Park Avenue

New York, New York 10022

Of Counsel:

Moraan, FInneGan, Ping, Fotry & Ler

J. Ropert Datry

345 Park Avenue

New York, New York 10022

Gross, Hypp & WILLIAMS

Tuomas F, Parker

799 Main Street

Hartford, Connecticut 06103

APPENDIX

266

JAMESBURY CORP.

Vv.

LiTTON INDUSTRIAL PRODUCTS,

INC.

Civ. No. H-76-79.

United States District Court,

D. Connecticut.

Nov. 28, 1977.

As Amended Dec. 2, 1977.

Action was brought for alleged in-

fringement of patent. The District Court,

Blumenfeld, J., held that: (1) claims 7 and 8

of patent No. 2,945,666 which claimed a ball

valve, and not only a new sealing ring, were

invalid for overclaiming, and (2) although,

viewed abstractly, it would have been possi-

ble to make a case that claims were capable

of a narrow construction if read in light of

specifications, such freedom to use the spec-

ifications to rescue unambiguous claims,

held invalid for overclaiming, was not per-

missible.

Judgment for defendant.

1. Patents ¢=327(11)

Fact that patent in issue had been pre-

viously held valid did not dispose of subse-

quent infringement action defended on

ground of overclaiming, since overclaiming

had been neither raised nor litigated in

prior action.

1. The issue of ownership of the patent, as dis-

tinguished from validity, was decided in favor

of Jamesbury Corp. in Jamesbury Corp. v.

Worcester Valve Co., 318 F.Supp. | (D.Mass.

1970), aff'd, 443 F.2d 205 (1st Cir. 1971).

2. These claims are as follows:

“7, A ball valve comprising: a casing

adapted to be connected to a pipe line and

having a valve chamber and inlet «nd outlet

openings; a ball mounted in said chamber

and having a port; and a se2iing ring mount-

ed in said chamber around one of said open-

ings, said ring naving a lip projecting inward

toward the axis of the ring and engaging the

442 FEDERAL SUPPLEMENT

2. Patents <= 328(2)

Claims 7 and 8 of patent No. 2,945,666

which claimed a ball valve, and not only a

new sealing ring, were invalid for over-

claiming.

3. Patents <= 167(1'A)

Although, viewed abstractly, it would

have been possible to make a case that

claims were capable of a narrow construc-

tion if read in light of specifications, such

freedom to use the specifications to rescue

unambiguous claims, held invalid for over-

claiming, was not permissible. 35 U.S.C.A.

§ 112.

J. Read Murphy, Murtha, Cullina, Richter

& Pinney, Hartford, Conn., Robert C. Mil-

ler, Oblon, Fisher, Spivak, McClelland &

Maier, Arlington, Va., for plaintiff.

Thomas F. Parker, Gross, Hyde & Wil-

liams, William A. Taylor, Hartford, Conn.,

John A. Diaz, Morgan, Finnegan, Pine, Fo-

ley & Lee, J. Robert Dailey, New York City,

for defendant.

RULING ON MOTION FOR

SUMMARY JUDGMENT

BLUMENFELD, District Judge.

This is an action for alleged infringement

of U.S. Patent No. 2,945,666 entitled “Ball

Valve.” The patent issued on July 19, 1960,

and expired on July 19, 1977. The patent

has been the subject of active litigation

since 1963.! The Court of Claims upheld

the validity of claims 7 and 8,? which the

defendant is accused of infringing, James-

bury Corp. v. United States, 518 F.2d 1384,

ball, said lip being free to bend in the axial

direction of the ring and increasing in thick-

ness outward in the radial direction of the

ring, and said ball being rotatable between an

open position in which said port is in register

with the opening surrounded by said ring and

a closed position.

“8. A ball valve as described in claim 7,

said lip having side faces disposed one to-

ward the ball and one away from the ball,

and said faces diverging from each other sub-

stantially uniformly outward in the radial di-

rection of the ring.”

JAMESBURY CORP. v. LITTON INDUS. PRODUCTS, INC.

267

Cite as 442 F.Supp. 266 (1977) A

207 Ct.Cl. 516 (1975), against a challenge

that they failed to meet the requirements

of patentability set forth in 35 U.S.C.

§ 103.3

The defendant in this case, however,

moves for summary judgment on the

ground that claims 7 and 8 are invalid for

overclaiming.

{1} The fact that the '666 patent has

been previously held valid does not serve to

dispose of this action, for the defense of

overclaiming was neither raised nor litigat-

ed. Holstensson v. V-M Corp., 325 F.2d 109

(6th Cir. 1963), cert. denied, 377 U.S. 966, 84

S.Ct. 1646, 12 L.Ed.2d 736 (1964) is instruc-

tive on this point. The patent at issue in

Holstensson had previously been held valid

in Holstensson v. Webcor, Inc., 150 F.Supp.

441 (N.D.I11.1957). Following that decision

everyone but V—M Corp. took a license un-

der the patent. 325 F.2d at 119. The pat-

ent was again upheld in a suit for infringe-

ment against V—M, which raised an addi-

tional defense of overclaiming. The Court

of Appeals reversed and held the patent

invalid on the ground that the patentee had

overclaimed.

II.

The same patent claims in issue here

were viewed by the Court of Claims in

Jamesbury Corp. v. United States, 518 F.2d

1384, 1887-88, 207 Ct.Cl. 516 (1975) as fol-

lows:

“(C]laims 7 and 8 define a ball

valve comprising a casing, valve chamber

having openings, a rotatable ball in the

chamber and having a port, and a sealing

ring mounted in the chamber around one

of the openings, the sealing ring having a

lip extending toward the axis of the ring

and engaging the ball. Claims 7 and 8

3. 35 U.S.C. § 103 provides:

“A patent may not be obtained though the

invention is not identically disclosed or de-

scribed as set forth in section 102 of this utle,

if the differences between the subject matter

sought to be patented and the prior ar are

Such that the subject matter as a whole

define the lip as free to bend isthe axial

direction and increasing in thickness out-

ward in the radial direction of the ring,

which projects inwardly toward the axis

of the sealing ring and sealingly contacts

or engages the ball, and which is free to

move in the axial direction of the sealing -

ring. Claim 8 further defines the lip as

having one side face disposed toward the

ball and one side face away from the ball,

which faces diverge from each other sub-

stantially uniformly outward in the radial

direction of the ring.”

No defense of overclaiming was asserted in

that case.

Reduced to simpler terms by the plaintiff

in its brief, a ball valve consists of a casing,

a sealing ring and a ball. The casing is

hollow and has two ends, an inlet end to be

connected to an inlet pipe and an outlet end

to be connected to an outlet pipe. There is

a bore in the ball, which may be rotated to

permit fluid flow through the bore, or may

rotate a quarter turn so as to block flow

through the casing. The sealing ring, as

the name implies, is a ring which seals and

prevents leakage between the casing and

the ball. Describing it even more simply, a

ball valve is used to control the flow of

liquid and gases in pipelines and is enclosed

within a casing so adapted that it can be

connected into the pipeline.

While the plaintiff professes “some sur-

prise” at this defendant's motion so late in

the day, that reaction is also surprising in

view of the long-standing rule of Lincoln

Engineering Co. v. Stewart-Warner Corp.,

303 U.S. 545, 549-50, 58 S.Ct. 662, 665, 82

L.Ed. 1008 (1938) that “(t]he improvement

of one part of an old combination gives no

right to claim that improvement in combi-

nation with other old parts which perform

no new function in the combination.”

There is nothing to indicate that a ball

valve incorporating the new seal performs

would have been obvious at the time the

invention was made to a person having ord-

nary skill in the art to which said subject

matter pertains. Patentability shall not be

neyatived by the manner in which the inven-

tion was made.”

268

any ‘alditional or diffcrent function” than

cther bull valves. It does rot function in a

rew men.er. It may be more efficient or

Curable, but it does what bail valves have

always done. Cf. Great Atlantic & Pacific

Tea Co. v. Supermarket Equipment Corp.,

$30 U.S. 147, 152, 71 $.Ct. 127, 95 L.Ed. 162

(1950). Even the use of a seat/seal in a ball

valve was not new. As the specifications

indicate, the cbjective of the invention is an

improved seal and seat. (Col. 1 J/ 30-89).

The patentee may have invented a seat and

seal suitable for use in a ball valve, but

trere is rot the slightest doubt that the

p.ainulf did not invent a bail valve.

The specifications, which teach how to

practice the invention, Application of Rob-

ente 477 F.2d 1209, 1403 (C.C.P.4.1973) be-

g..: “Tnis invention relates to ball valves,

and more particularly to sealing elements

for the valve seat .. ae 2

15-16). They admit tha: the vulve casing

and t ball are conventional’ and that

‘(:jhe principal object of this invention is to

produce 2 valve seat construction which

provides maximum security against leak-

age, which reduces wear on the seats to a

minimum and which ensures smooth open-

ing and closing of the valves.” (Col. 1 //

30-34).

[2] Here, as in Williams Mfg Co v.

United Shoe Mach. Corp., 121 F.2d 278, 279

€.h Cir. 1941), aff'd, 316 U.S. 364, 62 S.Ct.

1179, *6 L.Ed. 1587 (1942), “whatever im-

provement may result is due entirely to the

improved element and cannot yive rise to

valid claims embracing the entire [ball

valve] mechanism.”

There cannot be any doubt that the plain-

tiff claims a ball valve, not only a sealing

ring. [ts brief contends, at puge 5, “The

operation of the Jamesbury ball valve and

how this operation overcame the serious

problems inherent in the unsuccessful prior

ary ball vaives is succinctly set forth in the

decision of the Court of Claims.” A long

extract from that opinion, 518 F.2d 1384,

1386-57, is then: quoied to support the

plaintiff's contention that it invented a ball

4. The Specification, Co'. 1 1! 40-43, states:

“The valve here disclosed includes a ball, a

4'2 FEDERAL SUPPLEMENT

A 3

valve. I excerpt only a few sentences from

the extract on which plaintiff relies:

“Tne patent in suit describes and

claims an improved ball valve.

“Prior to the development of the plain-

uff’s patented valve, ball valves were not

generally accepted or used by industry.

“The ball valve which is the subject

matter of the patent in suit solved the

problems of temperature variation, pres-

sure variation, and valve wear. The pat-

ented ball valve employs a novel sealing

ring utilizing a principle different from

the compression sealing rings “4

The plaintiff does not relinquish its conten-

tion that its patent embraces the entire ball

valve, and that it is valid as a patent on a

combination because it achieves an im-

proved result. Resourceful as this conten-

tion may be, it cannot be twisted to mean

that the sealing ring operates to make the

va.ve perio:m a new function. Lincoln En-

gineering, supra.

III.

Alth ugh the plaintiff is reluctant to re-

linquish its claims, nevertheless it concedes:

“This is not to say that a claim directed to

only a sealing ring could not particularly

point out and distinctly claim an invention

. ..” Plaintiff's Brief at 8. Even if

the cluims are broader than permissible,

plaintiff seeks to preserve that portion of

the claims wh ch it could validly have made.

This second, or fall-back, position asks the

court to narrow the claim by trimming off

its overly broad portion in order to salvage

that portion which would be valid. In sup-

port of this it cites two cases, to which I

now turn.

The Manua! of Patent Examining Proce-

dure, Section 706.03), provides:

The fact that an applicant has improved

one eiement of a combination which may

be per se patentable does not entitle him

to a claim to the improved element in

combination with old elements where the

valve casing, and a bonnet, all of which may be

of generally conventional construction.”

JAMESBURY CORP. v. LITTON INDUS. propuctsAnc.

4 269

Cite us 41.2 F.Supp. 266 (1977)

elements perform no new function in the

combination.

In Application of Bernhardt, 417 F.2d 1395,

57 C.C.P.A. 737 (1969), the Court of Cus-

toms and Patent Appeals held that this

language does not permit the Patent Office

to reject such an “old combination” claim.

The court held that a patent could only be

rejected on the basis of 35 U.S.C. § 112,

which requires that the applicant state

“claims particularly pointing out and dis-

tinectly claiming the subject matter which

the applicant regards as his invention.” It

reasoned that if the applicant omitted to

mention in its claims the combination in

which an improved element was to be used

(in this case, the ball valve), this would not

make the claims more distinct; a recitation

of the combination in the preamble would

only lengthen it. It also concluded that

without any mention of the combination, a

broader monopoly would be claimed: in this

case, protection would extend to valve seats

whether or not used in ball valves. but the

court specifically eschewed any concern

“with the soundness of the underlying poli-

ey, if any, for old combination rejections.”

417 F.2d at 1403.

(3] Although the scope of protection

was not in issue in Ex parte Barber, 187

U.S.P.Q. (BNA) 244 (Pat. & Trademark Of-

fice Bd. of Appeals, 1974), the opinion com-

mented favorably on Bernhardt. Two of

the Examiners in Chief thought that Lin-

coln Engineering, supra, had been legislated

out of existence. 187 U.S.P.Q at 246. 1

am not about to accede to that view. I find

the dissenting opinion in Ex parte Barber,

‘hich takes the opposite view, more per-

suasive. It may be that the Patent Office

will change its procedural rule in Section

706.03) of the Manual. It is one thing to

save an application for a patent from rejec-

tion because it claims too much, but it is

quite another to permit the use of an overly

broad patent against the public. The re-

spect that others have for a patent after

the Patent Office has endowed it with a

presumption of validity enables the pat-

entee to exact monopoly advuntage until

someone undertakes the expense of litiga-

tion. Viewed abstractly, it would be possi-

ble to make a case that the claim is capable

of a narrow construction if read in light of

the specifications. But such freedom to use

the specifications to rescue these unambigu-

ous claims is not permissible.

As the Court said in Graver Tank & Mfg.

Co. v. Linde Air Products Co., 336 U.S. 271,

277, 69 S.Ct. 535, 539, 93 L.Ed. 672 (1949):

“We have frequently held that it is the

claim which measures the grant to the

patentee. While the cases

more often have dealt with efforts to

resort to specifications to expand claims,

it is clear that the latter fail equally to

perform their function as a measure of

the grant when they overclaim the inven-

tion. When they do so to the point of

invalidity and are free from ambiguity

which might justify resort to the specifi-

cations, we agree with the District Court

that they are not to be saved because the

latter are less inclusive. .” (cita-

tions omitted).

See also Trico Products Corp. v. Roberk Co.,

369 F.Supp. 1146, 1155-56 (D.Conn.), aff'd,

490 F.2d 1280 (2d Cir. 1978) (without con-

sidering this ground), cert. denied, 417 U.S.

933, 94 S.Ct. 2645, 41 L.Ed.2d 236 (1974).

Inventors desiring the maximum protection

no doubt have a difficult task in defining

their claims. But when they fail, as in this

case, it is because, like the dog in the fable,

they grasp too much, and so lose all.

Where the public interest in patents is to be

protected, the rule is the same as explained

in Holstensson v. V-M Corp., supra, 325

F.2d at 125:

“It might appear unfair to deny an

inventor the fruits of his invention mere-

ly because he overclaimed its breadth in

his patent application and unjust to allow

a third party to appropriate and infringe

a true invention because of the failure of

a patentee to comply with the patent

statute. This might be arguable unless

we look upon Evans v. Eaton (7 Wheat.

356, 20 U.S. 356, 5 L.Ed. 472] as announc-

ing a policy which, correctly applied, may

visit forfeiture of a patent even though

it, in part, discloses true invention. That

such is the thrust of the majority opinion

in Evans is exposed by its dissenting

270 442 FEDERAL SUPPLEMENT A 5

opinion which decries the severity of the

ru'e of the majority opinion. The dissen-

ter observes:

‘To declare a patent for a highly

useful improvement absolutely void,

merely for a defective specification. if

this be one, is a very high penalty, and

should not be lightly inflicted unless

rendered absolutely necessary by law.’

(7 Wheat. 448, 20 U.S. 448, 5 L.Ed. 495).

“In contemplating this seemingly dras-

tic rule, we bear in mind that there is no

natural or common law right to a monop-

oly of an invention. Robinson Treatise

on the Law of Patents (1890) § 24. By

Constitutional grant, Article I, § 8,

Clause &, Congress has power to give

inventors, for a limited time, ‘the exclu-

sive right to their respective discoveries.’

Applicants for such monopolies must

comply with the requirements that Con-

gress insists be met as a condition to

exercising such monopoly. The seeming

harshne:: oi this rule is furthcr amelio-

rated when we keep in mind that an

inventor may gain monopoly for an in-

ventive improvement to an existing de-

vice simply by limiting his claim to that

which he did invent. In the case before

us, this could have been accomplished by

a narrowing of Claim 1, or by presenta-

tion of a separate claim limited to the

spindle type record dropper which, for

this opinion, it is assumed presented in-

vention. In Sweden, Holstensson aid

this. Swedish patent No. 97,122 was tak-

en out on the entire machine, while pat-

ent No. 97,123 was limited to the spindle

record dropper. The same procedure

could have been followed here, but was

not.”

There being no genuine issue as to any

material fact, the defendant is entitled to

judgment as a matter of law that claims 7

and § of the patent in issue ure invalid. It

SO ORDERED.

A 6

UNITED STATES COURT OF APPEXELS |

For THE Seconp Circuit

No. 6—August Term, 1978.

(Argued September 11, 1978 Decided October 23, 1978.)

Docket No. 78-7004

ap.

JAMESBURY CORPORATION,

Appellant,

—against—

Lirron InpustriaL Propucts, Inc.,

Appellee.

io.

Before:

Oakes, GurFEIN and MESKiLL,

Circuit Judges.

Bp.

—_—

Appeal from an order of summary judgment, dated

November 30, 1977, of the United States District Court

for the District of Connecticut (Hon. M. Joseph Blumen-

feld, Judge), declaring as a matter of law that claims 7

and 8 of appellant’s Patent No. 2,945,666, disclosing a ball

valve in combination with a nov | sealing “ing, are invalid

for overclaiming. Held, a combination claiin with a single

novel element, in which all the e!ements cooperate to pro-

duce an improved result, does noi suffer from lack of pat-

entability on the ground that it claims in excess of a valid

patent monopoly.

Reversed on the law and reinanded for further pro-

ceedings.

A 7

Artuor I. Neustapt, Arlington, Va. (Robert C.

Miller and Oblon, Fisher, Spivak, McClel-

land & Maier, Arlington, Va., and J. Read

Murphy and Murtha, Cullina, Richter &

Pinney, Hartford, Conn., of counsel), for

Appellant.

Joun A. Diaz, New York, N.Y. (J. Robert

Dailey and Morgan, Finnegan, Pine, Foley

& Lee, New York, N.Y., and Thomas F.

Parker and Gross, Hyde & Williams, Hart-

ford, Conn., of counsel), for Appellee.

Gurrein, Circuit Judge:

This is an appeal from a summary judgment in favor

of an alleged direct infringer in a patent infringement

case. The issue on appeal is whether summary judgment

was properly granted against the patentee on the ground

that claims 7 and 8 of appellant’s Patent No. 2,945,666.

entitled “Ball Valve”, are invalid for overclaiming. Hav-

ing found the patent invalid for overclaiming, the District

Court did not reach the question of novelty or obviousness,

nor the question of whether there has been an infringe-

ment.'

The District Court of Connecticut (Hon. M. Joseph

Blumenfeld, Judge) held the claims invalid on the au-

thority of Lincoln Engineering Co. v. Stewart-Warner

Corp., 303 U.S. 545 (1938), which we discuss below. We

are called upon to interpret the test for patent overclaim-

ing established by this precedent of a generation ago, and

1 The District Court granted summary judgment as a matter of law.

The defendant moved for summary judgment on the basis that the

patent is invalid on its face. It submitted no affidavit or other evi-

dence in support of the motion.

to determine its applicability to the facts of the present

case.

The patent claims involved in this case disclose a ball

valve, comprised of a valve chamber, a ball, and a seat or

seal.? The basic mechanism has been in use for at least

fifty years,’ though it has been found that “prior to the

development of the plaintiff’s patented valve, ball valves

were not generally accepted or used by industry”. James-

bury Corp. v. United States, 518 F.2d 1384, 1386 (Ct. Cl.

1975). It is designed to control the flow of fluid in both

directions through pipelines. The chamber has both an

inlet and an outlet opening. The ball, which is mounted

for rotation, has a passage bored through it. When the

ball is rotated to an “open” position, the passage is aligned

with the chamber openings, so as to permit flow. When

rotated to a “closed” position, the passage is at a right

angle to the chamber openings, and the surface of the

ball operates to cut off flow. The seal or seat has two pur-

poses. It holds the ball in place, and it seals the juncture

between ball and chamber to prevent leakage. Two such

seals are often employed, one on either side of the ball.*

2 The claims in issue read:

7. A ball valve comprising: a casing adapted to be connected

to a pipe line and having a valve chamber and inlet and outlet open-

ings; a ball mounted in said chamber and having a port; and a

sealing ring mounted in said chamber around one of said openings,

said ring having a lip projecting inward toward the axis of the ring

and engaging the ball, said lip cing free to bend in the axial direc-

tion of the ring and increasing in thickness outward in the radial

direction of the ring, and said ball being rotatable between an open

position in which said port is in register with the opening sur-

rounded by said ring and a closed position.

8. A ball valve as described in claim 7, said lip having side faces

disposed one toward the ball and one away from the ball, and said

faces diverging from each other substantially uniformly outward in

the radial direction of the ring.

Defendant-Appellee’s Brief, at 3.

4 A somewhat more detailed description of ball valves may be found

in Jamesbury Corp. v. United States, supra, 518 F.2d at 1386.

As the preamble to appellant’s patent indicates,’ the

claimed novelty of its invention lies primarily in the seal.

The patent is addressed to the “especially difficult sealing

problem” occasioned by use of ball valves for handling

corrosive or radioactive materials and fluids at high tem-

perature in various industrial settings. The essence of

5 H.G. Freeman et al. Patent No. 2,945,666, Ball Valve (June 19,

1960), reprinted in Appendix, at 12. The preamble, portions of which

are quoted in text, reads in full:

This invention relates to ball valves, and more particularly to seal-

ing elements for the valve seat, the present application being a

continuation-in-part of copending application Serial No. 436,188,

filed June 11, 1954, now abandoned. Ball valves for handling corro-

sive or radioactive materials and fluids at high temperature, present

an especially difficult sealing problem. It is essential to form a

perfectly tight seal between the ball and the seat, usually on both the

upstream and the downstream side, and yet the valve must open

and close easily. Furthermore, if the valves are installed in danger-

ous or inaccessible locations, shutting down the equipment for repairs

on a valve or replacement of a valve seat may be extremcly costly.

The valve seats must, therefore, be constructed to withstand long

wear without leaking.

The principal object of this invention is to produce a valve seat

construction which provides maximum security against leakage, which

reduces wear on the seats to a minimum, and which ensures smooth

opening and closing of the valves. Another object is to provide a seat

construction with [sic] is adapted not only for seats made of the

flexible rubber-like materials ordinarily used, but also for seats made

of hard plastics or even metals, where extreme temperature or load

conditions preclude the use of rubber-like materia!s.

The valve here disclosed includes a ball, a valve casing, a stem for

controlling the ball, and a bonnet, all of which may be of generally

conventional construction. Prefers!ly a pair of sealing rings, one

on the upstream side and one on the downstream side of the ball,

are employed as the sealing elements. These rings have lips which

are free to deflect to a greater or less extent, depending on the

seat material and. the load conditions, and which are shaped and

proportioned in such a manner as to engage the all at an angle

with respect to the direction of the flow. Furthermore, both the

port of the ball and the lips have rounded rims disposed in a specific

relationship, as will be later described in detail so that the edge of

the port cannot cut into the lip when the valve is being opened or

closed. Other advantages and novel features of the valve will be

apparent from the description which follows.

A 10

this problem is that “[i]t is essential to form a perfectly

tight seal between the ball and the seat, usually on both

the upstream and downstream side,” while at the same

time permitting the valve to “open and close easily.” The

preamble states that the principal object of the invention

is “to produce a valve seat construction which provides

maximum security against leakage, which reduces wear

on the seats to a minimum, and which ensures smooth

opening and closing of the valves.” To achieve this pur-

pose, the ball and valve “may be of generally conventional

construction.” They are to be used, however, in combina-

tion with the new sealing element. The seal, which is given

a more technical description in claims 7 and 8, has a

lip which remains in constant contact with the ball, which

_may flex to permit rotation and reduce wear, but which

is so constructed and placed that it remains tight against

the surface of the ball at all times.

The District Court did not reach the question whether

the sealing element, considered in isolation, had enough

novelty to be patentable. Instead, it addressed itself to

the question whether by claiming patentability for the

valve, ball and seal, in combination, the plaintiff had over-

claimed and hence forfeited Ss claim to patentability.

The same patent was in suit in Jamesbury Corp. v.

United States, supra The Court of Claims adopted the

trial opinions of then Commissioner Lane and Trial Judge

Colaianni. The first of these opinions held that Jamesbury’s

ball valve, with its new seal, “solved problems of tempera-

ture variation, pressure variation, and valve wear” which

had been inherent in prior art. / d., 518 F.2d at 1387. Solu-

tion of these problems was made possible by employment

6 The case found its way to the Court of Claims because the United

States was a defendant. The patentee contended that valves used in

Navy submarines infringed its patent.

A 11

of “a novel sealing ring utilizing a principle different from

. . compression sealing rings” known to prior art. Id.

The importance of the innovation is emphasized by refer-

ence to the Jamesbury valve’s striking commercial success.

Id." The second opinion by Judge Colaianni upheld the

patent against a claim of anticipation by prior art patents.

Id, at 1398-99.

In rendering summary judgment for appellees, Judge

Blumenfeld does not appear to have taken issue with the

novelty of the sealing ring itself.* Instead, perceiving that

claims 7 and 8 distinctly extend to the ball and valve

casing as well as the seal, he treated the patent as an at-

tempt to claim a combination of elements: a bali, a valve,

and-—by virtue of improvement in a single element of the

ball valve—a sealing ring. Cf. Lincoln Engineering Co. v.

Stewart-Warner Corp., supra; Bassick Mfg. Co. v. R.M.

Hollingshead Co., 298 U.S. 415 (1936). Holstensson v. V-M

Corp., 325 F.2d 109 (6th Cir. 1963), cert. denied, 377 U.S.

966 (1964). :

The District Court applied the test for combination

patents advanced by Lincoln Engineering, supra, 303 U.S.

at 549, which purportedly requires disclosure of a “new

function”. The District Court found that no new function

was disclosed:

There is nothing to indicate that a bal] valve incorpo-

rating the new seal performs any “additional or differ-

ent function” than other ball valves. It does not func-

tion in a new manner. It may be more efficient or dur-

able, but it does what ball valves have always done.

7 The court also noted that “[p]rior to the development of the plain

tiff’s patented valve, ball valves were not generally accepted or used by

industry.” Id. at 1386.

8 The opinion below is reported at 442 F. Supp. 266.

A 12

Cf. Great Atlantic é Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147, 152 (1950). Even the

use of a seat/seal in a ball valve was not new.... The

patentee may have invented a seat and seal suitable

for use in a ball valve, but there is not the slightest

doubt that the plaintiff did not invent a ball valve.

442 F. Supp. at 267-68. The court thus rejected appellant’s

contention that patentability can be based on an “improved

result,” as well as the contention that this combination

performs a novel sealing function. Although the Judge

intimated that the sealing ring itself might have been pat-

eatable, he found the claim for the combination, with the

conventional elements added, to be fatally overbroad. On

this view of the case, the court held, quite properly that

if the claims were, indeed, overbroad, resort could not

be had to the specifications in an attempt to limit the patent

to its single novel element. See Graver Tank & Mfg. Co.

v. Linde Air Products Co., 336 U.S. 271, 277 (1949); cf.

Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., 340 U.S. 147, 149 (1950). Claims 7 and 8 were

therefore declared invalid in their entirety. The court thus

found the patent invalid for overclaiming. The District

Court excluded from consideration the earlier decision of

the Court of Claims upholding the validity of the same

patent, because it believed that the issue of overclaiming

had not been presented to the Court of Claims.

Subsequent events indicate that the District Court may

have been unwittingly in error when it made that assump-

tion. A memorandum of the Court of Claims in James-

bury v. United States, supra, Nos. 189-63 ; 520-71 (June 2,

1978) after Judge Blumenfeld’s decision, states that the

issue of overclaiming was raised in that case and was re-

jected, without discussion. Because the present case in-

A 13

volves a different defendant and is before a different court,

the earlier decision on the issue of overclaiming is neither

“law of the case” nor binding precedent in this circuit.

Nonetheless, we think that the contrary decision of the

Court of Claims should give us pause in considering the

propriety of a summary judgment in favor of the opponent

of the same patent.°

The issue in this case is a narrow one. We do not be-

lieve that it concerns an attempt to patent a combination,

all the elements of which are old. See Sakraida v. Ag Pro,

Inc., 425 U.S, 273, 282 (1976) ; Great Atlantic & Pacific Tea

Co. v. Supermarket Equipment Corp., supra, 340 U.S. at

151-53 (1950). See also Anderson’s Black Rock, Ine. v.

Pavement Salvage Co., 396 U.S. 57, 59 (1969) (“Tach of

the elements combined in the patent was known in the prior

art.”). Nor does it involve a patent where the interrela-

tionship of the elements is a matter of convenience rather

than necessity, and where each element could adequately

perform its designed function in isolation. See Anderson’s

Black Rock, Inc. v. Pavement Salvage Co., supra, 396 U.S.

at 60. Instead, we have a combination with one element,

the seal, which is distinctly novel but which is ‘‘capable

of serving no useful function alone.” Rosen v. Lawson-

Hemphill, Inc. 549 F.2d 205, 209 n.2 (1st Cir. 1976). As a

matter of utility, the novelty lies in the very combination

of valve, ball and sealing ring.

9 Incidentally, if we were to affirm the District Court, appellant pre-

sumably would be estopped from suing any other infringer under

Blonder-Tongue Laboratories v. University Foundation, 402 U.S, 313

(1971), even though there would then be one decision in favor of the

validity of the patent and one decision against—a tie score. See Blum-

craft of Pittsburgh v. Kawneer Co., 482 F.2d 542 (5th Cir. 1973).

We need not confront this anomaly at this time, however, since we

are constrained to reverse the summary judgment.

a 4 « 3

——

A 14

If we were to apply the premise of the District Court,

its reasoning would be unassailable. We think, however,

that the District Court adopted an unduly restrictive test

for the patentability of a combination of this type. Start-

ing with what we think to be the proper standard, we find

the disclosures of claims 7 and 8 to be well within the zone

of patentability."° We therefore reverse the summary judg-

ment and remand for trial or other disposition.

The overclaiming defense advanced by the appellee rests

almost exclusively on a purported analogy between appel-

lant’s patent and the patent invalidated by the Supreme

Court in Lincoln Engineering Co. v. Stewart-Warner Corp.,

supra. That case involved a suit for contributory infringe-

ment against a supplier of an old element which was in-

cluded in the claim of the alleged combination patent. The

patent claimed a combination of a grease gun, hose, coupler

and fitting of the type commonly used for packing wheel

bearings. All the elements, as well as their use in combina-

tion, were known to the art. The only novelty stemmed

from improvements in the “chuck” or coupler that utilized

fluid pressure to “cock” the jaws of the coupler after each

operation. The basic structure of even the “chuck” re-

mained conventional, however. The Supreme Court held

that the minor improvement in the coupler did not justify

a claim embracing the entire mechanism. “[T]he improve-

ment of any one part of an old combination gives no right +

to claim that improvement in combination with other old

parts which perform no new function in the combination.”

303 U.S. at 459 (emphasis added).

10 35 U.S.C. $101 provides in part:

Whoever invents or discovers ... any new or useful improve-

ment [of “process, machine manufacture or composition of matter’’]

may obtain a patent therefor... .

Sere

——— ———

A 15

Concededly, there is a surface analogy between Lincoln

Engineering and the present case. As the Judge recog-

nized, the basic combination of the ball, valve, and seal is

well-known. And it is true also that the appellant’s patent

does claim the entire combination on the basis of its de-

velopment of only an improved sealing ring. But these

surface similarities do not, in our opinion, warrant a rigid

application of Lincoln Engineering’s “new function” test.

Analogy between that case and this one breaks down be-

cause here, instead of a minor improvement, we have a

major innovation in the ball valve art, and particularly

because there is no utility in the innovation except as part

of the combination.

The Court in Lincoln Engineering did not elaborate on

its definition of a “new function”. Nor do we read the

phrase as a formula, susceptible of categorical application.

In Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., supra, 340 U.S. at 150, the Court noted that it

“has never ventured to give a precise and comprehensive

definition of the test to be applied” to combination patents.

One must probe beyond any single case, and regard each

case in the light of the particular claims of patentability.

Lincoln Engineering in particular must be read together

with the Court’s treatment of the same issue in Williams

Co. v. United Shoe Machinery Corp., 316 U.S. 364 (1942).

In an opinion for the Court, Justice Roberts, who had also

written Lincoln Engineering, upheld combination patents

for improvements in heel lasting machines. The improve-

ments enabled automatic “wiping” and “tacking” functions,

which had been disclosed by prior patents, to be performed

by the same machine for shoes in a wide range of sizes.

The Court affirmed the determination of the courts below

“that each combination exhibits invention in that its ele-

ments codperate in a new and useful way to accomplish

A 16

an improved result” (emphasis added). Jd. at 368. Justice

Roberts distinguished Lincoln Engineering on two grounds.

First, it had involved a suit against an alleged contribu-

tory infringer who had merely supplied one of the con-

ventional, unimproved elements. Id. at 370. Second, the

patent in Lincoln Engineering had claimed an entire de-

vice, while in Williams “[t]he present suit for infringe-

ment is not for the use of an automatic bed lasting machine

as such,” id.; instead “each of the claims is confined to a

combination of specified means applicable only to a re-

stricted portion and function of the whole machine,” id.

at 368. Williams holds that, where an invention achieves

a marked improvement in the art, the test for patent-

ability permits consideration of the improved results as

a factor. The invention was patentable, even though the

combination of elements did not involve a different opera-

tion or cause the machine to serve a different purpose. The

lasting machine still wiped and tacked as before. But the

patented combination did achieve a new result—use of the

same machine for a wide variety of shoe sizes. It thereby

significantly enhanced the usefulness of the automatic heel

lasting device, and solved an important problem for the

shoe manufacturing industry. All the elements claimed in

the patent cooperated to accomplish the result. Hence, the

combination was patentable.

Authority in this and other circuits lends strong support

to that interpretation as the prevailing standard. In Guide

v. Desperak, 249 F.2d 145 (2d Cir. 1957), this court held

that a combination claim may be patentable if it discloses

a “new and useful result.” Jd. at 147. See also Parks v.

Booth, 102 U.S. 96, 102 (1880). Guide involved a device for

spirally stitching preformed hemispherical cups for bras-

sieres. The claimed combination contained a single new

element, a U-shaped workholder. The patent was ultimately

¢q

cau

A 1%

rejected on grounds of obviousness, but the court found

no defect in the inclusion of conventional elements in the

patent claim, because the combination achieved the useful

result of allowing the cups to be preformed prior to stitch-

ing.

To the same effect are the decisions of the First Circuit

in Rosen v Lawson-Hemphill, Inc., supra, and of the

Seventh Circuit in Reese v. Elkhart Welding & Boiler

Works, Inc., 447 F.2d 517 (7th Cir. 1971). Rosen involved

a combination claim for a device designed to supply thread

at low and constant tension for pattern knitting mills, in

answer to a problem that had long plagued the industry.

A defense of overclaiming was raised by the defendant in

an infringement action, on the ground that the patent

claimed an entire yarn storing device, whereas the single

novel element was a tension retarding ring. Chief Judge

Pettine rejected the defense, because the ring “has no

utility standing alone” and “as part of the combination

. It cooperates in such a way ... as to improve the

operation of the combination, thus producing a new and

unusually beneficial result which was not previously ob-

tained nor was it obvious.” 399 F. Supp. 532, 538-39

(D.R.I. 1975). Although old elements were employed,

there was a “marked improvement over prior art” suffi-

cient to warrant patentability. 7d. The Court of Appeals

summarily affirmed Judge Pettine’s analysis. 549 F.2d at

208-09 & n.2.™

The Reese case involved a patent for improvements in

auto-trailer hitches. The court stated as the applicable rule

11 There is no evidence in Rosen, as appellant suggests, that the court

relied on a Jepson-type of claiming, Ez parte Jepson, 1917 C.D. 62,

248 O.G. 526, where the conventional elements are set forth in the

preamble and the novel element is set forth in the body of the claim.

See Application of Simmons, 312 F.2d 821, 50 C.C.P.A. 990 (1963).

A 18

of law “that a novel combination of elements, whether all

new, or all old, or partly old, which so cooperate as to pro-

duce a new and useful result or substantial increase in

efficiency is patentable.” Reese v. Elkhart Welding &

Boiler Works, Inc., supra, 447 F.2d at 523. The court

found a new result in the hitch’s increased resistance to

sway during hauling, which solved a major problem en-

countered by hitches in the prior art. See also Pursche v.

Atlas Scraper and Enginecring Co., 300 F.2d 467 (9th Cir.

1962) (more efficient plow).

These cases point the way. A combination claim con-

taining elements old in the art may be patented, not only

when it discloses a “new function” within the meaning of

Lincoln Engineering, supra, but also when, by cooperation

of the elements claimed, it discloses a new result that rep-

resents a marked improvement over prior art.”

The District Court thought that Holstensson v. V-M

Corp., supra, looked the other way and supported its con-

clusion that the plaintiff had overclaimed.’"* We do not

agree. Holstensson involved a patent that claimed both a

phonograph spindle and a cycling device, which in combi-

nation permitted several records to be played automati-

cally in series. The cycling element was entirely old in the

art, having been disclosed by a prior patent of the same

inventors.'* The spindle mechanism, though preceded by

prior art spindles accomplishing similar functions, em-

12 The rule stated in text also draws support from scholarly authority.

See 1 Robinson on Patents, §§ 154, 155, 156.

13 The District Court also relied on Trico Prods. Corp. v. Roberk Co.,

490 F.2d 1280 (2d Cir. 1973), cert. denied, 417 U.8. 933 (1974), a

ease also decided at the district level by Judge Blumenfeld. We note,

however, that the decision was affirmed on appeal only on the ground

of obviousness. Jd. at 1281.

14 Moreover, unlike the present case, the conventional character of the

cycling element was not identified by the specifications. Jd. at 113.

A 19

bodied improvements in design that permitted activation

by a lever placed beneath the phonograph turntable. Al-

though the patent specifications indicated that the inven-

tion was addressed to the problem of playing records of

various sizes in series, and several other patent claims

were directed to this purpose, the court held that the single

claim in issue did not disclose such a function, and it spe-

cifically excluded arguments based on that function in as-

sessing the validity of the combination claim. Id., 325 F.2d

at 113, 121. The only novelty thus consisted in improve-

ments in the operation of the spindle itself. The court held

that to be patentable as part of the combination, the old

elements must “contribute something more than mere

presence, to the functioning, the utility and the novelty

claimed to provide the patentability for the total combina-

tion.” 7d. at 120. By this standard, the patent was invalid,

because the invention “resided only in the spindle device”

and the cycling mechanism “contributed no more to the

operation of the claimed combination than the electric

motor which provided the power for rotating the turn-

table.” Jd.

In our view, the decisive factor in Holstensson is the

court’s initial premise concerning the disclosure of the

claim. Once the novel function of playing various-sized

records was excluded for purposes of testing the validity

of the claim, it was clear that the elements in the combina-

tion did not cooperate to produce the only new result, the

improved operation of the spindle. The spindle could per-

form its operation alone, whether the cycling mechanism

was present or not. In the court’s view, the cycling mech-

anism added nothing more than presence to the achieve-

ment of the intended result.

Moreover, we think that the addition of the elements of

ball and valve to the novel sealing ring narrowed rather

A 20

than broadened the claims. The aphorism that “in a

patent claim, more means less” is true here. Jamesbury is

not attempting to prevent others from using any ball valve

but is attempting to prevent others from using only a ball

valve with a sealing ring like theirs. See Williams Mfy.

Co. v. United Shoe Machinery Corp., supra, 316 U.S. at

370-71; see also International Latex Corp. v. Warner

Brothers Co., 276 F.2d 557, 562 (2d Cir.), cert. denied, 364

U.S. 816 (1960). A claim for direct infringement would

lie only against one who infringes a ball valve containing

the specified sealing ring. Guide v. Desperak, supra, 249

F.2d at 147.

Of course, that limitation might not apply to a cone

tory infringer, who manufactured a conventional valveor

ball which the direct infringer then combined with an in-

fringing sealing ring to make an entire infringing device.

If such a contributory infringer were to be held liable,

there would be an argument on policy that the claim was

unfairly overbroad. We are not dealing here with such

a contributory infringer, and older cases, including Lin-

coln Engineering, supra, in which contributory infringers

were suppliers of conventional elements, must be read

with that distinction in mind. When we juxtapose Wil-

liams, supra, a direct infringement case, with Lincoln

Engineering, one gets the impression that the nature of

the claimed infringement, though not the sole basis for

decision, substantially affected the result. We need not

go so far as the Patent and Trademark Office Board of

Appeals has gone in ruling that, since it is now a defense

to contributory infringement that a product is capable of

substantial non-infringing use, 35 U.S.C. § 271(c), statu-

tory amendments may have deprived Lincoln Engineering

of force on its own ground. Ez parte Barber, 187 U.8.P.Q.

(BNA) 244 (1974). We find it unnecessary to determine

A 21

whether we agree with the suggestion in that opinion that

Lincoln Engineering has been legislatively overruled, but

we do find that subsequent history militates against an

expansive application of the Court’s reasoning in Lincoln

Engineering.

Since we reject overclaiming as a self-evident defense,

we must reverse the summary judgment. We will not,

how: ver, order a grant of summary judgment in favor of

Jamesbury. The factual question remains whether the pat-

ent accomplishes a new result which is achieved by the

elements working in cooperation—the prevention of leak-

age caused by temperature variation, pressure variation or

valve wear. Appellant has submitted an affidavit of its

president dealing with the question. Appellee may have

some factual evidence in contradiction. While we remand

for trial. we are not ruling out a partial summary judg-

ment on validity in favor of appellant, if no question

emerges on the issues of novelty or obviousness. The in-

fringement question, if contested, is reserved for trial or

other disposition."

Reversed and remanded.

15 We note that the patent in suit has apparently expired, but the

issue of damages for past infringement remains, in any event. We

express no opinion on the proper measure of damages if the District

Court reaches the issuo.

100

RECORD PRESS, INC., 95 MORTON ST., NEW YORK, N. Y. 10014, (212) 243-5775

eB 35

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