Appendix — American Seating Co. v. National Seating Co.

Supreme Court brief1979

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Supreme Court, US

FILED

i; FEB 22 i979 |

ae RODAK, JR., CLERK

IN THE

SUPREME COURT OF THE

UNITED STATES ~

OCTOBER TERM. 1978

NO. vd 8 i | Za 0 4

AMERICAN SEATING COMPANY,

Petitioner,

NATIONAL SEATING COMPANY

Respondent.

APPENDIX

PRICE, HENEVELD, HUIZENGA & COOPER

Attorneys for Petitioner

By: Lloyd A. Heneveld

BUSINESS ADDRESS:

P. O. Box 2567

Grand Rapids, Michigan 49501

444 457 FEDERAL SUPPLEMENT

mentioned above—might have had a special

place in her heart or mind for Kodak. It is

difficult to know how defendant now imag-

ines there is merit in complaining about the

excused juror or the other attendant events.

See United States v. Houlihan, 332 F.2d 8,

13 (2d Cir.), cert. denied, 379 U.S. 828, 85

S.Ct. 56, 13 L.Ed.2d 37 (1964); United

States v. Pacente, 503 F.2d 543 (7th Cir.),

cert. denied, 419 U.S. 1048, 95 S.Ct. 623, 42

L.Ed.2d 642 (1974). See also United States

v. Rodriguez, 545 F.2d 829 (2d Cir. 1976),

cert. denied, 434 U.S. 819, 98 S.Ct. 58, 54

L.Ed.2d 74 (1977); United States v. Diggs,

173 U.S.App.D.C. 95, 522 F.2d 1310 (1975),

cert. denied, Floyd v. U. S., 429 U.S. 852, 97

S.Ct. 144, 50 L.Ed.2d 127 (1977); United

States v. Maxwell, 383 F.2d 437, 443 (2d Cir.

1967), cert. denied, 389 U.S. 1057, 88 S.Ct.

809, 19 L.Ed.2d 856 (1968); United States v.

Woodner, 317 F.2d 649 (2d Cir.), cert. de-

nied, 375 U.S. 903, 84 S.Ct. 192, 11 L.Ed.2d

144 (1963).

In these circumstances, with all deference

to distinguished counsel, it may be that this

bare assertion of fatal error at this time in

this civil case by this party is unlikely to be

remembered as an ornament in the judicial

process.

Defendant's motions are in all respect

denied.

It is so ordered.

AMERICAN SEATING COMPANY,

Plaintiff,

NATIONAL SEATING COMPANY,

Defendant.

Civ. A. No. C75-63A.

United States District Court,

N. D. Ohio, E. D.

Sept. 30, 1976.

Action was instituted on complaint for

alleged patent infringement and on coun-

terclaim for alleged noninfringement and

invalidity. The District Court, Contie, J.,

held that claims 1-6 of patent No. 3,729,226 +.

relating to a multiple passenger transit ve-

hicle chair comprised of a frame with an

aisle side and a wall side and a single pedes-

tal for support were invalid as anticipated

by prior art, as obvious to those skilled in

art at time of invention and, if based in

part or in whole upon inherent safety fac-

tors, as failing to particularly describe that

which is claimed therein.

Judgment for defendant.

Judgment affirmed, Cir., —— F.2d —.

1. Patents @328(2)

Claims 1-6 of patent No. 3,729,226 re-

lating to a multiple passenger transit vehi-

cle chair comprised of a frame with an aisle

side and a wall side and a single pedestal

for support was invalid as anticipated by

prior art, as obvious to those skilled in art

at time it was invalid, and as failing to

particularly describe that which was

claimed to be invented. 35 U.S.C.A. §§ 102,

103, 112.

2. Patents @=72(1)

Patent on product was subject to being

invalidated and anticipated by prior art

where it was equivalent to prior patented

product in that it performed substantially

same function in substantially same man-

ner. 35 U.S.C.A. § 102.

3. Patents #75, 80

Prior uses and sales of product that

were not experimental but were basically

designed to test commercial market and to

promote product were “public uses” and

were such as to invalidate patent on prod-

uct when anticipated by prior art. 35 U.S.

C.A. § 102.

4. Patenta 18

Prior art patents may be combined to

determine issue of obviousness. 35 U.S.

C.A. § 103.

00001

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 445

Cite as 457 F.Supp. 444 (1976)

5. Patents 18

In considering issue of obviousness,

scope and content of prior art are to be

determined, differences between prior art

and claims at issue are to be ascertained,

and level of ordinary skill in pertinent art

resolved. 35 U.S.C.A. § 103.

6. Patents 18

Patent on product was subject to being

invalidated for obviousness where product

was the funetional equivalent of prior pat-

ented product, did not function in any new

or different mode, and did not provide any

new or different result. 35 U.S.C.A. § 103.

7. Patents 18

Obviousness in view of prior art is es-

tablished where there is nothing in record

which indicates any new or unexpected co-

operative result in patent in issue and that

there is, therefore, no synergistic result pro-

duced by patent. 35 U.S.C.A. § 103.

8. Patents = 26(1'A)

A combination which simply rearranges

old elements with each performing same

function it has been known to perform is

not patentable. 35 U.S.C.A. § 103.

9. Patents 112.1

Where prior art cited and applied by

examiner during course of prosecution of

patent in suit was not best prior art, pre-

sumption of validity was weakened, as op-

posed to strengthened. 35 U.S.C.A. § 103.

10. Patents 118.5

Consideration of safety factors was in-

appropriate as a justification for patentabil-

ity of invention relating to a multiple pas-

senger transit vehicle chair in that asserted

inherent safety features of design necessar-

ily related to such elements as _ tensile

strength, gauge, size, shape, and type of

material used in upright column and foot,

elements as to which invention was silent.

35 U.S.C.A. § 112.

11. Patents 118.3

If safety considerations are asserted as

a basis for patentability of invention, there

must be sufficient description in patent to

substantiate said claims and to delineate for

future inventors that area which is claimed

to be within patent. 35 U.S.C.A. § 112.

12. Patents @ 118.3

Since patent on multiple passenger

transit vehicle chair was silent in regard to

any feature of energy absorption or safety

features, such considerations could not be

considered by court in determining patenta-

bility and, if patentee based patentability

on such features, patent was invalid as fail-

ing to particularly point out and distinctly

claim that which it alleged was subject

matter of patent. 35 U.S.C.A. § 112.

13. Patents @=314(2)

Issue of infringement of patented prod-

uct was moot in view of finding that patent

was invalid, but in the interest of judicial

economy, the court would consider the evi-

dence presented and make factual determi-

nations on the issue of infringement.

14. Patents @2%4

Plaintiff could not on the one hand

urge a narrow corstruction concerning the

validity of its patented product and on the

other hand a broad interpretation in assert-

ing infringement of its product by defend-

ant.

15. Patents #234

Consistent readings of the patent in

issue must be utilized by the court in deter-

mining both validity and infringement.

16. Patents @157(1), 162

A patentee can be his own lexicogra-

pher and, thus, can utilize his own terms

and define them for use in his patent as

long as he remains consistent with his posi-

tion.

17. Patents @165(3)

General and normal definition of term

“transit” as used by plaintiff in its patent

for a multiple passenger transit vehicle

chair would apply to both intercity and

intracity bus seating field and, therefore,

would include both stationary back and re-

cliner back seats in determining whether

patent was infringed by any other product.

Q0002

AMERICAN SEATING CO. v. NATIONAL SEATING CO.

Cite a3 457 F Supp. 444 (1976)

Patented April 24, 1973

447

446 / 457 FEDERAL SUPPLEMENT

3,729,226

18. Patents @236(2)

If patent for a multiple passenger tran-

sit vehicle chair was valid, there would in

fact be infringement by chairs manufac-

tured by defendant, but only for those

chairs on models in which pedestals were

placed at a center or intermediate position,

not for those models in which pedestals

were placed in an aisle position.

F. Rush McKnight, Calfee, Halter & Gris-

wold, Cleveland, Ohio, Lloyd A. Heneveld,

Grand Rapids, Mich., for plaintiff.

Charles B. Lyon, John W. Renner, Don-

nelly, Maky, Renner & Otto, Cleveland,

Ohio, for defendant.

MEMORANDUM OPINION AND ORDER

CONTIE, District Judge.

The above captioned cause of action came

on for trial before this Court from Febru-

today, although at one time if, made both

intra-city and inter-city type bus seats.

PENDING MOTIONS

There are presently pending before this

Court plaintiff's motion for payment of ex-

penses concerning the post trial deposition

of Mr. Barecki and defendant's motion to

strike portions of said deposition.

During trial it was brought out that de-

fendant had sent the wrong model seats to

plaintiff for certain tests to be performed

for trial. Upon learning of this, the Court

ordered defendant to supply the appropri-

ate seats, and further allowed plaintiff to

conduct tests and further depose Mr. Ba-

recki concerning those tests. Upon consid-

eration, the Court shall grant plaintiff's

motion for an award of expenses in the

amount of Three thousand, two hundred

ninety-seven dollars ($3,297.00) only. The

[yan fi

# ttves, ta

remainder of plaintiff's motion is denied.

ree ae

ary 13, 1976 through February 25, 1976.

The following shall constitute this Court's

findings of fact and conclusions of law,

pursuant to Rule 52(a) of the Federal Rules

of Civil Procedure.

THE PARTIES

Plaintiff American Seating Company

{hereinafter American) brings this action

asserting patent infringement of its United

States Letters Patent No. 3,729,226 (herein-

after '226) issued April 24, 1973, against

defendant National Seating Company

(hereinafter National). Defendant has an-

swered American's complaint, alleging non-

infringement and invalidity, and has coun-

terclaimed asserting the same defenses.

Plaintiff is a Delaware corporation, hav-

ing its principal place of business in Grand

THE '226 PATENT

The '226 Patent (see diagram, next page)

was designed by Mr. Barecki around April,

1970. Said patent contains six claims,

Claims 1 and 6 being independent, and

Claims 2 through 5 being dependent upon

Claim 1. Said claims disclose two side-by-

side seats, 11 and 12, which are both mount-

ed upon a beam 13. Said beam 13 is provid-

ed at one end with an angle iron 14 for

connecting the heam to a vehicle wall. The

beam 13 is supported at its center by a

pedestal which includes an upright column

15. The bottom of column 15 is provided

with a tubular foot 16, extending fore and

aft of the vehicle. The ends of the tubular

foot 16 are cut on a 45 degree bias as shown

at 17 to define access openings in the tubu-

Rapids, Michigan. Chester J. Barecki, the

inventor of the ‘226 Patent, is an employee

of American who has been involved in the

transportation field since the 1940's.

lar foot leading to the fastening bolts used

to secure foot 16 to the floor. The access

spores Guy We eee Wee OO CUCU SS Be

plates 20 which are releasably retained in 7 Ss

positions by a U-shaped spring plate 23, RAs

having lugs 21 received in apertures 22 in

the foot 16.

INVENTOR

Chester J. Borecki

Ady . a

20 SS KS NN

S20 FIG. 6

TIAN UN

WS By Daw, ares Siblon, Falloro

ath f Pian gees

Defendant National is a subsidiary of Na-

tional City Lines. National makes only re-

ATTORNEYS

cliner type inter-city passenger bus seats

00003 00004

It is the assertion of plaintiff that said

structure provides the advantages of better

clearance between seats, resulting in case

of cleaning the floor, increased leg room,

increased storage space, and provides ease

and safety in egress and ingress to the

passengers.

The specific claims in issue of the ‘226

Patent read as follows:

“Claim 1

“A multiple-passenger transit vehicle

chair comprising: a chair frame with an

aisle side and a wall side, said frame

supporting a plurality of passenger chairs

side-by-side, mounting means on said wall

side of said frame for securing said frame

to a vehicle wall; a single pedestal coop-

erating with said wall to support said

frame, said pedestal being spaced at an

intermediate location between said wall

side and said aisle side of said frame and

including an upright column rigidly con-

nected at its top to said frame; a hollow

tubular foot member integral with the

bottom of said column and extending for-

wardly and rearwardly therefrom, said

foot having a generally flat bottom plate

resting on the floor of said vehicle and

provided with a bolt hole adjacent each

end thereof to receive floor fastening

bolts securing said foot to the vehicle

floor at forward and rearward positions

relative to said column, said tubular foot

member further defining forward and

rear access apertures adjacent their asso-

ciated bolt holes to permit access to said

fastening bolts when they are received in

said bolt holes; said first and second clo-

sure means removably attached to said

foot to cover said access apertures of said

foot member respectively and cooperating

with said hollow foot member to enclose

said fastening bolts when said closures

are assembled to said foot while permit-

ting unrestricted tool access to said fas-

tening bolts when said closures are re-

moved.

“Claim 2

“The structure of Claim 1 whercin said

column of said pedestal is located at the

$448 457 FEDERAL SUPPLEMENT °

approximate longitudinal and transverse

ceuter of the scat portion of said frame

and wherein said mounting means com-

prises flange means attached to said

frame for securing the same to the vehi-

cle wall.

“Claim 3

“The structure of Claim 1 wherein said

tubular foot member has a rectilinear

cross section with open forward and rear

ends providing said access apertures, said

access apertures extending at an inclina-

tion relative to the horizontal from the

bottom plate of said foot member up-

wardly and towards said column member,

thereby permitting vertical as well as

side tool access.

“Claim 4 .

“The structure of Claim 1 wherein said

frame comprises a cross beam extending

longitudinally of said chair, and wherein

said mounting means comprises a rail

carried by said cross beam, said structure

further comprising a pair of seats mount-

ed upon said cross beam in side-by-side

relation.

“Claim 5

“The structure of Claim 3 wherein said

closure means comprise first and second

end plates covering respectively said

front and rear inclined access apertures

of said hollow rectilinear foot member.

“Claim 6

“A two-passenger transit vehicle chair

comprising: a chair frame with an aisle

side and wall side, first and second chairs

carried by said frame in side-by-side rela-

tion; mounting means securing the wall

side of said frame to an upright vehicle

wall; a single pedestal supporting said

frame and including an upright column

member connected to said frame at its

approximate longitudinal midpoint and

an integral hollow tubular foot member

extending fore and aft of said chair from

the bottom of said column member, said

wall mounting means and said pedestal

being the only support for said frame and

said chair, said foot having a generally

00005

he >

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 449

Cite as 457 F.Supp. 444 (1976)

rectilinear cross section and having~for-

ward and rear open ends defining for-

ward and rear access apertures, each of

said open ends being inclined from the

bottom of said foot upwardly and to

wards said column; first and second fas-

tening bolts attaching said foot member

to said floor of said vehicle at locations

adjacent respectively said forward and

rear access apertures, said bolts extend-

ing at least partially within said hollow

foot members; and first and second cover

members releasably attached to said hol-

low foot member to cover respectively

said forward and rear access apertures,

said access apertures extending from the

side of an associated fastening bolt over

and above the same to permit unrestrict-

ed tool access to a fastening bolt when

the associated cover is removed.”

PLAINTIFF'S AND DEFENDANT'S

ARGUMENTS

Plaintiff asserts that its patent is valid

and defendant's seat models 1059, 1060, the

“Old 1070", and the “New 1070" ' infringe

the paicnt in suit. Plaintiff asserts that

Models 1059 and 1060 were sold in 1973 and

directly infringe upon the patent in suit as

well as both the New and Old Model 1070

developed generally in 1973 and sold in 1974

and 1975, which also read directly upon the

patent in issue.

Plaintiff further alleges that the Nation-

al models mentioned above are essentially

copies of the '226 Patent and further claims

that National's seat design and develop-

ment were copied from American's patent-

ed product.

Defendant asserts that plaintiff's patent

is invalid pursuant to Title 35 U.S.C. § 102

as it was anticipated by the prior art and

was obvious pursuant to Title 35 USC.

§ 103 to one skilled in the art at the time

1, Defendant's “Old 1070" Includes a foot with a

45 degree angle cut at its ends defining an

access aperture to a boit hole for a bolt fasten-

er. The “New 1070" includes a foot with a

straight cut end and a welded flange attached

the invention was assertedly made. Final-

ly, defendant argues that plaintiff should

be estopped from asserting infringement

against defendant because of plaintiff's

ecnduct before the Patent Examiner in fail-

ing to point out the best prior art available.

Further, defendant National asserts that

the development of its seat models and foot

designs were independent of any develop-

ment or patent of plaintiff.

VALIDITY -

{1} Upon consideration and as will be

discussed below, it is the determination of

this Court that the patent in suit, United

States Letters Patent No. 3,729,226, is in-

valid as it was anticipated by prior art, was

obvious to those skilled in the art at the

time it was invented, and further as it fails

to particularly describe that which is

claimed to be invented.

The Court turns first to the issue of va-

lidity of the ‘226 Patent under Title 35

U.S.C. § 102. Title 35 U.S.C. § 102 reads, in

pertinent part, as follows:

“A person shall be entitled to a patent

unless—

“(a) the invention was known or used by

others in this country, or patented or

described in a printed publication in this

or a foreign country, before the invention

thereof by the applicant for patent, or

“(b) the invention was patented or de-

+ scribed in a printed publication in this or

a foreign country or in public use or on

sale in this country, more than one year

prior to the date of the application for

patent in the United States..."

This section of the Patent Law has been

generally referred to as anticipation. As

stated hy the Sixth Circuit in the case of

thereto. Since the 1070 model thus encom.

passes two different foot designs, which this

Court finds to be of possible consequence to a

finding of infringement (see discussion below),

they shal! be dealt with separately.

00006

450 © + ja tend 457 FEDERAL SUPPLEMENT

S:Allied Wheel Products v. Rude, 206 F.2d

; 752, 760 (6th Cir. 1953):

“In order to anticipate an invention, it is

necessary that all the elements of the

invention or their equivalents be found in

one single description or structure, where

they do substantially the same work in

substantially the same way.”

Plaintiff asserts that none of the prior

art cited to the examiner nor any of that

presented by defendant at trial illustrates

all of the elements of the invention in one

single description.

As stated by plaintiff in its brief:

+ “The elements of the Barecki patented

chair cannot be found in any one alleged

prior art reference cited by National.

_ Not one of the alleged references includ-

ing the Greyhound Tour Coach seat, the

American rounded base pedestal seat, Na-

tional’s 1025-31 seat, National's 1039,

1040 seat, Heywood Wakefield's pedestal,

Mitchell's table, Howell's sequence seat-

ing, the S. Karpen seat, and the remain-

ing others of the 46 alleged references

discloses the combination of (1) a frame

supporting a plurality of chairs side-by-

side; (2) a mounting means for securing

the wall side to a vehicle wall; and (3) a

special single pedestal specifically defined

in the claims as including an upright col-

umn, and a hollow tubular foot member

integral with a column. Further, none of

such alleged references show such a com-

bination with the hollow tubular foot

member extending forwardly and rear-

wardly from the column and having a

. flat bottom plate with bolt holes at the

ends securing the foot to the vehicle floor

at the forward and rearward positions,

said foot also having access apertures ad-

jacent the bolt holes to permit access to

‘

the bolts, and said foot having closure

means removably attached to the foot to

cover the access apertures of the foot

member and cooperating with the foot

members to enclose the fastening bolts

when the closures are assembied to the

foot while permitting unrestricted tool

access to the fastening bolts when the

closures are removed.” Plaintiff's Post

Trial Brief filed May 3, 1976, pages 87 to

88.

However, defendant asserts that there

are several seats which have been designed,

manufactured and sold which anticipate

the '226 Patent. The first such seat is

known as the Greyhound Tour Coach Seat,

(see diagram next page) manufactured, de-

signed and sold by National to Greyhound.

Said Tour Coach seat includes side-by-side

recliner seats 11 and 12 supported on frame

beam 13, having aisle side 13-A and wall

side 13-B and mounting means 14 provided

to secure the wall side of the frame to the

. vehicle wall. Frame 13 is also supported by

a pedestal P, including a column 15 and a

foot 16. Such foot 16 includes a circular

bottom plate 16-A welded to the bottom of

the upright column and four spaced gussets

16--B interconnecting the column 15 and the

bottom plate 16-A. The bottom plate 16-A

has four equally circumferentially spaced

countersunk mounting holes 19-A therein

to receive fasteners to secure the same to

the vehicle floor. The foot 16 is selectively

covered by a two-piece shroud 20, 20-A, .

joined by screws 21, such shroud acting to

conceal the four spaced fasteners. The

above described pedestal P can be posi-

tioned at the center of the seat frame for

some seats or in an intermediate position

between the center of the frame and the

aisle side for other seats.

Q000'7

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 451

_ Cite as 457 F.Supp. 444 (1976)

NATIONAL CENTER PEDESTAL

TOUR COACH SEAT (1955-6)

168

16A

DETAIL OF NATIONAL’S PEDESTAL

FOR TOUR COACH SEAT

The Tour Coach seat was developed by

National in 1955 and 1956, and was sold to

ireyhound. The Court specifically finds

that said seat was not experimental in na-

ture and was, in fact, sold through regular

means by defendant to Greyhound for use

on a transit vehicle. Further, this Court

specifically finds that the Tour Coach cen-

ter pedestal seat includes all of the advan-

tages asserted by plaintiff in its patent,

including aesthetic considerations, case in

cleaning, increased leg and storage room,

increased case in maintenance, and_ in-

creased ease for passenger ingress and

egress.

{2} This Court does not agree with

plaintiff's analysis of the prior art. As

stated above, the Greyhound Tour Coach

seat provides for a frame supporting a plu-

rality of chairs side-by-side and a mounting

means for securing the wall-side to a vehi-

cle wall. Further, said seat provides for a

single pedestal, including an upright col-

umn. It thus appears that plaintiff's argu-

ment regarding the lack of anticipation is

based upon its contention that the tubular

foot of the '226 Patent is distinguishable

from the round base foot of the Greyhound

Tour Coach seat. It is the determination of

00008

L a

452 457 FEDERAL SUPPLEMENT

this Court that said assertion is untenable

and an insufficient basis upon which to

distinguish the prior art. The tubular foot

of the '226 Patent and the round based

pedestal of the Greyhound Tour Coach seat

are found to be equivalents of one another

as they perform substantially the same

. P ing ;

RRA cr. tee ial

‘ AMERICAN ROUND BASE

CENTER PEDESTAL SEAT (19S)

. '

Such seat includes two side-by-side tran-

sit seats 11 and 12 mounted on a tubular

beam 13, having an aisle-side 13-A and a

wall-side 13-B. Such wall-side of the

frame is provided with a flange means 14 to

secure the frame to the vehicle wall. The

center pedestal P is provided to support

frame 13 in conjunction with the wall

mount, such pedestal including an upright

cylindrical tubular column 15 and a cast

foot 16 extending fore and aft of such

column. Such foot 16 includes a plurality

of counter-sunk holes 19-A adapted to re-

ceive floor fasteners 19 to secure the pedes-

tal to the floor. The cast foot was selec-

tively covered by a two-piece stainless steel

shroud 20, 20-A interconnected by screws

23, such shroud acting to conceal the fasten-

.ers, ° -f

-! The only difference between American's

round based center pedestal seat and the

seat disclosed in the '226 Patent consists of

the use of a round based foot instead of a

«tubular foot. , Otherwise the 1969 round

_ based pedestal scat is identical to the seat

disclosed in the 1971 patent application, as

“was admitted iby Mr. Barecki during his

jtestimony. ° |

4y°°

function in substantially the same manner.

Tee-Pak v. St. Regis Paper Co., 491 F.2d

1193 (6th Cir. 1974).

Further, this Court finds that American's

1969 round based center pedestal seat with

concealed fasteners anticipates the '226 Pat-

ent in suit. (See diagram below.)

20 20A

vin Cn - Saal

' ( Yr

1G VM 173 X19

DETAIL OF AMERICAN RCUND

BASE PEDESTAL AND COVER

It is the determination of this Court that

said center pedestal scat offers all of the

advantages asserted by plaintiff to be in

its '226 Patent, i. e. ease in egress and

ingress, ease in cleaning, and better storage

and foot space. Further, it is the determi-

nation of this Court that the evidence and

testimony establishes that American's

round hased center pedestal seat was sold to

Gencral Motors in October of 1969 as evi-

denced by Defendant's Exhibit EJ and an-

other sale of such seats was made to Gener-

al Motors in May and June of 1970, as

evidenced by Defendant's Exhibit EO. It is

the conclusion of this Court that said seats

were sent to General Motors for installation

in a bus for actual demonstration purposes

to the public, and that such seats were

billed and paid for and were not provided

for testing purposes, nor were they provid-

ed under any secrecy agreement. As was

stated by the Sixth Circuit in the case of

Minnesota Mining & Manufacturing Co. v.

Kent Industries, Inc., 409 F.2d 99, 100 (6th

Cir. 1969):

“It is settled law that a single public use

[citation omitted], or only a placing on

‘

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 453

Cite as 457 F.Supp. 444 (1976)

sale [citation omitted] is sufficient to in-

validate a patent under 35 U.S.C.

§ 102(b).”

{3} This Court is convinced that the pri-

or public uses and sales by American to

General Motors were not experimental but

were basically designed to test the commer-

cial market and to promote American's

product. See Cataphote Corp. v. DeSoto

Chemical Coatings, Inc., 235 | Supp. 936

(N.D.Cal.1964), aff'd, 356 F.2d 24 and 358

F.2d 732 (9th Cir. 1966), cert. den., 385 U.S.

832, 87 S.Ct. 71, 17 L.Ed.2d 67 (1966). See

also Smith et al. v. Sprague, 123 U.S. 249, 8

S.Ct. 122, 31 L.Ed. 141 (1887); Solo Cup Co.

v. Paper Machinery Corp., 240 F.Supp. 126

(E.D.Wis.1965), reversed in part on other

grounds, 359 F.2d 754 (7th Cir. 1966); Dun-

lop Co. Ltd. v. Kelsey-Hayes Co., 484 F.2d

407 (6th Cir. 1973).

As plaintiff has failed to illustrate any

functional difference between the round

based foot and that claimed in the '226

Patent, and as this Court is unable to find

any, this Court finds that said feet are

equivalents. It is, therefore, the determi-

nation of the Court that the American 1969

Round Base Pedestal seat anticipates

the '226 Patent.

Therefore, this Court finds that both the

Greyhound Tour Coach seat and the Ameri-

can 1969 Round Base Pedestal seat antici-

pate the '226 Patent in suit.

The Court next turns to the issue of

obviousness under Title 35 U.S.C. § 103.

Assuming, arguendo, that plaintiff's patent

was not anticipated, it is the determination

of this Court that said patent is invalid as it

would have been obvious to one skilled in

the art at the time the invention was made

under Title 35 U.S.C. § 103. Said section

provides:

“A patent may not be obtained though

the invention is not identically disclosed

or described as set forth in section 102 of

this title, if the differences between the

subject matter sought to he patented and

the prior art are such that the subject

matter as a whole would have been obvi-

ous at the time the invention was made

to a person having ordinary skill ih the

art to which said subject matter pertains.

Patentability shall not be negatived by

the manner in which the invention was

made.”

[4] Prior art patents may be combifed

pursuant to this section to determine the

issue of obviousness.

“It is well settled that claims may be

properly rejected on a combination of

several patents taking specific features

from each. It is not necessary that a

complete disclosure be contained in a sin-

gle reference.” Application of Bisley, 197

F.2d 355, 362, 39 CCPA 982 (1952)

Further:

“All clements of the prior art have a

bearing upon the question of invention;

it being unnecessary to a finding of lack

of invention that every element be found

in one embodiment.” Ohmer Fare Regis-

ter Co. v. Ohmer et al., 238 F. 182, 187

(6th Cir. 1916)

The Court must first note that plaintiff's

patent is addressed to a combination of old

elements. There is no question that placing

two chairs side-by-side on a frame attached

to a beam supported by some means was

known in the prior art. There is no ques-

tion that+it was known in the art that

transit vehicle seats could be supported by

attaching one side to the wall while provid-

ing a support for the remainder of the

seating arrangement. Further, there is no

question that seat manufacturers skilled in

the art at the time that the invention was

claimed to have been made were aware ofa

single pedestal seat Supports for seating.

Specifically, Mr. Barecki had worked on

the BART (Bay Area Rapid Transit) project

which used cantilevered and semi-cantile-

vered seats. The Steinbeck Patent 1,096,-

518, the Del Giudici Patent 3,480,240, the

Krehbiel Patent 474,666, and the Kohler

Patent 1,281,793, all prior art patents, pro-

vide for center of intermediate pedestal

seats. Further, inverted T Pedestals were

known in the seating art previous to the

date of the invention. See the Blink Patent

198,218 and Howell sequence seating chairs.

The Hozeski and Barecki Patent 3,567,281

C0009 00010

a: ae 5 = nee:

454 457 FEDERAL SUPPLEMENT

disclosed an inverted T-type pedestal which

illustrates advantages concerning mainte-

nance reduction and concealed fasteners to

avoid dirt collection. The Greyhound Tour

Coach seat, the BART seats, National's 1040

leg, the plugs used in the Heywood Wake-

field Plane Mate seat, and the stainless

steel cover used by American on its round

base center pedestal seat all illustrate the

use of selectively covered floor fasteners.

It is the determination of this Court that

the prior art shows the entire combination

as reflected in the '226 Patent. All of the

elements of the patent were old. Further,

the elements used by Mr. Barecki in

the '226 Patent were all present in the art

directly related to transportation seating

field or to furniture products field in Amer-

ican Seating’s line.

As noted above, the only significant dif-

ference between the '226 Patent and the

prior art is the structure of the support

column and the foot of said patent. It is

the opinion of this Court that the design of

plaintiff's column and foot on the '226 Pat-

ent is obvious in light of the Heywood

Wakefield inverted T Plane Mate pedestal

(see diagram below). The Wakefield pedes-

tal includes a tubular type upright to sup-

port chairs or seats and a channel shaped

foot extending fore and aft therefrom.

Such foot is provided with base plates at

each end thereof, such base plates being

provided with holes to receive floor fasten-

ers.

BARECIKKI

PATENT

HEYWOOD \VAKEFIFLO

IWVERTED T PLAIIE

MATE PELESTAL (1939)

Access is provided to such floor fasteners by

the foot defining fore and aft inclined aper-

tures which are selectively covered by caps

held in place by spring fingers.

The evidence illustrates that this pedestal

was used in a Plane Mate Mobile Lounge in

November of 1969, and that such pedestal

and the lounge in which they were used

were publicly demonstrated in Port Wash-

ington, Pennsylvania. It further appears

from the evidence received that Heywood

Wakefield was selling these pedestals for

large production runs as of August, 1969.

{5] The test as to obviousness has been

set forth by the Supreme Court in the lead-

ing case of Graham v. John Deere Compa-

ny, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545

(1966). Therein the Court stated:

“Under § 103, the scope and content of

the prior art are to be determined; dif-

ferences between the prior art and the

claims at issue are to be ascertained; and

the level of ordinary skill in the pertinent

art resolved. Against this background,

the obviousness or nonobviousness of the

subject matter is determined. Graham v.

00011

AMERICAN SEATING CO. v. NATIONAL SEATING CO, 455

Clte as 457 F.Supp. 444 (1976)

John Deere Company, 383 U.S. 1, 17, 86

SCt. 684, 694, 15 L.Ed 2d 545 (1966)

Pursuant to the test established by the

Supreme Court in the John Deere case, this

Court finds that as a matter of fact the

research and development personnel of both-

National and American are indicative of the

level of ordinary skill in the art of transit

seating. Mr. Barecki, Mr. Edwards and Mr.

Owens have all been involved in the trans-

portation seating industry since the late

1940's. Further, it appears from the record

that Mr. Barecki, Mr. Hogan and Mr. Hoze-

ski have had extensive experience in the

field of furniture products including theater

and sequence seating. It is the determina-

tion of this Court that the experience in the

general seating and furniture fields can

easily be applied from one area to another.

This Court is of the determination that

plaintiff's patent would have been obvious

to those skilled in the art at the time the

invention is claimed to have been made.

The Court bases this determination upon

consideration of the American round base

pedestal, National Tour Coach seat, the Ho-

well sequence seating seats, the Heywood

Wakefield inverted T Plane Mate Pedestal,

as well as the other prior art patents men-

tioned above.

The Court finds that said seats and prior

art patents clearly show all of the elements

claimed by plaintiff in its '226 Patent. As

stated above, the seating structure itself

was not new and would have been obvious

to anyone skilled in the art of transit seat-

ing or seating in general. The seat support

claimed in the '226 Patent is extremely

basic and was identical to that in the Amer-

ican Round Base Pedestal seat offered for

sale in 1969. The pedestal, as mentioned

above, is the only part of the claimed patent

that in any way adds or is claimed to have

added any new element to the seating

structure. Even a cursory glance at the

Heywood Wakefield inverted T Plane Mate

Pedestal, used in 1969, indicates an almost

identical structure as that claimed by plain-

tiff in its patent. Plaintiff asserts that the

Heywood Wakefield inverted pedestal pro-

vides for a channel at the bottom of the

foot as opposed to a hollow tubular foot.

The Court finds this distinction to be with-

out merit, as the same function and use

results from the Heywood Wakefield in-

verted T Plane Mate Pedestal as does that

in the plaintiff's invention in the '226 Pat-

ent.

{6] Plaintiff contends that the pedestal

of the patent in suit is distinguishable from

the round base pedestal of the Tour Coach

seat, as well as all other round base pedes-

tals, and is unique in its function and ad-

vantages from round base pedestals. The

Court cannot agree with this conclusion.

This Court finds that the round based foot

and the foot of the '226 Patent in suit are

the functional equivalents of one another,

and that the '226 foot does not function in

any new or different mode, nor does it

provide any new or different result.

Ag stated by the Sixth Circuit, in the case

of Philips Industries, Inc. v. State Stove and

Manufacturing Company, 522 F.2d 1137,

1141 (6th Cir. 1975):

“Given that the individual claim elements

are old and disclosed in the prior art, if

this d.vice is to be patentable then there

must be that ‘impalpable something’,

Harvey v. Levine, 322 F.2d 481, 485 (6th

Cir. 1963), in the combination itself that

would render the invention unobvious.

The Supreme court decisions require that

patents for the combination of old ele-

ments receive special scrutiny ‘with a

care proportioned to the difficulty and

improbability of finding invention in an

assembly of old elements.’ Great Atlan-

tic & Pacific Tea Co. v. Supermarket

Equip. Corp., 340 U.S. 147, 152, 71 S.Ct.

127, 130, 95 L.Ed. 162 (1950). The con-

cept of ‘synergistic result,’ which is ‘when

the whole in some way exceeds the sum

of its parts,’ has evolved to determine

what constitutes the ‘key requirement,’ of

patentability. Anderson's-Black Rock v.

Pavement Salvage Co., Inc., 396 U.S. 57,

60-61, 90 S.Ct, 305, 24 L.Ed.2d 258 (1969);

Great Atlantic & Pacific Tea Co., supra,

340 U.S. at 152, 71 S.Ct. at 130.

“There is nothing in the record which

indicates . . . any new or unex-

C0012

Yt Ca

456, °°. ,°)¢\aMia 457 FEDERAL SUPPLEMENT

’ RM atgctns py

‘pected * cooperative’ result.

‘\'. However, both of these benefits function

* independently. Each element operates as

well separately as it docs in combination,

and as in Anderson's-Black Rock, supra,

' 396 U.S. at 60, 90 S.Ct. at 307, the combi-

nation ‘though perhaps a matter of great

convenience, did not produce a “new or

different function,” Lincoln Engineering

Co. v. Stewart-Warner Corp., 303 U.S.

545, 549, 58 S.Ct. 662, 664, 82 L.Ed. 1008

within the test of validity of combination

patents.’”

(7) Upon consideration of the prior art

cited to the Patent Office and the prior art

cited to this Court in the instant case, it is

the determination of this Court that there

is nothing in the record which indicates any

new or unexpected cooperative result in the

patent in issue, and that therefore there is

no synergistic result produced by the '226

Patent.

The Supreme Court has recently spoken

in this area in the case of Sakraida v. Ag

Pro Inc., 425 U.S. 273, 96 S.Ct. 1532, 47

L.Ed.2d 784 (1976). In that decision, the

Supreme Court stated:

“We cannot agree that the combination

of these old elements to produce an al-

rupt release of water directly on the barn

floor from storage tanks or pools can

properly be characterized as synergistic,

that is, ‘result{ing] in an effect greater

than the sum of the several effects taken

separately.’ Anderson’s-Black Rock v.

Pavement Co., 396 U.S. 57, 61, 90 S.Ct.

305, 308, 24 L.Ed.2d 258, 261 (1969).

Rather, this patent simply arranges old

elements with each performing the same

function it had been known to perform,

although perhaps producing a more strik-

ing result than in previous combinations.

Such combinations are not patentable un-

der standards appropriate for a combina-

tion patent. A & P Tea Co. v. Supermar-

ket, etc. Co, supra; Anderson's-Black

Rock v, Pavement Co., supra.” Sakraida,

supra, 425 U.S. at 282, 96 S.Ct. at 1537.

[8] So, toc, the '226 Patent simply rear-

ranges old elements with each performing

the same function it had been known to

perform. Such a combination is not patent-

able.

{9} It is further the opinion of this

Court that the prior art cited and applied

by the examiner during the course of the

prosecution of the patent in suit was not

the best prior art available. Said prior art

did not include any showing of the overall

combination claimed, a center pedestal for a

two passenger transportation seats or con-

cealed fasteners for such pedestals. It is

thus the determination of this Court that

since the examiner was not aware of the

best prior art, the presumption of validity is

weakened, as opposed to strengthened. See

Holstensson v. V-M Corporation, 325 F.2d

109 (6th Cir. 1963); Westinghouse Electric

Corporation v. Titanium Metals Corporation

of America, 454 F.2d 515 (9th Cir. 1971),

_cert. den., 407 U.S. 911, 92 S.Ct. 2439, 32

I..Ed.2d 685 (1972).

(10) Plaintiff attempts to argue that

the pedestal and foot in the patent in suit

provide improved energy absorption charac-

teristics and are more crash-worthy than

any such pedestals or feet in the prior art.

A great deal of testimony and evidence was

received in regards to the safety factors

asserted by plaintiff to be inhere=t in

the '226 Patent. However, it is the deter-

mination of this Court that consideration of

the safety factors is inappropriate as a jus-

tification for patentability of the '226 Pat-

ent.

The asserted inherent safety features of

the seat design of the '226 Patent relate to

the upright column and foot design and

would necessarily relate to the tensile

strength, gauge, size, shape, and type of

material used in said upright column and

foot. The patent in issue is silent as to any

such references. In the Sixth Circuit case

of Cole v. Sears, Roebuck & Co., 520 F.2d

673 (6th Cir. 1975), the court therein, in

dealing with an argument that the plain-

tiff's patent therein, Claims 7, 8, and 9,

represented a novel and patentable system

of placing certain slots for air induction,

stated:

00013

AMERICAN SEATING CO. vy. NATIONAL SEATING CO. 457

Cite as 457 F.Supp. 444 (1976)

“If on the other hand, as plaintiff-appel-

lant Cole contends, the air induction sys-

tem through the ‘slots’ about the drip

pan, depends for its effectiveness on the

number, size and location of said slots,

such features must be «’sclosed both as

limitations upon the patent and as a

means of teaching its art. 35 U.S.C.

§ 112 (1970). Finding no such specifics in

the broadly stated elements, we hold, as

we did in Kaiser Industries Corp. v.

McLouth Steel Corp., 400 F.2d 36 (6th

Cir. 1968), cert. denied, 393 U.S. 1119, 89

S.Ct. 992, 22 L.Ed.2d 124 (1969), and Phil-

ips Industries, Inc. v. State Stove and

Mfg. Inc., 522 F.2d 1137, at 1140-1141

“(6th Cir. 1975) that the patent is invalid

for lack of particularity in the claims as

required by 35 U.S.C. § 112 (1970):

“'The patent law aves not require a

prospective inventor to search so far in

attempting to determine the scope of a

patent and the areas left open for in-

ventive inquiry. Section 112 provides

that it is the claims that shall particu-

larly point out and distinctly {emphasis

in original) claim the subject matter of

the patentee’s invention. Certainly,

terms used in the claims can gain

meaning from the specifications or

from the knowledge attributable to one

‘skilled in the art. But a prospective

inventor is required to go no further in

attempting to determine the invention

claimed and the areas foreclosed to fu-

ture enterprise i

“In our view of this case, the Appel-

lants ask this Court to ignore the preci-

sion of definition sialbid of them hy

the statute. As the Supreme Court

noted in Union Carbon vy. Binney &

Smith Co., 317 U.S. 228, 63 S.Ct. 165,

87 L.Ed. 232 (1942), to allow claims “so

indefinite ay not to give the notice re-

quired by the statute would be in direct

contravention of the public interest

which Congress . |, recognized

and sought to protect.” In that case

where the distinction from the prior art

was a matter of degree. The Court

rejected terms, such as, “substantially

pure,” “commercially uniform,” and

“comparatively small,” that gave no

standard for comparison or were so in-

definite as to have no established

meaning to one skilled in the art. Kai-

ser Industries Corp. v. McLouth Steel

Corp., supra [490 F.2d) at 50-51.'"

Cole, supra, at 675.

{11} It is the determination of this

Court that, as in Cole, supra, if plaintiff is

to assert safety considerations as a basis for

patentability, there must be sufficient de-

scription in the patent to substantiate said

claims and to delineate for future inventors

that area which is claimed to be within the

patent. The Court has reviewed the patent

in issue and has found that it is totally

silent as to any considerations of safety or

advantages in regards thereto.

Title 35 U.S.C. § 112 states:

“The specification shall contain a written

description of the invention, and of the

manner and process of making and using

it, in such full, clear, concise, and exact

terms as to enable any person skilled in

the art to which it pertains, or with which

it is most nearly connected, to make and

use the same, and shal! set forth the best

mode contemplated by the inventor of

carrying out his invention.

“The specification shall conclude with one

or more claims particularly pointing out

and distinctly claiming the subject matter

which the applicant regards as his inven-

tion.”

[12] Since the '226 Patent is silent in

regards to any feature of energy absorption

or safety features, such considerations can-

not be considered by this Court. If plain-

tiff bases patentability of its patent on

these features, the patent is invalid as fail-

ing to particularly point out and distinctly

claim that which it alleges is the subject

matter of its patent pursuant to Title 35

U.S.C. § 112.

INFRINGEMENT

[13] The Court next turns to the issue

of infringement. It is the opinion of this

Court that said issue is moot as the Court

00014

458 + °e7s 4+ 457 FEDERAL SUPPLEMENT

‘ Pe ‘

?has above found plaintiff's patent to be

invalid. However, in the interest of judicial

economy, the Court shall consider the evi-

dence presented and make factual determi-

nations on the issue of infringement.

[14,15] The Court first notes that in

responding to the charges of invalidity,

plaintiff has asserted and attempted to

adopt a very narrow construction of its

claims of its patent, thereby attempting to

distinguish relevant prior art from said

claims. However, this Court notes that in

urging infringement, plaintiff has adopted

a pattern of attempting to read its claims

more broadly to include the devices manu-

factured by defendant National. Plaintiff

cannot urge a narrow construction concern-

ing the validity and a broad interpretation

in asserting infringement. Consistent read-

ings of the patent in issue must be utilized

by the Court in determining both validity

and infringement. See Dunlop Company,

Ltd. v. Kelsey-Hayes Company, 484 F.2d

407 (6th Cir. 1973).

Interpreting the claims of plaintiff's pat-

ent broadly, this Court comes to the conclu-

sion noted above that the '226 Patent is

invalid as it has been anticipated by prior

art, as it is obvious or would have been

obvious to those skilled in the art at the

time the invention was made, and, if based

in part or in whole upon the inherent safety

factors, that it fails to state with particular-

ity the invention claimed by the patentee.

Assuming arguendo that this Court were

to construe the claims of the '226 Patent

more narrowly, and assuming that such a

reading would render said claim valid, such

a reading would result in a finding of in-

fringement by defendant National's 1059,

1060, and “Old 1070” seats.

In this regard, the Court first notes that

all of National Seating's seats which have

an aisle support or use the support pedestal

in the aisie position do not infringe plain-

tiff's '226 Patent. Plaintiff's patent is ad-

dressed to a seat support at an intermediate

or center position between the wall and the

aisle side. Thus excluded from the claims

of the patent are those seat supports which

are placed at an aisle position. Plaintiff

has attempted through various testimony

and arguments to convince this Court that

all of defendant's seats have their pedestals

in an intermediate position. The Court

finds plaintiff's arguments to be totally

without merit.

Defendant argues that it does not in-

fringe the '226 Patent, as said patent is

addressed to transit chairs. Defendant as-

serts that recliner chairs do not fit into the

description of transit chairs and that there-

fore one of the elements of the claims has

not been infringed. However, this Court

finds defendant's argument to be without

merit. f

{16,17} The patent law provides that a

patentee can be his own lexiocographer.

See Ellipse Corp. v. Ford Motor Co., 452

F.2d 163 (7th Cir. 1971). Thus, a patentee

can utilize his own terms and define them

for use in his patent as long as he remains

consistent in his position. Universal Oil

Products Co. v. Globe Oil and Refining Co.,

137 F.2d 3 (7th Cir. 1943), aff'd, 322 US.

471, 64 S.Ct. 1110, 88 L.Ed. 1399 (1944).

Although it is unclear as to the exact defi-

nition of the term “transit” as used by

plaintiff in its patent, this Court finds that

the general and normal definition of said

term would apply to both the inter-city and

intra-city bus seating field and that there-

fore both stationary back and recliner back

seats would be included in said term.

The Court notes that Plaintiff's Exhibit

132, which is a catalogue of American Seat-

ing’s products, includes references to the

following categories: driver seats, transit

seats, school bus seats, non-recliner seats,

and recliner seats. However, upon further

review of this catalogue, it appears that

American Seating uses the term transit

seat in not only the transit category, but

also in its non-recliner and recliner sections

Therefore, it appears to this Court that it is

the consistent position of plaintiff Ameri-

can that the term transit seat includes both

recliner and non-recliner seating arrange-

ments.

Defendant also argues that its Old and

New 1070 Models do not infringe plaintiff's

C0015

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 459

Cite as 457 F Supp. 444 (1976)

patent as the upright pedestals of said mod-

els are not connected to the frame that runs

from the aisle to the wall transverse of the

bus. Defendant asserts that in its seat the

upright column is connected to two mem-

bers of the frame which run longitudinally,

not transversally, of the bus and that there-

after there are three beams that run trans-

versally of the bus to support the seat.

It is the opinion of this Court that said

argument is without merit as the actual

support mechanism, whether it be attached

directly to the beam or whether it be at-

tached to two small metal pieces which are

thereafter attached to a beam, is in essence

the functional equivalents of one another

and that therefore such a distinction is

without merit.

Defendant further argues that its New

Model 1070 does not infringe plaintiff's pat-

ent, asserting said scat pedestal has a dif-

ferent foot design than that disclosed in

the '226 Patent. National's New Model

1070 foot design indicates a foot which is

square cut on its ends and has an attach-

ment flange welded thereto and extending

outwardly from such square cut end. Such

flanges are totally exposed from the tube

and provide holes to receive the floor fas-

teners. Further, such exposed attachment

flanges are each selectively covered by a

four-wall closure cap. Defendant asserts

that such a design permits better access to

the fastening bolt and provides other ad-

vantages, to wit: a shorter overall foot,

thereby improving ingress and egress, re-

duction in cost because of less material be-

ing utilized and easier installation of the

pliable cap as well as the elimination of

sharp corners.

Defendant asserts that the independent

Claims 1| and 6 of plaintiff's patent include

limitations describing the access apertures

to the fastening bolts as being in or defined

by the tube of the foot. Such limitations

are not present in the New 1070 Model seat.

Defendant further asserts that plaintiff, in

its original appiication to the Patent Exam-

iner, defined the foot as “being cut away at

its upper end portions provide vertical ac-

cess to said vehicle floor . . ." See

Plaintiff's Exhibit 119. Said description

was rejected by the Examiner who relied

upon the combination of several patents

including the Koch Patent 2,947,554 for its

showing of a tube cut away at its end. The

Patent Examiner held that it would have

been obvious to make the ends of the pedes-

tal fect as taught by Koch in his patent.

Plaintiff, upon submitting what was fi-

nally accepted to be the design for the foot

in the '226 Patent, attempted to distinguish

the Koch Patent on the basis that the fas-

tener hole 29 and the attachment tab 27 of

the Koch Patent were not within the tube

as defined in the amended '226 claim, and

that the ends of tube 23 in the Koch Patent

did not define “an access aperture adjacent

the associated bolt hole” as required by the

Barecki claims.

The Court determines that plaintiff's ar-

guments to the Patent Examiner in the

prosecution of its patent foreclose the argu-

ment presently made to this Court urging

infringement of defendant National's de-

sign. The Court determines that plaintiff

is excluded by file wrapper estoppel from

attempting to arguc in the instant case that

defendant's foot, almost identical to that

described in the Koch Patent, infringes

the '226 Patent. The Court therefore de-

termines that National's “New Model 1070”

seat does not infringe the claims of plain-

tiff’s '226 Patent.

Further, upon review, it is the determina-

tion of this Court that all the elements of

plaintiff's '226 Patent are included in the

1059, 1060 and the “Old 1070" seats manu-

factured by National.

{18] Thus, were plaintiff's '226 Patent

valid, there would in fact be infringement

by defendant National's seat Models 1059,

1060 and “Old 1970", but only for those

seats of said models in which the pedestals

were placed at a center or intermediate

position. The Court specifically finds that

those seats of Model 1059, 1060, and the

“Old 1070", where the pedestals were

placed in an aisle position, would not and do

not infringe plaintiff's '226 Patent.

00016

460 457 FEDERAL SUPPLEMENT

CONCLUSIONS

Therefore, this Court having found plain-

tiff's patent invalid under Title 35 U.S.C.

§ 102 as having been anticipated by the

prior art; as being obvious to one skilled in

the art at the time the invention was made

under Title 35 U.S.C. § 103; and further

having found that if plaintiff bases its con-

tention of validity in part or in whole upon

safety factors, the patent does not particu-

larly point out and describe the invention

claimed by the patentee as required by 35

U.S.C. § 112, this Court hereby finds for the

defendant and against the plaintiff. This

Court specifically finds United States Let-

ters Patent No. 3,729,226 to be invalid and

unenforceable.

Plaintiff to pay costs.

IT IS SO ORDERED.

Bernardino TORRES and Irma

Torres, Plaintiffs,

TOWMOTOR DIVISION OF CATERPIL-

LAR, INC. and Foley Towlift

Inc., Defendants.

No. 77 C 1810.

United States District Court,

E. D. New York.

Nov. 18, 1977.

In product liability action, plaintiffs

sought order of attachment of the defend-

ant's insurance policy for the sole purpose

of obtaining quasi in rem jurisdiction, rely-

ing on decision of the New York Court of

Appeals, in Seider v. Roth. The District

Court, Bramwell, J., held that: (1) in light

of subsequent decision of the United States

Supreme Court in Shaffer v. Heitner, in

order for a state to presently assert quasi in

rem jurisdiction, it must first be proved

that the nonresident defendant has con-

tacts, lies, or relations with the forum state

so that the maintenance of the suit does not

offend traditional notions of fair play and

substantial justice; (2) the Seider decision

cannot be regarded as creating direct action

against the insurer, and (3) accordingly,

where the only nexus the instant action had

with New York was that nonresident de-

fendant allegedly injured a person in New

Jersey who happened to be a New York

resident, but who was employed in New

Jersey, quasi in rem jurisdiction could not

be established by attachment of defendant's

insurance policy solely on the basis that its

insurer did business in New York.

Motion denied.

1. Courts #=96(3)

Federal Courts #372

Where jurisdiction is based on diversity

of citizenship, federal court will normally

follow decisions of the highest court of the

state in which it sits; however, where a

state court decision on the issue of jurisdic-

tion is challenged as constitutionally infirm,

the federal court must be guided by the

relevant decisions of the United States Su-

preme Court.

2. Courts @12(2)

In order for a state to assert quasi in

rem jurisdiction, it must first be proved

that the. nonresident defendant has con-

tacts, ties, or relations with the forum state

so that the maintenance of the suit does not

offend “traditional notions of fair play and

substantial justice.” U.S.C.A.Const.

Amend. 14.

3. Courts @12(2)

Decision of the New York Court of

Appeals in Seider v. Roth does not purport

to create a direct assertion of jurisdiction

over the insurer; rather, the “direct action”

emanating from that decision is an effect of

the decision only after quasi in rem jurisdic-

tion has been validly acquired, and thus for

a Seider attachment to continue to exist, it

must do so as a species of quasi in rem

0001'7

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 611

Cite as $86 F.2d 611 (1974)

AMERICAN SEATING COMPANY,

Plaintiff-Appellant Cross-Appellee,

NATIONAL SEATING COMPANY, De-

fendant-Appellee Cross-Appellant.

Nos. 76-2625, 76-2626.

United States Court of Appeals,

Sixth Circuit.

Argued June 19, 1978.

Decided Sept. 15, 1978.

Suit was brought for infringement of

patent No. 3,729,226, relating to a passen-

ger bus seat that uses a tubular inverted

“T” pedestal. The United States District

Court for the Northern District of Ohio,

Eastern Division, Leroy J. Contie, Jr., J.,

457 F.Supp. 444, held that the patent was

invalid. The court further held that if the

patent were valid, it was infringed by some

of defendant's seat models, and an appeal

and cross appeal were taken. The Court of

Appeals, Weick, Circuit Judge, held that:

(1) presumption of the patent's validity was

completely destroyed by reason of the fact

that the concepts embodied in the uncited

prior art possessed the most relevance in

the determination of patentability, and (2)

the patent was invalid because it was antic-

ipated by the prior art, because it was obvi-

ous to one of ordinary skill in the art, and

because it failed to describe particularly

that which was claimed to be invented.

Affirmed.

1. Patents #18, 37, 46

Patentability is dependent upon three

essential elements, namely, novelty, utility,

and nonobviousness. 35 U.S.C.A. §§ 101-

103.

2. Patents 18, 37, 46

Elements of novelty, utility, and nonob-

viousness constitute separate tests of pat-

entability, each of which must be met in

order for a patent to be valid. 35 U.S.C.A,

§§ 101-103.

3. Patents @112.1

Starting point in analyzing a challenge

to a patent's validity is the statutory pre-

sumption that the patent is valid. 35 U.S.

C.A. § 282.

4. Patents 112.1

Presumption of patent validity is based

upon the acknowledged experience and ex-

pertise of the patent office and upon the

fact that the issuance of a patent consti-

tutes a type of administrative determina-

tion supported by evidence. 35 U.S.C.A.

§ 282.

5. Patents @112.1

In cases in which relevant prior art was

not considered by the patent office, the

presumption of patent validity is largely, if

not wholly, vitiated. 35 U.S.C.A. § 282.

6. Patents 112.1 '

Degree by which the presumption of

patent validity is weakened in cases in

which relevant prior art was not considered

by the patent office depends upon a balanc-

ing of the pertinence of the newly cited

prior art and the pertinence of the prior art

actually considered by the patent examiner

in the prosecution of the patent application.

35 U.S.C.A. § 282.

7. Patents $112.1

Presumption of patent's validity was

completely destroyed by reason of the fact

that the concepts embodied in the uncited

prior art possessed the most relevance in

the determination of patentability. 35 U.S.

C.A. § 282.

8. Patents 37

Novelty does not exist if a patented

device is anticipated by a substantially iden-

tical device whose elements perform sub-

stantially the same work in substantially

the same manner. 35 U.S.C.A. §§ 102, 103.

00018

612 586 FEDERAL REPORTER, 2d SERIES

9. Patents @=72(1)

A patent is anticipated if all the ele-

ments of the patented device, or their

equivalents, are found in a single preexist-

ing structure or description. 35 U.S.C.A.

§§ 102, 103.

10. Patents @=324.55(4)

A finding of equivalence is a determi-

nation of fact which cannot be disturbed

unless clearly erroneous. 35 U.S.C.A.

§§ 102, 103.

11. Patents ¢=328(2)

Patent No. 3,729,226, relating to a pas-

senger bus seat that uses a tubular inverted

“T" pedestal, was invalid for anticipation,

where the only significant difference be-

tween the seat disclosed by the patent and

the prior art round base seats related to the

shape of the pedestal feet, and where there

was no difference in either the function

performed by the tubular inverted “T” ped-

estal and the round-based pedestal, or in the

manner in which the two types of pedestals

perform their function. 35 U.S.C.A. §§ 102,

103.

12. Patents 18

Patent relating to a passenger bus seat

that uses a tubular inverted “T” pedestal

was invalid for obviousness to one of ordi-

nary skill in the art. 35 U.S.C.A. § 103.

13. Patents #36(3)

Substantial evidence supported district

court's finding that patent, relating to a

passenger bus seat that uses a tubular in-

verted “T” pedestal, was a combination pat-

ent, but the combination of old elements

failed to produce a synergistic effect or

result, and the invention was thus unpat-

entable.

14. Patents = 26(1'/)

A combination of old elements, in order

to be patentable, must produce a synergistic

effect or result.

15. Patents #26(1'/)

Combination of old elements in patent,

relating to a passenger bus seat, to produce

a seat which is superior to aisle leg seats

because of its increased storage and leg

room under the seat, its increased ease in

maintenance and cleaning, its improved aes-

thetic qualities, and its increased ease in

passenger egress and ingress could not

properly be characterized as synergistic;

nor was a synergistic effect provided by the

alleged improved crashworthiness of the

seat disclosed by the patent.

16. Patents #=36.1(1), 36.2(1)

Certain secondary considerations, such

as commercial success, long-felt but unre-

solved needs, and the failure of others, may

have some relevance in the determination

of obviousness. 35 U.S.C.A. § 103.

17. Patents #36.2(2)

Although in a close case secondary fac-

tors may tip the scales toward patent validi-

ty, they cannot save a patent from invalidi-

ty when there is a plain lack of invention,

and obviousness is clear. 35 U.S.C.A. § 103.

Lloyd A. Heneveld, Price, Heneveld,

Huizenga, Cooper, Daniel Van Dyke, Grand

Rapids, Mich., for plaintiff-appellant cross-

appellee.

Charles B. Lyon, Donnelly, Maky, Renner

& Otto, Cleveland, Ohio, for defendant-ap-

pellee cross-appellant.

Before WEICK and MERRITT, Circuit

Judges, and CECIL, Senior Circuit Judge.

WEICK, Circuit Judge.

This action was brought in the District

Court by American Seating Company

(American) against National Seating Com-

pany (National) for the infringement of its

US. Letters Patent No. 3,729,226 ('226),

entitled “Single Pedestal Transit Chair.”

National, in its answer, pleaded the invalidi-

ty of the patent and denied infringement,

and counterclaimed for a declaratory judg-

ment of invalidity and non-infringement.

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 613

Cite as 586 F.2d 611 (1978)

In a well-written opinion District Judge

Contie held that the patent was invalid

under: (1) 35 U.S.C. § 102, because it was

anticipated by the prior art; (2) 35 U.S.C.

§ 103, because it was obvious to those

skilled in the art at the time of its inven-

tion; and (3) 35 U.S.C. § 112, because it

failed to describe particularly that which

was claimed to be invented. Furthermore

the District Court found that the patent, if |

valid, was infringed by some of National's

seat models, but was not infringed by other

National seat models.

Both parties appealed. American has ap-

pealed from those portions of the District

Court's judgment which held the patent

invalid and which found that certain of

National's seat models did not infringe

upon the patent. National has cross-ap-

pealed from the District Court's findings of

infringement.

We affirm, holding the patent invalid,

and therefore it is not necessary that we

reach the issues of infringement.

The '226 patent relates to a passenger bus

seat. The device wus invented around

1. Apparently there are two markets for passen-

ger bus seats, the inter-city market and the

intra-city market Inter-city passenger bus

Seats are recliner type seats, while intra-city

Passenger bus seats are for the most part non-

recliner or fixed-back type seats At the time

of suit American was the dominant manufac-

turer of intra-city passenger bus seats. Nation- ;

April, 1970, by Charles A. Barecki, an em-

ployee of American. The patent applica-

tion (which application was assigned by Ba-

recki to American) was filed in the US.

Patent Office on June 4, 1971, and the

patent was issued on April 24, 1973. Amer-

ican and National, at the time of suit, were

the sole American manufacturers of inter-

city passenger buy seats.'

The '226 patent (see diagram 1) discloses

& center pedestal seat. The patent claims?

show two side-by-side seats (11 and 12)

mounted on a beam (13). The beam is

attached to the wall of a bus by an angle

iron (14). The beam is supported approxi-

mately midway between the seats by a ped-

estal shaped in the form of an inverted “T”,

The pedestal is composed of a single upright

column (15) and a tubular foot (16), which

foot extends fore and aft of the bus, The

ends (17) of the foot are cut away at a 45°

angle to provide access openings to the fas-

tening bolts (19) used to secure the foot to

the floor. The access openings can be cov-

ered by end caps (20). The end caps are

held in place by a U-shaped spring plate

(23), which has two shoulder rivets or lugs

(21) snapped into receiving holes (22).

[See following illustration.

al, although previously having manufactured

+ Intra-city passenger bus seats, no longer did so

at the time of tnal.

2. The '226 patent contains six claims. Of the

claims, claims one and six are independent.

The other claims are dependent upon claim

one.

00019

00020

614

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00021

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 615

Cite as 586 F.2d 611 (1978)

Prior to the marketing of passenger bus

seating with the tubular inverted “T" ped-

estal, the standard floor support used for

passenger bus seats was aisle legs. Ameri-

can began to market passenger bus seats

manufactured in conformity with the '226

patent in 1971, Since that time the tubular

inverted “T" pedestal disclosed by the '226

patent has enjoyed considerable acceptance

and commercial success as a mode of floor

support for both inter-city and intra-city

passenger bus seats. App. 1171-72.

In 1972 National first offered for sale a

recliner passenger bus seat which used a

tubular inverted “T" pedestal identical to

the one disclosed by the '226 patent. Since

its first use National has modified the ped-

estal’s foot design so that the fastening

bolts are located outside of the tube of the

foot. At the time of trial all passenger bus

seats manufactured by National used a tu-

bular inverted “T" pedestal for the floor

support

The '226 patent sets forth the following

advantages of its seat design, which advan-

tages are alleged to be attributable to the

tubular inverted “T" pedestal, over the tra-

ditional aisle leg passenger bus seat: (1)

increased safety and ease in passenger in-

gress and egress; (2) increased leg room

and storage space under the seat; (3) in-

creased ease in maintenance and cleaning;

and (4) improved appearance.

{1,2] Patentability is dependent upon

three essential elements, namely, novelty,

utility, and nonobviousness, articulated and

defined in 35 U.S.C. §§ 101-03. These ele-

ments constitute separate tests of patenta-

bility, each of which must be met in order

for a patent to be valid. United States v.

Adams, 383 U.S. 39, 48, 86 S.Ct. 708, 15

L.Bd.2d 572 (1966); Reynolds Metals Co. v.

Acorn Bldg. Components, Inc., 548 F.2d 155,

159 (6th Cir. 1977) and cases cited therein.

The District Court held that the ‘226 pat-

ent was invalid, inter alia, because it failed

to meet two of the above tests, that is, the

structure disclosed by the patent was antici-

pated, thereby negating novelty, Allied

Wheel Prods., Inc. v. Rude, 206 F.2d 752,

760 (6th Cir. 1953), and the patent was

obvious in light of the prior art.

(3-5) The starting point in analyzing a

challenge to a patent's validity is the statu-

tory presumption that the patent is valid

under 35 U.S.C. § 282. The presumption of

validity is based upon the acknowledged

experience and expertise of the Patent Of-

fice and upon the fact that the issuance of a

patent constitutes a type of administrative

determination supported by evidence. Par- '

ker v. Motorola, Inc., 524 F.2d 518, 521 (5th

Cir, 1975), cert” denied, 425 US. 975, 96

S.Ct. 2175, 48 /L. Ed 2d 799 (1976), see Deep

Welding, Inc. y. Sciaky Bros., Inc., 417 F.2d

1227, 1234 (7th Cir. 1969), cert. denied, 397

U.S. 1037, 90 S.Ct. 1354, 25 L.Rd.2d 648

(1970); Monroe Auto Equip. Co. v. Hecket-

horn Mfg. & Supply Co., 332 F.2d 406, 412-

13 (6th Cir.), cert. denied, 379 U.S, 888, 85

S.Ct. 160, 13 L.Ed. 2d 93 (1964). In cases in

which relevant prior art was not considered

by the Patent Office, the presumption is

largely, if not wholly, vitiated. Tee-Pak,

Inc. v. St. Regis Paper Co., 491 F.2d 1193,

1196 (6th Cir. 1974); Westwood Chem., Inc.

v. Owens-Corning Fiberglas Corp., 445 F.2d

911, 916 (6th Cir. 1971), cert. denied, 405

U.S. 917, 92 S.Ct. 941, 30 L.Ed.2d 786 (1972).

{6] The degree by which the presump-

tion is weakened in cases in which relevant

prior art was not considered by the Patent

Office, depends upon a balancing of the

pertinence of the newly cited prior art and

the pertinence of the prior art actually con-

sidered by the patent examiner in the pros-

ecution of the patent application, Tee-Pak,

Inc. v. St. Regis Paper Co., supra, 491 F.2d

at 1193; accord, Aluminum Co. of America

v. Amerola Prods. Corp. 552 F.2d 1020,

1024-25 (3d Cir, 1977).

[7] In the instant case the District

Court determined that the prior art con-

00022

616 586 FEDERAL REPORTER, 2d SERIES

sidered by the Patent Office did not include

“any showing of the overall combination

claimed, a center pe.lestal for a two passen-

ger transportation seats [sic] or concealed

fasteners for such pedestals.” App. 60.

Because the concepts embodied in the uncit-

ed prior art possess the most relevance in

the determination of patentability in this

case, we agree with the District Court that

the presurnption of validity has been com-

pletely destroyed?

[8] Novelty does not exist if a patented

device is anticipated by a substantially iden-

tical device whose elements perform sub-

stantially the same work in substantially

the same manner. Dunlop Co. v. Kelsey-

Hayes Co., 484 F.2d 407, 414 (6th Cir. 1979),

cert. denied, 415 U.S. 917, 94 S.Ct. 1414, 39

L.Ed.2d 471 (1974); Monroe Auto Equip.

Co. v. Heckethorn Mfg. & Supply Co., su-

pra, 332 F.2d at 414.

The District Court found that two prior

art seats anticipated the '226 patent. The

first of these seats is the Greyhound Tour

Coach Seat. (See diagram 2 below.) That

seat, designed, manufactured, and sold by

National to Greyhound in the 1950's, dis-

closes:

Said Tour Coach seat includes side-by-

side recliner seats 11 and 12 supported on

frame beam 13, having aisle side 13-A

and wall side 13-B and mounting means

14 provided to secure the wall side of the

frame to the vehicle wall. Frame 13 is

also supported by a pedestal P, including

a column 15 and a foot 16. Such foot 16

includes a circular bottom plate 16-A

welded to the bottom of the upright col-

umn and four spaced gussets 16-B inter-

3. For example, neither of the prior art seats

found by the District Court to anticipate pat-

ent '226 (one of which was developed by Amer-

ican) was considered by the Patent Office In

addition, the seat which possessed the pedestal

Most similar to the pedestal disclosed by

the ‘226 patent, namely, the Heywood Wake-

connecting the column 15 and the bottom

plate 16-A. The bottom plate 16-A has

four equally circumferentially spaced

countersunk mounting holes 19- A therein

to receive fasteners to secure the same to

the vehicle floor. The foot 16 is selective-

ly covered by a two-piece shroud 20, 20-

A, joined by screws 21, such shroud act-

ing to conceal the four spaced fasteners.

The above described pedestal P can be

positioned at the center of the seat frame

for some seats or in an intermediate posi-

tion between the center of the frame and

the aisle side for other seats. [App. 47-

49]

The second seat found by the District

Court to anticipate the '226 patent, is the

American round base center pedestal seat

sold by American to General Motors Corpo-

ration in 1969.4 (See diagram 2.) That seat

discloses:

Such seat includes two side-by-side

transit [i. e., fixed-back] seats 11 and 12

mounted on a tubular beam 13, having an

aisle-side 13-A and a wall-side 13-B.

Such wall-side of the frame is provided

with a flange means 14 to secure the

frame to the vehicle wall. The center

pedestal P is provided to support frame

13 in conjunction with the wall mount,

such pedestal including an upright cylin-

drical tubular column 15 and a cast foot

16 extending fore and aft of such column.

Such foot 16 includes a plurality of coun-

ter-sunk holes 19-A adapted to receive

floor fasteners 19 to secure the pedestal

to the floor. The cast foot was selective-

ly covered by a two-picce stainless steel

shroud 20, 20-A interconnected by screws

23, such shroud acting to conceal the fas-

teners. [App. 51]

field Plane Mate Seat, was not cited by Ameri-

can to the patent examiner

4. Hereinafter the Greyhound Tour Coach Seat

and the Amencan round base center pedestal

seat will be referred to collectively as the

“round base seats.”

INSERT E

AMERICAN SEATING CO. v.

NATIONAL SEATING CO. 617

Cite as 564 F.2d 611 (1978)

NATIONAL CENTER PECE STAL TOUR

CoaACH Seat (1955-6)

AMERICAN ROUND BASE

CENTER PEDESTAL SEAT (1969)

“

w «

“a

= =

re)

—~@a

(a)

8 é

G 4

Yr -

w 4

After setting forth what it believed to be

the appropriate standard by which an antic-

ipation is to be determined, namely, wheth-

er all the elements of a patented device or

their equivalents are found in a single prior

art device or description in which they per-

form substantially the same work in sub-

stantially the same way, the District Court

found: (1) that there had been a public sale

or use of the round base seats more than

one year prior to the date of the patent

application; (2) that the only significant

distinction between the round base seats

and the seat disclosed by the '226 patent

related to the pedestals; (3) that the round

base pedestals were the equivalents of the

tubular inverted “T” pedestal; and (4) that,

therefore, because all of the elements of

COC24

00023

618 586 FEDERAL REPORTER, 2d SERIES

the '226 patent or their equivalents were

found in single prior art references, the '226

patent was anticipated.

American contends that the District

Court's finding of anticipation may not

stand because it is premised upon a misun-

derstanding of the law of anticipation in

that the Court impermissibly interjected

into its determination the doctrine of equiv-

alency. Although not clearly articulated,

American appears to be arguing that patent

law requires that the construction of the

challenged device be identical to that of the

prior art device or reference which is al-

leged to anticipate it, in order for there to

be an anticipation. In this case, because

even a perfunctory comparison of the round

base pedestals and the tubular inverted “T”

pedestal shows a substantial difference in

their structures, American concludes that

the '226 patent cannot possibly be anticipa-

ted by the round base seats.

{9] American's assertion, to put it sim-

ply, is not in accordance with patent law as

it relates to anticipation. This Court has

repeatedly defined the proper standard

with respect to anticipation as requiring

that all the elements of a patented device or

their equivalents be found in a single pre-

existing structure or description, Tee-Pak,

Inc. v. St. Regis Paper Co., supra, 491 F.2d

at 1198; A. J. Indus, Ine. v. Dayton Stel

Foundry Co., 394 F.2d 357, 359 (6th Cir.

196%), .Monroe Auto Equip. Co., v. Hecket-

horn Mfg. & Supply Co., supra, 332 F.2d at

414; Preformed Line Prods. Co. v. Fanner

Mfg. Co., 328 F.2d 265, 271 (6th Cir.), cert.

denied, 379 U.S. 846, 85 S.Ct. 56, 13 L.Bxd.2d

51 (1964); Firestone v. Aluminum Co. of

America, 285 F.2d 928, 930 (6th Cir. 1960);

Allied Wheel Prods., Inc. v. Rude, supra, 206

F.2d at 760; accord, Norton Co. v. Carbo-

rundum Co,, 530 F.2d 435, 442 n. 18 (1st Cir.

1976); Kahn v. Dynamics Corp. of America,

508 F.2d 939, 943 (2d Cir), cert. denied, 421

U.S. 930, 95 S.Ct. 1657, 44 L.FAl.2d 88

(1975); Decca Ltd. v. United States, 420

F.2d 1010, 1027 28, 190 CtLCl. 454, cert.

denied, 400 U.S. 865, 91 S.Ct. 102, 27

L.Ed.2d 104 (1970); Amphenol Corp. v. Gen-

eral Time Corp., 397 F.2d 431, 438 (7th Cir.

1968); Greening Nursery Co. v. J & R Tool

& Mfg. Co., 376 F.2d 738, 740 (8th Cir.

1967); Inglett & Co. v. Everglades Fertiliz-

er Co., 255 F.2d 342, 345 (5th Cir. 1958);

Deller’s Walker on Patents § 57 at 242, § 58

at 249, and § 77 at 374-76 (2d ed. 1964).

American next argues that even if the

equivalency of the tubular inverted “T”

pedestal and the round base pedestals is an

appropriate consideration in determining

the issue of anticipation, the District Court

erred in finding the pedestals to be equiva-

lents.

In Olympic Fastening Systems, Inc. v.

Textron, Inc., 504 F.2d 609, 619 (6th Cir.

1974), cert. denied, 420 U.S. 1004, 95 S.Ct.

1447, 43 L.Ed.2d 762 (1975), quoting from

Graver Tank & Mfg. Co. v. Linde Air Prods.

Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed.

1097 (1950), the Court said:

Under the doctrine of equivalents “if

two, devices do the same work in substan-

tially the same way, and accomplish sub-

stantially the same result, they are the

same, even though they differ in name,

form, or shape.” (Emphasis added).

{10} A finding of equivalence is a deter-

mination of fact which cannot be disturbed

unless clearly erroneous. Graver Tank &

Mfg. Co. v. Linde Air Prods. Co., supra, 339

U.S. at 609-10, 70 S.Ct. 854.

The essential purpose of the '226 patent

was to provide a passenger bus seat which

was superior to aisle leg seats aesthetically,

in ease of cleaning and maintenance, in ease

and safety of passenger egress and ingress,

and in the amount of leg and storage room

under the seat. These advantages stem

from the use of a center pedestal floor

support.

In our opinion it is patently obvious that

the round base seats furnish, in the same

manner, that is, by the use of a center

pedestal floor support, the identical advan-

tages over aisle leg seats.

{11] The only significant difference be-

tween the seat disclosed by the '226 patent

00025

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 619

Cite as 586 F.24 611 (1978)

and the round base seats, relates to the

shape of the pedestal feet. There is no

difference in either the function performed

by the tubular inverted “T” pedestal and

the round-based pedestal, or in the manner

in which the two types.of pedestals perform

their function. Thus the District Court’s

finding that the pedestals are equivalents is

not clearly erroneous.

In our opinion the District Court's deter-

mination that the '226 patent was invalid

because it was anticipated, is correct.

{12] Although our agreement with the

District Court's finding of anticipation is

sufficient to affirm that Court's holding of

invalidity, we note further that even if

the '226 patent were not anticipated by

prior art, the patent has other fatal defi-

ciencies, namely, its obviousness.

The resolution of the question of obvious-

ness in deciding patent validity requires the

determination of several basic factual in-

quiries sect out by the Supreme Court in

Graham v. John Deere Co., 383 U.S. 1, 17,

86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966), as

follows:

Under § 103, the scope and content of

the prior art are to be determined; dif-

ferences between the prior art and the

claims at issue are to be ascertained; and

the level of ordinary skill in the pertinent

art resolved.

When a District Court makes the inquir-

ies required by Graham v. John Deere Co.,

supra, it makes findings of fact which are

binding upon an appellate court, unless the

findings are clearly erroneous. Reynolds

Metals Co. v. Acorn Bldg. Components, Inc.,

supra, 548 F.2d at 161; Kolene Corp. v.

Motor City Metal Treating, Inc., 440 F.2d

77, 81 (6th Cir.), cert. denied, 404 U.S. 886,

92 S.Ct. 203, 30 L.Ed.2d 169 (1971).

Once the factual setting has been estab-

lished, the ultimate determination of obvi-

ousness is “‘a conclusion of law with which

this Court may disagree on the established

findings of fact.’" Philips Indus., Ine. v.

State Stove & Mfg. Co., 522 F.2d 1137, 1139

(6th Cir. 1975), quoting from Kolene Corp.

v. Motor City Metal Treating, Inc., supra,

440 F.2d at 81; accord, Reynolds Metals Co.

v. Acorn Bldg. Components, Inc., supra, 54

F.2d at 161.

In holding the '226 patent invalid under

§ 103, the trial court found that none of the

elements of the patent was new, and that

they appeared in various prior art seats and

patents. American contends that the Dis-

trict Court’s finding that the '226 patent

was a combination patent, is clearly errone-

ous because the patent contains one ele-

ment not disclosed by the prior art, namely,

the tubular inverted “T” pedestal.

We do not agree. The District Court

made the following finding:

Further, inverted T Pedestals were

known in the seating art previous to the

date of the invention. See the Blink Pat-

ent 198,218 and Howell sequence seating

chairs. The Hozeski and Barecki Patent

3,567,281 disclosed an inverted T-type

pedestal which illustrates advantages

concerning maintenance reduction and

concealed fasteners to avoid dirt collec-

tion. The Greyhound Tour Coach seat,

the BART seats, National’s 1040 leg, the

plugs used in the Heywood Wakefield

Plane Mate seat, and the stainless steel

cover used by American on its round base

center pedestal seat all illustrate the use

of selectively covered floor fasteners.

[App. 54)

The District Court further found the fol-

lowing:

[T]he design of plaintiff's column and

foot on the '226 Patent is obvious in light

of the Heywood Wakefield inverted T

Plane Mate pedestal (see diagram below).

The Wakefield pedestal includes a tubu-

lar type upright to support chairs or seats

and a channel shaped foot extending fore

and aft therefrom. Such foot is provided

with base plates at each end thereof, such

base plates being provided wiih holes to

receive floor fasteners.

(See following illustration.]

00026

620

586 FEDERAL REPORTER, 2d SERIES

BARECKI

PATENT

HEYWOOD WAKEFIELD

INVERTED T PLANE

MATE PEDESTAL (1969)

[App. 55)

————

The District Court found, further, as fol-

lows:

Even a cursory glance at the Heywood

Wakefield inverted T Plane Mate Pedes-

tal, used in 1969, indicates an almost iden-

tical structure as that claimed by plain-

tiff in its patent. Plaintiff asserts that

the Heywood Wakefield inverted pedestal

provides for a channel at the bottom of

the foot as opposed to a hollow tubular

foot. The Court finds this distinction to

be without merit as the same function

and use results from the Heywood Wake-

field inverted T Plane Mate Pedestal as

does that in the plaintiff's invention in

the '226 Patent.

Plaintiff contends that the pedestal of

the patent in suit is distinguishable from

the round base pedestal of the Tour

Coach seat, as well as all other round

base pedestals, and is unique in its func-

tion and advantages from round base

pedestals. The Court cannot agree with

this conclusion. This Court finds that the

round based foot and the foot of the '226

Patent in suit ere the functional equiva-

lents of one another, and that the '226

foot does not function in any new or

different mode, nor does it provide any

new or different result. [App. 57-58]

{13] Our independent examination of

the evidence relied upon by the District

Court persuades us that its finding that

the '226 patent is a combination patent is

not clearly erroneous, but tu the contrary, is

supported by substantial evidence.

[14] As recognized by the District

Court, because the '226 patent is composed

of a combination of old elements, the combi-

nation, in order to be patentable, must pro-

duce a synergistic effect or result. See

Sakraida v. AG Pro, Inc, 425 U.S. 273, 282,

96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Ander-

son's-Black Rock, Inc. v. Pavement Salvage

Co., 396 U.S. 57, 61, 90 S.Ct. 305, 24 L.Ed.2d

258 (1969); Kearney & Trecker Corp. v.

Cincinnati Milacron Inc., 562 F.2d 365, 370

(6th Cir. 1977); Reynolds Metals Co. v.

Acorn Bldg. Components, Inc., supra, 548

F.2d at 161; Philips Indus., Inc. v. State

Stove & Mfg. Co., supra, 522 F.2d at 1141;

Dickstein v. Seventy Corp., 522 F.2d 1294,

1298-99 (6th Cir. 1975), cert. denied, 423

US. 1055, 96 S.Ct. 787, 46 L.Ed.2d 644

(1976).

In Kearney & Trecker Corp. v. Cincinnati

Milacron Inc., supra, 562 F.2d at 370, this

Court, speaking through Circuit Judge

00027

AMERICAN SEATING CO. v. NATIONAL SEATING CO. 621

Clte as $86 F.2d 611 (1978)

Lively, recently defined synergism as fol-

lows:

The synergistic test is met when a com-

bination of elements produces an effect

which is “greater than the sum of the

several effects taken separately.” An-

derson’s-Black Rock, supra, 396 U.S. at

61, 909 SCt. at 308. There must be an

“impalpable something” in the combina-

tion itself which consists of previously

known elements to pass the requirement

of nonobviousness. Philips Industries, su-

pra, 522 F.2d at 1141. Stated another ©

way, there must be some “unusual or

surprising result” from a combination of

old elements. Dickstein, supra, 522 F.2d

at 1299.

[15] We cannot agree with American's

assertion that the combination of the old

elements in the '226 patent to produce a

passenger bus seat which is superior to aisle

leg seats because of its increased storage

and leg room under the seat, its increased

ease in maintenance and cleaning, its im-

proved aesthetic qualities, and its increasd

ease in passenger egress and ingress, can be

characterized properly as synergistic. The

District Court found that several prior art

seats, namely, the Plane Mate Seat and the

round base seats, furnished the identical

advantages over aisle leg seats. This find-

ing of fact is supported by substantial evi-

dence and is not clearly erroneous.

Further, we cannot accept American's ar-

gument that a synergistic effect is provided

by the alleged improved crashworthiness of

the seat disclosed by the '226 patent, which

improved crashworthiness is the result of an

alleged increase in the energy absorption

characteristics of the tubular inverted “T”

pedestal. This function is completely omit-

ted in the patent's specifications. No argu-

ment as to improved crashworthiness was

raised before the Patent Office, As stated

by the Court in Graham v. John Deere Co.,

supra, 383 U.S. at 25, 66 S.Ct. at 697, quot-

ing from Lincoln Eng’r Co. v. Stewart-War-

5. The District Court also found that the alleged

safety feature of the '226 patent “would neces-

Sanily relate to the tensile strength, gauge, size,

shape, and type of material used in said upnght

column and foot. The patent in issue is silent

ner Corp., 303 U.S. 545, 550, 58 S.Ct. 662, &2

L.Ed. 1008 (1938):

If this were so vital an element in the

functioning of the apparatus, it is strange

that all mention of it was omitted.

Moreover, American's evidence of improved

crashworthiness of the '226 patent consists

only of a comparison of the energy absorp-

tion characteristics of the tubular inverted

“T” pedestal and aisle legs. American in-

troduced no evidence that the tubular in-

verted “T"” pedestal is more crashworthy

than other types of prior art pedestals such

as the pedestals of the round base seats.

Without such evidence we fail to see how

we, or the District Court, could conclude

that the combination of the components of

the '226 patent produces a new or different

function which is absent in the prior art.

In our opinion, American's suggestion

that a synergistic result is evidenced by the

alleged improvement in crashworthiness is

nothing more than an afterthought of an

astute patent trial attorney. Graham v.

John Deere Co., supra, 383 U.S. at 25, 86

S.Ct. 684; Lincoln Eng'r Co. v. Stewart-

Warner Corp., supra, 303 U.S. at 550, 58

S.Ct. 662°

We agree with the District Court’s con-

clusion that the '226 patent fails to provide

the requisite synergistic effect needed by

combination patents, for validity. As stat-

ed by the Supreme Court in Sakraida v. AG’

Pro, Inc., supra, 425 U.S. at 282, 96 S.Ct. at

1537:

(T]his patent simply arranges old ele-

ments with each performing the same,

function it had been known to perform,

although perhaps producing a more strik-

ing result than in previous combinations.

Such combinations are not patentable un-

der standards appropriate for a combina-

tion patent. Great A. & P. Tea Co. v.

Supermarket Corp., supra [340 U.S. 147,

as to any such references.” [App. 60-61.]

Based on this finding, the Court held the patent

invalid for failing to point out particularly, and

to claim distinctly the subject matter of the

invention.

00028

622 586 FEDERAL REPORTER, 2d SERIES

71 S.Ct. 127, 95 L.Ed. 162 (1950)}.§; An-

derson's-Black Rock v. Pavement Co., su-

pra. Under those authorities this assem-

bly of old elements . . . falls under

the head of “the work of the skilful me-

chanic, not that of the inventor.” Hotch-

kiss v. Greenwood, (52 U.S. (11 How.) 248,

267, 13 L.Ed. 683 (1850)).

[16] We recognize that certain second-

ary considerations, such as commercial suc-

cess, long felt but unresolved needs, and the

failure of others, may have some relevance

in the determination of obviousness. Gra-

ham v. John Deere Co., supra, 383 U.S. at

17-18, 86 S.Ct. 684; Reynolds Metals Co. v.

Acorn Bldg. Components, Inc., supra, 548

F.2d at 161-62. The District Court, in re-

solving the obviousness issue, did not con-

sider and make findings with respect to

American's contentions relating to (1) the

long felt need for and commercial success of

the '226 patent, (2) the failure of National

to develop a viable center pedestal passen-

ger bus seat, and (3) National's copying of

the tubular inverted “T” pedestal disclosed

by the '226 patent, within a short period

after American placed it on the market.

We find no reversible error in the District

Court's failure to take into account these

secondary factors in reaching its decision on

the question of obviousness in this case.

{17} Although in a close case secondary

factors may tip the scales toward patent

validity, they cannot save a patent from

invalidity when, as in the case here, there is

such a plain lack of invention, and obvious-

ness is clear. Graham v. John Deere Co.,

supra, 383 U.S. at 35 36, 86 S.Ct. 684; Ka-

mei-Autokomfort v. Eurasian Automotive

Prods., 553 F.2d 603, 606 (9th Cir.), cert.

denied, 434 U.S. 860, 98 S.Ct. 186, 54

L.Ed.2d 133 (1977); T. P. Labs., Inc. v.

Huge, 371 F.2d 231, 236 (7th Cir. 1966).

The '226 patent is invalid because it was

anticipated by the prior art under the provi-

sions of 35 U.S.C. § 102, because it was

obvious to one of ordinary skill in the art

under the provisions of 35 U.S.C. § 103, and

because it failed to describe particularly

6. ‘The patent in suit is just “as flimsy and as

spurious” as that involved in Great A. & P. Tea

that which was claimed to be invented un-

der 35 U.S.C. § 112. Because the patent is

invalid, it is unnecessary to reach the other

issues raised by this appeal, including the

issues of infringement.

Costs are to be assessed against Ameri-

can.

Affirmed.

John E. JONES, Plaintiff-Appellee,

CITY OF MEMPHIS, TENNESSEE et

al., Defendants-Appellants.

No. 77-1704.

United States Court of Appeals,

Sixth Circuit.

Argued June 20, 1978.

Decided Sept. 19, 1978.

Suit was brought against city and cer-

tain John Doe police officers who, in the

course of their employment, allegedly de-

prived plaintiff of his constitutional rights

by illegally arresting and beating him. The

United Stated District Court for the West-

ern District of Tennessee, Bailey Brown,

Chief Judge, 444 F.Supp. 27, concluded that

the city could be held liable under the doc-

trine of respondeat superior and denied the

city’s motion to dismiss. Leave to appeal

was granted, and the Court of Appeals,

Harry Phillips, Chief Judge, held that the

doctrine of respondeat superior was not ap-

plicable to actions brought against a munic-

ipal corporation directly under the Four-

teenth Amendment and the general federal

question statute,

Reversed and remanded with di-

rections.

Co., supra. Cf, id. at 158, 71 S.Ct. 127 (Doug-

las, J., concurring).

00029

United States Patent i

isurecht

“tr SINGLE PEDESTAL TRANSTT CLAIR

175] tasentor Chester J. Barechi, Grand) Raps,

Mich

173} Assipnee American Seating Company, Grand

Rapids, Mich

[22] baled June 4, 1971

[21)) Appl No 149,947

pas ee MA 297/2N2, PHT AAS, DAKLTNS K

sil tnech Ade 200

[SX] bield of Search Det /2.aK 292. $08,

DAKPTNS PL EKR RK, WOE ESS 7) TKR LENA

POK/ 1S), DEEZER 2, INTER tb, So, 827927

[So] Keferences Cited

UNTIED STATES PATENTS

Yat psn Wrest Davis ‘UMaas\

titty Sted yeas Hhalhowell 24K, INK RN

Ys? ss4 we tee Kowh TEOFERS BM

SUL RAR Wivet Shwe kk PEE/URN

Tia we? PVVES — Wantgees SETS

irl 3,729,226

lash Apr. 24, 1973

1980 S04 Pe ae | Veevelen 247/50

VUE Se Lae ey 24K/1KK 7

VSn7,27n VIVE Wore be 297/487

Dy Kd yivet Creverd 24K/1KK 7

V2 4x4 Diet Pezeske 24K/ 18K

Promary Exameowr Trancs KR Zupel

trrornes Dawson. Tilton. ballon & fungus

187} ABSTRACT

No transit Chat tees a bear supporting (wo seats and

has aside ah tea attachment te the side of a vehicle,

the beam bemp supported wbent midway by a single

pedestal which po canned on a hollow foot extending

lonprtudinally of the vehrole Moor the foot bemg pro-

vided atats ends with bolt opeomys for recening bolts

anchonng the foot te the toon and the foot being cut

away along an angle abose the openings to provide

vertical access fora socket wrench, the ends of the

foot bom releasably closed by a closure cap having

toleasable wing lugs mterlocked with side openings in

the tovot,

6 Claims, 6 Drawing Figures

00030

Patented Aynil 241, 1973

‘ 3,729,224

3,729,226 gs

"hy i '

maint! i

Wingy nil ,4

INVENTOR

Chester J. Burecki

ny Daweonrdidlton), Falloro

acid Pangani )

ALLOKMEYVS

00031

1 Z

SINGLE PEDESTAL TRANSEE CHAIR

BACKGROUND AND SUMMARY

In buses, planes, and other vehicles there isa need

for sturdy Support means for chairs, whale at the same

tine providing maaimum clearance betweoen the chanrs

and the vehicle Hoon which permits quick and easy

floor cleaning. leg foom, and storaye space | have

discovered that the above can be accomplished by sup:

porting a pare of seats upon a cross beam whieh can be

Secured on one side to a side wallot the vehicle and

supporting the beam about midway with a stagte

pedestal having an elongated hollow foot entoneing mn

direction longitudinally of the vehicle Hoon, hile alse

providing a foot structure which can be fiimly locked

to the Noor through exposed ends of the Hrotlow feet

while providing Closures which can be removed from

time te time when the fastening means must be

retiphtened An clongated hallow foot has its bottom

ends provided with openings for recening bolts, the

ends of the foot being Cut away atin angle to provide

vertical access fora sacket wrench, rele asabh closure

caps being provided forthe ends of the lout

DRAWING

In the accompanying drawing,

VIG Das a perspective view of the tront side ofa

Transl Chane prosiding [WO Passenger seats,

biG 2a teat perspective view of the Chaie shown in

Pla Ala broken perspective view on an enlarged

scale of the loatofthe pedestal,

HIG 4. an caploded perspective stew of the foot

Structure shown on FIG 3 bat with the end caps

removed te expose the athachment means and te pro

vide verbeal earned far ase: ketwrench,

PG Soa broken sectional view, the section being

taken as indicated at ine § Sof FIG) othe end cap

being partially pressed inte the hollow foot, and

HIG 6 a view similar te BIG § but showing the end

Closure cap locked in plaice

DE. AIL ED DESCRIPTION

In general, Phase provided a twa seat c hoe structure

cared by a been, the beam beimg supported about

madway by a single pedestal having at ats bottom an

clongated Notlow foot, the foot extending longitu:

dhnally of tengthwrse of the velicle so as ta preventany

oeaying ofthe char ducing the stactiag and stopping of

the coach Phe elongated foot has its end portions cut

meas to provide verti al recess to bolts passing through

the bottom: ends so thatthe foot can be fomly anchored

te the sebacte Hoot and hater eetychtened: sheatd) the

bolts work foase Closiee Cap means are prowided ber

CTosange the end openings With wing Tugs which snap inte

holes inthe sules of the foot se that the caps can be te

moved tor such tyhtoning eperitions at hited tines

Referong to the drawing, the transit chart 10 com

prises Iwo separate seat structures PE and 12 mounted

ona beam §2) The beam may be attached to the wall of

the coach or vehicle by use of a short length of angle

tron U4) The beam as supp cted by a single column

pedestal PS located about muda ay between the seats to

Afford maximum ley coum without depriving the charr

of the nceded support

the pedestal 16 19 attached te the flooe by the use of

the clongated tube ot toot TO whic h eatends in a

direction longitudinally of the coweh floor and includes

a Nat bottom plate Léa resting on the vehicle floor and

Secured teat: nthe dlastration graven, the foot rs sub-

Stantially square i eros section and bas tts ends 17 cut

away atan angle preferably about 45° to permit the use

ofasocket Wrench [ER to tryhten the attachment nuts of

bolts 19 which are recerved in belt holes at each end of

the bottom plate I6a Hence, the fastening bolts are

located in fore and att positions relative to the single

vertical column ES, and they extend at least partially

within the hollow foot member 16

tnd caps 20 are locked in place automatically by

having two shoulder avets or lips 21 snap inte receiv:

ing holes 22 as the two spring fingers oF wings 2d of the

end cap are pressed inside the loot tube and along its

bottom edge 24 When locked tn place, the shoulder

rivets of lags hold the end cap 20 tiemly against the

opening 17 at cach end of the foot 16 to remove the

cap, the rivet lugs 2f should be pressed inwardly to

clear the openmys 22 and the closure then withdrawn

This structure prevents unauthorized removal If

desired, a special tool may be employed for simultane:

ously pushing the shoul fer nvets ms ardly on each aide

ob the holes and thus Giciltating the removal of the

cups

While in the foregoing specication | have shown

Structure in considerable detail for the purpose of illus.

trating phases of the invention, ut will be understood

that such details may be varied widely by those skilled

in the art without departing from the spirit ofimy inven:

tion

felum

1 A mulople passenger transit vehicle chair com-

prising a chaie frame with aa ante side and a wall side,

said frame supporting a plarahty of passenger chaits

side-by side, mounting Means on sand wall side of said

frame for securimp said frame toa vehicle wall, a single

pedestal cooperating with: sard wall to support said

frame, said pedestal bemg spaced atan intermediate lo-

cation between sant wall side and said aisle side of said

frame and including an upright column rigidly con-

nected atts top to said frame, a hollow tubular foot

member inte geal with the bottom of said column and

extending forwardly and roarvardly therefrom, said

foot having a generally Hat bottom plite resting on the

Moor of said vehicle and provided with a bolt hole ad-

yacent cach end thereof to recene Hoor fastening bolts

securing sand foot to the vehicle Moor at forward and

rearward positions cehative to said column, said tubular

foot meaber further detming forward and rear access

apertires adjacent thert asocnited bolt holes to permit

weeess to Sand Lasteaing bolts when they are recenved in

sand bolt holes, san first and second closure means

removably attached to satd foot to cover sand access

apertures of sand foot member respectively and

cooperating with san hollow foot member to enclose

said fasten bolts when said Closures are assembled to

sant foot while permitting unrestricted tool access to

said fastening bolts when sant closures are removed.

2 The structure of claim f wherein said column of

sad pedestals located at the approeinrate longitudinal

and transverse center of the seat portion of sau frame

and wherein san mounting means comprises Mange

00032

mews whicheed te Sod frame for secunmy the same te

the sehnle % all

V othe structure of Chaim Pb wherein sd tubular foot

member has a rectihoear cross section with open for

sand and cearcends providing sam access apertures,

sath aeoess apertures extending at anne bination reba

tee te the honvental trom the bottom plate of sad toot

member upwardly aod toward sael Column member,

thereby permitting Sortical as well as sale tool access

4 The structure of clam DP where sand teame com

Peses a erase beam extending lonpitudinally of sand

char and wherem sant mounting means comprises a

ul cared by sand cross beam. sad structure further

COMPrsing a par of scats mounted upon said crass

heamin side by ode celation

§ The steucture of chum 3 wherem said closure

Means Comprise test and second end plates coveting

tespectively sad front and rear inchocd access apes

tures of said hollow ceetilinear foot member

6 A two pasenger transit elicle Chon comprising

acho frame wath an aisle side aud a wallbside, first and

second chairs Carned by said frame inside by side reba

tron, Mounting means securmy the wall side of sand

frame to an upright vehicle wall, a single pedestal sup-

Pertiny Sat frame aod cochadiy: an upaght column

member Commected te sau tame at ats upproaimate

Fonpatueinal dmadpomt aod an integral hollaw tubular

toot member extending fore aod att of sai chair from

the bottom ol said column member, sand wall Mounting

Means and Sad pedestal berg the only support for said

Trame and sail chor, sand foot having a generally

rectilinear cross section and lasing forward and rear

open cods defining fomwacd and rear access apertures,

caohot sard open ends beige inclined from the bottom

Of said foot upwardly and tow card said column: first and

second fastening bolts attaching said foot member to

suid Hoorn of sant vehicle at locations adjacent respec:

lively said forward and roar access apertures, said bolts

extending at least partially within said hollow foot

member, and first and second cover members

teleasably attached to sar hollow foot member to

cover respectively said tonaard and rear access aper-

ures, Said access apertures extending from the side of

an assocnited fistening boltover and above the same to

permit unrestricted tool access to a fastening bolt when

the assocuited coveris removed

00033

STRUCTURE RELIED UPON BY COURT AND OF WHICH EDWARDS HAD KNOWLEDGE DURING HIS EXTENSIVE ATTEMPT

TO DEVELOP A CENTER PEDESTAL SEAT FROM 1970-1972

ice el

are

eg 5 ae DX-VQ - Proposed

panama, omen Mitchell Table Tubular Foot For

National's Pedestal BART Seat Pedestal - Known By National's 1010 Seat

For Tour Coach Seat 1965 Pedestal 1965 Edwards 1967-1975 (1958 - 1959)

os aT oe a

al ,

eer —— . OT aed

radabe ges a i.

: Varese a Seams

i SR. a ener ie LSE: —— “6

—

pier

ee gee

LL,

—

i F

veOoO

DX-FJ - Proposed

Tubular Foot On

PX65 - Designed For PX66AA_ Inverted T

National 1958 and Considered Pedestal Considered Led [ e Considered National's 1025-

By Edwards 1970-1972 By Edwards 1970 a ie At Start of 1972 1031 Seat (1963)

Development

PX 69

Edwards

d £ Considered

: ™— sham At Start of 1972

PX06 AA INVERTED T PEDESTAL Oui Deve iopment

CONSIDERED BY EDWARDS 1970 :

saiain =

ELD

PX65 DESIGNED FOR NATIONAL 1958 ppp ted WOOD WAKEFIELD [Ne

IATE PEDESTAL (1969)

AND CONSIDERED BY EDWARDS 1970-1972 VERTED T PLANE MA’

Edwards - cross

Right.

And that is what you were doing during 1970 to 1972;

is that correct?

Off and on, yes.

And finally you found one, didn't you?

Oh, we finally settled on one, yes.

What was that?

That was the tubular columns copied from the Mitchell

table.

Like that shown in this courtroom which has been

identified as Defendant's bkxhibit SY?

That was the final version of it, yes.

What are the dates of CF-1 to --25?

Tney run fron June, 1979, and I am not quite sure

when the cther ones ere. They ail run approximately

within a montn of one another.

And you say that you completed your present design

sometime in September, 1972?

Rigsht.

And that is two years ago and three months; isn't it?

I suppose so.

All this time you have been looking for a desifn that

you can make at a price that you can sell?

No. This project was brought up and started by

112.

seid Mate ut tae as

nylon with the tubular “T" pedestal. This was run in passenger

transport on March 12, April 23, June 1l, August 6 of 1971.

The next ad is “American Seating Presents: 'Two for the

Road,“ " as a deluxe single back and seat, two passenger bus

seats, again showing the tubular “T" pedestal. This was run in

passenger transport October 1 and October 29 of 1971.

The next one is an ad, “When it comes to design

innovation, we'll try anything once." It shows the 6463 and

a picture of Chet Barecki. This was run in passenger transport

June 16 and October 6, 1972. This unit has a pedestal which

was specially designed and made for CKA.

Q Do you recall to wnom the first tubular "T" pedestals

were sold?

A Yes, Peoria, Illinois.

Q Would you refer to Plaintiff's Exhibit 161 and determine

if this refreshes your memory as to the dates that was sold?

A The order was entered on February 1l, 1971, and this is

a copy of the billing, including all the other sheets that go

along with the billing.

Q What date did you say?

A February 11, 1971 is the date the order was entered. It

was for 33 seats of 6455.

Q This is the first date that you sold a city service seat,

is that correct, with the tubular "T" pedestal?

A Yes, the "T" pedestal, correct. The second sheet spells

Court Rerorters, Inc.

Srenoryvea Reporrers

AKRON - CANTON, On10

0003'7

New National 1070...the

eDOCS NoKer

greater comfort for

passengers

more profit for

operators

In bus seating, just a little more space per

passenger can make the difference between

riding cramped or riding comfortable.

No one knows this more than bus oper-

ators. Yet space is always at a premium

and must be used for maximum passenger

capacity. That's why, when we designed the

new National 1070, we carefully engineered

in all the passenger space we could create

And we succeeded... with extra leg room,

extra hip room and extra shoulder room

Here's the rundown on the new space-

making features:

More shoulder room — full width seat

backs. Now larger passengers sit more re-

laxed with extra shoulder support backed

by the cushioned comfort of Pirelli webbing

and resilient urethane foam. Aslightly raised

headrest also better accommodates your

taller passengers

More hip room — A narrower, slightly

bowed arm rest support on the aisle side

makes the difference — adds extra space

where itis often most needed

ated by designing in a wide recess in the

seat back, raising the seat back a trifle, re-

positioning the optional footrest so it is

completely out of the way in its retracted

position. Equally important, National's new

Versa Beam” scat support doesn't interfere

with free foot movement and allows pas-

sengers to get in and out without having to

avoid conventional style seat legs.

And, National's new 1070 series seats are

on the beam in many other ways, too...

with benefits most important to your opera-

tion — structural strength, quality construc-

tion, durability of matenals, minimum main-

tenance and casy housekeeping .. . plus

options to give you exactly what you want

for your type of service

| More knee, leg and foot room were cre-

NATIONAL MODEL 1070-AP

with pillow headrest and

new Versa-Beam stainless

steel pedestal at aisie

location.

NATIONAL MODEL 1070-CP

with pillow headrest and

new Versa-Beam stainiess

steel podestal In _ center

position, xf

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DETAIL OF NATIONAL'S PEDESTAL

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BASE PEDESTAL AND COVER

898 580 FEPERAL REPORTER, 2d SERIES

The facts are not complicated. A police-

man observed appellant walk up to a locked

Toyota, remove a plywood panel from the

vent window, and enter the automobile.

Three po'icemen subsequently found appel-

lant in the car and pulled him out. They

found a pair of sunglasses, belonging to the

owner of the car, in Jimenez’s hip pocket

At trial, appellant tried to establish,

through his own testimony, that he had not

intended to burglarize the car but had

merely been secking refuge from some men

who had beaten him up in aw fight earlicr

that evening. On cross-exaumination the

prosecutor asked uppellant if he had ever

heen “convieted of stealing,” but never in-

troduced any evidence of prior convietions

On appeal appellant argues first that the

trial judge should have made a preliminary

determination that the probative value of

this evidence outweighed its prejudicial ef-

fect. Second, he claims that the prosecutor,

by referring lo prior convictions without

proving that they were felonies, offered

Misleading and incomplete evidence. Final-

ly, appellant insists that this Court) may

consider both of these alleged errors even

though his trial counsel made no objection?

Since appellant's case was tried before a

Judge, we do not have to determine wheth-

er this evidence was adimissible. As we

stated in United States v Impson, & Cir,

1977, 562 F 2d 970,

[a] judge, sitting as a trier of fact, ts

presumed to have rested his verdict only

on the admissible evidence before him

and to have disregarded that which ts

inadmissible. United States vo Masri, 547

F.2d 932, 936 (5 Cir, 1977), United States

¥. Dillon, 436 F 2d 1093, 1095 (5 Cir. 1971).

Any error is thus harmless if there evists

other admissible evidence sufficient to

support the conviction

Having examined the record, we are con-

vineed that there is sufficient clearly admis-

gible evidence to support appellant's convie-

tion. He committed the aets proseribed by

CZC. §§ 502 505. The trial judge, whose

job it is to piss on the credibility of wit-

nesses, United States vo Timpson, supra at

97), apparently did not beheve that defend-

ant lacked mens rea, The conviction as

therefore affirmed

AFFIRMED

iin Oe eee |

Anne D. NICKOLA, Plaintiff-Appellant,

Kenneth PETERSON, d/b/a Kaydee

Products Company,

Defendant-Appellee.

No. 76-1916.

United States Court of Appeals,

Sixth Cireuit

Argued Nov. 30, 1977.

Decided June 23, 1978.

Rehearing: and Rehearing En Bane

Demed et. 27, 1978

Action was brought for patent in-

fringement and for wrongful use of trade

secrets. The United States District Court

for the Eastern District of Michigan, South-

ern Division, James Harvey, Jo, 410 F.Supp.

590, after jury verdict for plaintiff on put-

ent count, yrranted defendant's motion for

judginent notwithstanding the verdict, de-

clared patent claims invalid and entered

judgment for defendant, and plaintiff ap-

pealed. The Court of Appeals, Markey,

Chief Judge, sitting by designation, held

that: (1) claims fd and 21 of Reissue patent

No. 27,100 relating to invention which wits

intended to furnish yas and eleetric service

2. Appellant argues that these errors were so preyudiad that they constituted “phan error “

00041

ene

NICKOLA v. PETERSON 899

Cite as 580 F.2d 898 (1978)

to individual mobile homes and which con-

sisted of combination of upright post with

electric power box, eleetric meter and yas

meter mounted on post, were not invalid for

lack of novelty, but (2) claims would have

been obvious at time of invention to person

having ordinary skill in the art and were

therefore invalid for obviousness.

Affirmed.

1. Patents 112.1

Statutory presumption of validity of

patent is merely rule of evidence that re-

quires defendant to prove, by clear and

convincing evidence, invalidity of patent in

an infringement action. 35 U.S.C.A. § 282.

2. Patents c>37

Statutory section which is general

statement of what may be patented does

not specify conditions for patentability and

“requirements” broadly referred tu in such

section, including requirement for “novel-

ty,” are set forth elsewhere, and thus, with

term carefully spelled out in next section,

no Warrant exists for looking to broad, un-

defined word “new” in general section for

understanding or application of novelty re-

quirement. 35 USC.A. §§ 101, 102.

3. Patents 45

No-evidence-of-novelty finding could

not stand in absence of record evidence that

identical invention, i. &., precise combination

of structural elements recited in each claim,

was known or used by others in country

before invention thereof by plaintiff or that

identical invention recited in each claim was

in public use or on sale in country more

than one year prior to date of her applica-

tion. 35 U.S.C_A. § 102(a, b).

4. Patents 328(4)

Claims No. 4 and 21 of Reissue patent

No. 27,400 describing a combination of a

pole, electric meter, electric power box, and

a gas meter, providing complete utility ser-

vice for individual mobile homes and trail-

ers, Were not invalid for lack of novelty. 35

US.C.A. § 102.

5. Patents 18

Exercise of judicial process in deter-

mining whether an invention has met non-

obviousness requirement turns on applica-

tion of entire statutory provision Lo all rele-

vant evidence of record. 35 US.C.A. § 103.

6. Patents 18, 41

Luck of cooperation, like — result

achieved or function performed, is not ma-

terial on issue of novelty of invention,

though it may be material on issue of non-

obviousness, and thus to conclude that a

combination lacks novelty because its cle-

ments don’t cooperate is to find novelty

lacking without regard to the prior art, and

is improper under applicable statute. 35

US.C.A. §§ 102, 103.

7. Patents 18

Issue of obviousness-nonobviousness of

invention is ultimately determined as con-

clusion of law, involving as it does consider-

ation of the subject matter of invention as

a whole and consideration of a legal ghost

called a “person having ordinary skill in the

art” while novelty and utility, on the other

hand, are determinable as issues of fact. 35

USCA. §§ 102, 103.

8. Patents 18

Obviousness of patent intended to fur-

nish gas and electric service to individual

mobile homes was a question of law. 35

US.C.A. § 103.

9. Patents =328(4)

Inventions recited in claims 4 and 21 of

Reissue patent No. 27,400 relating to combi-

nation of upright post, electric power box,

electric meter and yas meter mounted on

post, intended to furnish gas and electric

service to individual mobile homes, would

have been obvious at time inventions were

made to person having ordinary skill in the

art and were therefore invalid for obvious-

ness. 35 U.S.C.A. § 103.

Charles W. Chandler, Gifford, Chandler,

Sheridan & Sprinkle, Birmingham, Mich.,

for plaintiff-appellant.

00042

900 580 FEDERAL REPORTER, 2d SERIES

John K. McCulloch, Sayinaw, Mich., for

defendant-appellee.

Before CELEBREZZE, Circuit Judye,

LIVELY, Circuit Judge, and MARKEY,

Chief Judge of the U.S. Court of Customs

and Patent Appeals.*

MARKEY, Chief Judge, Court of Cus-

toms and Patent Appeals

Appeal under 28 U.S.C. § 1291 by plain-

tiff-patentee, Anne D. Nickola (Nickola),

from the district court’s patent invalidity

decision after a six-day jury trial! The

complaint against defendant, Kenneth Pe-

terson d/b/a Kaydee Products Company

(Peterson), contains count 1, all.ging in-

fringement of claims 4 and 21 in Nickola’s

patent? and count I, alleging wrongful use

of trade secrets. In a special verdict of

fifteen interrogatories, the jury found for

Nickola on the patent count and determined

her damages as $6,23000. On the trade

sveret count, the jury returned a gencral

verdict for Peterson. The district: court

then granted Peterson's motion for judg-

ment notwithstanding the verdict on the

patent count, denied his alternative motion

for a new trial, set aside part of the special

verdict, declared the two patent claims in-

valid, and entered judgment for Peterson

on both counts. Nickola appeals only the

patent invalidity decision. We affirm.

The Invention

The invention, intended to furnish gas

and electric service to individual mobile

homes, is the combination of an upright

post, with an electric power box, an electric

meter, and a heating fucl meter (e.g, a yas

meter) mounted on the post.

* Honorable Howard T. Markey sitting by desig-

nution

1. 410 F Supp 590, 193 USPQ 443 (ED Mich

1976)

Fig. 2 in Nickola’s patent is reproduced

here:

FIG, 2

Referring to Fig. 2, the patent describes a

mobile hume 42, an elongated nost 10, “con-

ventional” electric meter 14, “conventional”

electric pewer box 16, electric cable 54 con-

necting the power box to the mobile home,

ground wire 34 connecting “conventional”

mobile home ground wire connection 44 to

“conventional” underground metal water

pipe 40, “conventional” gas meter 78, “con-

ventional” yas pipes K2 and 84, “convention-

al” clephone box 62, and “conventional”

teleprone cable 69.

2. Reissue Patent No 27,400, for “Mounting

Pedestal Por Utilities,” granted June 20, 1972

reissuing Patent No 3,502,755. granted March

24, 1970 on an applestion tiled November 20,

1967

C0043

NICKOLA v. PETERSON 901

Cite as S80 F.2d 69S (197M)

Claim 4 recites a combination of four

structural elements:

“4. (1) An clongated post mounted in an

upright position,

{2} an electrical meter and

(3) an electrical power box mount-

ed on the upper end of said post on

opposite sides thereof, [and]

{4] a heating fuel metering means

mounted to said electrical meter

and said electrical power box.”

(Bracketed matter and paragraph-

ing added ]

Claim 21 recites a combination of six

structural elements:

“21. (1) An clongated post mounted in

an upright position,

[2] an electrical meter and

(8) an electrical power box mount-

ed to said post,

[4] electrical wires extending up-

wardly along said post and cleetri-

cally connected to said meter,

{5} an electrical wire connected to

and extending from said power

box, and

(6) a heating fuel metering means

mounted to said post.”

[Bracheted matter and paragraph-

ing added! }

Nickola’s company, Adnic Products Co.,

sells a metal post & ft. in length, with an

L-shaped mounting plate on one end, bear-

ing the trademark POWER PACK PEDES-

TAL. The post and an eleetrie power box

are sold us a unit

The buyer (e. g, a mobile home park

operator) installs the unit in an upright

position by burying approximately half of

the post in the ground at a mobile home

site. The local utility company provides

underground gas and cleetric service to the

post, and also provides and mounts the gas

and electric meters on the post.

The Trial Testimony

Trial was in November, 1975. Nickola,

who demanded a jury trial,? testified, so far

us material here:

That she was manager of a mobile home

park, Chat in about 1960 electric meters for

mobile homes were mounted on a “yang

rack” at the rear of the park; that in 1960

mobile homes used “bottled gas”; that in

about 1965, when gas service became avail-

able, the pas meters were also mounted on

a gang rack at the rear of the park, with

individual underground supply lines run-

ning from each gas meter to a mobile home

site; that the next event was introduction

of an “electrical pedestal” mounting an

electric meter at each mobile home, replac-

ing the central gang rack of electric meters;

that she then “introduced the first safe

pedestal that combined gas and clectric.”

Nickola told of a mobile home fire in

about 1965, when firemen fought against

“live gas and a live clectrie” because they

had disconnected the “wrong gas” and

“wrong electric” at the yang racks, and

that, in conceiving her invention in May,

1966, she “put something together and

worked it out where utilities could be on

the same device.”

Nickola said her first pedestals for gas

and elvetric meters were approved for her

park by the local utility (Consumers) and

placed in service on December 18, 1967.

She consulted a patent attorney, had pre-

pared a “Reeord of Invention” form dated

April 26, 1967, and had filed her original

patent application in the Patent Office

(now the Patent and Trademark Office) on

November 20, 1967 (exhibit 4). She said

that, with commercial sales beginning in

1968, “40 to 50,000" units had been sold.

On cross-examination, she answered that

the yas meter, the clectric meter, and the

other devices which can be mounted on the

post, each “work independently of the oth-

er.”

Kenneth DeVerna, long time employee of

Consumers and member of its product eval-

uation committee, testified that, to his

knowledge, Nickola’s pedestal was the first

approved by his company for combined gas

and eleetric service. John D. Gribble, an-

3. Under Fed R Civ P 36

C0044

902 580 FEDERAL REPORTER, 2d SERIES

other Consumers employee, gave essentially

the same testimony!

When Nickola rested, Peterson moved

orally for a directed verdict on the ground

that Nickola had not proved infringement.

That motion being denied, Peterson testi-

fied primarily with respect to infringement

and trade seerets. Peterson then presented

Francis B. Boyle as “an expert in the art

relating to utility pedestals.”

In summary, Boyle testified that from

1962 until his retirement in 1972 he had

been designing, manufacturing, and install-

ing utility pedestals; that one of his mobile

home pedestals was an clongated post

mounting an electric meter and an clectric

power box, as shown in a photograph dated

September, 1963; that in 1963 or 1964 “cus-

tomers” requested him to “put a hole in

there [in the post} for the mounting bracket

to support a gas meter,” that he designed a

second utility pedestal like his first, as

shown in a photograph dated June, 1966;

that Consumers approved his second pedes-

tal for mobile homes on July 8, 1966; that

on the same day he visited Nickola and

offered to supply his pedestals; that “in the

summer of 1966," in his opinion, it would

have been “obvious ° * * to mount a

gus meter and an electric meter and power

4. Nickola presented additional exhibits and

seven more witnesses Discussion of that evi-

dence, directed primarily to infringement, dam-

ages, and trade secrets, ts unnecessary

5. Nickola’s counsel objected to the question

which prompted this testimony on the ground

that it called for “the ulumate legal Conclusion

for the Court to make" The district court

correctly overruled the objection, citing Fed R

Evid 704

“Rule 704. Opinion on Ultimate Issue

“Testimony in the form of an opinion or

inference otherwise adnussible is not objec:

Gonable because to embraces an ultimate ts-

sue to be decided by the tner of fact”

6. Boyle's patent, cited without obsection as pri-

Or art by the patent examiner in Nickola’s reis-

sue apphcation, depts m big ban electne

meter 30 and electric power box 32 mounted on

vertical post 12 (other reference numbers delet

ed)

box on the same pedestal,”> though he

“didn’t like the idea of mounting a gas

meter on the same post us an clectrical

meter” because if “the [gas] pipe broke and

there were a spark, it would ipnite;” and

that his second pedestal is described in U.S.

Patent No. 3,450,951 (exhibit 14), for “Out-

door Electrical Meter Box and Service Qut-

let For Mobile Homes,” yranted June 17,

1969 on an application filed July 12, 19678

In rebuttal, Nickola gave her opinion that

it would not have been obvious in May, 1966

(her conception date) “to combine both a

yas meter and an cleetric meter on the

same post” because gas “was just newly

introduced,” “there was a lot of opposition,”

and “people dislike the gas and electric on

the same thing because of fires and dangers

of that sort.” She further stated that

Boyle's visit to her occurred in September,

1968 (not on July 8, 1966).

Motions After The Close of Evidence

{1} Peterson again moved orally for a

directed verdiet on the ground that Nickola

had not proved infringement. That motion

was denied. Nickola then moved orally for

a directed verdict of patent validity, on the

ground that Peterson had not overcome the

NICKOLA vy, PETERSON 903

Cite as S40 F.2d 598 (197m)

statutory presumption of validity,’ and ar-

guing that there had been “no evidence to

go to the jury to challenye the validity of

the patent under See. 102" of the Patent

Act, the novelty requirement,” nor “any

competent testimony to go to the jury to

challenge the validity of the patent under

See. 103° Tn opposition, Peterson argued

that the patent was invalid because “the

combination of the elements such as cleetrie

power boxes and meters and pas meters is

really an aggravation [sie, agyreyation) of

elements * *° %, they have no other

function among themselves or one upon the

other” and because “the mounting of a gas

meter on a pedestal which already supports

an electric meter and a power box is obvi-

ous and was obvious at the time plaintiff

7. 35 USC 9§ zR2 (1970) provides in part

“§ 26200 Prestunption of sahdity, defenses

“A patent shall be presumed svahd bach

cham of 4 patent (whether im independent or

dependent tom) shall be presumed valid in

dependently of the vahadity of other clauns,

dependent: clans shall be presumed valid

even though dependent: upon am invalid

Cham The burden of establishing: mivaliity

ofa patentior any Chaim thereot shall rest on

the party asserting: wt”

The district Court Correctly stated. mats yury

Instructions, that the presumption as “merely a

tule of evidence that requires the defendant to

prove by cleat aod convincing evidence” the

invahdity Gf the patent bike other legal pre-

sumptions, Chat provided tor in $5 USC. § 282

Merely assizns the burden of proof, as the hast

(and for (hat purpose redundant) semtence of

the provision makes clear

8. 35 USC § 102 (1970) provides

“S102 Conditions for patentability, novelty

and loss of npht to patent

‘A petson shall be enutled to a patent

unless—

“(a) the invention was known or used by

others in this country, or patented or descmb-

ed tia printed publication in this or a foreign

country, before the invention thereof by the

appheant for patent, or

‘(b) the invention was patented or describ-

edna pointed publication in this or a foreyn

COURTEY or in public ase on om Sale an this

COUNTEY, More Chan one vear prior to the date

of the appheation tor patent im the United

States, or

“(c) he has abandoned the invention, or

“(d) the invention was fist patented or

Caused to be patented by the appheant or his

legal representatives of assygns in a forengn

made her invention, whenever she made her

invention.”

The district court denied Nickola’s motion

for a directed verdict, statingg “there are

issues of fact to yo to the jury as to the

Validity of the patent.”

Aware that the trial judge intended to

treat Validity as a question of law, after

submitting interrogatories to the jury,

Nickola moved orally to submit the “issue

of validity itself” to the jury beeause it

“can be tried by the jury” under Fed R.

Civ.P. 88. In denying this motion, the dis-

trict court observed that “it was held,” in

Graham vy. John Deere Co., 383 U.S. 1, 17,

BH OS.Ct. 684, 15 L.Bd.2d 545 (1966), “the

question of patent validity is one of law.”

country prior tu the date of the application

for patent in this Country on an application

filed more than twelve months before the

filing of the application in the United States,

“(e) the invention was described in a pat-

ent pranted On an application tor patent by

another tiled i the United States before the

tnvention thereot by the applicant for patent,

“CD he did not himself invent the subject

matter sought to be patented, or

“(g) betore the appheant’s invention there-

of the invention was made in this country by

another who bad not abandoned, suppressed,

or concealed i In determining priority of

invention there shall be considered not only

the respective dates of conception and redue-

Gon to practice of the invention, but also the

reasonable diligence of one who was first to

conceive and list to reduce to pracuce, from

a ume pror to conception by the other”

9 35 USC. § 103 (1970) provides

“g 103° Conditions for patentability, non-

obvious subject: matter

“A patent may not be obtained though the

tavention ts not wWentically disclosed or de-

senibed as set forth in section 102 of this ttle,

if the differences between the subject matter

sought to be patented and the prior art are

such that the subject matter as a whole

would have been obvious at the time the

invention was made to a person having ordi-

nary skill in the art to which said subject

matter pertains Patentability shall not be

neguuived by the manner in which the inven-

tron Was made”

00046

904

The Special Verdict

Of the fifteen interrogatories answered

by the jury in its special verdict,” these six

are material here:

“Interrogatory No. 1

Is plaintiff's claimed invention ‘differ-

ent’ from the prior art by its combining

an electric power box and an electric me-

ter on an upright clongated post with a

fuel metering means, such as a vas meter,

as stated in claim no. 4 of Nickola reissue

patent no, 27,400?

Answer ‘yes’ or ‘no’. Answer: Yes"

“Interrogatory No. 2

Does the combination of a fuel meter-

ing Means, such as a yas meter, with an

electric meter box, and clectrie power

box, and an elongated pole, as stated in

claim no. 4 of Nichola reissue patent no

27,400, produce a combined result other

than the result produced by a fucl meter-

ing means, an electric power box, an elee-

tric meter, and an elongated pole operat-

ing separately?

Answer ‘yes’ or ‘no’. Answer: Yes”

“Interrogatory No. 3

Would a person or ordinary skill in the

utility meter and power box mounting art

at the time of the claimed tivention have

found the combined result of a fuel me-

tering means, an clectric power box, elee-

tric meter and an elongated pole, as stat-

ed in claim no. 4 of Nichola reissue patent

no. 27,400, to be unusual and unexpected?

Answer ‘yes’ or ‘no’. Answer: Yes”

“Interrogatury No. 4

Is plaintiff's claimed invention ‘differ-

ent’ from the prior art by its combining

electrical wiring, some of which runs up-

warily along the upright pole and electri-

cally connects to the electric meter, and

some of which is connected to and ex-

tends from the power box, with the clee-

tric meter, electric power box, and fucl

metering means as set forth in claim no.

21 of Nickola reissue patent no. 27,400?

10. See Fed R Civ P 49(a)

The jury was not asked at any point to

define or describe the “combined result" re-

ferred to in interroguterivs 2, 3, 5, and 6, nor

580 FEDERAL REPORTER, 2d SERIES

Answer ‘yes’ or ‘no’. Answer: Yes”

“Interrogatory No. 5

Doves the combination of an electric me-

ter and an electric power box with associ-

ated electrical wiring, a post, and a heat-

ing fucl metering means as set forth in

claim no. 21 of reissue patent no. 27,100

produce a combined result differing from

the results produced by the electric meter

and power box with associated wiring, a

post, and a heating fucl metering means

operating separately?

Answer ‘yes’ or ‘no’. Answer: Yes"

“Interrogatory No. 6

Would a person of ordinary skill in the

utility meter and power box mounting art

at the me of the claimed invention have

found the combined result of electric wir-

ing, a fucl metering means, an electric

power box, electric meter box, and an

elongated pole, as stated in claim No. 21

of Nickola reissue patent no. 27,4100, to be

unusual and unexpected?

Answer ‘yes’ or ‘no’. Answer: Yes" "!

Motion For Judgment Notwithstanding

The Verdict

Peterson filed a written motion for judg-

ment notwithstanding the verdict," or al-

ternatively for a new trial, accompanied by

an extensive memorandum asserting “inval-

idity, us a matter of law.”

The District Court

With its order yranting Peterson’s motion

for judgment n. o v., denying the alterna-

tive motion for new trial, setting aside the

jury's answers to interrogatories 2, 3,5, and

6 (and 15, setting damages at $6,230.00),

declaring the two patent claims invalid, and

entering judgement for Peterson, the district

court filed an opinion containing:

(1)

“In order to be patentable, any claimed

invention must satisfy the requirement of

was the jury asked to answer “yes” or “no” to

any question spelling out a specific “combined

result"

12. Under, Fed R Civ P. 50(b)

€004'7

NICKOLA v. PETERSON 905

Cite ay SHO F.2d 69H (197M)

‘novelty.’ This requirement is the sine

qua non of patentability, 45 USC

§ WLI) Since plaintiff does not claim to

have invented crther the yas meter, the

electric meter, or the clectric power box,

but claims to have invented the combina-

tion of those elements in her Power Pack

Pedestal, the element of novelty if such

there is must reside in the combination of

those elements. Anderson's Black Rock,

Inc. v. Pavement Salvage Co, 396 US.

57, 9 SC. 805, 2 LR 2d 258 (1969).”

(410 F.Supp. at 593, 193 USPQ at 445.)

(2]

“The issue of novelty was submitted to

the jury in interrogatories numbers 2

and 5. The jury by answering ‘yes’ to

each found that patent claim no. (4) and

patent claim (21) both satisfied the novel-

ty requirement. In viewing the evidence

in the light most favorable to plaintiff,

and drawing all reasonable inferences in

her favor, the Court finds the conclusions

of the jury to be unwarranted.

“Although a patent is presumptively

Valid, this presumption has no indepen-

dent evidentiary weight Sperberg v.

Goodyear Tire & Rubber Co., 519 F.2d 70

(CA 6, 1975) [cert denied, 428 US 9s7, 96

S.Ct. 395, 46 L.Ed 2d 808 (1YTS)} Since

the Court finds no evidence from which a

Jury could reasonably conclude that the

novelly requirement of $5 USC. § 101

was satisfied and substantial evidence

that it was not satisfied, defendant's mo-

tion for judgment: notwithstanding the

verdict will be granted. Gillham v. Ad-

miral Corp, 523 Fd 102 (CA 6, 1975)

{eert. denied, 424 US. 913, 06 SCL. 1118,

47 LR 2d 318 (1976))" (Td. at 598 94,

193 USPQ at 445 46.)

[3]

“Likewise, this Circuit has recently re-

stated the rule that every clement of a

combination invention must cooperate to

produce a new result in order for there to

be novelty within the meaning of 35

U.S.C. § 103. Phillips Industries, Ine. &

13. 35 USC. § 101 (1970) provides

“gS 10} Tnventions patentable

“Whoever invents or decovers any new

and useful process, machine, manutacture, of

Motil Temp, Ine. vo State Stove & Manu-

facturing Co, Ine. [522 F 2d E37 (oth Cir

1975)). The uncontroverted evidence be-

fore the Court ts that there is no coopera-

tion between the elements in plaintiff's

claimed invention and that no cooperative

result is produced other than the sum of

the independent functions of those cle-

ments Accordingly, the patent claims in

issue Will be held invalid for lack of nov-

elty. 35 USC. § 10L”" (Id. at 595, 193

USPQ at 446 47.)

(4)

“Whether persons of ordinary skill in

the art disagree as to the safety of a

product or techniques does not determine

the issue of obviousness. The issue re-

garding obviousness is whether the dif-

ferences embodied in a combination prod-

uct and the result so produced would

have been non-obvious to a person of

ordinary skill in’ the art, not) whether

there was a controversy over whether

such was safe. In re Jansen, 525 F 2d

1059 |, IST USPQ 743] (Cust. & Pat.App.,

W975), cert. denied, 425 US. 972, 96 S Ct.

2170, 48 L. Bd 2d 796 (1Y76))" Td. at 596,

12 USPQ at 447]

[5]

“Since the Court finds no evidence on

Which a finding of non-obviousness could

be based, the Court: will grant defend-

ant’s motion for judgment notwithstand-

ing the verdict on interrogatories number

(3) and number (6). In these interrogato-

ries, the jury had answered that a person

of ordinary skill in the art would have

considered the result) produced by the

claimed combination inventions to be un-

usual and surprising.” (Jd, 193 USPQ at

448.)

(6)

“In sum, the Court finds contrary to

the determinations of the jury that the

patent claims at issue are invalid both for

lack of novelty and beeause of obvious-

ness. Although the Court is reluctant to

composition of matter, or any new and useful

improvement thereof, may obtain a patent

therefor, subyect to the conditions and re-

quirements of this ttle”

00048

906 580 FEDERAL REPORTER, 2d SERIES

set aside the determinations of a jury, the

Court recognizes that patent validity is

primarily a question of law. Dickstein vy.

Seventy Corp, 522 F 2d 1204 (CA 6, 1975)

[eert. denied, 423 US. 1055, 96 S.Ct. 787,

46 1, Bald 644 (1976)), Monroe Auto

Equipment Co. vo Heekethorn Manufae-

turing £ Supply Co, 332 F 2d 406, 411

(CA 6, 1964) [eert. denied, 379 US. 888, 85

SC 160, 13 1. Bd 2d 93 (1964)). In deter-

mining the issue of validity, the Court is

hound to serutinize patented combina-

tions of old elements with special care

due to the improbability of finding a pat-

entable invention in an assembly of old

elements, Phillips Industries, Inc. & Mobil

Temp, Inc. v. State Stove & Manufae-

turing Co, Ine, 522 F.2d 1137 (CA 6,

1975); and because of the ‘bliyht’ on free

commerce Which is imposed by an invalid

patent. Hieyer v. Ford Motor Co. 516

F 2d 1324 (CA 6, 1975) [cert. deniod, 423

U.S. 1056, 96 S.CL. 78%, 46 L.Ed 2d 615

(1976). [fd at 596-97, 193 USPQ at

448]

The Issue

The dispositive issue is whether the dis-

trict court erred in granting Peterson's mo-

tion for judgment n. o. v.

OPINION

I. Statutory Basis of the Novelty Re-

quirement

{2} The statement that 35 U.S.C. § 101,

supra note 13, sets forth the “novelty re-

14. Patent: cases bemg relatively infrequent,

Comments of potential applicability may be

found in “Judges’ Paumer Patent and Copy-

tight Law and Procedure” in Pan VIL of Sem.

nars For Newls Appomted US District Judges

(1970 71, Federal Judienal Center, Washington,

DO) and “Special Problems in Patent Cases,”

66 F RD 529 (1975) (reprinted in 57 J Pat Off

Soc y 675 (1975) presented at the Federal Jud:-

cial Center, October 16, 1978 bor discussion

of jury trals in patent cases, see Ropski, Cun-

stitutional and Procedural Aspects of the Use

of Jones m Patent Litygation Guts 1 1), 56

J Pat Off Soe’y GY, 675 (1976)

1S. “the novelty required is not novelty in an

absolute sense, as the statute defines what ts to

be lucked tom order to show that an mvention

quirement” for patentability was in error.

That section does employ the term “new,” a

synonym for “novel.” Section 101, how-

ever, is a genera! statement of what may be

patented (“process, * * * improvement

thereof”). The words “new” and “useful,”

appearing twice, merely indicate the broad

concept that a patent may not be obtained

on that which is old or useless. Section 101

does not specify the conditions for patenta-

bility. The “requirements” (conditions)

broadly referred to in § 101, including the

requirement for “novelty,” are set forth

elsewhere in the statute."

Congress accomplished the task of defin-

ing “new,” i. c., of setting forth the “novel-

ty requirement,” in the succeeding section,

35 U.S.C. § f02, supra note 8, entitled “Con-

ditions for patentability, novelty and loss

of right to patent.” (Emphasis added.)

Thus, as the Ninth Circuit stated in Reeves

Instrument Corp. v. Beckman Instruments,

Inc., 444 F.2d 263, 270, cert. denied, 404 US.

951, 92 SCt. 243, 30 L.Ed 2d 268 (1971),

“[t}he requirement of novelty is more spe-

cifically defined in 35 US.C. § 102° *."

With the term carefully spelled out by Con-

Kress in § 102, no warrant exists for looking

to the broad, undefined word “new” in

§ 101 for understanding or application of

the novelty requirement. There being a

clear statutory base for the novelty require-

ment in § 102, judicial application of the

novelty requirement should focus on that

specific provision."

is not new." Federico, “Commentary On The

New Patent Act fof 1952)" in 35 USCA p 1,

at p 17 (1954) Thus, prior public knowledge

or use in 4 foreign Country would destroy nov-

elty if the novelty requirement resided merely

mothe word “new” im the absolute sense in

which it appears in § 101, whereas Congress

has provided in § 102 that such foreign circum.

stances do not destroy novelty under the stat-

ute Similarly, ander proper carcumstances, a

person may be entitled to 4 patent, even though

that person was not the first to make the mven

195 USPQ 701 (Cust & Pat App 1977) (hese

inventor suppressed er concealed the mven-

ten, therefore. second mventor entitled to pa

orty under S59 USC § 1O2(e))

00049

NICKOLA v. PETERSON 907

Cite ay S80 F.2d s98 (197K)

Legislative history is in accord. S Rep.

No.1979, 82nd Cong,, 2d Sess. (1952) states

at p. 5, USCode Cong. & Admin.News

1952, pp. 2394, 2309,

“Section 101 sets forth the subject mat-

ter that can be patented, ‘subject to the

conditions and requirements of this title.’

The conditions under which a patent may

be obtained follow, and section 102 covers

the conditions relating to novelty.” [Em-

phasis added.)

then at p. 6, U.S.Code Cong. & Admin.News

1952, p. 2399,

“Section 102, in yeneral, may be said to

describe the statutory novelty required

for patentability, and includes, in effect,

an amplification and definition of ‘new’

in section 101." [Emphasis added |

and finally at p. 17, US.Code Cony. & Ad-

min. News 1952, p. 240% in the “Revision

Notes,”

“The corresponding section of existing

Statute is split into two sections, section

101 relating to the subject matter for

which patents may be obtained, and see-

tion 102 defining statutory novelty and

~ stating other conditions for patentabili-

ty.” (Emphasis added.]

Statements identical to the foregoing ap-

pear in HER Rep.No 1923, znd Cong, 2d

Sess. (1952) at pp 6, 7, and 17, respectively

As stated in In re Bergstrom, 427 F.2d

1394, 1401, 57 COPA 1240, 1249, 166 USPQ

256, 262 (1970) A

“(Tbe criteria for determining whether

given subject matter is ‘new’ within the

meaning of § 101 are no different than

the criteria for determining whether that

subject matter possesses the ‘novelty’ ex-

pressed in the title of § 102. The word

‘new’ in § 101 is defined and is to be

construed in accordance with the provi-

sions of § 102 Thus, that which possess-

es statutory novelty under the provisions

of § 102 is also new within the intend-

ment of § WI We hase found no evi-

dence of Congressional intent to define

the word ‘new’ as used in § 101 in any

different’ manner.” [Footnote omitted |

Il. Peterson Did Not Carry His Burden

of Proving Lack of Novelty

Considering the finding of “no evidence

from which a jury could reasonably con-

clude that the novelty requirement * * *

was satisfied and substantial evidence that

it was not satisfied” (410 F Supp. at 594,

193 USPQ at 446) inconsistent with the

jury's answers to interrogatories 2 and 5,

supra, the court set those answers aside.

13] The no-evidence-of-novelty finding

cannot stand in the absence of record evi-

dence: (1) that the identical invention, A,

the precise combination of structural ele-

ments recited in each claim, “was known or

used by others in this country * * *

before the invention thereof by [Nickola]”

(§ 10%4)); or (2) that the identical inven-

ion recited In each claim was “in public use

or on sale in this country, more than one

year prior to the date of [Nickola’s] applica-

record.

[4] The “substantial evidence,” referred

to as defeating novelty, was not specified.

Peterson's only evidence touching novelty

was Boyle's testimony that “customers” had

requested him to make holes for a gas me-

ter bracket in some of his electric meter

pedestals, Boyle did not testify that he had

ever seen a gas meter so mounted. There

Was no evidence that any customer had

actually mounted a yas meter on a Boyle

pedestal and no evidence that the utility

company had given the required approval

fur any such mounting. There was thus no

evidence that gas meters had been mounted

on electric meter pedestals before Nickola’s

invention, i.e, that Nickola's combination

was old. Peterson's evidence to show lack

of novelty was thus wholly inadequate to

meet his burden under § 102.

Peterson having failed to meet his bur-

den, evidence of novelty was unnecessary.

45 USC § 282, supra note 7. Nonetheless,

Nickola’s utility witnesses testified without

challenge that Consumers had not approved

& combination gas and electric pedestal be-

16. The other subsections of § 102 have no application to the facts of this case

00050

908 580 FEDERAL REPORTER, 2d SERIES

fore approving Nickola’s in December, 1967.

Were it necessary to evaluate the evidence,

therefore, the novelty of Nickola’s particu-

lar claimed combination would appear un-

questionably established

In all events, novelty is a question of fact,

as discussed below, und it is clear that the

evidence touching upon novelty, such as it

was, was sufficient to have been submitted

to the jury. Under such circumstances, a

conclusion that no reasonable juror could

have found the inventions recited in claims

4and 21 to have been novel constitutes an

error of law.

Ill. New Result v. Novelty

Though the jury's answers lo interrogato-

ries 2 and 5 were set aside, on the theory

that they were inconsistent with a lack of

novelty finding, 2 und 5 were not the mate-

rial interrogatories on the novelty issue.

Those interrogatories were directed to a

different question—whether the inventions

“produce a combined result” other than (in-

terrogatory 2), or differing from (interroga-

tory 5), “the result produced by [the individ-

ual structural elements] operating separate-

ly.” Thus, interrogatories 2 and § are con-

cerned with the overall function or opera-

tion of the combination of individual struc-

tural elements, not with the novelty of the

combination itself.

The function of the combination can be

material, not on the novelty issue, but on

the separate and distinct issue of nonobvi-

ousness (35 USC. § 103, supra note 9).

The view that “novelty” was covered in

interrogatories ;ambers 2 and 5 and that

there must be “a new result in order for

there to be novelty within the meaning of

35 US.C. § 103", intermixed the question

of novelty (whether the particular combina-

17. The opinion below includes the statement

that “this Circunt has recentl, restated the mule

that every element of a combination mvention

must Cooperate to produce a new result m

order for there to be novelty within the mean

ing of 35 USC 103° (410 F Supp at 595, 193

USPQ at 446 47, emphasis added), citing Phil-

ips Industnes Ing v State Stove & Muanufac-

turing Co. inc, supra Philips Industries in-

volved no question of novelty in the combina-

tron claumned

tion claimed had existed before Nickola

made it) with one of the indicia (a “new” or

“unexpected” result) sometimes useful in

determining the entirely different question

of nonobyiousness. The distinction is im-

portant, for patent law is entirely statutory

and there is not a word in the statute

requiring a new result or a new function as

a condition of patentability. Indeed, a re-

quirement that the result’ must itself be

novel would nullify the statutory provision

encouraging disclosures of “new and useful

improvements thereof.” 35 USC. § 101.

Most patents are granted on improve-

ments of prior devices; and the improved

device will inherently achieve the same ba-

sic result as that achieved, and will perform

the same basic function as that performed,

by the prior device. An improved jet en-

gine, for example, necessarily achieves the

sume result and performs the same fune-

tion—propulsion—as that achieved by prior

jet engines, yet it may constitute a “new

and useful improvement” entitled to the

protection provided by our patent laws, 45

USC. § 101, as an incentive to make and

disclose improvements in) prior devices

Similarly, the result achieved by the horse,

the automobile, and the airplane is the same

—transportation. Only the speed of

achievement varies. Yet it may be suppos-

ed that one unaware of the statute and its

constitutional background would recognize

the airplane as a patentable improvement

over the horse and the automobile. To re-

quire in every case that a new “function” or

new “result™ be performed or achieved,

would be destructive of “the progress of

* * * useful arts” goals sought in the

constitutional-statulory scheme.

The interrogatories relating to novelty

were numbers 1 and 4, which were not

18. In General Electne Co vo Wabash Appliance

Corp, 304 US 364, 368, 58 SCL B99, 9D], BZ

Lid 1402 (1935), the Court noted | ongression-

al recognition that “most inventions represent

MNProvements On some Custing article, pron ess

ents are currently issued cach year) Comnuys

sioner of Patents and Trademarks Annual Re

port, Fiscal Year 1976 (1977)

C0091

NICKOLA v, PETERSON 909

Cite os S40 F.2d 694 (197M)

disturbed Those interrogatories inquired

Whether the inventions were “different”

from the prior art, ie, whether Nickela’s

combination was “novel” in the statutory

sense? 35 USC § 102 The jury answer-

ed “yes”, and in the absence of reeord

evidence indicating the presence of the

claimed combination in the prior art, that

aNoWer Was correct

[5] Though it was error to hold Nicko-

la’s patent claims invalid for hack of novel-

ty, the district court did notere in its grant

of judgment noo. for noselty alone will

not render an invention patentable Some

new and useful inventions are patentable.

Some are not To be patentable a new and

useful invention must meet the third re-

quiremeat--nenobsiousness — set forth in 35

USC. § 105%

IV. Nonobviousness v. Novelty

Confusion of the novelty requirement

defined in § 1U2 with the nonobvieus sub-

Ject matter requirement defined in § 103 is

avoided when the statutory sections are ap-

plied in) proper sequence The starting

point in applying § 104 is the recoynition

that the claimed invention--the chimed

subject matter as a whele-—-is novel under

19. [A] device lacks novelty uf there as. or has

Deen, 4 sulotuntiail iential pron device”

Monroe Nute Equip Coo. Heckethorn Mtg

Co, $482 b 2d 4, 404 ctith Coe cert) dened

379 US mae b> SCL LOO) 13 LE badd 93

(14)

20. There is au requirement that # court find

“MVenton” present fhe ditticults caper

enced by courts im defiunag that anvorphous,

ephemera indefinable libel was noted by the

Court Graham t tohe Deere Co. ingles 4,

HE b2. se 5 Ct O84 O90, 15 L bd 2d 545 ClNGe)

“The Language im the case [Afotohhiss v.

Greenwood 52 Us C1 Tew) 245) 267, 13

Pb Ges CPS500)) and on these which fol

Jused. pave Eth to mention’ as a word of

Jepal art stgmatne patentable aecentions

Vet, as thas Court tas observed. [jhe uruth

the word Pinvenden | Cannot be defined in

Such nadine as te attend any substantial aid

m deternunng whether a particular device

Involves an Exercise of the imventive faculty

or met” MeChun sy Ortmaver, Fab US 419,

42712 NOt Te TH sob bd MING), A

AP leat ve Supermarket Con [MOUS

VA7P at U5) TESCe 127 at deed bad dhe

Its use as 4 Label brouptt about a Dene varie:

§ 102. If the claimed subject matter be old,

consideration of § 103 is unnecessary. The

first clause of § 103 states that: “A patent

may not be obtained though the favention is

not identically disclosed or described ay set

forth in section 102 of this tithe.” The

heart of § 103 then follows, “if the differ-

ences between the subject matter sought to

be patented and the prior art are such that

the subject matter as a whole would have

been obvious at the time the invention was

made to a person having ordinary shill in

the art te which said subject matter per-

tains.”

Though, early on, the opinion below cor-

rectly stated, “novelty if such there is must

reside in the combination of those cle-

ments,” (410 F Supp. at 593, 193 USPQ 445)

ening Anderson'’s-Black Rock, Ine. vo Pave-

ment Salvage Co, Inc, 396 US. 57, 90S Ct.

$05, 24 L.Bd.2d 258 (1969), it latter stated,

incorrectly, that “the determination of nov-

elty for combination inventions does not

turn on whether the old elements are ar-

ranged in a new manner which serves some

useful function but on whether the function

produced by that arrangement: is itsclf

new.” (410 F Supp. at 595, 193 USPQ at

M6) As above stated, a requirement for a

ty of opmmons as to its meaning both in the

Patent Otfice. mm the courts, and at the bar”

That dittieulty led Congress, 26 years apo, Pat

ent Act of 1952. 60 Stat 742 (enacting Tithe 45,

Us Code), to specity nuonobsiousness of the

subject matter as a whole to one skilled in the

artat the tine the mention was made as the

“new statutory formulation” (John Deere, Id

SSS US at 12. kG S Ct OA) of the third re

quirement tor patentululity. Congress turther

mandated that “vention” should henceforth

refer to the “invention of dsscovery” (35 USC

§ 100(a)) 8 the thing invented or discovered

Ditheoulues since 1952 have centered on mapt

teferences to old cases Calling on courts to tind

“vention” and on pudienal efforts to supply

semantic mechanisins as aids in defining “obvi

spphcation of all su

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