Petition for a Writ of Certiorari — Novo Industrial Corp. v. Standard Screw Co.
Supreme Court brief1967
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SUPREME, COURT, at A : FILED. ö
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a 1 23 1009
. alk. JON FTAVS, CLERK
y Supreme Court of the United State
‘OctosER TERM, 100
—— ͤ——-—-V—
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NOVO INDUSTRIAL CORPORATION,
Petitioner, .
V8. 8
SS ,xaNDARD SCREW COMPANY, |
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE
. UNITED STATES COURT OF APPEALS FOR
. THE SEVENTH CIRCUIT. |
*
~
Tomas F. MWnzians,
53 West Jackson Boulevard,
Chicago, IIlinois 60604,
Jans B. Kuvzzr,
Watiace, Kinzer anp Dorn,
120 West Madison Street,
Chicago, Illinois 60602,
Attorneys for Petitioner.
REA LE EAC ION A BLEED LOE PAIS SLI BORE IL AAI PLEAS SOLEIL
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Citations to Opinions Below’ VVT
Jurisdictioen „ eal rons aaa 2
The Questions Presented for Review : e 2
The, Statute Involved i neee 2
= Statement of the Case and Facts Material to Con- 5
g sideration of the Questions Presented ............ 3 to 8
A. Proceedings Below l 2. 1
The Subject Matter of the Patent in n Suits.
Accused Structure Charged to Infringe . 5
State of the Art at the Time of the Lowther | ,
Invention; Defendant’s ‘Subsequent. Action: . a
Seen for Allowance of the Writ ........ beta Sie dake 9 to 13-
A. Reasons: Even in a Patent Case, the Deci-
sions of This Court Should Not Be Ignored. 9.
B. Reasons: Lowther's Work Coming Earlier
Should Not Be Held Obvious Because of the
Work of Three Others Who Came Later. 9
C. Reasons: In This Patent Case, There Was
Never Any Basic Factual Inquiry Concerning,
(1) Ascertainment of the Differences Be.
’ tween the Prior Art and the * at
B.
C. The Structure of the Patent Coinpated to the
D.
Issue,
; | Or *
\ 02 ————— of Ordinary Skill in the 2
\ Pertinent eee 12
D. | Reasons: It 18 Immaterial, What Motivated
Lowther. Every Inventor Is Motivated, „
Title 35 U. S. C. 103 r r 13
% ᷣ ↄ b „„ a
7 an 5
Conclusion —— te 8 V
Appendix A: Decision by the Court of 1 17 to 24
5 Appendix B: Decision by the United States District
Court ree eee ee ee eee ⁊ 25 t0 29
8 John Deere, 383 U. ———W fs 2,9, 12
oe United States v. Berdan Firearms er ere an Co.. 9, 11
8 Srarvtes Creep.
Title 28 U. 8. 0. 1254) ꝗ . 2
Title 35 U. S. C. 103 ee ee ae 2, 10, 12
Title 38 U: 8, C. 10g) q : II
Title 35 U. S. C. 135 eee 11
*
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Supreme Court of the United States
' OcrosEeR en 1966.
3
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NOVO INDUSTRIAL CORPORATION,
enen,
5 *. vs.
STAN DARD SCREW COMPANY, |
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE 7
UNITED STATES COURT OF APPEALS FOR
THE SEVENTH OIROUIT.
\
|
' Petitioner, Novo Industrial 88 prays that a
writ of certiorari issue to review the judgmént of the
United States Court of Appeals for the Seventh Circuit
which held Lowther Patent No. 3,105 47 7 invalid.
orranons TO OPINIONS BELOW.
The e of the Court of Appeals, and the Findings of
Fact and Conclusions of Law entered by the Distriet
Court are printed respectively in Appendices A and B Off
this petition, pages 17 to 29 hereof. The opinion of the
Court of Appeals is reported at 152 USPO 543. The District
Court findings and conclusions were not published.
JURISDICTION.
The judgment of. the Court ‘of lb was . on
February 8, 1967; rehearing denied April 11, 1967.
The jurisdiction of this Court is invoked under 28 U. S. 0.
1254 (1).
‘While review is ‘admittedly discretionary, it is believed
that this Petition should be granted under Rule 19 of this
Court since the court of appeals: . has decided a federal
question i in a way in confliet with applicable decisions of
wis Court’’, REN 3 %
om QUESTIONS FOR REVIEW. -_
25 This is a patent case, and the Court i is requested to re-
view the following questions, which are really corollaries:
1. Where the crankcase ventilating valve for smog con-
trol, charged to infringe, was evolved after. the patented. -
structure was on the market and publicly acclaimed, may z
such subsequent. evolution be used as the sole test of ob-
viousness of the subject, matter * the patent under Title
35 U. S. C. 103.
2. May the independent work of three engineers, de-
veloping the infringing structure many months after the
origin of the patented invention, he used to establish as .
‘‘obvions’’ the patented (claimed) invention under Title
35 U. S. C. 103, contrary to Graham v. John Deere which
interpreted the ( prior art“ words of Title 35 U. S. C. 1
be f What’ was nese before” the ee inven-
tion.
mm STATUTE INVOLVED IN THE. ase.
7 35 v. 8. 0. 103—Conditions for e non-ob-
vious subject n matter. 8 n
a Pr “A eaten may not be obtained though the invention
ore
„*
— . —
is not identically disclosed, or Panter in F forth i in
section 102 of this title, if the differences between, the
subject matter sought to be patented and the prior
art are such that the subject matter as a whole would
have been obvious at the time the invention was made
to a person having ordinary skill in the art to. weer
said subject matter pertains. Patentability shall not
be negatived by the manner in which the ere was |
made.. | 155 F
75. 25
f STATEMENT OF THE CASE, AND FAoTs ‘MATERIAL 170.
CONSIDERATION OF THE QUESTIONS PRESENTED. 5
: 4. ‘Proceedings Below. | ion
The patti | in en No: 3,105,477, was ‘granted October 1, :
1963, entitled Crankease Valve. Ventilating. System (A.
321°). Action for. infringement was instituted in the United
States District Court for the Northern District of Illinois,
Eastern Division and. on June 7, 1966 (A. 20) the patent
was declared invalid and not infringed after entry of find- ;
ings of fact. and conclusions of law (A. 155.
Appeal was taken to the Court of Appeals for the
Seventh Vircuit.. On February 8, 1967, that Court affirmed |
on invalidity and did not rule on infringement.
Petition for rehearing was denied by the Court of Ap-
peals. f
*
District Court. The Appendix — of Defendant in the Court
E e e e I en
includes prior art identified as DX-1, DX-2, ete. °°
B. The Subject Matter of the Patent in Suit: .
Pons | Smog Control. 5
The decision of the Court of Appeals nowhere takes into
account a comparison between the prior art and the claimed
subject matter of the patent in suit, but does explain the
control (page 18 hereof) : | |
„The patent in suit pertains to a valve structure
purposes of the valve of the patent in suit in terms of smog 5
adapted to be interposed in a conduit interconnecting
the crankcase and the air intake manifold of an in-
ternal combustion engine, such as an automobile motor.
The valve is employed for the purpose of providing a
Controlled flow of ventilating air from the crankcase
back to the intake manifold. The type of ventilating
system in which the valve is incorporated provides a
means by which the blow-by gases from the cylinders
which leak past the piston rings and into the crankcase.
are returned through the air intake to the combustion
chamber for re-burning rather than exhausted from a
conventional crankcase draft tube into the atmosphere.
Such a ventilating system is designed to prevent the
unburned hydrocarbons present in the blow-by from
polluting the atmosphere and contributing to the ‘smog’
problem which in recent years has been encountered
in some areas.“ a
— F.! p P K De A am DS aren
5
0. The Structure of the Patent Compared to the Accused
‘Structure Charged to Infringe.
2 : 2.
W. W. Lowther Defendant's Structure Evolved
Patent No. 3,106, 77 by Messrs. Barnes, Givler and
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In normal an the pin
is euspended or floats on the
spring with no seating or closing
sontact with the orifice. In event
of backfire, the head of the pin
(the end of the pin facing away
from the orifice) seats on a
shoulder formed by a reduction
of the inner diameter of the
housing and thereby effects a
closing or sealing-off of the inlet
from the crankcase. The pin is
solid: It therefore is without
passages likely to clog. The coils
of the compression spring engage
the inner walls of the housing
to effect a self-cleaning action.
(Page 19 hereof.)
K a ra ee PRE tinge ge Sir YL
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~ “Defendant’s accused valve
structure has but one feature .
which serves to distinguish it
‘from the patented structure and
from the plaintiff’s commercial
device. In defendant’s valve one
of the coils of the compression
spring is laterally offset relative
to the other coils so that under
load conditions (high engine
speeds) the cant imparted to the
metering pin by the form of the
spring causes the pin to come in
rubbing contact with the wall of
the orifice for the purpose of
preventing or dampening longi-
tudinal oscillation of the pin.’’
(Page 19 hereof.) pene
6
v. State of the Art at the Time of the Lowther Invention;
Defendant's Subsequent Action. N
The application for the patent in suit was filed January
8, 1962 (A. 321). At this time the standard crankcase ven-
tilating valve in the industry for smog control was the in-
effectual and ‘troublesome AC. device of General Motors
(A. 50-1) represented ‘by McMullen Patent No. 2 „716,398
(DX-2). As noted by the Court of Appeals, ‘‘those skilled
in the art (addressed) themselves to the elimination of the
features which were causing dissatisfaction with the per-
formance of the AC valve (page 23 hereof ye
The chronology of events is as follows:
5 —May, 1960—
J
The AC device presented serious problems to the motor- |
ist—distortion, plugging, carburetion difficulties, engine
damage and costly repairs (A. 55-6; A. 59-62; A. 64-5) so
much so indeed that in May 1960 General Motors started to
tackle the problems presented by its own deficient structure
(A. 375, first paragraph).
February, 1962— |
Performance by the General Motors valve was so bad
that the Pollution Control Board in California undertook
surveillance of the AC. structure (A. 371). The witness
Pattison participated ; and the surveillance report, issued
February 14, 1962 (A. 57), concluded as to the AC valve
(A. 375) :
1. “Because of the difficulty. in An and the
economic phasés of the cost of cleaning, togetuer
with the pounding out of the soft body valves, it
has been the attitude of the staff that it would be
best to replace the AC crankcase ventilation valves
rather than try to clean them.’: (Emphasis sup-
' . , plied.)
*
2. There is also always the question as to whether
the valve is properly cleaned: and if a poor job is
done and a partly plugged valve is reinstalled on
the car the air pollution program would suffer.” The
chief justification for cleaning a valve would be the
lack of a replacement valve in stock in the shop
doing the work. Ordering a new valve would re-
- quire an additional trip to the shop by the owner
and 1 would pose a problem.“ (Emphasis sup-
plied 5
3. By e the population of soft body valves
will gradually be washed out. Continued cleaning
of soft body valves might hurt the program because
of the possibility of oil * ie (Emphasis
supplied.)
— April 1962 — 8
The Lowther device of the patent in suit was ab td
to open field testing by American Motors in April 1962.
Defendant was fully aware of this (A. 197) and at the
time was furnishing the defective AC valve (A. 199). In
fact, Defendant learned from American Motors that De-
fendant’s business on the AC device was in danger because
of the lower price of the Lowther or Novo struéture (A.
182-3). :
E June 1962— _
The patented structure was approved for installation in
California in June of 1962. Hundreds of persons were
present, and full details were revealed by way of supporting
materials available to the public (A. 44-5, A. 50, A. 60).
2
— August 1962 —
As stated by the Court of Appeals, Defendant did not
bring out its structure, accused of infringement, until
August of 1962 (page 20 hereof); and while the accused
structure may have been produced by three engineers of
Defendant independently of any knowledge of the valve
of the patent in suit, it was nevertheless stipulated as part
of -the pre-trial proceedings in this case that (A. 24),
In view of the withdrawal by plaintiff of its In-
terrogatories 57 through 61, inclusive, and 74, it is
. hereby stipulated by counsel: for defendant i in the above
action as follows:
_ 1, Defendant does not rely upon its own activities
to show invalidity of the patent in suit;
„2. Defendant does not claim any anticipation of
the patent in suit ‘bya activities of the defendant. Nee
— —— —
These events, the patent application and public. activity
of Lowther, occurred before the origin of the structure
charged to infringe, as to which there was hao activity before .
August 1962 (A. 184).
Briefly,,the sequence is this:
May 1960—General Motors struggling with the AC
device
January 1962— Application for patent i in suit filed ;
February 1962—California Board e concern
with AC device;
April 1962—Defendant learns of testing and | price ad-
vantage of the structure of the patent in suit; !
June 1962—California approval (public) of the strue-
ture of the patent in suit; :
August 1962—Defendant launches the omit struc.
ture.
ein
9
REASONS FOR ALLOWANCE OF THE WEIT.
A. | REASONS: Even in a Patent Case, thé Decisions of |
This Court Should Not Be Ignored.
The reason why this writ should be allowed is that the
decision of this Court in United States v. Berdan Firearms
Manufacuring Co. „156 U. S. 552, and the guidelines in
Graham v. John Deere, 383 U. S. 1 should not be ignored.
The patent was held invalid on the ground that what
Defendant did, after Lowther, established that what Low-
ther did was obvious. This is contrary to United States v.
Berdan Firearms.
The ‘differences claimed by a a compared pei the |
Prior art, were never found or observed in this case, nor
wass the skill of the art resolved as. to these differences in
spite of the whole proceedings being under 35 U. S. C. 103
on the issue of patentability. The rationale for invalidity
was established“ by the activity of Defendant's engi-
neers coming after the Lowther invention, not before.
All this is contrary to Graham v. John Deere.
Even in a patent case, the rules of law. should be re-
spected. 7
B. REASONS: Lowther’s Work Coming Earlier Should
Not Be Held Obvious Because of the Work of Three
Others Who Came Later.
‘Lowther’ s work was ‘‘established’’ as “obvious” because
of the work of Defendant’s Engineers (Finding 13, A. 18)
in spite of the fact that what Defendant did had po bearing
on invalidity of the patent (A. 24). The Court of Appeals
affirmed saying it was precluded from rejecting any of
the critical factual findings relative to the issue of lack —.
of invention for ‘obviousness’ as being clearly erroneous’’
(page 22 hereof). But the only finding on obviousness, the
> ‘10 . ö : 0
differences sought to be patented compared to the prior
art, was Finding 13 by the Distriet Court (A. 18 —
Lack of invention for obviousness under 35 U. S. C. 103
requires at the very least that the, ‘differences sought to be
patented be separated from the prior art and tested as to
the level of skill, but no such determination for differ-
ences or skill was ever made in this case. In fact, such ,
determination was clearly deemed unnecessary by as
District Court under Finding 13 which states that the dif-
ferences, if any, between the Lowther patent claims and the
prior art are established as obvious by the fact that Mr.
Givler, Mr. Barnes and Mr. Wasisco evolved and produced:
a valve * * independently of and after Lowther .
(A. 18). :
The Court of Appeals adopted the view of the District
Court as to obvious“ . matter saying (page 23 here-
Ge.
„The development of the valve of the patent in suit,
and the independent and almost contemporaneous de-
velopment and introduction of the defendant’s accused
valve structure which followed, in our judgment war-
rant the conclusion that the structure of the patent in
suit was but the result of application of ordinary skill
in the art to a problem which for the first time was
beginning to assume significant commercial importance
to the automotive industry.“ (Emphasis supplied.)
Petitioner is aware of no decision holding that the de-
velopment of the accused structure, coming later, renders
invalid as obvious“ the earlier invention, whether the
time en be seven months? or four orn or just
BP? Lowther filed in January 1962; seven months an in August
1962 Defendant’s three engineers (Barnes, Wasisco, Givier) came
up with the accused device.
ae Both the test of the Lowther device and its le n came
to the attention of Mr. Barnes for Defendant in April 1962 four
months ‘Prior to Defendant's *
75˙n§5h»„„ PL EEN A RT NIN NA Cah OS PO — “
„ 1
1
two months.“ This Court i in fact ruled directly contra in
United States v. Berdan Firearms, 156 U. S. 552, 566,
„With regard to the second question, it appears that
Berdan invented the extractor ejector; that he —
a patent therefor and assigned such patent to the peki-
tioner. It also appears that the government has made
use of this invention, or at least one differing from it
only in the substitution of a spiral for a flat_spring.
These springs ‘perform the same office and attain the
same result in the same way,’ and the use of the one
for the other is a ‘matter of choice, and is in no way
material to the result.’ Upon these facts alone, thus
briefly stated, the defendant, were it a private person,
would be liable to an action of infringement. Nor
would it be a defense to the action that such person
had, subsequent to Berdan’s invention, and without
knowledge thereof, devised the contrivance which he
was using. He would be in the attitude of a subsequent
inventor, and the prior inventor is the one who, under
the statutes, is entitled to the We " Spee
supplied. *
Under the Berdan Firearms decision, an assertion of in-
dependent invention only begs the issue of who was first,
requiring resolution in terms of an ( interference.“ That
is also the law today, Title 35 U. S. C. 135, and Title 35
U., S. C. 102 (g).
Even a patentee is entitled to invoke and rely upon the
statutes of this country and the decisions of this Court,
requiring invention vel non to be determined on the basis
of what came before, and not after, the invention.
2
2
3. Lowther was approved in California in June 1962 in a public
meeting open to anyone, to months before Defendant’s activity.
a a
0. REASONS: In This Patent Case, There Was Never
: Any Basic Pactual Inquiry Concerning,
(1) Ascertainment of the Differences Between the
‘Prior Art and the Claims at Issue,
OR
@ Resolution of Ordinary Skill in the Pertinent Art 1
Certainly if the lower courts are to implement the de-
cision of this Court i in Graham v. John | Deere, 383 U. S. 1,
17, then |
| “Under § 103, the scope and e of the prior art
are to be determined; differences between the prior art
and the claims at issue are to be ascertained; and the
level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobvi-
ousness of the subject matter is determined.
But this record can be searched in vain for any ascertain-
. ment of the differences between the prior art and what is
claimed by .Lowther, and an equally vain search can be
made for any resolution of the lever of ordinary skill in
the art involved.
If, as this Court said i in the. Graham case, We is to be
‘uniformity and definiteness’’ in the 1952 Patent Act
(383 U., S. 18), then there should be strict observance of
the requirements laid down’’ in the Graham case.
In holding the Lowther invention, which came earlier,
to be invalidated’ by the concerted effort of Defendant's
three engineers which came seven months later, the Court
of Appeals clearly disregarded the Graham case where this
: Court observed that the issue of obviousness, as to the dif-
ferences claimed, is to be resolved under the state of the
art at the time the invention was e, 383 U. S. 1, 152
* Section 103 states this requirement in the title. Iʒt
ö refers to the difference between * ne matter
=
.
23 ©
sought to be patented and the prior art, meaning what
was known before as described .i -in section 102. If-this
difference is such that the subject matter as a whole
would have been obvious at the time to a person skilled
in the art, then the subject matter I be patent- é
ed. (emphasis supplied.)
What Barnes, Givler and Wasisco accomplished i in con-
ceert after Lowther is neither prior art, nor a basis for re-
solving invention vel non under the terms of Title 35
U. S. C. 103.
D. REASONS: It Is Immaterial What Motivated Low-
ther. E 8. O.
103 Recognizes.
Title 35 U. S. C. 103 states in the Pte ths 4
that Patentability shall not be negatived by the manner
in which the invention was made.“ é
The Court of Appeals in this case e
„We think it apparent that the advent of legislation
requiring the use of effective blow-by control devices
on automobiles served to create an expanded market
for the valve used in crankcase ventilating systems
and spurred those skilled in the art to address them-
_ selves to the elimination of: the features which were
causing dissatisfaction with the performance of the
‘AC valve’’ (page 23 hereof ). 0
11 the Court of Appeals meant by the 8 lan-
guage’ that Lowther’s invention was obvious because he
was motivated by legislation, along with others skilled in
the art, to address (himself) to dissatisfaction -with
„ the AC valve“, such conclusion is impermissible. 35
7 U. S. C. 103 states unequivocally that the manner in which
an invention is made is immaterial. Indeed, every inventor
is motivated by and addresses himself to some need,
whether the need is one for him or the need for alleviating
the social blight of smog, as in this instance.
. Wee
| | Sn a ae
The plain fact is that Lowther succeeded to the extent
of supplanting both General Motors and this Defendant on
the defective AC device which they both fostered on the |
public and required the public to underwrite as to main-
tenance (A. 65; A. 375).
The combined efforts of the State of California, AC
(General Motors) and the oil companies were ineffectual in
satisfying an urgent need for something superior to the
AC device (A. 65). But Lowther succeeded in bettering
an entire industry, and his success, compared to the AC
3 is attributed to durability, lack of failure, sustained
calibration, elimination of motorist concern for engine
damage, and lack of repair costs (A. 65). b
In light of such testimony as to what Lowther accom-
plished, and the plain, documented statement by the ex-
perts that the level of skill applied to the AC problem was
only producing further ‘‘concern’? for a suffering pollu-
tion control program in California (A. 375), it is wholly.
unjust to have Lowther ‘‘established’”’ as obvious on the
basis of what came ace a
—
ee
- CONCLUSION.
No Patent claim, coming earlier through the wok of
a single inventor, should be held invalid on the basis of
a later work by three others acting in concert. What the
others did later is neither prior art nor a eee basis
for resolving invention vel non.
No patent claim should be lield invalid tee e
„ ing the differences between the prior art (meaning what
came before) and the claims at issue and then resolving the
level of ordinary skill in the art to determine if the differ-
. ences would have been obvious to a person of ordinary skill
= the pertinent art at the time the invention was made..
Iti is respectfully requested that this Petition be e gratited.
Respectfully submitted,
Tomas F. Mown zins,
53 West Jackson Boulevard,
Chicago, Dlinois 60604,
+ Jaxxs B. KIxzua,
Waiace, Kxznn anv Dorn,
120 West Madison Street,
Chicago, Illinois 60602,
Attorneys for Petitioner.
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ee
. APPENDIX A.
Ix THe Untrep States Court or APPEALS,
For the Seventh Circuit.
| September Term, 1966—January Session, 1967.
No. 15827. ; Appeal from the
Novo InpustTRiaL CoRPORATION, . United States Dis-.
Plaintiff-Appellant, trict Court for the
7 vs. Northern District
Sranparp Screw Company, of Illinois, East-
, Defendant-Appellee.] ern Division.
February 8, 1967. a
_. Before Kxoen, Casta and Swyczrr, Circuit Judgés.
CasTLE, Circuit Judge. Novo Industrial Corporation,
plaintiff-appellant, the owner of Lowther U. S. Patent
No. 3,105,477, issued October 1, 1963, and relating to a
crankcase ventilating system for internal combustion en-
gines, brought this suit in the Distriet Court against Stand-
ard Screw Company, defendant-appellee, charging infringe-
ment of the patent. The defendant denied infringement
and asserted that the patent was invalid.
The District Court, following trial of the issues of
validity and infringement, entered findings of fact, con-
clusions of law, and a judgment order adjudicating the
patent in suit to be invalid and dismissing plaintiff’s -
action. The court also found, concluded, and adfudged
Pea CPO N
18
that the patent, if valid, is not infringed by the devices
shown to have been manufactured and sold by the defend-
ant. On the issue of validity the court concluded that the
subject matter of each of the claims of the patent fails.
to meet the condition of nonobviousness imposed by 35
U. S. C. A. 8 103 as a prerequisite to the existence of pat-
entable invention.
The patent in suit pertains to a valve structure adapted
to be interposed in a conduit interconnecting the crank-
case and the air intake manifold of an internal com-
bustion engine, such as an automobile motor. The valve
is employed for the purpose of providing a controlled flow |
of ventilating air from the crankcase back to the intake
manifold. The type of ventilating system in which the
valve is incorporated provides a means by which the blow-
by gases from the cylinders which leak past the piston
rings and into the crankcase are returned through the air
intake to the combustion chamber for re-burning rather
than exhausted from a conventional crankcase draft tube
into the atmosphere. Such a ventilating system is designed
to prevent the unburned hydrocarbons present in the blow-
by from polluting the atmosphere and contributing to the
“smog” problem which i in Went years has been encount-
ered in some areas. ae
When such a ventilating system is employed it is essen-
tial to the efficient and proper functioning of the engine
that the flow of ventilating air from the crankcase to the
intake manifold be controlled by metering in order to
adjust for variations in the pressure differential between
the crankcase and the intake manifold due to changes in
intake manifold vacuum which occur according to the speed
at which the engine is operated. The purpose of the valve
of the patent is to so meter the flow and thereby regulate
the amount of blow-by the intake vacuum is permitted to
suck up from the crankcase.
— LE AAI LA OE GERD
The valve 1 of the patent in suit comprises a
housing provided with a metering orifice, and an.elongated .
solid metering pin of a varying diameter which floats on.
a compression spring and cooperates with the metering
orifice of the housing. The compression spring normally
biases the pin away from the orifice. The diameter of the
orifice is greater than any cross-section diameter of the
pin. The pin retracts or advances in the orifice in response
to changes in the pressure differential between the crank-
case and the intake manifold and thereby alters the effec-
tive area or amount of clearance available between the pin
and the wall of the orifice for the passage of blow-by to
the intake manifold.
In normal operation, the pin is suspended or floats
on the spring with no seating or closing. contact with
the orifice. In event of backfire, the head of fhe pin (the
end of the pin facing away from the orifice ) seats on a
shoulder formed by a reduction of the inner diameter
of the housing and thereby effects a closing or sealing-off
of the inlet from the crankcase. The pin is solid. It
therefore is without passages likely to clog. The coils
of the compression spring engage the inner walls of the
housing to effect a self-cleaning action.
Defendant’s accused valve structure has but one fea- —
ture which serves to distinguish it from the patented struc-
ture and from the plaintiff’s commercial device. In de-
fendant’s valve one of the coils of the compression spring
is laterally offset relative to the other coils so that un-
der load conditions (high engine speeds) the cant imparted
to the metering pin by the form of the spring causes the
pin to come in rubbing contact with the wall of the ori-
- fice for the purpose of Preventing or dampening longitudi-
nal oscillation of the pin.
The record discloses that since 1960 there has been in-
’ creasing interest in the use of blow-by control devices
20
on automobiles. ‘In 1963 the State of California made it
mandatory that new motor vehicles be equipped with a
blow-by control device meeting prescribed emission and
operating standards. In 1964 a similar requirement was
extended to used vehicles. The State of New York also
requires crankcase control devices, and in 1965 New Jer- |
sey was considering similar legislation.
The application for the patent in suit was filed on Jan-
uary 8, 1962. Crankcase ventilating systems incorporat-
‘ing the valve structure described and claimed in the ap-
plication (and in the patent which later issued) were ap-
‘proved by California on June 19, 1962, for use as blow-by
devices when factory-installed by the automobile manu-
faeturer on new cars, and on June 5, 1963, for use on
used cars. N
Plaintiff and defendant are competing manufacturers
ef crankcase ventilating system valves. But defendant
sells its valves only to automobile manufacturers for in-
- stallation as original equipment. Defendant brought out
its accused valve device in August of 1962, and its unit
sales have been from four to five times greater than the
plaintiff’s. The plaintiff’s sales are primarily in the re-
placement and used car after-markets.
The valve structure of the patent in suit is primarily
directed to eliminating a plugging-up and freezing up“
problem encountered in connection with the use of the
type of valve which was first made commercially avail-
able for use in crankcase ventilating systems. This.earlier
type, known as the AC valve, was manufactured by the
defendant and utilized the structure disclosed by MeMul-
len U. S. Patent No. 2,716,398, issued August 30, 1955. ö
This valve utilized a spring-loaded plunger which at low
engine speeds, idling, and deceleration came into seating
contact with the orifice to effect a closure during which
the blew-by passed through a 2 passage in the plunger —
21 |
itself. Sludge from the crankcase which accumulated in
the valve could plug the passage in the plunger or cause
the plunger to stick in its seated position. -Because of
this, and of loss of the designed control characteristics
or calibration due to distortion of the orifice seat caused
by its repeated metal-to-metal contact with the plunger,
periodic replacement of the valve was required, to insure
efficient engine operation and adequate blow-by control,
and to safeguard against damage to the motor. A O rec- i
ommended regular checking and maintenance every 4000
to 6000 miles. f a ‘ „
_ Pertinent factual findings of the District Court may
be summarized as follows: a
Crankcase ventilating system valves which meter the
withdrawal of crankcase vapors and the return of such
vapors to the intake manifold of an engine are old in
the art. A previous Lowther patent (U.S. Patent No.
2,359,485), issued in 1944 disclosed such a valve in which
the metering pin is biased away from the orifice by weight
rather than a spring, and it was obvious to anyone skilled
in the art that such a valve could be biased by a- spring.
instead of a weight if so desired so the valve could op-
erate in an attitude other than vertical. McKiney U. S.
Patent No. 3,017,871 discloses the substitution of a spring
as an alternative to the weighting of the metering pin.
in a valve controlling the flow of fuel additives to the
intake manifold of a combustion engine. Metering valves
such as Sciore U.S. Patent No. 2,988,346, Francis U. S.
Patent No. 780,986, McMullen U. S. Patent No. 2,716,398,
and Cowgill U.S. Patent No. 3,077,762, show metering |
valves in which the metering pin is biased away from the
metering orifice by a spring; that the metering pins in
‘Sciore and Francis are elongated, solid tapered pins biased
away from the orifice, in each case, by a spring and never
-necessarily contacting the orifice or any portion of the
bo
9
valve housing. The flow of fluid in each case tends, as
it does in the patent in suit, to press against the pin and
spring and move the pin into the orifice so as to resist
increased flow. The valve structure of the patent in suit
in essence comprises an elongated solid metering pin of a
varying diameter, which floats on a compression spring and
cooperates with a metering orifice in a housing, but it
never necessarily contacts the orifice or any portion of the
housing. The spring normally biases the pin away from
the orifice. Defendant’s engineers evolved and produced
the defendant’s accused valve structure independently of
any knowledge of the specific construction of the valve of
the patent in suit.
It is pertinent to observe that the trial court heard the
testimony of expert witnesses with respect to the elements,
operational functions and characteristics of.the patent in
suit, and the scope and content of prior art disclosures,
considered from the standpoint of whether the construc-
tion of the patent would have been obvious to one skilled
in the art at the time of the making of the claimed inven-
tion. Rule 52(a) of the Federal Rules of Civil Procedure
(28 U. S. C. A.) therefore applies to our review of the
court’s factual findings relating to such matters. Aero-
sol Research Company v. Scovill Manufacturing Co.,7 Cir., .
334 F. 2d 751, 753. And our examination and appraisal of
the record on the basis of the opposing contentions advanced
on appeal by the parties convinces us that there is sub-
- stantial evidentiary support which precludes us from re-
jecting any of the critical factual findings relevant. to the
issue of. lack of invention for “obviousness” as being’
clearly erroneous. }
Inasmuch as neither the Sciore . nor ‘the Francis
| patent was before the Patent Office, the statutory presump-
tion of validity attaching to the issuance of a patent is
of no aid to the plaintiff. A R Inc. v. Electro-Voice, In-
4 .
—— —— ů — —-— 2E et eee *
nal
corporated, 7 Cir., 311 F. 2d 508, 512; Hobbs v. Wisconsin
Power d Light Company, 7 Cir., 250 F. 2d 100.
Plaintiff relies heavily upon argument addressed to the
factors of commercial success and the failure of others.
to remedy the shortcomings or solve the problems of the
A C valve, which was the device in commercial use pre-
ceding the development of the structure of the patent in
suit. It urges that these factors require a conclusion that
the then existing level of ordinary skill in the art was at
a stage which compels a determination of the issue. of ob-
viousness in favor of the validity of the patent in suit.
We are not persuaded by this argument. On the record
before us, such contention affords no basis for a rejection
of the conclusion to the contrary dictated by factual find-
ings which are substantially supported by expert testi-
. ,
mony. We think it apparent that the advent f legisla-
tion requiring the use of effective blow-by control devices
on automobiles served to create an expanded market for
the valve used in crankcase ventilating systems and spurred
those skilled in the art to address themselves to the elim-.
ination of the features which were causing dissatisfaction
with the performance of the A C valve. The development
of the valve of the patent in suit, and the independent
and almost contemporaneous development and introduc-
tion of the defendant’s accused valve structure which fol-
lowed, in our judgment warrant the conclusion that the
. Structure of the patent in suit was but the result of ap-
plication of ordinary skill in the art to a problem which for
the first time was beginning to assume significant commer-
cial importance to the automotive industry.
Moreover, commercial success, unsolved needs, failure
of others, ete., are but secondary considerations which,
although they may have some relevancy as indicia of ob-
viousness or nonobviousness, and may serve to guard
against slipping into hindsight, do not on a record such
24
as that before us tip the’ scales in favor of paféntability. -
Graham v. John Deere Co., 383 U. 8. 1.
We perceive no basis for disturbing the District Court's
conclusion and adjudication that Lowther U.S. Patent
No. 3,105,477 is invalid. And, in view of- this, we deem
it unnecessary to consider ! the contentions made concern-
ing the court’s resolution of the issue of infringement.
There can be no infringement of an invalid patent. Toro
Manufacturing Corporation v. Jacobsen Manufacturing
Company, 7 Cir., 357 F. 2d 901, 904; Simmons v. Hill-Rom
Company, 7 Cir., 352 F. 2d 886; Enterprise Railway Equip- :
ment Oo. v. Kéystone ‘Railway. Equipment Co., 7 end
267 F. 2d 102. n
The judgment order of the District Court is 6
afſirmet.
Arrmurp.
7
25
APPENDIX B.
‘In tae Unrrep Srates Pisrnror Cour. . 1
(Caption—63-C-1769). at al
_ FINDINGS OF FACT,
This case 8 come on for trial beginning May 13,
1965, and witnesses having been heard by the Court and
briefs having been filed with the Court, the Court now
finds as facts: '
A, Plaintiff, Novo Industrial Corporation, is a corpora-
tion of the State of New Vork, and has an office and place
of business at 9705 South Cottage Grove Avenue, Chicago, |:
. 1 en
2. Defendant Standard Screw Company, is a corpora-
tion’ of the State of New Jersey, and has an office and place
of business at 2701 Washington Boulevard, Bellwood, IIli-
nois, in the above-entitled district and ‘division of the
United States District Court. rary tee
3. This is a Complaint . for patent infringement, and
the parties admit that this Court has jurisdiction and
venue. 1 1 i e BANG 20
4. On October 1, 1963, United States Letters Patent No,
3,105,477 entitled ‘‘Crankease Valve. Ventilating System”
issued to Plaintiff as a result of assignment from the appli-
cant, Wilfred W. Lowther, and Plaintiff-is now the owner
of said Letters Patent and exclusive rights therein, and is
entitled to maintain this action. 7250 5 a
5. Plaintiff and Defendant are manufacturers, and
among other products each of them manufacture ‘an auto-
motive product commonly designated as a crankcase venti-
7 ‘
A REE LPI ERNE NOR Mite REIGN HON Seek pte : — — vnc ~ — —
’ — “ — N
os, ne
lating valve. Defendant sells its valves only to automobile
manufacturers us original equipment (Transcript page 366,
hereinafter Tr. 366)., Up to the time of trial Defendant had
sold from eight to ten millions of its valves (Tr. 152, 366).
Plaintiff has sold only à relatively small number of its
valves to automobile manufacturers (Tr. 409, 410, 411, 412).
Its sales are primarily to the aftermarket, particularly in
California where it is required by law. that all automotive
vehicles be equipped with a crankcase ventilation sys-
tem. These systems prevent unburned hydrocarbons, or
blow-by, from escaping to the atmosphere by drawing the
blow-by from the crankcase back into the engine.
6. The subject matter of the patent in suit (PX-1) is a
specific type of metering valve adapted to be used in a
crankease ventilation system having a conduit such as a
hose to connect up the crankcase with the intake manifold .
- go the intake vacuum can suck a metered amount of blow-by
from the crankcase. The valve structure shown and de-
scribed in the. patent in suit in essence comprises an
elongated solid metering pin of a varying diameter, which
floats on a compression spring and cooperates with a me-
tering orifice in a housing, but it never necessarily contacts
the orifice or any portion of the housing. The compres-
sion spring normally biases the pin away from the ortfice. -
7. Plaintiff notified Defendant prior to the issuance
of Letters Patent No. 3,105,477 that Plaintiff claimed the
. Defendant's device would infringe the Letters Patent about
to issue (Tr. 128-135), but Plaintiff did not know the spe-
eie valve structure offered by Defendant until it found
this out from’ Defendant’s witnesses after this action had
been filed (Tr. 418, 419). a , :
8. Defendant’s engirfters designed the Deferdant’s
valve without prior knowledge of the internal, design of
the Lowther valve (Tr. 421, 373, 396) of Patent No.
3,105,477, and designed it so that the metering pin utilized
8 oe
: — ze f 7
27
— therein would have a rubbing contact with the orifice under
load conditions, for the specific purpose of preventing longi-
tudinal oscillation of the metering pin (Tr. 374, 431, 432)
in order that Defendant’s valve would meet the flow re-
quirements of the automobile manufacturers, particularly
American Motors, Chrysler and Ford (Tr. 423, 424, 437).
9. The actual construction of Defendant 8 valve was a
trade secret (Tr. 360-364, 376, 393) and was deliberately
omitted from drawings of the valve and’ was not disclosed
to others until after this litigation was commenced and
after a protective order had been obtained from this Court
prohibiting the use of this information by Plaintiff.
10. The specific feature of Defendant’s valve is pres-
ently the subject of a United States patent application
(PX-35), and this application will be maintained by the
Patent Office in secrecy until and unless a re issues on
it. (See 35 U.S. C. 122.)
11. Crankcase ventilating valves which meter the with-
drawal of crankcase vapors and the return of such vapors
to the, intake manifold of an engine are very old. One
such valve, for example, is disclosed in a patent to the.
alleged inventor here, W. W. Lowther, in an already ex-
pired patent, No. 2,359,485 DX. 2), granted October 3,
13944. „The metering pin is biased away from the orifice by
a weight rather than a spring, as in the present valve of
| the Lowther patent in suit, but it is obvious to anyone at all
skilled in the art that such a valve could be biased by a. *
spring instead of a weight if so desired so that this venti-
lating valve could operate in an attitude other than vertical.
Prior patentee Me Kiney (DX-3) states hat it is obvious
to do so in his patent. 2 7
12. Metering valves such as Sciore, No. 2,988,346 (Dx. |
88
— — . —
5), Francis, No. 780-986 (DX<7), MeMullen, No. 2,716,398
(DX-1), en No. 3,077, 762 Gn and others show
8
28 | 2
metering valves in which the metering pin is biased away
from the metering orifice by a spring. The metering pins in
Sciore and Francis are elongated, solid tapered pins biased
away from the orifice, in each case, by a spring and never
necessarily contacting the orifice or any portion of the
valve housing. The flow of fluid in each case tends, as
it does in the patent in suit, to press against the pin and
spring and move the pin into the orifice so as to resist
increased flow. Sciore, in particular, teaches virtually the
identical valve structure proposed 7 W. W. Lowther. „
the patent in suit.
13. The differences, if any, between the bet matter
of each of claims 1-11, inclusive, of the patent in suit would
have been obvious, considered as a whole, at the time it was
made, in view of the teachings of the prior art. This is
established by the fact that Mr. Givler, Mr. Barnes and
Mr.: Wasisco, who at the time were employed by Defendant,
evolved and produced, independently of any knowledge of
the specific construction of the valve structure of the patent
in suit (Tr. 373, 396, 421), a valve having a spring biased
metering plunger that would not close up the metering
_ orifice in the valve housing, but which was also so designed
as to meet the flow performance charts of Defendant’s cus-
tomers and thereby overcome problems of engine perform-
ance which were not recognized by W. W. Lowther.
14. There was conflicting testimony as:to whether De-
fendant 8 employee, Mr. William I. Barnes, stated that
his company copied the Plaintiff's valve, but since Mr.
Barnes, Mr. Elliott and Mr. Givler, all present at the time
of the alleged statement, categorically denied it (Tr. 363,
375, 396-397), and since it would have been an unlikely
statement for Mr. Barnes to have made i in any event, the
Court finds that Mr. Barnes made no such statement.
15. Mr. Givler, Mr. Wasisco and Mr. Barnes all testi-
fied that they had not seen the inside of Plaintiff's valve
at the time they designed the Defendant’s valve, and the
Court finds this testimony credible in view of the simplicity
of the Basic valve device. The Court need not, and there-
fore, does not make any finding as to the novelty of the ec-
r 3 centric mounting and canting of the metering pin in De-
„ fendantꝰ's valve. :
16. The Lowther patent in suit lays great stress both
throughout the specification and claims on the maintenance
of the metering pin centrally and necessarily out of con-
tact with the orifice (PX-1, column 3, lines 66-70, column
5, lines 6-11), and for that reason it is not infringed by
, Defendant’s valve in which the metering plunger is de-
liberately caused to contact the orifice at load conditions
(Tr. 374, 375, 393, 430, 431). The valve of the Defend.
‘ant (DX 10, 11, 12 and PX-35) employs a substantially
different means compared to the valve of the patent in
suit to accomplish a substantially different result. |
Conclusions of Law.
1. This Court has jurisdiction and venue of the cause
at bar. edit Oe |
2. United States Letters Patent No. 3,105,477 issued '
to Plaintiff as assignee of Wilfred W. Lowther is invalid
because the subject matter thereof, as a whole, would have
been obvious to one of ordinary skill in the art under the
7
terms of 35 U. S. C. 103. ms
3. United States Letters Patent No. 3,105,477 is not
infringed by the construction that the Defendant is shown
to have manufactured.
4. Defendant is entitled to the costs of this action.
Enter:
Richard B. Austin, f
f United States District Judge.
| - Dated: June 7, 1966. ear |
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.