Butex Gas Co. v. Southern Steel Co.

Decision Date05 December 1941
Docket NumberNo. 9890.,9890.
Citation123 F.2d 954
PartiesBUTEX GAS CO. et al. v. SOUTHERN STEEL CO.
CourtU.S. Court of Appeals — Fifth Circuit

Jack A. Schley and J. C. Muse, Jr., both of Dallas, Tex., for appellants.

S. Austin Wier, of Dallas, Tex., Jas. F. Bobbitt, of Houston, Tex., and Charles M. Dickson, of San Antonio, Tex., for appellee.

Before FOSTER, HUTCHESON, and HOLMES, Circuit Judges.

HUTCHESON, Circuit Judge.

The suit was on Claims numbered 1, 3, 5, 11, 12, and 17, of United States Patent Number 2121675, "combination fitting for gas dispensing systems", for damages for and injunction against, patent infringement. The defenses were (1), a denial of invention in, and therefore of the patentability of, the device exhibited in the patent, (2) anticipation, and (3) a denial of infringement. There were findings of fact and conclusions of law that the claims were valid and infringed, and a judgment awarding plaintiff damages and an injunction.

Defendants, assigning various grounds of error, have appealed. But they really pitch their fight on the fundamental proposition that every element in plaintiff's combination is admittedly old and that the mere mounting of the valves, fittings, etc., on one unitary fitting, is mere aggregation, it is not and cannot be invention.

Sharply defining their contention, they point (1) to the statement in the patent, "The main idea is to combine all of the necessary valves, gauges, and other safety appliances, in a single accessible unit, eliminating the necessity of assembling many separate appurtenances and the possibility of installing the various valves in the wrong order or relation to each other"; (2) to the answer of the inventor, White, to the question, "Well, then your contribution here, what you conceived as an invention, was to take all these valves which in themselves were old, and mount them on one unitary fitting where they would all be assembled in close relationship and convenience?", A. "I believe that expresses it."; (3) to the great generality of the language of the claims; and (4) to the language of the decree giving them equally broad application. Urging that the effect of this decree is to give to a combination patent, all of the elements of which are old in use in the particular industry, and the novelty in which, if any, consists only in a different mechanical arrangement of elements producing no different result, but a mere aggregation, a monopolistic scope and wideness which in effect puts a roof over the whole butane gas industry, they insist that it may not stand. We agree with appellants. It is not necessary to set out what the record shows as to the state of the industry and the prior art, or to analyze the patents relied on as anticipation. For the contention on which plaintiff prevailed below is summarized in the question and answer set out above. In its light, the record, of nearly 1,000 pages, 600 pages of testimony and 300 of exhibits, dealing with the butane gas and allied industries, the activities of plaintiff and defendants in such industries, the patents in suit and those cited as anticipation, really adds up to this, that plaintiff claimed and was allowed a construction of its patent, and a decree which lays a comparatively new industry under complete and comprehensive tribute, to the owner of a patent on an aggregation of elements, no one of which is novel, either in itself or in its use in the aggregation, upon a claimed novelty in the combination as thus stated by its inventor: "My invention consists of a unitary fitting which brings all of these elements together in a compact relationship." It will be noted that the invention claimed is not some particular, but any arrangement in a unitary fitting. The effect of the broadness of the claim is that because White first used a unitary fitting, no one else may do so without paying White, no matter what difference in arrangement of the parts there may be, or what improvements may result from such difference in arrangement. In short, the simple question presented is, is there invention in putting the customary valves, fittings, etc., required in connection with the storing and distribution of a gas, like butane, in a unitary head on one pipe or riser, instead of having them distributed over two or three pipes or risers.

The grant of a patent is presumptive evidence of its validity and the finding of the District Judge as to a fact is entitled to great weight. But when the full facts as to what constitutes the invention are, as here, undisputed, it remains at last, for this court, giving due regard to the weight to be given to the grant of the patent and the finding of invention by the District Judge, to examine the record for itself and to determine whether, within the meaning of the statute conferring patent monopoly, there is invention and therefore patentability. The presumption of patentability which attends the grant of a patent cannot survive in the face of undisputed facts showing that there is no invention. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 31, 50 S.Ct. 9, 74 L.Ed. 147.

So examining the record, we think it plain that this is a case like that dealt with in Grinnell Washing Machine Co. v. Johnson Co., 247 U.S. 426, 38 S.Ct. 547, 549, 62 L.Ed. 1196, of a combination of old...

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  • LODGE & SHIPLEY COMPANY v. Holstein and Kappert
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Southern District of Texas
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    ...3 Cir., 195 F.2d 971; Hutchinson Mfg. Co. v. Mayrath, supra; Park-In-Theatres v. Perkins, 9 Cir., 190 F.2d 137; Butex Gas Co. v. Southern Steel Co., 5 Cir., 123 F.2d 954. The claim is therefore The language adopted by the Supreme Court in the case of Grinnell Washing Mach. Co. v. Johnson Co......
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    ...F.2d 380; Detroit Stoker Co. v. Brownell Co., 6 Cir., 89 F.2d 422, 424; Belden v. Air Control Products, supra. In Butex Gas Co. v. Southern Steel Co., 5 Cir., 123 F.2d 954, 955, the court said: "The presumption of patentability which attends the grant of a patent cannot survive in the face ......
  • Swofford v. B & W, INC.
    • United States
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    • May 22, 1968
    ...5 Cir. 1955, 224 F.2d 331, 335; Little Mule Corp. v. Lug All Co., 5 Cir. 1958, 254 F.2d 268, 275-276. See also Butex Gas Co. v. Southern Steel Co., 5 Cir. 1941, 123 F.2d 954, 955. Our recent decisions point to resolution of the apparent inconsistency similar to the Seventh Circuit's: "The q......
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