Zonolite Company v. United States

• Decision Date: 03 April 1957
• Docket Number: No. 304-54.,304-54.
• Citation: 149 F. Supp. 953,138 Ct. Cl. 114
• Parties: ZONOLITE COMPANY and Insulating Concrete Corporation v. The UNITED STATES.
• Court: U.S. Claims Court

149 F. Supp. 953

138 Ct. Cl. 114

ZONOLITE COMPANY and Insulating Concrete Corporation v. The UNITED STATES.

No. 304-54.

United States Court of Claims.

April 3, 1957.

Robert F. Conrad, Washington, D. C., for plaintiffs. Watson, Cole, Grindle & Watson, Washington, D. C., were on the briefs.

Francis H. Fassett, New York City, with whom was Asst. Atty. Gen. George Cochran Doub, for defendant.

Before JONES, Chief Judge, and LITTLETON, WHITAKER, MADDEN and LARAMORE, Judges.

LARAMORE, Judge.

This is a suit to recover reasonable and entire compensation for alleged patent infringement. Plaintiffs contend that claims 1, 2, 3, 5, 6, and 7 of patent No. 2,355,966 have been infringed by defendant's underground insulated pipe system installed at McGuire Air Force Base, Wrightstown, New Jersey. The Zonolite Company has been the owner of legal title in and to the patent since its issuance, and Insulating Concrete Corporation is exclusive licensee under the patent for a territory including the location of the accused installation.

The issues now before the court are the validity of the patent and its infringement by the defendant. The extent of liability is to be determined later in the event the court finds that the patent is valid and has been infringed.

Defendant contends that the patent in suit is invalid over the disclosures of a number of domestic and foreign patents and publications having effective dates more than one year prior to the filing date of the application for the patent in suit. The prior art urged upon us by the defendant is listed in finding 15, and discussed in findings 16 through 34.

The patent in suit, No. 2,355,966, hereinafter referred to as the "Goff" patent, was issued in 1944 on an application filed in the Patent Office in 1942. The Goff patent discloses in its specifications an underground insulated pipe system, and includes drawings illustrating embodiments of the invention. The general purpose or use for such systems is to convey heated fluids such as steam and hot water between a boiler plant and buildings to be heated thereby. The Goff patent teaches that an underground heat-insulated pipe system may comprise in combination a structural concrete base and heat-insulating concrete completely and solidly enclosing and supporting the pipe solely on the base. The heat-insulating concrete has a specified density and constitutes a monolithic embedment for the pipe. The Goff patent claims in suit are set forth in full in finding 8. Claim 1 is typical and reads as follows:

"1. In an underground heat-insulated pipe-system including a base and heat-insulated, fluid-conductive, expandible and contractible pipe-means supported by said base and having expansion-and-contraction compensation-means at intervals along the length of the system, the novel combination of improvements of said base being of structural-concrete and said heat-insulation of said pipe-means being heat-insulating concrete completely and solidly enclosing and supporting said pipe-means solely on said concrete-base and constituting a monolithic embedment for said pipe-means from each said compensation-means to the next, said insulating-concrete weighing less than 50 pounds per cubic-foot, said pipe-system being capable of conveying fluid with a heat-differential of at least 150° F. without injury to the system."

The inventions defined in the other claims are similar to that defined in claim 1 but include definition of the density of the heat-insulating concrete, the use of expanded vermiculite as the aggregate in the heat-insulating concrete, and the details of waterproofing the heat-insulating concrete.

It is not disputed that underground insulated pipe systems had been used for many years prior to the invention disclosed in the Goff patent. Prior patents and publications taught the use of cellular concrete insulation in such systems. Cellular concrete, or cell-concrete as it is usually called, is a lightweight concrete made by mixing soapsuds with water and cement. It has high heat-insulating quality due to entrapped air forming dead air cells in the set material but is weak, easily crumbles, and is in-cable of supporting by itself the weight and movements of large steam pipes. Greater strength can be obtained with cell-concrete by reducing the number of air cells. This, however, causes a concurrent reduction in its heat-insulating quality. Because of this inherent weakness of high insulating quality cell-concrete, underground pipe systems prior to the Goff invention utilized heavy iron rollers spaced along the pipe as a permanent support for the pipes insulated by cell-concrete. The prior systems also utilized a structurally strong encasement of reinforced structural concrete, brick walls or tile to protect the cell-concrete from damage by external forces. Summarizing, the record shows that for many years prior to the Goff invention, underground pipe systems required the use of numerous heavy rollers spaced along the pipe to permanently support the pipe, and required the use of structurally strong encasements to protect cell-concrete from being damaged.

The record also shows that the heat-insulating properties of vermiculite, the principal substance used in the heat-insulating concrete specified by the Goff patent, were well known prior to the Goff invention. The prior art taught that vermiculite could be used as an ingredient of heat-insulating concrete for floors, walls, acoustical plasters, and the like. The prior art did not teach that such heat-insulating concretes could be used underground to fully support heavy steam mains and that such heat-insulating concretes required no structural protective encasement when so used.

Plaintiffs contend that the Goff invention is an improvement over, and is not anticipated by, the prior art of record herein and assert that the invention produces a new result not obvious to those skilled in the art of underground pipe systems at the time the invention was made. In support of their contentions, plaintiffs point out that the prior art underground insulated pipe systems required four basic elements; namely, a structural concrete base, metal roller or rocker supports for the pipe, heat insulation for the pipes, and structural protection for the heat insulation, while the Goff invention is a duplex system having only two basic elements in combination; namely, a structural concrete base, and a heat-insulating concrete solidly enclosing and supporting the pipes solely on the base and constituting a monolithic embedment for the pipes. The strength of the insulating concrete used in this combination by the Goff system, plaintiffs claim, results in the elimination of the need for structural protection around the insulating concrete as well as the need for roller or rocker supports as permanent support for the pipe means. Plaintiffs also point out that the Goff underground pipe system prevents movement in all directions other than axial,¹ which movement is necessary in any heating system of the type here under consideration.

Defendant, on the other hand, contends that the Goff claims are invalid on the grounds of aggregation, indefiniteness, and anticipation by the prior art, and contends that if the Goff claims are valid the accused installation at McGuire Air Force Base does not infringe.

Even though each of the elements included in the combination recited in the Goff claims was old per se, it does not follow that the claims recite an unpatentable aggregation as distinguished from a patentable combination. We need not elaborate on the rule that a novel combination of old elements which cooperate with each other so as to produce a new and useful result or a substantial increase in efficiency is patentable. See Weller Manufacturing Company v. Wen Products, Incorporated, 7 Cir., 1956, 231 F.2d 795. An improvement combination is patentable even though its constituent elements are singly revealed by the prior art, where, as here, it produces a useful result in a cheaper and otherwise more advantageous way. See Jeoffroy Mfg., Inc. v. Graham, 5 Cir., 1955, 219 F.2d 511.

We do not believe that the Goff claims are indefinite. As noted in our findings 9 through 11, the language and meaning of the claims are precise. The claim language is fully supported by the disclosures of the Goff patent specifications and drawings. The claim recitals are unambiguous.

Over the years, courts have applied various tests to determine the presence or lack of patentable invention. The early holding that ingenuity and skill more than that possessed by an ordinary mechanic acquainted with the business are essential elements of every invention, Hotchkiss v. Greenwood, 1850, 11 How. 248, 52 U.S. 248, 267, 13 L.Ed. 683, has been interpreted in various ways. During the intervening century, courts have required inventive genius, Reckendorfer v. Faber, 92 U.S. 347, 357, 23 L.Ed. 719; flash of thought, Densmore v. Scofield, 102 U.S. 375, 378, 26 L.Ed. 214; intuitive genius, Potts v. Creager, 155 U.S. 597, 607, 15 S.Ct. 194, 39 L.Ed. 275; flash of genius, Cuno Engineering Corp. v. Automatic Devices, 314 U.S. 84, 91, 62 S.Ct. 37, 86 L.Ed. 58; unusual and surprising consequences, Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 149, 71 S.Ct. 127, 95 L.Ed. 162, and the like. The Patent Act of 1952, 35 U.S.C. § 100 et seq. (1952 Ed.), 66 Stat. 792, revised and codified the laws relating to patents. Patentability of inventions is now defined in chapter 10 of title 35, and sections 101 and 103 thereof require consideration in...