177 F.2d 153 (9th Cir. 1949), 12146, Pointer v. Six Wheel Corp.

Docket Nº:12146.
Citation:177 F.2d 153, 83 U.S.P.Q. 43
Party Name:POINTER v. SIX WHEEL CORPORATION.
Case Date:September 27, 1949
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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Page 153

177 F.2d 153 (9th Cir. 1949)

83 U.S.P.Q. 43

POINTER

v.

SIX WHEEL CORPORATION.

No. 12146.

United States Court of Appeals, Ninth Circuit.

September 27, 1949

Rehearing Denied Nov. 3, 1949.

Page 154

Harold L. Cook and Lee R. Schermerhorn, Portland, Ore., for appellant.

Lyon & Lyon, Lewis E. Lyon, Los Angeles, Cal., for appellee.

Before HEALY and POPE, Circuit Judges, and YANKWICH, District Judge.

YANKWICH, District Judge.

In January, 1925, H. Y. Stebbins requested Utility Trailer Manufacturing Company, the present sole owner of the appellee, Six Wheel Corporation, to manufacture for him a form of six-wheel attachment on a time and material basis. One specimen was built and tried out. It proved rather rigid if one wheel of the dual axle assembly was raised. Garner L. Knox, patentee of the patent in suit, No. 1926727 and president of the appellee, suggested, at the time, to Stebbins that a universal joint be put where the rocker arm was attached to the axle bracket. Stebbins, however, was of the opinion that there was sufficient flexibility for the unit as he had designed it and rejected the suggestion. Indeed, after difficulties developed, he 'was opposed to complicating it; thought it was not necessary; he was afraid the wheels would

Page 155

not track,' if additional pivotal connections were included. VanLeuven, who was working with Stebbins, was of the same view.

The attachments contracted for with Utility were built and turned over to Stebbins for the purpose of filling his orders. They did not prove satisfactory, and Knox began working in May, 1925, on a design for a universal connection. The design was limited to one which could be used for replacement on the trucks in operation, and which were showing excessive wear at points where Knox had planned to put the universal. Replacements were made and negotiations were begun with Stebbins to take over the manufacture and sale entirely.

Knox, who is a trained mechanical engineer, continued to develop the idea which finally culminated in Letters Patent No. 1,926,727, issued September 12, 1933. As described in the patent in suit, the invention relates to six-wheel attachments for motor vehicles, and, more particularly, to a six-wheel attachment for trucks, busses, and the like,- the object of which is to distribute the load carried by the motor vehicle to the added wheels, to remove from the rear wheels of the motor vehicle a portion of the load customarily carried by them. The Knox application was filed January 3, 1927. It was involved in Interference No. 55,383, declared June 3, 1927, between it and Letters Patent No. 1,620,809, granted March 15, 1927, which resulted in granting of priority of invention to Knox.

It was stipulated at the trial that the Knox invention was conceived March 1, 1925, and was reduced to practice during the early part of June, 1925. The patent is now owned by appellee, the same corporation which also owns the patent of Stebbins and VanLeuven, No. 1,562,265, and the patent of VanLeuven, No. 1,655,481.

On August 23, 1926, the appellee, as plaintiff, instituted in the District of Oregon, its action for infringement against R. W. Pointer, doing business under the fictitious name and style of Pointer-Willamette Company, the appellant here, as defendant, for infringement of Letters Patent No. 1,926,727.

The claims alleged to have been infringed are Claims 1, 2, 11, 15 and 17, which are printed in the margin. 1

The appellant challenged the validity of the patent, pleaded an extensive prior art as anticipatory, denied the right of Knox

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as the sole patentee, and denied infringement.

On June 14, 1948, after a lengthy trial, the trial court sustained the validity of the patent, held the structure manufactured by the appellant and named 'Feather Rider' to infringe the patent in suit and particularly the designated claims. Judgment was entered finding the patent valid and infringed, with appropriate injunction and accounting to ascertain the damages.

This is an appeal from the Judgment.

I

Some Preliminary Considerations

A. Findings in Patent Cases.

The Findings of the trial court, based upon conflicting testimony, lay or expert, must be sustained unless clearly erroneous. Rule 52(a), Federal Rules of Civil Procedure, 28 U.S.C.A. And see, Grace Bros. v. Commissioner, 9 Cir., 1949, 173 F.2d 170. Courts of appeal, including this one, have applied this principle to patent cases. See, Adamson v. Gilliland, 1917,242 U.S. 350, 37 S.Ct. 169, 61 L.Ed. 356; Williams Mfg. Co. v. United Shoe Machinery Corp., 1942, 316 U.S. 364, 367, 62 S.Ct. 1179, 86 L.Ed. 1537; Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 1944, 321 U.S. 275, 64 S.Ct. 593, 88 L.Ed. 721; Research Products Co. v. Tretolite Co., 9 Cir., 1939, 106 F.2d 530, 533; Hazeltine Corp. v. Crosley Corp., 6 Cir., 1944, 130 F.2d 344; Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co., 9 Cir., 1945, 151 F.2d 91, 94; General Metals Powder Co. v. S. K. Wellman Co., 6 Cir., 1946, 157 F.2d 505, 508; Maulsby v. Consevoy, 9 Cir., 1947, 161 F.2d 165, 176; Refrigeration Engineering v. York Corp., 9 Cir., 1948, 168 F.2d 896.

However, this court has not hesitated, when convinced that a device showed neither novelty nor invention, to so hold notwithstanding findings to the contrary by the trial court. See, Motoshaver, Inc., v. Schick Dry Shaver, 9 Cir., 1940, 112 F.2d 701; Madsen Iron Works v. Wood, 9 Cir., 1943, 133 F.2d 416; Wilson v. Byron Jackson Co., 9 Cir., 1943, 133 F.2d 644; Schnitzer v. California Corrugated Culvert Co., 9 Cir., 1944, 140 F.2d 275. And see, Altoona Publix Theaters v. American Tri-Ergon Corp., 1935, 294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005; Paramount Publix Corp. v. American Tri-Ergon Corp., 1935, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997; Universal Oil Products Co. v. Glove Oil and Refining Co., 1944, 322 U.S. 471, 473, 64 S.Ct. 1110, 88 L.Ed. 1399; Stuart Oxygen Co. v. Josephian, 9 Cir., 1947, 162 F.2d 857.

Commercial success may be taken into consideration in determining validity. The trend, at the present time, is to use it as a makeweight only 'where the patentability question is close.' Jungersen v. Ostby & Barton Co., 1949, 335 U.S. 560, 567, 69 S.Ct. 269, 272; Goodyear Tire and Rubber Co. v. Ray-O-Vac Co., 1944, 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721; Dow Chemical Co. v. Halliburton Oil Well Cementing Co., 1945, 324 U.S. 320, 330, 65 S.Ct. 647, 89 L.Ed. 973.

Ordinarily, in itself, it is not a criterion either in determining whether there was invention, or in arriving at its scope. Marconi Wireless Telegraph Co. of America v. United States, 1943, 320 U.S. 1, 20, 63 S.Ct. 1393, 87 L.Ed. 1731; Klein v. City of Seattle, 9 Cir., 1896, 77 F.2d 200, 240; Grayson Heat Control v. Los Angeles, etc., Co., 9 Cir., 1943, 134 F.2d 478, 481.

It is the contention of the appellant that, notwithstanding the great commercial success of the invention in suit, it exhibits no patentable novelty over the prior art and that the conclusion of the trial court to the contrary is so clearly erroneous as to call for rejection by this court.

But, as will presently appear, that conclusion is based not only upon a study of the prior art,- most of which is also before us,- but also upon the testimony of witnesses, lay and expert, including the inventor, about the problem which the invention sought to solve. And, in determining whether there is invention, we must rely not so much on admissions which the inventor may have made in court as to the meaning of the invention, but on what the patent discloses in its relation to the prior art as that art would be viewed, not by a layman, but by one skilled in the art

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to which it relates,-mechanical engineering. As said by the Court of Appeals for the Seventh Circuit: 'We are to place ourselves so far as possible in that imaginary position.' Russell v. J. P. Seeburg Corp., 7 Cir., 1941, 123 F.2d 509, 512.

B. Sole or Joint Inventor.

Before considering the findings and the evidence in the case in the light of these principles, we advert to one contention which can be disposed of very briefly. The Court found that Knox was the sole inventor. The fact that the patent was issued in his own name is, in itself, prima facie proof of that fact. And the burden is upon him who makes an assertion contrary to the presumption to prove it. In a leading case on the subject, Agawam Woolen Co. v. Jordan, 1869, 7 Wall. 583, at page 602, 19 L.Ed. 177, there is a statement of the law which has become classic:

'He is the inventor and is entitled to the patent who first brought the machine to perfection and made it capable of useful operation.

'No one is entitled to a patent for that which he did not invent unless he can show a legal title to the same from the inventor or by operation by law; but where a person has discovered an improved principle in a machine, manufacture, or composition of matter, and employs other persons to assist him in carrying out that principle, and they, in the course of experiments arising from that employment, make valuable discoveries ancillary to the plan and preconceived design of the employer, such suggested improvements are in general to be regarded as the property of the party who discovered the original improved principle, and may be embodied in his patent as a part of his invention.

'Suggestions from another, made during the progress of such experiments, in order that...

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