Kwikset Locks v. Hillgren, 13060.

• Decision Date: 22 March 1954
• Docket Number: No. 13060.,13060.
• Citation: 210 F.2d 483
• Parties: KWIKSET LOCKS, Inc. v. HILLGREN. HILLGREN v. KWIKSET LOCKS, Inc. et al.
• Court: U.S. Court of Appeals — Ninth Circuit

210 F.2d 483 (1954)

KWIKSET LOCKS, Inc. v. HILLGREN.

HILLGREN v. KWIKSET LOCKS, Inc. et al.

No. 13060.

United States Court of Appeals Ninth Circuit.

February 3, 1954.

Rehearing Denied March 22, 1954.

Fred H. Miller, Los Angeles, Cal., for appellant and cross-appellee.

Hamer H. Jamieson, Los Angeles, Cal., for appellee and cross-appellant.

Before STEPHENS, HEALY, and POPE, Circuit Judges.

STEPHENS, Circuit Judge.

Carl A. Hillgren is the holder of United States Letters Patent No. 2,403,597, issued July 9, 1946, for an invention of a "Door Lock". Kwikset Locks, Inc., is the owner of United States Letters Patent No. 2,489,160, issued to Adolf Schoepe and Albert S. Lord, jointly, on October 20, 1947, on a "Doorknob and Method of Making Same", and assigned to Kwikset on November 22, 1949. Hillgren brought suit in the United States District Court for the Southern District of California, charging Kwikset, Adolf Schoepe, and Karl Reinhard (hereinafter referred to collectively as "Kwikset") with infringement of its "Door Lock" patent and seeking an injunction and damages. Kwikset answered, denying infringement and alleging that Hillgren's patent is void as anticipated. Kwikset in addition sought affirmative relief by way of counter-claim for injunction and damages based upon the allegation that Hillgren was infringing Kwikset's patent on a "Doorknob and Method of Making Same". Hillgren denied the charge of infringement and attacked the validity of Kwikset's doorknob patent.

The complaint and counter-claim were tried together. After hearing all the evidence, the court found that Hillgren's "Door Lock" patent No. 2,403,597 was valid and had been infringed by Kwikset and that Kwikset's "Doorknob" patent No. 2,489,160 was valid and had been infringed by Hillgren.

The court awarded both plaintiff (Hillgren) and counter-claimant (Kwikset) their prayers for injunctions and ordered that an accounting for damages be had against the defendant (Kwikset) and counter-defendant (Hillgren), respectively. Both Kwikset and Hillgren appeal from adverse judgments. We shall treat the appeal from the complaint and the appeal from the counter-complaint separately.

I. The Hillgren "Door Lock"

The Hillgren "Door Lock" is described most simply as a reverse rocker type lock with a deadlatching mechanism. The Kwikset lock may be identically defined. As the court stated in its findings, the reverse rocker type lock is found in the prior art.¹ The reverse rocker type lock, employed by both Hillgren and Kwikset operates as follows: When a doorknob is unlocked the spindle may be turned in either direction, forcing the main action of the bolt forward. As the main action advances, it engages a pivoted rocker, forcing the top end of the rocker forward which consequently brings the bottom end of the rocker backward. Since the bottom of the rocker is engaged in the main lock bolt, this movement retracts the main bolt from its secured position in the door sash.

Both the reverse rocker type lock and the direct action bolt lock, as they appeared in the prior art, had one serious defect: Although the main action could not be put into play to bring back the main bolt when the knob was locked in position, if a knife or thin blade were inserted between the door sash and the main lock bolt, the bolt could be forced back and the door opened.

However, the prior art has also disclosed a mechanism for deadlatching the main bolt and thereby forestalling any attempt to force back the bolt other than by the turning of an unlocked door knob and spindle. The deadlatching mechanism operates in the following manner: In addition to the main bolt, the lock is constructed with an auxiliary bolt, independently operated and so located that when the door is in a closed position the main bolt is extended into the recess of the door sash while the auxiliary bolt is depressed back toward the main housing of the lock. Within the lock housing is a dogging arm which is held clear of the main bolt by the auxiliary bolt when the auxiliary bolt is in the extended position. However, when the auxiliary bolt is depressed, the dogging arm is freed and is so constructed that when unrestrained it moves into a position to block any effort to force the main bolt back into the housing. However, when the main action of the lock is put into operation by means of the doorknob and spindle, the dogging arm is raised from its blocking position by a beveled lug which is part of or operates solely in conjunction with the main action.

Hillgren concedes that the trial court specifically found that a deadlatching mechanism was present in the prior art. However, the conclusion that the Hillgren patent is valid is based primarily upon Hillgren's claims, embodied in finding 9a, that the Hillgren patent discloses "the world's first deadlatched reverse rocker type lock." In other words, Hillgren is claiming, and the district court sustained, a patent on a combination.²

Congress, in its exercise of a constitutional delegation of authority,³ has provided for the patenting of inventions and discoveries of new and useful arts or processes, machines, manufactures or compositions of matter, or new and useful improvements thereof. Title 35 U. S.C.A. § 31 (cf. revision, 1952, Title 35, U.S.C.A. § 101). Thus, in order for the Hillgren lock mechanism to be patentable, it must be established as a combination which is an "invention".

What constitutes "invention" defies precise definition. The courts have attempted at least to fix some guideposts to indicate wherein the realm of invention lies. These judicial attempts at definition are either very sweeping and consequently general, or so narrow as to be applicable only to a specific device or process. And at times the courts are content to establish what is definitely not inventive. To require "exceptional imaginative talent"⁴ or "creative genius"⁵ or to declare that there must be an "impalpable something"⁶ which "springs from that intuitive faculty of the mind"⁷ is of no concrete aid to a judge who is a layman in the fields of science and engineering.⁸

In the circumstance where a patent is sought on a combination of devices or processes known to the prior art, the concept of invention remains elusive. It has been said that, in order for the combination to be considered a patentable invention it must "perform some new or different function — one that has unusual or surprising consequences." Photochart v. Photo Patrol, 9 Cir., 1951, 189 F.2d 625, 627; Grinnell Washing Machine Co. v. E. E. Johnson Co., 1918, 247 U.S. 426, 38 S.Ct. 547, 62 L.Ed. 1196; Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162. There is no invention in a "mere aggregation of a number of old parts or elements",⁹ nor in the accumulation of old devices which do not in some way exceed "the sum of its parts".¹⁰ Emphasis ours. Moreover, a truly inventive combination must create what had not before existed or bring to light what lay hidden from vision¹¹ in a way which can be distinguished from "simple mechanical skill."¹² A mere advance in efficiency and utility is not enough to convert a non-inventive aggregation into a patentable combination.

The Supreme Court has recently considered the problem of patentable combinations and has established certain criteria and standards which the lower federal courts must apply in determining whether a combination patent is valid. The Supreme Court directs us to "scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, * * * obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., supra. The Supreme Court further requires that in order for a combination patent to be upheld, there must be a specific finding that the old elements which made up this device perform an additional and different function in combination, than they perform out of it. No such finding was made in the case at bar.¹³ Nor do we believe that the district court applied the strict standard or close scrutiny to this combination patent required by the Supreme Court.

It is agreed that the deadlatch mechanism is to be found in the prior art. Hillgren's claim is based on the fact that he is the first person to apply the deadlatch mechanism to a reverse rocker type lock. Beyond the application of the deadlatch principle to the reverse rocker type lock, no novelty is shown by the exhibits or record, nor in the finding of the court.¹⁴ Conceding a high degree of mechanical skill to effect the combination, we are firmly convinced that the district court was clearly wrong in concluding that such a combination is patentable for it accomplishes no more than the sum of its parts.

In both the prior art, as exemplified by the Schlage lock, and in the patented Hillgren lock, as well as the allegedly infringing Kwikset lock, the deadlatching mechanism is engaged behind the main bolt by the action of an auxiliary bolt and is disengaged by a lug attached to or operated in conjunction with the main action. The principle upon which the deadlatching mechanism operates is no different if used in conjunction with a direct action or reverse rocker type lock. Such difference as there is to be recognized must be restricted to the realm of admittedly skillful mechanical know-how.

The case of Sargent v. Hall Safe & Lock Co., 1885, 114 U.S. 63, 5 S.Ct. 1021, 29 L.Ed. 67, dealt with an attempt to patent a time guard on...