244 F.2d 501 (7th Cir. 1957), 11881, Borkland v. Pedersen

Docket Nº:11881.
Citation:244 F.2d 501, 113 U.S.P.Q. 401
Party Name:Gustave W. BORKLAND, Plaintiff-Appellant, v. Svend PEDERSEN and Borghild Pedersen, etc., d/b/a Paramount Plastics Co., Defendants-Appellees.
Case Date:May 20, 1957
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

Page 501

244 F.2d 501 (7th Cir. 1957)

113 U.S.P.Q. 401

Gustave W. BORKLAND, Plaintiff-Appellant,


Svend PEDERSEN and Borghild Pedersen, etc., d/b/a Paramount Plastics Co., Defendants-Appellees.

No. 11881.

United States Court of Appeals, Seventh Circuit.

May 20, 1957

Edward A. Haight, Robert R. Lockwood, John W. Hofeldt, Chicago, Ill., for appellant.

Casper W. Ooms, Robert C. Williams, David L. Ladd, Chicago, Ill., for appellees.

Before MAJOR, LINDLEY and SWAIM, Circuit Judges.

LINDLEY, Circuit Judge.

Plaintiff, owner of patent 2, 357, 806, issued September 12, 1944 and of 23, 171, reissue of 242, 338, brought suit against defendants charging infringement of both patents. The district court found them infringed by the process employed by defendants, but invalid. In its opinion, reported in 142 F.Supp. 652, the court explored meticulously and discussed at length the issues of law and fact involved and the evidence submitted, and made extended findings and conclusions, which we need not repeat.

Upon appeal plaintiff insists that the finding of invalidity is clearly erroneous, upon the argument that it was predicated upon an erroneous interpretation of applicable law; that the evidence of prior use found to anticipate was not sufficient to meet the standards governing such proof; and, specifically, that, though the elements of the combinations of the patents were old, the results were entirely new. In short, the parties agree that both are combination patents, plaintiff maintaining that they are valid and defendant, that all elements in the patents were old and that neither achieves the 'new and surprising' result necessary to sustain combination patents.

Page 502

Plaintiff argues that, inasmuch as the trial court did not specifically find that any one of the prior art references included all elements of the patents in issue, it erroneously held that anticipation existed. Defendants concede that in order to establish 'literal anticipation, ' all old elements which a patentee combines must appear in a single prior art reference. Apparently, the trial court used the word 'anticipation' in a much more liberal sense than is justified by the decisions of this and other courts. However, it found not only that the patents were anticipated by various prior art references, but, also, that they did not teach novelty over the prior art, but 'disclosed no invention not theretofore known and patented.' Consequently, we think it immaterial, under our conclusions, whether the court employed the prescribed standard in determining anticipation, in view of the fact that it also found the patents invalid for want of patentable invention. As we said recently, in Pleatmaster, Inc., v. J.L. Golding Mfg. Co., 7 Cir., 240 F.2d 894, 897: 'we do not need to go so far as to say that there is complete anticipation in the prior art devices of everything that Solomon accomplished. Thus, in Dixie-Vortex Co. v. Paper Container Mfg. Co., 7 Cir., 130 F.2d 569, we said: '* * * 'it is sufficient, we think, that the prior art disclosures are such that a person skilled in the art might readily design the improvement which Barbieri claims to have made'.' In Application of Petersen, 223 F.2d 508, at page 511, 42 C.C.P.A., Patents, 1043, the court said: 'While no single reference discloses all the admittedly old steps of the claimed method, it is proper to combine refrences, if warranted, to show that the bringing together of these old steps was reasonably suggested by the prior art, and would have readily occurred to the worker skilled in such art.' Thus, the crucial question before us is whether the trial court's determination of lack of invention is sustained by the evidence.

We have examined all the prior art submitted, including documentary and oral evidence, as well as the testimony concerning prior use. We have also considered one earlier patent, which the...

To continue reading