Borkland v. Pedersen, 11881.

Decision Date20 May 1957
Docket NumberNo. 11881.,11881.
Citation244 F.2d 501
PartiesGustave W. BORKLAND, Plaintiff-Appellant, v. Svend PEDERSEN and Borghild Pedersen, etc., d/b/a Paramount Plastics Co., Defendants-Appellees.
CourtU.S. Court of Appeals — Seventh Circuit

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.

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 district court did not deem it necessary to mention, DeCorrevont, No. 1,856,694. From a consideration of all this prior art we think it clear that each element included in these two combinations was within the teachings of the art, of all of which the patentee was bound to take notice. Therefore, he did not achieve invention, unless, in combining these old elements, he produced a new result or at least such a more facile construction or operation as would involve invention.

The district court had before it documentary and oral evidence and parol testimony as to prior use. That it gave to all of this evidence careful attention and analyzed it in detail is evident from the reported opinion. We think, after examining the record, that to upset the finding of no invention is unjustified, in view of the provisions of Rule 52(a) of the Rules of Federal Procedure, 28 U.S. C.A. It is clear, we think, from the record, that plaintiff fell short of proof of a patentable invention. As the Supreme Court said in Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Co., 340 U.S. 147, 152-153, 71 S.Ct. 127, 130, 95 L.Ed. 162: "The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable. * * * A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men." And in the earlier case of Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U.S. 545, at page 549, 58 S.Ct. 662, at...

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  • Endevco Corporation v. Chicago Dynamic Industries, Inc.
    • United States
    • U.S. District Court — Northern District of Illinois
    • 21 d2 Fevereiro d2 1967
    ...art which can be considered pertinent. Mandel Bros., Inc. v. Wallace, 335 U.S. 291 at 296, 69 S.Ct. 73, 93 L.Ed. 12; Borkland v. Pederson, 244 F.2d 501 at 503 (CA 7); Allied Wheel Products, Inc. v. Rude, 206 F.2d 752 at 753 (CA 6); In re Kylstra, 87 F.2d 487 at 20. The title or name given t......
  • Minnesota Min. & Mfg. Co. v. Blume
    • United States
    • U.S. District Court — Southern District of Ohio
    • 7 d2 Agosto d2 1979
    ...of invention. Allied Wheel Products v. Rude, supra, 206 F.2d at 761. Firestone v. Aluminum Co. of America, supra. See also, Borkland v. Pedersen, 244 F.2d 501, 502 (C.A. 7). Thus, it is incorrect to say that a patent lacks invention because it is anticipated. If it is anticipated it lacks n......
  • Monroe Auto Equipment Co. v. Heckethorn Mfg. & Sup. Co.
    • United States
    • U.S. Court of Appeals — Sixth Circuit
    • 14 d4 Maio d4 1964
    ...of invention. Allied Wheel Products v. Rude, supra, 206 F.2d at 761; Firestone v. Aluminum Co. of America, supra. See also, Borkland v. Pedersen, 244 F.2d 501, 502 (C.A. 7). Thus it is incorrect to say that a patent lacks invention because it is anticipated. If it is anticipated it lacks no......
  • Griffith Rubber Mills v. Hoffar
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • 6 d3 Março d3 1963
    ...296, 69 S.Ct. 73, 93 L.Ed. 12 (1948); William T. Alvarado Sales Co. v. Rubaloff, 263 F.2d 926, 928 (9th Cir., 1959); Borkland v. Pedersen, 244 F.2d 501, 503 (7th Cir., 1957). 17 Hoffar offered evidence only of sales of his muffler. Proof of the existence of the pattern described in the text......
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