251 F.2d 801 (9th Cir. 1957), 15589, Bergman v. Aluminum Lock Shingle Corp. of America

Docket Nº:15589.
Citation:251 F.2d 801, 116 U.S.P.Q. 32
Party Name:Harry X. BERGMAN, Perma-Lox Aluminum Shingle Corporation and Victor H. Langville, doing business under the assumed name of Langville Manufacturing Company, Appellants, v. ALUMINUM LOCK SHINGLE CORPORATION OF AMERICA, Appellee.
Case Date:December 13, 1957
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 801

251 F.2d 801 (9th Cir. 1957)

116 U.S.P.Q. 32

Harry X. BERGMAN, Perma-Lox Aluminum Shingle Corporation and Victor H. Langville, doing business under the assumed name of Langville Manufacturing Company, Appellants,



No. 15589.

United States Court of Appeals, Ninth Circuit.

December 13, 1957

Rehearing Denied Feb. 14, 1958.

Page 802

J. Pierre Kolisch, Ramsey & Kolisch, Portland, Ore., for appellants.

S. J. Bischoff, Portland, Ore., for appellee.

Before HEALY, POPE and LEMMON, Circuit Judges.

LEMMON, Circuit Judge.

Twilight is falling upon 'gadgets' as subjects of patents. The dusk commenced to gather half a dozen years ago when, in an epochal decision, 1 the Supreme Court fixed its canon against dignifying combined 'segments of prior art' with the title of 'inventions'.

In a concurring opinion in that case, Mr. Justice Douglas compiled a devastating list of 'gadgets' that have been placed 'under the armour of patents'. 2 The specification at bar proclaims at the outset that it is a 'drain slot which forms the basis of this invention'. If the trivial devices listed by Mr. Justice Douglas are 'gadgets', then, in the hierarchy of invention, a slot should be classified as a subgadget-- comparable to the hole in a doughnut.

This is the second time that the patent in suit, Korter No. 2, 631, 552 has been before this Court. The first appeal was dismissed because the so-called decree of the Court below was not a final decision, within the meaning of 28 U.S.C.A. § 1291, and was therefore not appealable. Bergman v. Aluminum Lock Shingle Corp. of America, 9 Cir., 1956, 237 F.2d 386, 387.

This second appeal is on the merits. For our present purposes, the earlier opinion contains a sufficient statement of the case, except that it should be added that the District Court amended its original decree by stating:

'That there is no just reason for delay in entering final judgment and decree for plaintiff and against the defendants on the following issues:'

By this amendment the lower court conformed to the requirements of Fed.Rules Civ.Proc. Rule 54(b), 28 U.S.C.A. relative to a 'Judgment Upon Multiple Claims'.

The District Court adhered to its original decree in holding that (1) the patent in suit is valid; that (2) it has been infringed; and that the appellants were enjoined from making, selling, etc., 'any aluminum shingles which which infringe' the patent in suit.

On September 24, 1957, the appellee filed a motion to strike from the appellants' brief filed on the former appeal a copy of Patent No. 2, 173, 774, issued to Birch and Childers, on the ground that the document was not included in the appellants' contentions in the pretrial order, etc. The motion is granted.

On October 10, 1957, the appellants moved to strike the appellee's supplemental brief on the grounds that it was filed to late and not in accordance with the requirements of Rule 18(3) of this Court, 28 U.S.C.A.; that is to say, on September 27, 1957. Although we believe that the appellants are technically correct in their contention, we are also of the view that in a case of this complexity, the rule can be properly relaxed, so as to give the Court the benefit of counsel's views. The motion is denied.

1. The Claim in Suit

The instant patent contains only one claim, which reads as follows:

'I claim:

'An aluminum shingle of rectangular shape, said shingle comprising

Page 803

a substantially flat sheet of metal of uniform thickness and the body of which lies substantially in the same plane, corrugations in said shingle spaced laterally of the shingle, said corrugations forming ridges on the inner face of the shingle, the lateral edges of the shingle being reversely turned on opposite faces of said shingle providing curved outer edge portions for interlocking the shingle with laterally adjacent shingles, the top and bottom edge portions of the shingle being reversely turned on opposite faces thereof, each of said top and bottom turned edge portions comprising a half-round portion, one side of which is tangent to the plane of the shingle and the other side of which terminates in a reversely curved portion, the turned bottom portion forming a gutter and the reversely curved portion thereof being engageable with a reversely curved top edge portion of a lower adjacent shingle to form a close fit there-between, a fastening tab integral with the shingle and extending from an upper corner of said shingle for securing the same to a roof structure, and a drain slot disposed in the gutter of said shingle for draining water therefrom, said corrugation ridges on the inner face of the shingle adapted to space said reversely turned top edge portion of the lower adjacent shingle from the inner face of said shingle so that moisture can travel along the inner face of the shingle and into said gutter.'

2. A Patent Case Presents Mixed Questions of Law and Fact

On the first day of the trial, counsel for the appellants started to discuss the case of Kwikset Locks, Inc., v. Hillgren, 9 Cir., 1954, 210 F.2d 483, certiorari denied 1954, 347 U.S. 989, 74 S.Ct. 852, 98 L.Ed. 1123, rehearing denied 1954, 348 U.S. 852, 75 S.Ct. 19, 99 L.Ed. 671, certiorari denied 1954, 348 U.S. 855, 75 S.Ct. 78, 99 L.Ed. 673. The following colloquy ensued:

'The Court: There is no law in patent cases. A patent case is a question of fact.

'Mr. Kolisch: Pardon?

'The Court: I say, there is no law in a patent case. A patent case is a question of fact.

'Mr. Kolisch: The Court of Appeals discusses that, also the questions of fact and questions of law.

'The Court: It is only a question of fact. That is all there is, a question of fact. I don't care what the Circuit Court said about it, anyway.'

The appellants complain that the District Court erred in this holding.

We agree with the appellants that the above statement of the Court was erroneous.

In Atlantic & Pacific, supra, 340 U.S. at page 155, 71 S.Ct. at page 132, in the concurring opinion of Mr. Justice Douglas, we find the following correct statement of the law:

'The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law.'

Mr. Justice Douglas cited the case of Mahn v. Harwood, 1884, 112 U.S. 354, 358-359, 5 S.Ct. 174, 177, 6 S.Ct. 451, 28 L.Ed. 665, in which the Supreme Court used the following language:

'In cases of patents for inventions, a valid defense, not given by the statute, often arises where the question is whether the thing patented amounts to a patentable invention. This being a question of law, the courts are not bound by the decision of the commissioner, although he must necessarily pass upon it. (Many cases cited.)'

If further authority were needed, it could be found in the bulging libraries of text and decisional patent law.

Page 804

3. Once Invalidity Is Established, It Is Unnecessary to Consider the Question of Infringement.

There is a growing and pragmatical tendency among courts not to inquire into the alleged infringement of a patent once it has been found to be invalid.

This trend probably has been encouraged by an observation in Sinclair & Carroll Co., Inc., v. Interchemical Corporation, 1945, 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 89 L.Ed. 1644, where the Court said:

'There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of non-infringement without going into the question of validity of the patent. (Cases cited.) It has come to be recognized, however, that of the two questions, validity has the greater public importance, * * *.'

Realizing that an invalid patent cannot be infringed, many Federal courts have correctly proceeded no further after finding a patent void.

In J. R. Clark Company v. Murray Metal Products Company, 5 Cir., 1955, 219 F.2d 313, 318, the Court said:

'Whether assuming Claim 1's validity, appellant might be entitled to prevail on the closer issue of infringement, we think it unnecessary for us to decide. Expressly pretermitting any holding upon that issue, we prefer to predicate our decision on what appears to us more solid ground, i.e. the proven invalidity of the patent in suit, both as anticipated in fact by the prior art, and for its failure, as a matter of law, to disclose that degree of novelty now required in order to vest a patentee with the statutory monopoly which an enforceable patent grants. (Cases cited.)'

And in National Transformer Corp. v. France Mfg. Co., 6 Cir., 1954, 215 F.2d 343, 359, the Court thus tersely expressed the current trend:

'Where patents are found to be invalid, it is not necessary to pass upon the issues of infringement. (Case cited.)' 3

4. The Prior Art

In their answer, the appellants asserted that the appellee's alleged invention has been anticipated in thirteen letters patent. In the pre-trial order, the appellants' 'Contentions' are alleged to include, inter alia, assertions that the alleged invention was anticipated by eight domestic and one foreign patent. The appellants' exhibits listed in the pre-trial order, however, include copies of eleven patents.

We will confine our discussion to those patents principally relied upon by the appellants in their briefs in this Court. And under the facts of this case, we need not be concerned with the proceedings in the Patent Office. In Westinghouse Electric & Mfg. Co. v. Condit Electrical Mfg. Co., 2 Cir., 1911, 194 F. 427, 430, Judge Noyes (not Judge Learned Hand, as appellee states) 4 used the following language:

'We have reached the conclusion of invalidity without referring to

Page 805

the proceedings in the Patent Office because we fail to see that those proceedings have any bearing upon the questions arising in this case. Sometimes such proceedings are of importance, especially where a matter of...

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