318 F.2d 79 (6th Cir. 1963), 14728, Maytag Co. v. Murray Corp. of America

Docket Nº:14728.
Citation:318 F.2d 79, 137 U.S.P.Q. 819
Party Name:The MAYTAG COMPANY, a corporation, Plaintiff-Appellant, v. The MURRAY CORPORATION OF AMERICA, a corporation, Defendant-Appellee.
Case Date:June 05, 1963
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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318 F.2d 79 (6th Cir. 1963)

137 U.S.P.Q. 819

The MAYTAG COMPANY, a corporation, Plaintiff-Appellant,

v.

The MURRAY CORPORATION OF AMERICA, a corporation, Defendant-Appellee.

No. 14728.

United States Court of Appeals, Sixth Circuit.

June 5, 1963

Page 80

Arthur W. Dickey, Detroit, Mich, (Arthur W. Dickey, Robert L. Boynton, Harness, Dickey & Pierce, Detroit, Mich., on the brief), for appellee.

Before CECIL, Chief Judge, WEICK, Circuit Judge, and TAYLOR, District judge.

CECIL, Chief Judge.

The plaintiff-appellant, The Maytag Company, brought this action in the United States District Court for the Eastern District of Michigan, Southern Division, against the defendant-appellee, The Murray Corporation of America, for infringement of a patent. The parties will be referred to as plaintiff and defendant, respectively.

The patent in question, No. 2,717,456, was issued to Thomas R. Smith and assigned by him to the plaintiff. The defendant denied infringement and charged that the patent was invalid. The District Judge found the patent to be valid, except for claim 15 which he held to be too broad and an over statement of the invention. He found further that there was no infringement and the complaint was dismissed. The plaintiff appeals from the findings of the court that claim 15 was invalid and that there was no infringement. The defendant urges this Court to sustain the judgment of the District Court either on the ground of invalidity or non-infringement. The trial judge found that claims 2 and 3 of the patent were not infringed by virtue of being limited to the specific type of heating means shown in the patent. The plaintiff did not appeal from the findings of the court on these two claims.

The defendant did not file a cross-appeal and the plaintiff claims that the question of invalidity can not now be raised on this appeal. We hold that this question is properly before us. Bede v. Baker & English, Inc., 274 F.2d 833, 835, C.A. 6; Stelos Co. v. Hosiery Motor-Mend Corp., 295 U.S. 237, 239, 55 S.Ct. 746, 79 L.Ed. 1414; Merco Nordstrom Valve Co. v. W. M. Acker Organization, Inc., 131 F.2d 277, C.A. 6; Guiberson Corp. v. Equipment Engineers, Inc., 252 F.2d 431, 432, C.A. 5; Graham v. Cockshutt Farm Equipment, Inc., 256 F.2d 358, 359, C.A. 5.

The paramount question in this case, as stated by counsel for plaintiff, is infringement. While an affirmance of the District Court on the ground of non-infringement would dispose of the appeal, the Supreme Court has said that due to the greater public importance of the validity of a patent it is the better practice to inquire fully into that issue. Sinclair & Carroll Co., Inc. v. Interchemical Corporation, 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644. We will consider first the question of validity.

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The subject of the plaintiff's patent and the accused devices of the defendant all involve clothes driers of the type commonly used in the home. The defendant has made, sold and used three models of its drier, which are identified as CDF, CDH and CDK. The parties agree that all three models are essentially the same in respect to the particulars material to this action. They will be referred to as the 'accused device.'

The machines of both parties operate as 'closed' systems and we will limit our discussion to that type of drier, although there is a type that operates as an 'open' system. Briefly stated, the essential feature of the closed system is that the atmosphere within the drier is enclosed from the outside atmosphere and heated to evaporate moisture which is removed by a condenser disposed internally of the system. The open system draws air from outside the machine itself, which is sometimes referred to as ambient atmosphere. This outside air is heated, mingled with the clothing to be dried and then expelled to the outside of the washer.

The plaintiff's patent is known as a combination patent and is admittedly composed of old elements. The crucial elements of this combination are: 1. A substantially imperforate casing defining a chamber; 2. A tumbler or drum to agitate the clothing; 3. Walls of such casing which openly face the tumbler or drum; 4. Means for heating the chamber; 5. A water film condenser.

The requisites for the validity of a patent are novelty, utility and invention. Aluminum Company of America v. Sperry Products, Inc., 285 F.2d 911, 917, C.A. 6, cert. denied, 368 U.S. 890, 82 S.Ct. 139, 7 L.Ed.2d 87. 'The combination of old parts or elements, in order to constitute a patentable invention, must perform or produce a new and different function or operation than that theretofore performed or produced by them; it is not sufficient that the combination be superior to what went before in producing a more convenient and more economical mechanism.' Bede v. Baker & English, Inc., supra, 274 F.2d at 839, citing General Motors Corp. v. Estate Stove Co., 203 F.2d 912, 917, C.A. 6; Sec. 103, Title 35, U.S.C.

The defendant claims that the patent in suit is lacking in invention by reason of prior art. The test of invention where old elements are used in the alleged invention is whether those elements are used in a manner different from the previously known use in such a way that the alleged invention would not have been obvious to one skilled in the art. Allied Wheel Products v. Rude, 206 F.2d 752, 760, C.A. 6; Aluminum Company of America v. Sperry Products, Inc., supra; Ohmer Fare Register Co. v. Ohmer, 238 F. 182, 186-187, C.A. 6; Wintermute v. Hermetic Seal Corporation, 279 F.2d 60, 62, C.A. 3. Invention under this test is a question of fact. Sterling Aluminum Products, Inc. v. Bohn Aluminum & Brass Corp., 298 F.2d 538, 539-540, C.A. 6; Wickman v. Vinco Corporation, 288 F.2d 310, 312, C.A. 6; Cold Metal Products Company v. E. W. Bliss Company, 285 F.2d 244, 248, C.A. 6, cert. denied, 366 U.S. 911, 81 S.Ct. 1085, 6 L.Ed.2d 235; Aluminum Company of America v. Sperry Products, Inc., supra; Stubnitz-Greene Spring Corp. v. Fort Pitt Bedding Co., 110 F.2d 192, 196, C.A. 6; Ohmer Fare Register Co. v. Ohmer, supra, 238 F. at 187; Schafer v. Watson, 109 U.S.App.D.C. 360, 288 F.2d 144, 145, C.A.D.C.; RotaCarb Corporation v. Frye Manufacturing Company, 313 F.2d 443, 444, C.A. 8.

The patent in suit, as issued, sets forth seven objects of the invention as claimed by Mr. Thomas R. Smith, its inventor. Summarizing these objects, briefly, it may be stated that the inventor's contribution to the prior art of 'closed system' laundry driers is: (1) The condensation of moisture and the elimination of lint by the utilization of a water film condenser while relying completely on vapor pressure to circulate the air by 'random flow,' and (2) thereby, the elimination of the need for baffles, protective shields and channeling

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ducts which increased the cost of the drier and accumulated lint under unsanitary and dangerous conditions.

Consideration of the status of the prior art of closed laundry driers and its relation to the patent in suit raises a close question of fact as to whether Mr. Smith's device achieved invention. The trial judge carefully considered all of the evidence with reference to prior art, particularly the Bradley patent, the claims of the parties and the law applicable to the facts. His opinion is reported at 193 F.Supp. 535. The trial judge found that the specification of the patent in suit disclosed the invention contended for by plaintiff. He further found 'In plaintiff's patent a new and surprisingly simple method of operation is disclosed for the first time. Although all the structural elements are old, in the peculiar combination disclosed by the patent they cooperate in a new and different manner, bringing about a surprising result which the prior art inventors were unable to conceive or anticipate.' Id. 193 F.Supp. at 541.

The above quoted finding is a factual finding and describes invention. We cannot say that this finding of fact is clearly erroneous. Findings of fact of the trial court in a patent case cannot be set aside unless clearly erroneous. Rule 52(a), F.R.C.P.; Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 274, 69 S.Ct. 535, 93 L.Ed. 672; Aluminum Company of America v. Sperry Products, Inc., supra, 285 F.2d at 917; Sterling Aluminum Products, Inc. v. Bohn Aluminum & Brass Corp., supra, 298 F.2d at 539; General Electric Company v. Sciaky Bros., Inc., 304 F.2d 724, 731, C.A. 6; Jiffy Enterprises, Inc. v. Sears, Roebuck & Co., 306 F.2d 240, 243, C.A. 3, cert. denied, 371 U.S. 922, 83 S.Ct. 289, 9 L.Ed.2d 230, citing R. M. Palmer Company v. Luden's Inc., 236 F.2d 496, 498, C.A. 3; Hoge Warren Zimmerman Co. v. Nourse & Co., 293 F.2d 779, 780, C.A. 6; Thermo King Corporation v. White's Trucking Service, Inc., 292 F.2d 668, 678, C.A. 5; Welsh Co. of California v. Strolee of California, Inc., 290 F.2d 509, 511, C.A. 9.

We sustain the finding of the trial court that the patent in suit is valid as to claims 7, 8, 9, 12, 16 and 17.

The terms of claim 15 of the plaintiff's patent (plaintiff's Ex. 1A), which the District Court held to be invalid, are obviously so broad that they cannot be construed so as to be confined to the invention disclosed by plaintiff's patent (No. 2,717,456). As the trial judge said, this claim would embrace an 'open' as well as a 'closed' system drier. For the reason that claim 15 overstates the invention and claims a monopoly greater than that to which the inventor is entitled, we conclude that the claim is invalid.

Plaintiff alleges that defendant has infringed plaintiff's patent by manufacturing, selling and using clothes driers embodying his patented invention. Specifically, plaintiff asserts that defendant's commercial clothes drier models CDF, CDH and CDK infringe upon claims 7, 8, 9, 12, 15, 16 and 17. (Claim 15 alleged to have been infringed has been disposed of previously in this opinion.)

The District Court determined...

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