332 F.2d 406 (6th Cir. 1964), 15354, Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co.

Docket Nº:15354.
Citation:332 F.2d 406, 141 U.S.P.Q. 549
Case Date:May 14, 1964
Court:United States Courts of Appeals, Court of Appeals for the Sixth Circuit

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332 F.2d 406 (6th Cir. 1964)

141 U.S.P.Q. 549




No. 15354.

United States Court of Appeals, Sixth Circuit.

May 14, 1964

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[Copyrighted Material Omitted]

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Don K. Harness, Detroit, Mich., for appellant, Harness, Dickey & Pierce, Robert L. Boynton, Detroit, Mich., on the brief.

Robert Frank Conrad, Washington, D.C., for appellee, Robert F. Conrad, Watson, Cole, Grindle & Watson, Washington, D.C., on the brief.

Before MILLER, CECIL and PHILLIPS, Circuit Judges.

HARRY PHILLIPS, Circuit Judge.

This is an appeal from a judgment of the District Court holding invalid certain claims of two patents belonging to plaintiff-appellant.

The Monroe Auto Equipment Company, plaintiff-appellant, hereinafter referred to as plaintiff, brought suit against Heckethorn Manufacturing and Supply Company, defendant-appellee, hereinafter referred to as defendant, charging infringement of Patents No. 2,896,938 and No. 2,912,235, hereinafter referred to, respectively, as patents 938 and 235.

These two patents have had long and arduous journeys through the patent office. The original application which resulted in patent 938 was filed May 6, 1954, and the patent issued on July 28, 1959. Patent 235 was based on an application filed September 30, 1954, and was issued on November 10, 1959. Both of these applications were filed by Brooks Walker. Plaintiff is the owner of the patents as assignee of Walker.

The patents relate to auxiliary suspension devices designed for installation on the rear of an automobile. They are mounted at an inclined angle between the rear axle and the chassis frame, a so-called 'sea-leg' mounting. They provide additional load carrying capacity and improve the lateral stability of the car.

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The device includes a hydraulic direct acting tubular shock absorber surrounded by a relatively long spring of small diameter, the ends of which are supported on the relatively movable telescopic parts of the shock absorber. A rubber tubular spacer sleeve is positioned around the shock absorber so as to fit between it and the coil spring. This maintains the spring in a substantially aligned or concentric relationship relative to the shock absorber, and prevents the spring from buckling or thrashing around. In addition, the spacer sleeve prevents the spring from banging against and damaging the shock absorber, and prevents the noise which would result from the metal-to-metal contact between the spring and the shock absorber.

Plaintiff, the world's largest seller of replacement shock absorbers, began marketing this device in May, 1957, under the name of 'Load-Leveler's.' The product apparently has enjoyed considerable acceptance and commercial success.

In 1959 defendant began selling a device it called the 'Level Ride,' the alleged infringer. This too is a combination shock absorber and helper spring. It consists of a telescopic shock absorber disposed within a coil spring. Around the shock absorber and between it and the spring is a tubular rubber sleeve. Since it first went on sale, defendant has changed its device so that it now has two shorter rubber sleeves instead of the one longer sleeve.

At the trial plaintiff limited its charge of infringement to claims 2 and 3 of patent 938 and claim 14 of patent 235. The former refer to the rubber spacer sleeve which fits between the spring and the shock absorber. Claim 14 of patent 235 refers to the so-called 'sea-leg' mounting, that is, at an inclined angle between axle and chassis.

In its original complaint plaintiff sought an injunction, an accounting, and legal relief in the form of damages. Plaintiff also filed a demand for a jury trial. Defendant filed a motion to strike the demand for a jury trial, and this motion was granted by the District Judge, the Honorable Marion S. Boyd. The case was tried to the Court and resulted in a judgment holding both patents invalid. The findings and conclusions of the District Court are reported in 204 F.Supp. 249.

Plaintiff appealed from this judgment and from the order striking the demand for a jury trial. This Court, at 305 F.2d 375, vacated the judgment and remanded the case for consideration in the light of Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 894, 8 L.Ed.2d 44. In that case the Supreme Court held that a plaintiff is entitled to a jury trial, even in an essentially equitable suit, if any legal relief is sought involving factual questions that need to be resolved.

On remand, the District Court held that the patents were invalid as a matter of law, and that therefore there was no prejudice to the plaintiff in striking the demand for a jury trial. 214 F.Supp. 704.

Plaintiff appeals from this judgment. It also filed in this Court a motion seeking an order that the case be remanded with directions for trial before a jury. This Court denied the motion, saying: 'Our previous ruling was not that appellants were entitled to a jury trial . . . but only that the District Court consider the case again in light of the Supreme Court decision.' This Court observed that 'if the controlling facts of the case were undisputed so that the District Judge had only a legal question to decide, then appellant was not prejudiced by the refusal of the Judge to submit the issues to a jury.' Finally, we there said: 'Whether the opinion of the District Court, on remand, was correct remains to be determined in this appeal.' That time has now come.

First, however, because of the decision below and the posture of this case, we consider the issue of whether patentability involves a question of law or a question of fact. Of course our real concern is not with patentability, a word which is dependent upon other factors and merely describes an end result. Patentability follows, as the night

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follows the day, if the three requisites of patentability are present; these are invention, novelty, and utility. Harvey v. Levine, 322 F.2d 481, 483 (C.A. 6); Maytag Co. v. Murray Corp. of America, 318 F.2d 79, 81 (C.A. 6); Allied Wheel Products v. Rude, 206 F.2d 752, 760 (C.A. 6). To paraphrase these requisites more in terms of the statute, to receive a patent there must be an invention which is new and useful. 35 U.S.C. § 101. Thus our real concern is with invention, its meaning, and whether it poses a question of law or fact.

It is virtually a practical impossibility to define adequately that abstraction which we call invention. Long ago the Supreme Court said: 'The truth is the word cannot be defined in such a manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not. In a given case we may be able to say that there is present invention of a very high order. In another we can see that there is lacking that impalpable something which distinguishes invention from simple mechanical skill.' McClain v. Ortmayer, 141 U.S. 419, 427, 12 S.Ct. 76, 78, 35 L.Ed. 800. This Court consistently has echoed this view. Harvey v. Levine, supra, 322 F.2d at 485; Coats Loaders & Stackers, Inc. v. Henderson, 233 F.2d 915, 921 (C.A. 6); Westinghouse Elec. & Mfg. Co. v. Powerlite Switchboard Co., 142 F.2d 965, 966 (C.A. 6).

Judge Learned Hand concluded that in the final analysis the test of invention called for a subjective determination. Kirsch Mfg. Co. v. Gould Mersereau Co., 6 F.2d 793, 794 (C.A. 2). Judge Frank said that 'a decision as to whether or not a thing is an invention is a 'value' judgment.' Picard v. United Aircraft Corp., 128 F.2d 632, 639 (C.A. 2) (concurring opinion). And another court said 'it is a matter of feeling rather than of logic.' Warren Telechron Co. v. Waltham Watch Co., 91 F.2d 472, 473 (C.A. 1).

In spite of the difficulty in defining invention, still we must have objective references and a place from which to start. For this we turn to the statute, which provides that a patent may not be obtained 'if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.' 35 U.S.C. 103. Telescoped, the test is whether the device would have been obvious to one skilled in the art. Maytag Co. v. Murray Corp. of America, supra, 318 F.2d at 81; Firestone v. Aluminum Co. of America, 285 F.2d 928, 930 (C.A. 6); Aluminum Co. of America v. Sperry Products, Inc., 285 F.2d 911, 917 (C.A. 6), cert. denied, Firestone v. Aluminum Co. of Amer., 368 U.S. 890, 82 S.Ct. 139, 7 L.Ed.2d 87.

From this it may be said that invention is synonymous with unobviousness. Thus to say that a device lacks invention and that it is obvious is to state the same legal proposition in two ways. Application of Jacoby, 309 F.2d 513, 516, n. 3 (C.C.P.A.). While the use of obviousness does not begin to solve the problem of application, at least it gives us a touchstone for the contextual meaning of invention.

We now turn to consider whether invention, or unobviousness, poses a question of law or of fact. At the risk of understatement, this is a question fraught with complexities, and one which has caused some courts recently to engage in extensive analysis. E.g., Armour & Co. v. Wilson & Co., 274 F.2d 143 (C.A. 7) (separate opinion of Chief Judge Hastings); Bergman v. Aluminum Lock Shingle Corp. of America, 251 F.2d 801 (C.A. 9) (concurring opinion of Judge Pope).

In Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, the Supreme Court held that it is a question of law...

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