Up-Right, Inc. v. Safway Products, Inc.

• Citation: 364 F.2d 580
• Decision Date: 26 July 1966
• Docket Number: No. 21867.,21867.
• Court: United States Courts of Appeals. United States Court of Appeals (5th Circuit)
• Parties: UP-RIGHT, INC., Appellant, v. SAFWAY PRODUCTS, INC. and R. D. Werner Co., Inc., Appellees.

364 F.2d 580 (1966)

UP-RIGHT, INC., Appellant, v. SAFWAY PRODUCTS, INC. and R. D. Werner Co., Inc., Appellees.

No. 21867.

United States Court of Appeals Fifth Circuit.

July 26, 1966.

Carlisle M. Moore, Oscar A. Mellin, San Francisco, Cal., E. Hastings Ackley, Dallas, Tex., for appellant.

Marvin S. Sloman, Paul Carrington, Dallas, Tex., for appellees.

Before MARVIN JONES, Senior Judge,^* and GEWIN and BELL, Circuit Judges.

GRIFFIN B. BELL, Circuit Judge.

This appeal is from the judgment of the District Court holding Claims 1 and 2 of United States Letters Patent No. 2,438,173 invalid. The case had its genesis in an action for infringement of these patent claims. The District Court held that the claims were not infringed, and we reversed. Up-Right, Inc. v. Safway Products, Inc., 5 Cir., 1963, 315 F.2d 23, cert. den., 375 U.S. 831, 84 S.Ct. 76, 11 L.Ed.2d 62. Our holding was that the accused device performed substantially the same function in substantially the same way to obtain substantially the same result as the device of the patent. Form was not to be exalted over substance. We remanded for a determination of the validity of Claims 1 and 2.¹

On remand, Up-Right, Inc., the assignee of the patent in suit and the appellant here, moved for judgment on the record. The District Court entered findings of fact and conclusions of law upon the question of validity to the effect that Claims 1 and 2 of the patent were invalid. This appeal questions the correctness of the judgment of the District Court entered on these findings and conclusions.

The facts, including the relationship of the parties, the descriptions of the structure or device of the patent and of the accused structure, as well as the facts relating to the commercial success of the structure of the patent are set out in full in our prior decision. Supra, 315 F.2d 23. It is clear from the record and from our previous decision that the patent in suit adds to the store of useful knowledge in this country. It describes and contributes a structure which is novel and which also has utility. 35 U.S.C.A. §§ 101 and 102. The question is whether the invention disclosed in Claims 1 and 2 rises above the level of subject matter which would have been obvious to a person skilled in the art of scaffolding. If so, the claims are valid; otherwise, the District Court was correct in holding the claims invalid. We agree with the District Court and thus affirm.

The Supreme Court carefully considered the question of obviousness in light of the prior art in a recent decision. Graham v. John Deere Co., 1966, 381 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. The language of 35 U.S.C.A. § 103 was construed. It provides that a patent may not be obtained although the invention has not been identically disclosed in the prior art when the difference 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 to a person having ordinary skill in the art to which the subject matter pertains. The court determined that this most recent expression of Congress, a part of the 1952 Patent Act, was a mere reiteration or codification of the rule which the Supreme Court formulated in Hotchkiss v. Greenwood, 1850, 11 How. 248, 13 L.Ed. 683, 691, as follows:

"* * * unless more ingenuity and skill * * * were required * * * than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of a skilled mechanic, not that of the inventor."

The court went on to state in Graham that Congress, in § 103, emphasized "non-obviousness" as the operative test of the section, rather than the less definite "invention" language of the Hotchkiss case. Patentability, the court said, "* * * is to depend, in addition to novelty and utility, upon `non-obvious' nature of the `subject matter sought to be patented' to a person having ordinary skill in the pertinent art." 86 S.Ct. 692, 15 L.Ed.2d 554.

The question of the validity of the patents in Graham was treated as one of law, but to be decided on the result of factual inquiries. These inquiries were said to include the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. It so happens that this was the exact frame of reference used by the District Court in making the determination of invalidity in this case. And it is worthy of note that none of the prior art considered by the District Court as a basis for its ruling was considered by the Patent Office in granting the patent in question.

We begin by considering what is claimed as the invention. It is a type of scaffolding, having three distinct features: portability, foldability and stackability. The structure of the patent in suit is described in detail in our prior decision, 315 F.2d 23, 24, as follows:

"The patent in suit covers an integrally connected assemblage of scaffold elements which may be easily erected for use as a tower type scaffold unit, and which may be easily collapsed or folded into a relatively small compact package for transportation or storage. The essential parts are permanently connected together by hinged joints, thus eliminating the loss of parts, and increasing the ease with which the scaffold may be handled and stored. Each unit includes a ladder. The units may be placed when erected, one on top of the other, to reach desired heights.

* * * * * *

"These units are simple in design. They are of open frame or tubular construction. Each consists of a platform section hinged to two end or support sections with a diagonal ladder section hinged at the juncture of the platform and one of the end sections. The design is based on a triangular conception with one end section, the ladder section and the platform section forming the triangle. The other end section supports the corner of the triangle where the ladder is affixed at the juncture of that end section and the platform, and is perpendicular to the platform and parallel to the opposite end section when the unit is in the erected position. The ladder is used for the purpose of ascending to and descending from the platform section. The width of the ladder takes up one half of the width of the supporting ends of the platform section, leaving room for a deck covering the other half of the platform section from which to work. Additional units may be stacked, one upon the other, by fitting the legs of the upper unit into holes provided in the four corners of the end sections of the lower unit. * * *"

The validity of Claims 1 and 2 of this patent was upheld by the Court of Appeals for the Ninth Circuit in Beatty Safway Scaffold Co. v. Up-Right, Inc., 9 Cir., 1962, 306 F.2d 626 in the face of Martin Patent No. 1,912,947. This patent was a part of the prior art relied on by the District Court here. The Martin patent covered an invention relating to portable scaffolding. It was foldable with ladders at each end of the platform. The structure of the Martin patent was not easily adaptable to quick tower construction. It had no diagonal support of the type described in the claims in suit and thus was not based on a triangular concept.

We might agree with the holding of the Ninth Circuit insofar as it was based on the Martin patent but it avails appellant nothing here for that court did not have before it the additional prior art which we will now discuss. It is true that no single prior art reference contains the exact combination of elements which are in the structure of the claims in suit but we believe the District Court correctly concluded that a person skilled in the scaffolding art as it existed prior to the patent in suit could nevertheless achieve the result of the claims in suit. The prior art available to such a person would have included not only the Martin patent which taught scaffolding foldability but also Cederquist Patent No. 2,312,148. In addition, the Boeing Aircraft Company portable diagonal stairway scaffold, and the Southern California Wind Tunnel scaffold structure, both of which had been described in publications more than one year prior to the application for the patent in suit, were a part of the prior art.

It is agreed that the Cederquist patent is the most pertinent prior art. Appellees' expert so testified. He also testified that there was substantial difference between the structure of the patent in suit and the structure of the Cederquist patent. This is true but the difference falls short of demonstrating patentability when considered with Cederquist, the Martin patent, the Boeing scaffolding, the Southern California wind tunnel scaffold, and the stacking art theretofore made known by Uecker Patent No. 2,195,906. These are all a part of the prior art which would have been available to a person skilled in the scaffolding art seeking to solve the need for a portable and foldable scaffold which might be constructed in units so as to stack one upon the other to achieve desired heights.

The Cederquist patent was for a combination step ladder. It was foldable, portable and based on triangular concept. The object of it was to provide means for supporting a platform in a horizontal position at the top of a ladder so that a person might walk up the ladder and then move over the platform. It consisted of a ladder on one end which served to support the platform with the top of the ladder being fixed to the platform; a leg support perpendicular to the platform and fixed to the end of the platform opposite the ladder end. This support is somewhat parallel to the ladder with the lower end being affixed to a diagonal member running from that end of the support upward to connect with the juncture of the ladder and the platform.

The patent in suit described a structure having the ladder occupying...