L & A PRODUCTS, INC. v. Britt Tech Corporation

• Decision Date: 27 September 1966
• Docket Number: No. 18275.,18275.
• Citation: 365 F.2d 83
• Parties: L & A PRODUCTS, INC., and James F. Lindsay, Appellants, v. BRITT TECH CORPORATION, Oren B. Harmes, John H. Threlkeld and Donald A. Deal, Appellees.
• Court: U.S. Court of Appeals — Eighth Circuit

365 F.2d 83 (1966)

L & A PRODUCTS, INC., and James F. Lindsay, Appellants, v. BRITT TECH CORPORATION, Oren B. Harmes, John H. Threlkeld and Donald A. Deal, Appellees.

No. 18275.

United States Court of Appeals Eighth Circuit.

August 29, 1966.

Rehearing Denied September 27, 1966.

John D. Gould, of Merchant, Merchant & Gould, Minneapolis, Minn., for appellants. Richard J. Leonard, St. Paul, Minn., was with him on the brief.

Kenneth D. Siegfried, of Schroeder, Siegfried & Ryan, Minneapolis, Minn., for appellees. Everett J. Schroeder, Minneapolis, Minn., was with him on the brief.

Before VAN OOSTERHOUT, BLACKMUN and GIBSON, Circuit Judges.

BLACKMUN, Circuit Judge.

On October 16, 1962, United States Patent No. 3,058,668 for an invention entitled "cleaning apparatus" was issued to plaintiffs Oren B. Harmes, John H. Threlkeld and Donald A. Deal as joint inventors. These individual plaintiffs have granted the corporate plaintiff, Britt Tech Corporation, an exclusive license to manufacture, use, and sell devices embodying the subject matter of the patent.

The four plaintiffs sued L & A Products, Inc., James F. Lindsay, its president, and Dennis Warta, a dealer, for damages and injunctive relief based upon alleged patent infringement, unfair competition, false marking, and antitrust violations. The defendants denied these allegations, asserted the invalidity of the patent, and counterclaimed for alleged unfair acts on the part of the plaintiffs and their agents. A preliminary procedural aspect of the litigation is reported as Britt Tech Corp. v. L & A Products, Inc., 223 F.Supp. 126 (D. Minn.1963).

Prior to trial the district court dismissed the antitrust count, the counterclaim, and the entire suit as to Warta. After trial the court, in an unreported memorandum, held that the patent was valid and that Lindsay and the corporate defendant had infringed it. It concluded, however, that the plaintiffs had not established unfair competition or false marking and it dismissed those counts with prejudice. Injunctive relief and the determination of damages were withheld pending appeal.

The defendants appeal from the trial court's determinations of validity and infringement and from its refusal to dismiss as to Lindsay who, they claim, acted only as an officer of the corporate defendant. The plaintiffs have not appealed from any aspect of the judgment adverse to them.

We reverse on the issue of patentability and patentability's requirement of nonobviousness. This makes it unnecessary for us to consider the secondary issues of infringement and Lindsay's status.

The patent has 19 claims. It is stipulated, however, that the plaintiffs rely only on claims 4, 5, 6 and 8. The patented device is used primarily for cleaning automobiles by the selective application of soap, rinse water, solvent, and compressed air through a system of conduits ending in a nozzle or spray gun. The operator controls the application through the use of switch buttons on the gun. Only the rinse and soap bases are involved here.

The trial court found that the "heart" of the plaintiffs' invention is a solenoid "restrictor valve" in the water line. No one disputes the correctness of this finding. The valve is opened or closed by the operator by use of one of the buttons. It is opened for the rinse phase. There is, however, a narrow bypass drilled through the valve which, when the valve is closed, permits the passage of a relatively small quantity of water. This flow is then inadequate to satisfy the demands of the pump which draws water to the nozzle; as a consequence, the pump, being "starved", pulls soap concentrate from a tank through a connecting conduit. The soap mixes with the water which passes through the small opening in the restrictor valve before emerging from the nozzle. The advantage of the valve thus appears to lie in the resulting ability of the device to utilize a single source of water to rinse and to dilute the soap concentrate to the desired extent before it is projected upon the article being cleaned.

The district court found that the use of the restrictor valve in the water line in combination with other elements of a cleaning apparatus of this kind, as disclosed by the teachings of the patent, was "novel and patentable". It said that, while there is some prior art which, "in the light of" the teachings of the plaintiffs' patent, "possibly could have been utilized to produce" the effect of starving a pump by restricting the flow of water through a valve, "there is no prior art which teaches the novelty" of the plaintiffs' patent, that is, "having a restrictor valve in the water line" by which "the flow of another liquid will be induced from a secondary source".

The district court filed its memorandum and entered judgment in this case prior to the Supreme Court's February 1966 decisions in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, and United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572. Those opinions, however, are pertinent here.

The Graham decision came on certiorari to this court in two separate cases concerning different patents. In John Deere Co. of Kansas City v. Graham, 333 F.2d 529 (8 Cir. 1964), one of our panels had held a shank plow spring clamp patent to be invalid for lack of invention. In Calmar, Inc. v. Cook Chem. Co., 336 F.2d 110 (8 Cir.1964), another panel had upheld a patent for a finger operated sprayer with a hold-down lid. The Supreme Court concluded that neither patent was valid, reversed our judgment in Calmar and affirmed our judgment in Graham, although noting, p. 4 of 383 U.S., 86 S.Ct. 684, 687, that, by our "new result" approach in that case, we had not applied the correct test.

In Graham the Supreme Court once again, "After a lapse of 15 years", reviewed patentability standards. It recognized and confirmed the two long-standing requirements of novelty and utility and, in addition, the "third statutory dimension" of nonobviousness formally supplied by the Patent Act of 1952, 66 Stat. 798, 35 U.S.C. § 103, but "long ago" established by judicial precedents centering in Hotchkiss v. M. Greenwood & Co., 52 U.S. (11 How.) 248, 267, 13 L.Ed. 683 (1851). We regard as particularly pertinent the Court's following observations and emphases:

"The section § 103 is cast in relatively unambiguous terms. Patentability is to depend, in addition to novelty and utility, upon the `non-obvious\' nature of the `subject matter sought to be patented\' to a person having ordinary skill in the pertinent art.

"* * * The emphasis on non-obviousness is one of inquiry, not quality * * * Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. * * *

"This is not to say, however, that there will not be difficulties in applying the nonobviousness test. * * * The difficulties * * * should be amenable to a case-by-case development. * * *

"Although we conclude here that the inquiry which the Patent Office and the courts must make as to patentability must be beamed with greater intensity on the requirements of § 103, it bears repeating that we find no change in the general strictness with which the overall test is to be applied. * * * He who seeks to build a better mousetrap today has a long path to tread before reaching the Patent Office." Pp. 14, 17, 18, and 19 of 383 U.S., pp. 692-695 of 86 S.Ct.

The companion Adams case, although upholding the validity of the patent there under attack, also emphasized novelty, utility, and nonobviousness as "separate tests of patentability and all must be satisfied in a valid patent". P. 48 of 383 U.S., p. 712 of 86 S.Ct.

It is apparent, therefore, that these three tests constitute our guidelines here; that "background skill of the calling", that is, obviousness or nonobviousness "to a person having ordinary skill in the pertinent art" is the governing gauge on the third factor; and that any difficulty in applying the nonobviousness test is to be resolved by case-by-case development.

Both sides here recognize the pertinence of Graham and Adams and, depending upon the point of view, advance those cases as supportive of their respective positions. It would be over-simplification to conceive of Graham and Adams as two poles, one of which would necessarily govern each patent case when it comes under a court's scrutiny. We regard them, so far as the nonobviousness test is concerned, as the...