384 F.2d 516 (5th Cir. 1967), 23883, National Filters, Inc. v. Research Products Corp.

Docket Nº:23883.
Citation:384 F.2d 516, 155 U.S.P.Q. 355
Case Date:October 11, 1967
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit

Page 516

384 F.2d 516 (5th Cir. 1967)

155 U.S.P.Q. 355




No. 23883.

United States Court of Appeals, Fifth Circuit.

October 11, 1967

Page 517

Elwin A. Andrus, Frank S. Andrus, Milwaukee, Wis., Melvin T. Boyd, Blackwell, Walker & Gray, Miami, Fla., Andrus & Starke, Milwaukee, Wis., of counsel, for appellee.

Before WISDOM and GODBOLD, Circuit Judges, and McRAE, District Judge.

GODBOLD, Circuit Judge:

National Filters, Inc., the defendant below, appeals from a judgment that certain claims to two United States patents are valid and that it has infringed them. The suit was brought by Research Products Corporation, assignee of Patents No. 3,031,827 and 3,155,560.

Patent '827 is for a filter for liquids or gases, made of multiple layers of slit and expanded metal foil, in which the layers of metal forming it are bonded together by a bonding material. Patent '850 is the method patent for making the filter, consisting of stacking a number of layers of the expanded metal foil, applying a settable liquid agent and distributing it through the stack, applying moderate pressure and permitting the material to set while the stack is pressed together. 1

Again this court considers the question of the § 103 2 defense of obviousness as discussed by the Supreme Court in Graham v. John Deere Company, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). In John Deere, decided about one month after the trial of this case, the Supreme Court described the methodology for inquiry under § 103:

'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.' 383 U.S. at 17, 86 S.Ct. at 694.

We have applied this method in several recent cases. Sisko v. Southern Resin & Fiberglass Corp., 373 F.2d 866 (5th Cir., 1967); Up-Right, Inc. v. Safway Prods., Inc., 364 F.2d 580 (5th Cir. 1966); Zero Mfg. Co. v. Mississippi milk Producers Ass'n, 358 F.2d 853 (5th Cir.), cert. denied, 385 U.S. 841, 87 S.Ct. 93, 17 L.Ed.2d 74 (1966).

The question of patent validity is one of law, but to be decided on the results of factual inquiries. Up-Right, Inc. v. Safway Products, Inc., supra. However, at the threshold we refer to two questions of law which must be applied

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to the facts. Conclusion of Law No. 7 of the District Court was: 'One who copies the commercial structure of a patentee with full knowledge of the patent thereon, is not in a position to assert lack of patentability under 35 U.S.C. 103, in the absence of proof of independent development of the identical structure by another.' Research Products, whose proposed findings of fact and conclusions of law were adopted by the trial court, offers no authority to support this proposition, and we know of no such principle. However, the District Court fully considered whether the prior art made the purported invention obvious, so that appellant was not as, it claims, stripped of its § 103 defense. The second matter is a more serious one. Conclusion of Law 13 was: 'The pertinency of the prior art patents relied upon by defendant is greatly impaired by the fact that there is no evidence to the effect that any of the structures or methods disclosed in such patents was ever reduced to commercial practice or applied to the solution of the problem arising from the thousands of different filter sizes in the market, a problem which the patents in suit went a long way toward solving.' Whether prior art patents have been put to use is irrelevant to the question whether the disclosures therein constitute anticipation, Mannix Company, Ltd., v. Heally, 341 F.2d 1009 (5th Cir. 1965); Tillotson Mfg. Co. v. Textron, Inc., Homelite, 337 F.2d 833 (6th Cir., 1964), Western States Mach. Co. v. S. S. Hepworth Co., 147 F.2d 345 (2d Cir. 1945), and the same principle applies to obviousness. Obviousness is measured in terms of one skilled in the art. Whether others skilled in the art...

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