University of Illinois Foundation v. Winegard Company

• Citation: 402 F.2d 125
• Decision Date: 24 March 1969
• Docket Number: No. 19000.,19000.
• Parties: UNIVERSITY OF ILLINOIS FOUNDATION, Appellant, v. WINEGARD COMPANY, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

402 F.2d 125 (1968)

UNIVERSITY OF ILLINOIS FOUNDATION, Appellant, v. WINEGARD COMPANY, Appellee.

No. 19000.

United States Court of Appeals Eighth Circuit.

September 30, 1968.

Rehearing Denied November 5, 1968.

Certiorari Denied March 24, 1969.

Charles J. Merriam and Basil P. Mann, of Merriam, Marshall, Shapiro & Klose, Chicago, Ill., for appellant; William A. Marshall, Chicago, Ill., and Cook, Blair, Balluff & Nagle, Davenport, Iowa, on the briefs.

Keith J. Kulie, of Burmeister, Kulie, Southard & Godula, Chicago, Ill., for appellee; Donald B. Southard, of Burmeister, Kulie, Southard & Godula, and Edward Dailey of Dailey, Dailey, Ruther & Bauer, Burlington, Iowa, on the brief.

Before MATTHES, MEHAFFY and LAY, Circuit Judges.

Certiorari Denied March 24, 1969. See 89 S.Ct. 1191.

LAY, Circuit Judge.

The plaintiff, the University of Illinois Foundation, appeals from a judgment below denying patent validity to its United States Letters Patent No. 3,210,767,¹ relating to a "frequency independent unidirectional antenna." The plaintiff is the owner by assignment from one Dwight E. Isbell. For facility of discussion we refer to the patent itself as the "Isbell Patent." Suit was brought against the defendant Winegard Company for alleged infringement. Trial was held before the Honorable Roy L. Stephenson, Chief Judge of the Southern District of Iowa. Judge Stephenson held that the subject matter of the patent did not rise to the level of patentability and dismissed plaintiff's suit. See University of Illinois Foundation v. Winegard Co., 271 F.Supp. 412 (S.D.Iowa 1967).

The Isbell Patent claims a high quality television antenna for color reception, with unidirectional performance over a wide bandwidth of frequencies. The trial court denied validity to the patent in that "it would have been obvious to one ordinarily skilled in the art and wishing to design a frequency independent unidirectional antenna to combine * * * prior art references * * *." Id. at 419.

There is no necessity to set forth the full discussion of the facts relating to the prior art. These appear in the excellent analysis made by the Chief Judge below. We have examined the record and find that all claims must be denied, lacking nonobviousness as a matter of law for essentially the same reasons set forth by the court below.

Plaintiff urges that the trial court erred in denying patent validity and calls our attention to a subsequent decision in a federal district court in Illinois which upholds the validity of the same patent against another defendant, University of Illinois Foundation v. Blonder-Tongue Laboratories, Inc., N.D.Ill., Civ. No. 66 C 567. However, as recognized by the district court in Illinois, we must determine this case on its own record.²

The plaintiff basically urges on appeal that the district court in the present case erred in finding that "those skilled in the art at the time of the Isbell application knew * * * the log periodic method of designing frequency independent antennas." On the face of the record we must agree that this finding is erroneous. The record discloses that the log-periodic formula³ for antenna design was a recognized theory within the calling. This formula is discussed in the authoritative article by Drs. Hamel and Ore entitled Logarithmically Periodic Antenna Designs, published in March of 1958. However, as pointed out by plaintiff, this same article discloses:

"Unfortunately, no theory has been established which even predicts the types of structures which will give frequency independent operation."

Jasik's Antenna Engineering Handbook, a recognized authority in the field, verifies on page 18: "* * * it is not possible to determine a priori the frequency independent type of log-periodic antennas." The record is clear that both plaintiff and defendant experts agreed with this fact.

Thus, we feel the evidence only discloses the adaptation by plaintiff of the log-periodic formula to obtain geometric proportional spacing across its bandwidth. It did not teach that said spacing will in itself achieve frequency independent operation. As we view the record it is the achievement of frequency independent operation through the use of the dipole array which is the principal claim of the Isbell Patent. Both parties' experts agree that with frequency independent operation "severe end-effects" and unstable performance is avoided. A frequency independent antenna is one in which the basic electrical characteristics remain substantially constant over a given frequency range. These characteristics generally relate to uniform gain, bandwidth, directivity and a good impedance match. Unless an antenna achieves frequency independent operation it will not offer the high quality performance over a wide band of frequencies needed for commercial operation.

However, we do not view the acknowledged fact of the unpredictability of the frequency independent operation of the Isbell Patent as requiring us to reach a result different than held below. Nor was the trial court's finding in this regard essential to its overall reasoning that the patent itself was made obvious by the prior art. The statutory standard of patentability under § 103 is not "predictability." This terminology helps to obscure the true issue of "nonobviousness." The valid test relates the subject patent to whether its development would be obvious to one skilled in the art. As stated by Mr. Justice Clark, the test of nonobviousness "is one of inquiry, not quality * * *." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed. 2d 545 (1966). As we have often repeated such inquiry relates to: (1) scope and content of the prior art, (2) differences between the subject patent and the prior art, (3) the level of the skill in the art at the time involved and (4) secondary considerations relating to commercial success, long-felt need, et al. And of course, the latter factors cannot alone determine patentability. National Connector Corp. v. Malco Mfg. Co., 392 F.2d 766 (8 Cir. 1968).

Therefore, we deem the sole legal issue in the instant case to be whether a person skilled in the calling could improve with the skill of the calling the prior art by obvious means.

The mere fact that the "invention" was not previously known or developed is not the test. Where logical exploration within known principles of the science achieves an unpredictable result, even though a commercially desirable one, the burden of nonobviousness is not necessarily overcome. In other words, the necessity of logical experimentation does not in and of itself negate obviousness.⁴ Cf. General Mills, Inc. v. Pillsbury Co., 378 F.2d 666 (8 Cir. 1967).

As early asserted by Mr. Justice Bradley in Atlantic Works v. Brady, 107 U.S. 192, 199-200, 2 S.Ct. 225, 231, 27 L.Ed. 438 (1882):

"The process of development in manufactures creates a constant demand for new appliances, which the skill of ordinary head-workmen and engineers is generally adequate to devise, and which, indeed, are the natural and proper outgrowth of such development. Each step forward prepares the way for the next, and each is usually taken by spontaneous trials and attempts in a hundred different places. To grant to a single party a monopoly of every slight advance made, except where the exercise of invention, somewhat above ordinary mechanical or engineering skill, is distinctly shown, is unjust in principle and injurious in its consequences."

Plaintiff urges Isbell had to overcome two serious handicaps which hid the developmental obviousness: (1) the use of linear dipoles to...