421 F.2d 809 (7th Cir. 1970), 17343, Bendix Corp. v. Balax, Inc.

Docket Nº:17343, 17344.
Citation:421 F.2d 809, 164 U.S.P.Q. 48
Party Name:The BENDIX CORPORATION, a corporation of Delaware, and Sellew Corporation, a corporation of Illinois, Plaintiffs-Appellees (Cross-Appellants), v. BALAX, INC., a corporation of Wisconsin, and John M. Van Vleet, an individual, Defendants-Appellants (Cross-Appellees).
Case Date:January 30, 1970
Court:United States Courts of Appeals, Court of Appeals for the Seventh Circuit

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421 F.2d 809 (7th Cir. 1970)

164 U.S.P.Q. 48

The BENDIX CORPORATION, a corporation of Delaware, and Sellew Corporation, a corporation of Illinois, Plaintiffs-Appellees (Cross-Appellants),


BALAX, INC., a corporation of Wisconsin, and John M. Van Vleet, an individual, Defendants-Appellants (Cross-Appellees).

Nos. 17343, 17344.

United States Court of Appeals, Seventh Circuit.

January 30, 1970

Rehearing Denied March 9, 1970.

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S. L. Wheeler, Maxwell H. Herriott, Thomas O. Kloehn, Milwaukee, Wis., Edward A. Haight, John W. Hofeldt, Chicago, Ill., for defendants-appellants; Haight, Hofeldt & Davis, Chicago, Ill., Wheeler, Wheeler, House & Clemency, Quarles, Herriott, Clemons, Teschner & Noelke, Milwaukee, Wis., of counsel.

Before CASTLE, Chief Judge, HASTINGS, Senior Circuit Judge, and FAIRCHILD, Circuit Judge.

HASTINGS, Senior Circuit Judge.

Plaintiff's predecessor brought this action charging defendants with infringement of three of its patents and with appropriation of its trade secrets. Defendants counterclaimed charging plantiff with violations of the antitrust laws.

The original plaintiff was Besley-Welles Corporation, an Illinois corporation. After this suit was commenced its assets were acquired by Bendix Corporation of Delaware. Its business is now operated as a division of Bendix. The defendants are Balax, Inc., a Wisconsin corporation, and John M. Van Vleet, Balax's founder and president, a resident of Wisconsin.

Before trial, plaintiff withdrew its patent No. 2,991,491, admitting its invalidity due to plaintiff's own prior public use. The trial court held plaintiff's Patent Re. 24,572 valid and infringed; it held plaintiff's Patent No. 3,050,755 infringed

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but invalid for prior public use by plaintiff; it dismissed that portion of the complaint charging defendants with appropriation of plaintiff's trade secrets; it dismissed defendant Van Vleet as an individual defendant; it denied plaintiff's request for treble damages and attorneys' fees; and it dismissed defendants' antitrust counterclaim.

In No. 17343, defendant appeal from those parts of the judgment herein holding Patent Re. 24,572 valid and infringed and denying relief to defendants on their counterclaim charging plaintiff with violations of the antitrust laws. Affirmatively, defendants seek an award of attorneys' fees, a decree finding plaintiff in violation of the Sherman Act and a remand to determine damages allegedly suffered by defendants.

In No. 17344, plaintiff appeals from those parts of the judgment herein holding its Patent No. 3,050,755 invalid; dismissing that part of the complaint charging defendants with appropriation of its trade secrets; dismissing Van Vleet as an individual defendant; and denying plaintiff's request for treble damages and attorneys' fees.

The two remaining patents involved in this litigation both relate to a device known as a fluteless swaging tap. Patent Re. 24,572, hereinafter referred to as the reissue patent, covers the tool itself. Patent 3,050,755, hereinafter referred to as the '755 or method patent, covers the method performed by the tool.

A tap is a tool used to form threads on the cylindrical inner surface of a hole. A swaging tap forms threads by deforming the metal and displacing it into the form of the desired thread. A swaging tap, which forms no chips, is to be distinguished from a cutting tap which forms threads by cutting away the metal with cutting teeth. The swaging method is said to be more economical and easier to perform than the cutting method. Swaging taps have a longer life than cutting taps. They produce no metal chips. The costly and time consuming inspection and cleaning of the work after the job is completed is thus eliminated.

As found by the trial court, Patent Re. 24,572 is a reissue of U.S. Patent No. 2,807,813. This tap has a shank and a threaded section. The threaded section has a cylindrical portion where the threads are substantially the same diameter and a tapered end portion where the threads are of reduced diameter. The threads have high spots or lobes with relieved areas in between these high spots. It is the lobes that do the actual swaging work since the relieved areas are out of contact with the material being formed. When used, the tool is rotated into a hole and the lobes force their way through the hole. The displaced metal takes the shape of the tap threads.

The method of the '755 patent is performed when the tool of the reissue patent is used in the prescribed manner. The method claims describe the application of pressure from the tap threads and the movement of the metal as it conforms its shape to that of the tap thread.


Defendants urge several reasons for the invalidity of the reissue patent. Their first contention is that it is anticipated by the 1939 German Gebrauchsmuster Patent 1,455,626 (GM). Section 102(b) of Title 35, U.S.C.A. provides: 'A person shall be entitled to a patent unless-- * * * (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States * * *.'

A GM is clearly a patent within the meaning of this section, but it is not a printed publication. American Infra-Red Radiant Co. v. Lambert Industries, Inc., 8 Cir., 360 F.2d 977, 991-994, cert. denied, 385 U.S. 920, 87 S.Ct. 233, 17 L.Ed.2d 144 (1966); Permutit Co. v. Wadham, 6 Cir., 13 F.2d 454, 458 (1926) ;

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Reeves Bros., Inc. v. United States Laminating Corp., 282 F.Supp. 118, 134-136 (E.D.N.Y.1968); Permutit Co. v. Graver Corp., 37 F.2d 385, 390 (N.D.Ill.1930), aff'd on other grounds, 7 Cir.,43 F.2d 898, 902 (1930), aff'd 284 U.S. 52, 52 S.Ct. 53, 76 L.Ed. 163 (1931); and Safety Gas Lighter Co. v. Fischer Bros. & Corwin, 236 F. 955, 962 (D.N.J.1916), aff'd, 3 Cir., 247 F. 1005, 159 C.C.A. 652 (1918). 1

On this basis, all parties agree that only that which is 'patented' by a GM may be considered as prior art under Section 102(b), supra. Subject matter which is ancillary to, but not a part of, the patented subject matter may not be considered. The district court so held. The disagreement between the parties concerns the method of determining what is 'patented' by the Gebrauchsmuster in question.

The trial court held that a GM 'patents' only that which is disclosed by the bare words of its claims. It relied on language in Reeves, supra, in holding that it is never permissible to look to the specifications of a GM in construing its claims. The Reeves court had said: '* * * for anticipation purposes under Section 102 a GM * * * is a reference only for what is patented, i.e., for what it claims and not, for what is disclosed in its specifications.' 282 F.Supp. at 136.

Defendants maintain that the claims of a GM are to be construed in light of its specifications and seek to distinguish Reeves. They note that in Reeves a GM was cited as a reference against a process patent and that a GM is by definition a patent only on an article and never on a process. From this they conclude the Reeves court ignored the specifications only because they referred to a process.

However, the Reeves court clearly recognized that an article patent may in some cases anticipate a process. Such would be the case where 'a process in one patent can produce only one article and that article is definitely covered by what is claimed in another patent (e.g., in an earlier GM) * * *. But this alone may not be sufficient to treat the article patent as an anticipation of the process patent, if many processes are described in the article patent while only one specific process is described in the process patent.' 282 F.Supp. at 136-137.

The patent in suit in Reeves claimed a method of laminating a sheet of plastic foam to a sheet of fabric by the application of heat from a gas flame. The GM cited against it claimed a fabric lined

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foam material with the fabric bonded directly to the foam. The specifications of the GM described the process by which the article could be made indicating the application of heat from heated rollers, hot gas, infrared light, or high frequency current.

When the language of Reeves is read in light of these facts, it is clear to us that it calls for neither an absolute rule that GM specifications may never be resorted to, nor an absolute rule that they may always be resorted to in interpreting the claims. Rather, it is consistent with our own judgment as to the correct rule. We conclude that the specifications of a GM may be resorted to for the purpose of clarifying the meaning of the language used in the claims, but may not be resorted to for the purpose of adding completely new material to that which is disclosed by the claims.

For example, in Reeves the GM claims disclosed an article which could have been produced by several processes. The court had held that in such a case the article patent could not anticipate any one of those processes when cited against a patent specifically claiming one of them. Therefore, resort to the specifications there to learn in what manner the claimed article was actually produced would have added wholly new matter to the claims. Without the specifications, the Reeves claims could anticipate no process, but with them, the claims would anticipate a process as well as an article. Reeves was thus a particularly clear case of specifications adding new matter to what was 'patented' by the claims, rather than simply giving meaning to the words of the claims for the purpose of determining what was 'patented' by them.

Each case will, of course, turn on its own facts. In each...

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