Solder Removal Co. v. US INTERN. TRADE

• Decision Date: 24 August 1978
• Docket Number: Patent Appeal No. 77-25.
• Citation: 582 F.2d 628
• Parties: SOLDER REMOVAL COMPANY and Jesse C. Hood, Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Dipl. Ing. Ernest Spirig, and Signalarm, Inc., Appellees.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

582 F.2d 628

SOLDER REMOVAL COMPANY and Jesse C. Hood, Appellants, v. UNITED STATES INTERNATIONAL TRADE COMMISSION, Dipl. Ing. Ernest Spirig, and Signalarm, Inc., Appellees.

Patent Appeal No. 77-25.

United States Court of Customs and Patent Appeals.

August 24, 1978.

Nilsson, Robbins, Dalgarn, Berliner, Carson & Wurst, B. G. Nilsson, Robert Berliner, Los Angeles, Cal., attys. of record, for appellants.

Robert M. M. Seto, Michael H. Stein and Jeffrey M. Lang, for United States International Trade Commission.

George M. Sirilla, Peter W. Gowdey, Robert W. Adams, Cushman, Darby & Cushman, Washington, D.C., for Dipl. Ing. Ernest Spirig and Signalarm, Inc.

Before MARKEY, Chief Judge, RICH, BALDWIN, LANE and MILLER, Judges.

MARKEY, Chief Judge.

Appeal from a July 1, 1977, order of the United States International Trade Commission (Commission), terminating investigation No. 337-TA-26, In re Certain Solder Removal Wicks, in view of its determination that no violation of section 337 of the Tariff Act of 1930, as amended by the Trade Act of 1974, 19 U.S.C. § 1337,¹ exists in the importation into, or sale in, the United States of certain solder removal wicks. This is the first appeal under 19 U.S.C. § 1337(c) in which the issue of patent validity is reached.² We affirm.

Background

On May 10, 1976, appellants, Jesse C. Hood (Hood) and Solder Removal Company (SRC), filed a complaint with the Commission under § 337, alleging that the importation into and sale in this country of certain solder removal wicks constituted an unfair act or unfair method of competition. The wicks were made in Switzerland by appellee Dipl. Ing. Ernest Spirig (Spirig) and imported for sale by appellee Signalarm, Inc. (Signalarm). SRC and Hood alleged that the wicks infringed one or both of the claims of U.S. Patent No. 3,627,191 to Hood (Hood patent),³ which read:

1. Copper strands elongatedly braided in the form of a consumable wick for drawing up molten solder by capillary action, said wick having an exterior capillary surface of copper, each strand having substantially along its entire length its exposed surface directly in contact and substantially entirely coated with a noncorrosive solder flux applied from a volatile solvent solution of 25 weight percent or less of said flux.

2. The invention according to claim 1 wherein said solder flux is a pine rosin, a rosin obtained from tall oil by removal of fatty acid components, a methyl ester of abietic acid, or a methyl ester of pimaric acid.

An evidentiary hearing was conducted by a Commission Administrative Law Judge (ALJ)⁴ who issued extensive findings of fact and conclusions of law touching upon all allegations brought before the Commission. Respecting the patent, the ALJ's recommended determination was that:

There is no violation of Section 337 of the Tariff Act of 1930 in the importation into the United States, and the sale, of certain solder removal wicks, by reason of the fact that claims 1 and 2 of United States Letters Patent No. 3,627,191 are invalid, for purposes of Section 337, as obvious in view of their prior art, under 35 U.S.C. § 103, and that there is no effect or tendency to destroy of sic substantially injure an industry, efficiently and economically operated, in the United States * * *. footnote omitted

The most pertinent prior art was determined by the ALJ to be:

(1) The Beattie-Ampex practice, used publicly to produce copper braid desoldering wicks at Ampex Corporation from 1966 to at least 1972, and the wicks so produced;

(2) Solder, a 1965 booklet for the Kester Solder Company; and

(3) Soldering Manual, a 1959 publication of the American Welding Society.

The ALJ concluded that there was "no presumption" of validity applicable to the Hood patent, because the Beattie-Ampex practice and Solder were neither presented to nor considered by the Patent and Trademark Office (PTO).

In analyzing the differences between the prior art and the Hood claims, the ALJ found all limitations of claims 1 and 2 fully met by wicks produced in the Beattie-Ampex practice, except for that defining the solvent solution as "of 25 weight percent or less of said flux."⁵ Regarding that limitation, the ALJ found the indication in Soldering Manual that it was known to use, on clean copper, flux solutions in the range of 10-25 weight percent of rosin mixed with volatile solvent, and further found from Solder and other evidence that, in 1967 and prior thereto, Kester Solder Company was offering several rosin flux formulations with a rosin concentration of 20-50 weight percent.

On that record, the ALJ concluded that one skilled in the art in 1966 would have used a rosin flux solution having the flux concentration of claims 1 and 2.

The Commission's Memorandum Opinion, issued July 1, 1977, was unanimous in determining that there was no violation of § 337. The Commission majority based its determination on the fact that the claims of the Hood patent were invalid, in view of the prior art, under 35 U.S.C. § 103, noting, "We further adopt by reference the findings of fact and conclusions of law of the presiding officer insofar as they are supportive of and not inconsistent with the above determination."

Issue

The dispositive issue is whether the subject matter as a whole of claims 1 and 2 of the Hood patent would have been obvious to one of ordinary skill in the art of solder and fluxes useable in the electronics industry at the time the invention was made.⁶

OPINION

(1) Standard of Review

The Commission erroneously suggests that the appropriate standard of review of Commission determinations under § 337 is the "substantial evidence" standard established in the Administrative Procedure Act, 5 U.S.C. § 706(2)(E). The appropriate standard is explicitly stated in § 337(c), supra note 1, to be "in the same manner and subject to the same limitations and conditions as in the case of appeals from decisions of the United States Customs Court," As was stated in Montgomery Ward & Co. v. United States, 499 F.2d 1283, 1285, 61 CCPA 101, 103, C.A.D. 1131 (1974), concerning review under 28 U.S.C. §§ 1541, 2601, "We do not agree with the suggestion that we are bound to accept the Customs Court's findings of fact whenever there is substantial supporting evidence, and we will not do so when they are clearly contrary to the weight of the evidence." Accord, Pollard Bearings Corp. v. United States, 511 F.2d 568, 571, 62 CCPA 61, 64, C.A.D. 1146 (1975); Northam Warren Corp. v. United States, 475 F.2d 647, 649, 60 CCPA 117, 119, C.A.D. 1092 (1973); Commonwealth Oil Refining Co. v. United States, 480 F.2d 1352, 1355, 60 CCPA 162, 166, C.A.D. 1105 (1973).

The "substantial evidence" standard is particularly inapplicable to judicial review of patent validity issues under § 337. Some prior art is citable against virtually every issued patent. With what, in most cases, would constitute "substantial evidence" thus present, effective judicial review of Commission invalidity holdings would be nullified if the standard were that of 5 U.S.C. § 706(2)(E).

(2) The Presumption of Validity

The ALJ's conclusion, that the statutory presumption of validity, 35 U.S.C. § 282,⁷ does not exist when the most pertinent prior art was neither presented to nor considered by the PTO, is unsound. Rebuttal of the presumption may be more easily and more often achieved in reliance on prior art more pertinent than that considered by the examiner; but whether rebuttal is achieved requires careful consideration of whether the prior art relied upon does in truth render the claimed invention anticipated or obvious. Until that question is answered in the affirmative, the presumption is not rebutted and continues alive and well.

The first sentence of § 282, that "a patent shall be presumed valid," must be read in the context of the remainder of the first paragraph of § 282, which provides that the party asserting invalidity bears the burden of establishing it. Section 282 thus mandates not only a presumption shifting the burden of going forward in a purely procedural sense, but also places the burden of persuasion on the party who asserts that the patent is invalid.⁸ To speak of the presumption as "no longer attaching" is to risk a concomitant, and unspoken, assumption that the burden of persuasion is thereafter no longer upon him who asserts invalidity. That view is contrary to the meaning of § 282, for the burden of persuasion is and remains always upon the party asserting invalidity, whether the most pertinent prior art was or was not considered by the examiner.⁹

We are not unaware of language in some court opinions indicating that no presumption exists when prior art not considered by the PTO is cited to the court. See, e. g., Globe Linings, Inc. v. City of Corvallis, supra note 9, 555 F.2d at 729, 194 USPQ at 417; Eisele v. St. Amour, 423 F.2d 135, 138-39, 165 USPQ 161, 164 (CA6 1970); Everest & Jennings, Inc. v. Colson Corp., 371 F.2d 240, 242, 152 USPQ 209, 210 (CA7), cert. denied, 387 U.S. 918, 87 S.Ct. 2032, 18 L.Ed.2d 971, 153 USPQ 888 (1967). The better view, however, for the reasons stated above, is that the presumption of validity is never "destroyed" in the sense that the burden of persuasion is no longer upon the party asserting invalidity.

The statute does not make the presumption applicable in some situations and not in others. The distinction is judge-made between situations in which the most pertinent prior art was considered by the PTO, and those in which it was not. It is not surprising, therefore, that courts faced with the latter situation have envisaged a spectrum of effects on the presumption, some describing it "weakened," or "undercut," and others viewing it as having been "dissipated," or "destroyed."¹⁰

Though the presumption of validity remains in existence until rebutted and the burden of persuasion continues throughout the litigation on him who asserts invalidity, the burden of persuasion may be more easily...