Brunswick Corp. v. Champion Spark Plug Co.

• Decision Date: 28 September 1982
• Docket Number: No. 81-1957,81-1957
• Citation: 216 U.S.P.Q. 1,689 F.2d 740
• Parties: BRUNSWICK CORPORATION, Plaintiff-Appellant, v. CHAMPION SPARK PLUG COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

Page 740

689 F.2d 740

216 U.S.P.Q. 1

BRUNSWICK CORPORATION, Plaintiff-Appellant, v. CHAMPION SPARK PLUG COMPANY, Defendant-Appellee.

No. 81-1957.

United States Court of Appeals,

Seventh Circuit.

Argued Jan. 22, 1982.

Decided Sept. 28, 1982.

John M. Calimafde, Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City, for plaintiff-appellant.

Dugald S. McDougall, McDougall, Hersh & Scott, Chicago, Ill., for defendant-appellee.

Before SPRECHER ^* and CUDAHY, Circuit Judges, and DOYLE, District Judge. ^**

CUDAHY, Circuit Judge.

In this patent appeal, Brunswick Corporation ("Brunswick") challenges the entry of a directed verdict in favor of defendant Champion Spark Plug Company ("Champion") in a patent infringement suit. The district court, at the close of all the evidence, held Brunswick's claimed patent to be invalid, on grounds of obviousness, under 35 U.S.C. § 103 (1976). We affirm.

FACTS

The patent in suit, No. 3,599,030, was granted on August 10, 1971, to Brunswick, as assignee of Daniel A. Armstrong, its Chief Staff Engineer. That patent, which we shall refer to for brevity as the "030 patent," is entitled "Annular Surface Gap Spark Plug." As the 030 patent explains, an annular surface-gap spark plug is one which has a multidirectional spark gap, consisting of a central electrode and an outer-grounded circular electrode. The outer-grounded electrode surrounds the central electrode on all sides but is entirely insulated from it. The space (or gap) between the inner and outer electrodes is filled with a ceramic or refractory material and the generated spark extends in all directions across the gap between the center and the outer electrodes on the surface of the ceramic. ¹

The annular surface-gap spark plug is commonly used in a two-cycle engine employed in an outboard motor to drive boats. This type of plug is particularly suitable for use in large engines driving boats at high speeds. A two-cycle outboard motor engine is an internal combustion engine that includes the usual piston and piston rod to drive the propeller shaft. The power is produced by igniting, via the spark plug, a highly flammable mixture of gasoline and oil, and thereby producing a controlled explosion which drives the piston and piston rod within the cylinder. ² In general, a longer spark across a wider gap is more efficient since more "igniting" energy is exposed to the fuel. An optimum gap width may be approximately .050 (50/1000 inch), and such a gap dimension has become known as a "wide gap." To generate sufficient electrical energy to cause the spark to traverse a wide gap, a special high voltage ignition system has been developed.

In 1965, the Mercury Marine Division of Brunswick Corporation (or its predecessor) began to commercialize a two-cycle engine which included the high voltage ignition system and an annular surface-gap plug in which the center electrode was made of nickel alloy. During the 1965-66 period, these surface-gap spark plugs, which had spark-gap lengths greater than 0.03 inch, were manufactured for Brunswick by Champion. The Champion surface-gap plugs were identified as type L19V, and were approved by Armstrong, the alleged inventor in this case, as Brunswick's Chief Staff Engineer. Undisputed evidence adduced at trial indicated that Brunswick was well pleased with Champion's L19V spark plug (which Brunswick denominated its "polar-gap plug"). For example, in a 1966 advertisement, Brunswick touted the polar-gap plug as "the first major breakthrough in outboard ignition in 50 years," stressing its increased engine efficiency and reliability, and praising the plug's durability and long life.

In September, 1966, defendant Champion conducted an industry-wide engineering conference on engine ignition which Armstrong attended as a Brunswick representative. At this conference, Armstrong learned something about the properties of tungsten as an electrode material and was informed, by a Champion engineer, that surface-gap spark plugs ran at temperatures in a range of approximately 600o -700o F., that range being characterized as "quite low compared to the insulator tip temperature of a conventional spark plug." ³ Tr. 250. Armstrong was also shown two enlightening charts: The first illustrated the phenomena which cause spark-plug electrodes to deteriorate. The second chart showed the deterioration rates of four different electrode materials-tungsten, inconel (a nickel alloy), platinum and iridium-as a function of electrode temperature. The chart showed that at temperatures up to about 1000 degrees F. the deterioration rate of tungsten was significantly lower than that of any of the other three materials, while at temperatures above 1000 degrees F. the deterioration rate of tungsten was much greater than the others. A paper accompanying the charts explained that tungsten's poor life at elevated temperatures was due to its "susceptibility to oxidation."

In Armstrong's report of the 1966 Champion conference, submitted to Brunswick executive Kiekhaefer, on September 27, 1966, Armstrong wrote:

Note-after viewing one of their charts of electrode deterioration rate vs temperature, it would appear that we should investigate the use of tungsten as a center electrode-it has a very low deterioration rate under 1000 degrees F., and our polar gap plug runs well under this temperature.

Pl. Ex. No. 110; Tr. 255. At trial, Armstrong agreed that the lectures he had heard at the Champion conference in 1966 had "started our investigation into the use of tungsten." Tr. 284-85. Shortly after writing his report to Kiekhaefer, Armstrong asked a Champion sales representative to supply him with surface-gap spark plugs having tungsten center electrodes. Champion, however, did not comply with the request. Although the reasons for Champion's refusal is unclear, there was evidence that Champion had previously made such spark plugs for Chrysler Outboard which were successfully tested but which were not ordered by Chrysler customers in commercial quantities.

In the latter part of 1967, while attending a marine trade show in Chicago, Armstrong met Ronald P. Gilmour, an engineer associated with the AC Spark Plug Division of General Motors Corporation. On that occasion, through Gilmour, Armstrong asked AC for sample surface-gap plugs made with "tungsten material" center electrodes. ⁴

There was testimony at trial that AC was receptive to Armstrong's request both because it was already working on some developments in tungsten that might make it feasible for this application and because AC was eager to have Brunswick as an outboard motor customer for AC spark plugs.

Approximately one year after his conversation with Gilmour, Armstrong received from AC eight sample spark plugs with center electrodes made of tungsten alloy. Armstrong concededly played no part in the actual development or fabrication of these spark plugs. In fact, Armstrong testified as to the arrival of the spark plugs from AC as follows: "Actually those samples arrived, you know, as a complete surprise to us. We didn't even know they were going to make them." Tr. 258. Once the samples arrived, however, Armstrong promptly put them out on endurance tests in two different six-cylinder outboard engines to compare the plugs with the regular production AC and Champion plugs. After 315 hours, the sample AC tungsten-alloy plugs displayed markedly less electrode erosion than did the comparison plugs having nickel-alloy center electrodes. Within a short period of time, Champion began manufacturing its own tungsten-center plug, and tungsten-alloy came to replace nickel-alloy as a center electrode material throughout the industry, because of its superior endurance and slower erosion rate.

Armstrong filed his application for a patent on July 15, 1969. The spark plug illustrated in the drawings and described in the specification of this patent application was the AC tungsten-alloy plug of which Armstrong had received samples; it was identical to AC's prior-art V40FF plug except for the fact that the center electrode was made of tungsten-alloy rather than nickel-alloy. Since Armstrong had not fabricated the spark plugs himself, it was necessary for him, in order to complete the patent application, to secure analyses from chemical laboratories to determine the precise composition of the tungsten-alloy center electrode.

In its first official action on the 030 application, the Patent Office rejected all of Armstrong's original claims as anticipated by, or obvious over, the prior art. Thereafter, Armstrong cancelled all the original claims and substituted a claim which ultimately became the sole claim of the patent. ⁵ Together with its amended claim, Armstrong submitted to the Patent Office a lengthy argument urging that the substituted claim be allowed. In that argument, Armstrong stated that, prior to his invention, the outboard industry had been faced with an endurance problem with which prior-art spark plugs could not cope, and informed the Patent Office that:

(T)he inventor in the present application faced this problem and through a logical sequence of analysis developed and tested the present invention and achieved very striking results which has (sic) revolutionized the outboard industry. He realized that tungsten alloys had good resistance to deterioration at temperatures below 1000 degrees and that if the surface gap plug, in fact, operated under that temperature and if the available capacitor discharge ignition system could fire a plug operating under that temperature, then perhaps a tungsten alloy would be attractive for such a plug to increase its resistance (emphasis supplied).

to corrosion. Such a plug was built and tested and the results were not only positive but were astonishing.... Three runs were made with the new spark plug being used in various cylinders. The results are self-explanatory from the picture.

In the picture referred to in this quotation, the test plugs...