Hycor Corp. v. Schlueter Co.

• Decision Date: 02 July 1984
• Docket Number: No. 83-935,83-935
• Citation: 740 F.2d 1529,222 USPQ 553
• Parties: HYCOR CORPORATION, Appellant, v. The SCHLUETER COMPANY, Appellee. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 1529

740 F.2d 1529

222 U.S.P.Q. 553

HYCOR CORPORATION, Appellant, v. The SCHLUETER COMPANY, Appellee.

Appeal No. 83-935.

United States Court of Appeals, Federal Circuit.

July 2, 1984.

Granger Cook, Jr., Chicago, Ill., argued for appellant. With him on the brief was Edward D. Manzo, Chicago, Ill Robert E. Wagner, Chicago, Ill., argued for appellee. With him on the brief were Robert E. Browne and Alan L. Barry, Chicago, Ill.

David J. MacDougall, Janesville, Wis., of counsel.

Before BALDWIN and MILLER, Circuit Judges, and KELLAM, Senior District Judge. ^*

BALDWIN, Circuit Judge.

This appeal is from the February 25, 1983 judgment of the United States District Court for the Western District of Wisconsin, ¹ sitting without a jury, holding appellant Hycor Corporation's (Hycor) U.S. Patent No. 3,876,548 ('548), issued April 8, 1975, entitled "Screening Method and Apparatus," invalid under 35 U.S.C. Sec. 103 for obviousness and 35 U.S.C. Sec. 102(b) for being on sale and in public use more than one year prior to the filing date of the application for the subject patent. The trial court also held the patent invalid because it found that the patentee, Welles, and his patent counsel breached their duty of candor to the Patent and Trademark Office (PTO) by failing to cite relevant prior art and failing to disclose the uses and sales of Rotostrainers ² made more than one year prior to the filing date of the application. Further, the court held the lack of candor amounted to fraud in the PTO. Attorney fees were awarded to appellee, The Schlueter Company (Schlueter), pursuant to 35 U.S.C. Sec. 285. The trial court did not reach the issue of infringement. Hycor appeals from the invalidity determination and the attorney fees award.

We affirm the trial court's decision invalidating claims 1-9 of the '548 patent on the basis that the claimed invention was in public use more than one year prior to the filing date of the application. We reverse the trial court's decision to award attorney fees.

Background

Hycor owns the '548 patent which issued to Donald P. Welles, Jr., the president of Hycor.

The '548 patent describes and claims an apparatus for separating solids from liquids such as waste water. The apparatus incorporating the claimed invention is self-cleaning, and is more fully described below. Figs. 10, 12, and 13 of the patent are here reproduced:

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Included in the device are a headbox 90 (Fig. 10) which receives the mixture to be separated via a pipe 92. A cylindrical screen 80 is positioned adjacent to the headbox, extending the length of the headbox; the screen rotates slowly via a motor. The mixture in the headbox is deposited onto the screen so that, as the screen turns, liquid falls through the screen while the solids are carried onto a platform 100. A wiper (doctor blade) 98 has an edge bearing against the surface of the screen which cleans the exterior of the screen as it rotates. The free-falling liquid which passes through the interior of the screen cleans the screen as it passes through the screen bottom.

The screen is made up of parallel bars (Figs. 12, 13) that have a wedge-shaped cross section. The bars are attached to a support structure so that they are perpendicular to the axis of the screen. An important feature of the invention is the particular geometry and configuration of bars or wires ³ having inwardly diverging sides and which are closely spaced to form the screen exterior or screening medium. As described in the patent:

The angle (a) formed by the inwardly-tapering sides 146 and a line generally perpendicular to the outer surface W, should be greater than about 7?, and less than 45?. It has been determined that when this angle is less than about 7?, there tends to be a packing of solid spongy material which has passed through the outer openings between bars. On the other hand, when the angle is greater than about 7?, the spongy material does not pack, but tends to be forced by the water through the screen, leaving free unblinded openings for the filtering and screening of the liquid-solid mixture. If the angle becomes too great, i.e., above about 45?, the screen itself is sufficiently weakened because of the cross sectional shape of the bars, that the unit has a tendency to have reduced life. Accordingly, these limits are important and screens formed with bar relationships outside of these limits will not satisfactorily perform their intended purpose.

Also important is the relationship between the diameter of the screen and the thickness of the bars (H) (Fig. 12).

In like manner, the relationship of the diameter of the screen and the ratio of screen diameter to the thickness of each of the bars 142 or the distance H is important. It has been determined that the ratio of screen diameter to H must be greater than about 75 in order to have a sufficiently large screen to provide the cascading free fall of water to self-clean the spaces between the bars as the screen rotates.

All nine of the '548 patent's claims are in issue. Claims 1-3, paragraphing by us, are illustrative:

1. In a device for separating and dewatering the generally spongy solids from the liquid in sanitary sewage, food processing, meat packing and the like, including

a cylindrical screen having a screening medium about its outer periphery made up of spaced circumferentially arranged, generally parallel bars surrounding a generally open interior,

means supporting the screening medium for rotation about a generally horizontal axis so that the surface of the screening medium is rising on one side and descending on the other,

means for rotating the screening medium,

a headbox containing a liquid-solid medium to be separated directly adjacent the surface of the screening medium and opening against the rising side thereof above a horizontal plane through its axis,

a solids discharge adjacent the outer surface of the screening medium and spaced from the headbox in the direction of its rotation and beyond a vertical plane through its axis movement of the screening medium carrying the separated solids from the headbox toward the solids discharge with the majority of the liquid passing through the screening medium at the headbox and falling freely in a cascading column down to the bottom area of the screening medium toward the inner surface of the medium primarily in an area on the rising side below the horizontal plane through its axis, the bars that make up the screening medium each having a generally flat outer face which, as a group, make up a cylindrical, generally smooth exterior surface with limited openings between adjacent bars to effect maximum separation adjacent the headbox followed by transportation of the separated solids to the solids discharge, the bars having inwardly diverging sides which define upwardly opening cleaning troughs at the bottom of the cascading column,

the side of one bar defining an included angle with the opposed side of an adjacent bar greater than about 14? and less than about 90?, with ratio of screen diameter to radial bar thickness being no less than about 75.

2. The structure of claim 1 further characterized in that the included angle between the opposed sides of adjacent bars is on the order of 26?.

3. The structure of claim 1 further characterized in that the separation of the bars is on the order of 0.060 inches.

The patent application for Welles '548, Serial No. 435,163, was filed with the PTO on January 21, 1974 as a continuation-in-part application because it contained new subject matter that was not previously disclosed or claimed in two prior Welles applications. The application also contained new Figs. 12 and 13 which showed the profile of the wedge wires and descriptions of the figures. Fig. 12 was taken directly from the 1967 catalog entitled, "Screen Products for Industry," published and distributed by the Johnson Screen Division of Universal Oil Products (Johnson catalog), discussed more extensively below.

The examiner initially rejected all the claims of Serial No. 435,163, and Welles and his patent attorneys were granted a personal interview with the examiner. Welles then responded to the outstanding first office action by amending his claims. In the amendment Welles agreed that U.S. Patent No. 2,294,179 to Hawley (Hawley '179) teaches the general rotary strainer structure and that U.S. Patent No. 828,715 to Cook (Cook '715) teaches wedge wire in a cylindrical strainer, but argued that none of the prior art overcame the blinding (clogging) problem by use of only a rotary screen having wedge wire within a critical range of values.

Welles also submitted an affidavit which disclosed 1972 test data relating to the alleged success of the newly introduced and claimed configuration for wedge-shaped screen wire. The affidavit suggested that wedge wire having a radial height of 0.100 inches and an exterior face width of 0.060 inches and an included angle of 26 degrees (Johnson No. 60 wire) ⁴ was most successful in preventing clogging of the screen. In a side-by-side test, one Rotostrainer using a Johnson No. 60 wire screen

                cylinder (within the scope of the claims) and the other Rotostrainer using a Johnson No. 69 wire screen cylinder (outside the scope of the claims) were compared.  The Rotostrainer having No. 69 wire lost 35-40% of its original capacity to filter material, while the Rotostrainer having No. 60 wire had not changed its capacity to filter material.  In the affidavit, Hycor did not reveal that its source of wire screen cylinders was Johnson, but did mention a "source."    The claims were allowed as amended
                

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Issues on Appeal

1. Whether the trial court erred in holding the patent in suit invalid.

2. Whether the trial court abused its discretion in awarding attorney fees under 35 U.S.C. Sec. 285.

OPINION

Validity

Hycor appeals...