Shaw v. EB & AC WHITING COMPANY
| Decision Date | 05 November 1969 |
| Docket Number | Dockets 32426-32428,32518.,No. 24-28,32517,24-28 |
| Citation | 417 F.2d 1097 |
| Parties | Gilbert SHAW and Polymers, Inc., Plaintiffs-Appellants, v. E. B. & A. C. WHITING COMPANY, Defendant-Appellee. |
| Court | U.S. Court of Appeals — Second Circuit |
Granville M. Pine, John D. Foley, George P. Hoare, Jr., Morgan, Finnegan, Durham & Pine, New York City, Ralph A. Foote, Conley & Foote, Middlebury, Vt., for plaintiffs-appellants.
Irving M. Tullar, Beale & Jones, Arlington, Va., Robert E. Cummings, Jr., Bennington, Vt., for defendant-appellee.
Before LUMBARD, Chief Judge, and WATERMAN and KAUFMAN, Circuit Judges.
Plaintiff-appellants (hereafter plaintiff or appellant) appeal from a judgment order entered in the United States District Court for the District of Vermont after a trial before Judge Bernard J. Leddy sitting without jury. The trial judge filed lengthy Findings of Fact from which he concluded that appellant's patent in suit, No. 2,637,893, issued to appellant Gilbert Shaw on May 12, 1953, was invalid for obviousness under 35 U.S.C. § 103 and for lack of novelty under 35 U.S.C. § 101; that, being invalid, the claim of the patent was not infringed by either of two products manufactured by the appellee, E. B. & A. C. Whiting Company (Whiting), "Multilobate" and "Polystar-O." The judgment order also additionally provided that even if the patent should be valid "Multilobate" would not infringe the claim of the patent but that "Polystar-O" would.
Shaw and Polymers, Inc., Shaw's exclusive licensee, appeal from the portion of the judgment order that held the patent invalid and from the portion that held defendant's Multilobate product not to infringe if the patent were later found to be valid. Whiting filed a notice of appeal crossappealing from that portion of the order holding that, if the patent were eventually held to be valid, its product Polystar-O was an infringing product. Appeal was also taken by plaintiff from the trial court's disposition of certain post-trial motions and defendant appealed from the failure to award it reasonable attorneys' fees, but, as will appear hereafter, it is unnecessary to give specific attention to any issue raised by these appeals.
The Shaw invention consists of an artificial filament. These filaments are particularly adapted for use as brush bristles. Shaw's search for such a product began in the mid-1940's in order to provide the market with an artificial filament at a relatively low cost that could compete with the use of natural (animal and vegetable) fibers and bristles in brooms and related products. The primary advantages of a synthetic filament are its durability and the uniformity in size, shape and stiffness between one filament or bristle and another, for filaments from natural sources occur in widely divergent forms, vary in stiffness, and tend to wear more rapidly than the synthetic variety. Artificial filaments had been produced as early as the 1920's, but Shaw wished both to improve upon the qualities of such filaments and to lower the cost of synthetic filament manufacture. In 1947 Shaw found what he was looking for and, after testing his product, he applied for a patent in March, 1949.1
The elements of the "manufacture" or article covered by the Shaw patent may be briefly stated: (1) The filament is composed of a long chain linear stable thermoplastic polymer. (2) The filament has a uniform cross-sectional shape along its length and has a central portion with webs radiating outwardly at about right angles from the center. The cruciform or Y-shape so created not only gives the filament a high degree of stiffness, but a savings in production cost is realized due to a savings in material because the creation provides a greater surface area for a given amount of polymer. The angular shape is achieved by melt-extruding the filament through a die. (3) The filament is linearly oriented, an orientation in which the major axis of each molecule of polymer lies along the length of the filament. This type of orientation, achieved by stretching or tension-drawing the filament after it has been shaped, imparts tensile strength, resiliency, and resistance to lateral impact. If this particular orientation process is not undertaken a heterogeneous orientation results in which the molecules lie at random generally askew to the major axis of the filament length. A filament so heterogeneously oriented has spots of low lateral impact resistance which may cause breakage when the filament is subjected to brush use.2
In concluding that Shaw's patent is invalid the district court relied primarily upon five references to the prior art. It found that linear orientation of rounded or oval filaments made of a polymer used by Shaw by stretching or tension-drawing was well known in the art as disclosed in two Carothers patents,3 the Rugeley patent,4 the Brubaker patent,5 and from Shaw's admissions at trial.6 Two prior art patents, Brubaker and Taylor, reveal that polymer filaments could be given various shapes, such as, for example, star shapes, by passing the filament through a die having an orifice of the desired configuration. The Taylor patent, nevertheless, did not indicate that a die shaped filament could be linearly oriented. The Brubaker patent specifically stated that drawing the filament through the forming die involved compressive forces, thereby necessarily leading to some heterogeneous orientation of the molecules along the length of the filament axis.7
The district court's first ground for holding the Shaw patent invalid is its conclusion that the subject matter of the patent was not novel within the meaning of Section 101, and Section 102(a).8 This result rested upon the court's findings that all the elements found in the Shaw patent are contained in the prior art patents above discussed and that the Shaw product is not greater than the sum of its parts. However, the fact that each element of a creation sought to be patented is found in the prior art does not negate novelty if the old elements are combined in such a way that as a result of the combining an improved, useful, and more advantageous innovation is obtained. Grinnell Washing Mach. Co. v. E. E. Johnson Co., 247 U.S. 426, 432, 38 S.Ct. 547, 62 L.Ed. 1196 (1918); cf. Reiner v. I. Leon Co., 285 F.2d 501, 503 (2 Cir. 1960).
The Shaw patent meets the fairly liberal test of Section 101 and Section 102(a) because nowhere in the prior art is the Shaw filament "identically disclosed," Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 267 (2 Cir. 1967), nor is it plain from the prior art references that linear orientation of rounded filaments was functionally equivalent to linear orientation of angular shaped filaments. The fact that prior to Shaw's invention no filament of the shape described by Shaw had been linearly oriented sets Shaw's product apart from the prior art. See United States v. Adams, 383 U.S. 39, 48, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).9
The important issue in this appeal, then, is whether "the differences between the subject matter of the Shaw invention * * * and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains * * *." 35 U.S.C. § 103. The ultimate question of obviousness is one of law to be determined after several factual inquiries have been made. As the Supreme Court has recently stated:
1 the scope and content of the prior art are to be determined; 2 differences between the prior art and the claims at issue are to be ascertained; and 3 the level of ordinary skill in the pertinent art resolved. Against this factual background, the obviousness or nonobviousness of the subject matter is determined. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).
The crucial question here is whether in light of the prior art the bringing of linear orientation to a cruciform-shaped filament would be obvious to a person having ordinary skill in the art. In dealing with this question the district court while discussing the Brubaker patent stated:
32 * * * The die drawing process of the Brubaker patent involves compressive as well as tension forces * * * while Shaw claims that his patent involves tension forces only. However, Shaw also testified in this regard that, "One would expect the molecules, some of them, to be aligned in the direction of the axis by the tension force. * * *" From this statement, I find that Shaw expected an alignment in the direction of the axis by the tension forces mentioned in his patent * * *. In other words, Shaw did not obtain an unexpected result.
The court then summed up its findings with respect to obviousness by stating:
36. I have seriously considered the scope and content of the prior art * * * and particularly the Rugeley patent * * *, the Carothers patents * * *, Brubaker patent * * *, and the Taylor patent * * * set forth in findings 29 to 33, respectively, and have considered the differences and similarity between the prior art and the claim in the Shaw patent and find that there is no material difference between such prior art and the Shaw claim. I have further considered the level of ordinary skill in the pertinent art. From the foregoing, I find that the subject matter of the Shaw patent would be obvious to a person having ordinary skill in the art to which the subject matter pertains within the meaning of 35 U.S.C. § 103.
In its conclusions of law the court referred to Graham in holding the Shaw patent invalid. The court quoted an excerpt from the legislative history of § 103 relied upon by Justice Clark in his opinion in that case:
"An invention which has been made, and which is new in the sense that the same thing has not...
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