General Tire & Rubber Co. v. Firestone Tire & Rubber Co.

• Citation: 349 F. Supp. 345
• Decision Date: 03 October 1972
• Docket Number: Civil No. 36799,C 67-206.
• Parties: The GENERAL TIRE & RUBBER COMPANY, Plaintiff, v. The FIRESTONE TIRE & RUBBER COMPANY, Defendant. The FIRESTONE TIRE & RUBBER COMPANY, Plaintiff. v. The GENERAL TIRE & RUBBER COMPANY, Defendant.
• Court: U.S. District Court — Northern District of Ohio

349 F. Supp. 345

The GENERAL TIRE & RUBBER COMPANY, Plaintiff, v. The FIRESTONE TIRE & RUBBER COMPANY, Defendant.

The FIRESTONE TIRE & RUBBER COMPANY, Plaintiff. v. The GENERAL TIRE & RUBBER COMPANY, Defendant.

Civil Nos. 36799, C 67-206.

United States District Court. N. D. Ohio, E. D.

June 26, 1972.

As Amended September 10, 1972.

Judgment Order October 3, 1972.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

William C. McCoy, Jr., McCoy, Greene & Howell, Cleveland, Ohio, Charles J. Merriam, Edward M. O'Toole, Carl E. Moore, Jr., Chicago, Ill., Edward B. Beale, Clyde V. Erwin, Beale & Jones, Washington, D. C., Cletus G. Roetzel, Richard E. Guster, Wise, Roetzel, Maxon, Kelly & Andress, Akron, Ohio, for General Tire & Rubber Co.

Jones, Day, Cockley & Reavis, Victor DeMarco, Robert W. Poore, and James E. Courtney, Patrick F. McCarten, Robert J. Hoerner, Cleveland, Ohio, Stanley M. Clark, David A. Thomas, Akron, Ohio, for Firestone Tire & Rubber Co.

Judgment Order October 3, 1972. See 351 F.Supp. 872.

MEMORANDUM OPINION AND ORDER

BATTISTI, Chief Judge.

This is a rather complex patent case, perhaps the most protracted in existence anywhere in the world.¹ At issue is a patent on the invention of tire treads and tread stock made from very tough synthetic rubber to which large amounts of oil have been added to increase the yield and to improve processability. Since 1950 it has been known in the trade as oil-extended rubber (OER). The issues in this case are set out in Findings 13-16. Three representative stocks (Stock A, Blend 2, and Blend 5) are charged with infringement of ten representative claims (1, 3-5, 7, 13, 14, 17-19, and 22). Firestone has defended on the grounds of non-infringement, invalidity, license, and unenforceability. As this opinion and the accompanying findings of fact and conclusions of law indicate, this Court has rejected each and every one of Firestone's defenses; and judgment will be entered in favor of the General Tire and Rubber Company.

Findings 17-21 set out the history of the patent in the Patent Office and the proceedings before Judge Holtzoff. General Tire & Rubber Co. et al. v. Watson, 184 F.Supp. 344 (D.D.C.1960). This patent was originally allowed by the Patent Office examiner whose area of expertise was directly related to the subject matter of the invention, viz, pneumatic tire treads. Invention was found by Judge Holtzoff after a full adversary attack on the invention, not only by the Patent Office but also what appears to be an unprecedented attack by the Department of Justice.

A statutory presumption of validity attaches to a patent upon its issuance and the burden of establishing invalidity is imposed upon the party attacking it. It is Firestone's burden to overcome this presumption by clear and convincing evidence, and every reasonable doubt should be resolved in favor of a finding of validity. 35 USC § 282; Cantrell v. Wallich, 117 U.S. 689, 695-696, 6 S.Ct. 970, 29 L.Ed. 1017 (1885); The Barbed Wire Patent, 143 U.S. 275, 285, 36 L.Ed. 157 (1891); Mumm v. Decker & Sons, 301 U.S. 168, 171, 57 S.Ct. 675, 81 L.Ed. 983 (1937); Frohock-Stewart, Inc. v. Reed-Cromex Corp., 254 F.Supp. 120, 122-123 (N.D. Ohio 1966); Simplicity Mfg. Co. v. Quick Mfg., Inc., 355 F.2d 1012, 1014 (6th Cir. 1966); H. K. Porter Co., Inc. v. Goodyear Tire & Rubber Co., 163 USPQ 106, 114 (N.D.Ohio 1969), aff'd 168 USPQ (6th Cir. 1971); Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 106 F.2d 554, 557 (6th Cir. 1939).

This presumption is strengthened by the fact that invention was found after extended prosecution in the Patent Office and thereafter a full federal court adversary proceeding. Hildreth v. Mastoras, 257 U.S. 27, 32, 42 S.Ct. 20, 66 L.Ed. 112 (1921); Cincinnati Butchers' Supply Co. v. Walker Bin Co., 230 F. 453, 454 (6th Cir. 1916); Cold Metal Process Co. v. Republic Steel Corp., 233 F.2d 828, 837 (6th Cir. 1956), cert. den., 352 U.S. 891, 77 S.Ct. 128, 1 L.Ed.2d 86 (1956); United States Plywood Corp. v. General Plywood Corp., 230 F.Supp. 831, 837 (W.D.Ky.1964), aff'd, 370 F.2d 500 (6th Cir. 1966), cert. den., 389 U.S. 820, 88 S.Ct. 39, 19 L.Ed.2d 71 (1967). Judge Holtzoff heard many of the same witnesses, considered the primary prior art references, and the main prior use defenses presented here by Firestone. None of this prior art was found to be an anticipation or to make the invention obvious.

Findings 22-62 describe the art to which the invention relates. They describe the technology and terminology necessary to the understanding of the invention and the prior art. They also describe the man who is skilled in the relevant art and the state of the art at the time of the invention. In short, they provide the proper starting point for the resolution of technical issues and the determination of invention. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); American Stove v. Cleveland Foundry Co., 158 F. 978, 984-985 (6th Cir. 1908); Kohn v. Eimer, 265 F. 900, 902-903 (2d Cir. 1920); Nickerson v. Bearfoot Sole Co., 311 F.2d 858, 869-870 (6th Cir. 1962), cert. den., 375 U.S. 815, 84 S.Ct. 48, 11 L.Ed.2d 50 (1963); Sanford v. Kepner, 99 F.Supp. 221, 226 (D.Pa.1951), aff'd 195 F.2d 387 (3rd Cir. 1951), 344 U.S. 13, 73 S.Ct. 75, 97 L.Ed. 12 (1952); Minnesota Mining & Mfg. Co. v. Carborundum Co., 155 F.2d 746, 749 (3rd Cir. 1946).

Findings 63-79 set out the circumstances surrounding the invention and its advance over the prior art. These circumstances not only contradict Firestone's allegations that the invention was derived from others and falsely presented to the Patent Office, but are themselves evidence of unobviousness. They have provided valuable assistance in the determination of invention. Judge Hand expressed this fact in Safety Car Heating & Lighting Co. v. General Electric Co., 155 F.2d 937, 939 (2d Cir. 1946):

"Substantially all inventions are for the combination of old elements; what counts is the selection, out of all their possible permutations, of that new combination which will be serviceable. No objective standard is practicable... Courts, made up of laymen as they must be are likely either to underrate, or to overrate, the difficulties in making new and profitable discoveries in fields with which they cannot be familiar; and so far as it is available, they had best appraise the originality involved by the circumstances which preceded, attended and succeeded the appearance of the invention."

Judge Holtzoff was of this view. While he recognized that the manner in which an invention is made is not determinative of patentability (35 U.S.C. § 103), he stated, at 184 F.Supp. at 347:

"The fact, however, that the discovery was made accidentally by a person skilled in the art, while others had been working to find other ways and means to achieve the same objective, namely, to increase the supply of usable rubber, would seem, to some extent at least, to negative the contention that the invention was obvious."

The reaction of the industry to the invention is well known. Their reaction strengthened the statutory presumption of validity and negated. Firestone's allegations that the invention was obvious and that its product was inferior to the prior art. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 56, 43 S.Ct. 322, 67 L.Ed. 523 (1922); Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 106 F.2d 554, 558 (6th Cir. 1939); Ekco Products Co. v. Chicago Metallic Mfg. Co., 321 F.2d 550, 553-554 (7th Cir. 1963), cert. den., 375 U.S. 970, 84 S.Ct. 490, 11 L.Ed.2d 418 (1964). Indeed, Firestone was among the leaders in first expressing doubt, then extolling the surprising virtues of the invention. As Mr. Justice Graham said in his learned opinion in the English case (GX 2520, p. 60):

"It is indeed unusual, if not unprecedented, to find in a patent action such a tribute from a defendant to the excellence of a plaintiff's product and process."

As in United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966), here we have the classic indicia of invention: (a) a novel combination of elements, each old in itself, but combined in a manner counter to and discouraged by the teachings of the art, to produce a surprising result; (b) initial disbelief and skepticism by those skilled in the art; (c) followed by universal adoption of the invention, revolutionizing the art and producing great economy.

The claimed invention against which the prior art is to be measured is set out in Findings 91-96. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

While the claims of a patent limit the invention, and the specification cannot be utilized to expand the patent monopoly, it is fundamental that the claims of a patent are to be construed in light of the specification and both are to be read with a view to ascertaining the invention. United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

The claimed invention is a product (tire treads and tread stock). It consists of the novel, interacting combination of elements. The controlling legal principles are straightforward:

Even if the elements of a combination are individually old, a combination constitutes a patentable invention when it is novel, the elements have a new or different interdependent functional and cooperative relationship, and the bringing together of the elements as taught by the patent in suit was unobvious in the light of the prior art. United States v. Adams, 383 U.S. 39, 51-52, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966); Maytag Co. v. Murray Corp. of America, 318 F.2d 79, 81 (6th Cir. 1963). A new combination of old elements whereby an unexpected result is obtained (or even an old result is obtained in a more economical or efficient way) constitutes patentable invention. Webster Loom Co. v. Higgins, 105 U.S. 580, 591, 26 L.Ed. 1177 (1882); Diamond Rubber Co. v. Consol. Rubber Tire Co., 220 U.S.

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