Acme Highway Products Corp. v. DS Brown Company, 19910

• Decision Date: 19 October 1970
• Docket Number: No. 19910,19952.,19910
• Citation: 431 F.2d 1074
• Parties: ACME HIGHWAY PRODUCTS CORPORATION, Plaintiff-Appellant Cross-Appellee, v. The D. S. BROWN COMPANY and Delmont D. Brown, Defendants-Appellees Cross-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

431 F.2d 1074 (1970)

ACME HIGHWAY PRODUCTS CORPORATION, Plaintiff-Appellant Cross-Appellee, v. The D. S. BROWN COMPANY and Delmont D. Brown, Defendants-Appellees Cross-Appellants.

Nos. 19910, 19952.

United States Court of Appeals, Sixth Circuit.

September 24, 1970.

Rehearing Denied October 19, 1970.

COPYRIGHT MATERIAL OMITTED

John M. Calimafde, and Paul H. Blaustein, New York City, for appellant and cross-appellee, Sandoe, Hopgood & Calimafde, New York City, Richard B. Swartzbaugh, Swartzbaugh, Moor & Longthorne, Toledo, Ohio, on brief.

Matthew C. Thompson, Chicago, Ill., for appellees and cross-appellants, Lloyd C. Root, Johnston, Root, O'Keefe, Keil, Thompson & Shurtleff, Chicago, Ill., Robert B. Gosline, Shumaker, Loop & Kendrick, Toledo, Ohio, on brief.

Before EDWARDS, CELEBREZZE and BROOKS, Circuit Judges.

CELEBREZZE, Circuit Judge.

This is an appeal from the United States District Court for the Northern District of Ohio, Western Division, of an action instituted by Acme Highway Products Corporation "Acme" against the D. S. Brown Company and Mr. Delmont D. Brown, charging the latter with infringement of Acme's patent on a performed, neoprene device for sealing expansion seams and joints in highways. Brown and the Brown Company counter-claimed charging: that the patent was invalid; that Brown was a co-inventor and therefore entitled to manufacture, use, and sell the device; that by concealing Brown's status as a co-inventor, Acme, the patentee, was guilty of fraud upon the Patent Office; that Acme's use of the patent was in violation of Section 2 of the Sherman Act, 15 U.S.C. § 2 (1964). The District Court held that the patent was invalid for more than one-year's prior use; that, in the alternative, Brown was a co-inventor; but that the defendants had failed to prove fraud upon the Patent Office or an antitrust violation. Acme appeals; Brown and Brown Company cross appeal.

I. The Patent In Suit

Modern highways are made of 15 to 100-foot-long concrete slabs spaced to allow for thermal expansion and contraction. The spaces between adjacent concrete slabs are called joints. In warm weather, due to expansion of the road surface, the sides of the joints are pushed together; in cold weather, the contraction of the road surface causes the sides of the joint to separate. In the absence of a joint sealing material, petroleum, brine, and other liquids enter the joint, eroding the subsurface, and causing the concrete slabs to collapse. In addition, sand, pebbles, and other incompressible debris falls into joints, inhibiting normal thermal expansion of the concrete, and causing it to erupt and crack.

Prior to introduction of the patented device, the most commonly used joint seal was a tar-based, liquid seal, poured or injected into the joint, which solidified upon curing. This seal, and similar ones made of plastics, were never satisfactory for more than one season of thermal cycling. In the heat of summer, the expanded concrete simply squeezed the sealant out of the joint. Tires of passing vehicles spread it over the highway surface. As the weather became cold, there was insufficient sealant left in the joint to fill it, the sealant became stiff, and would not adhere to the sides of the joints. Stones and incompressibles fell into the joints, and unless they were cleaned before the next warm season, the concrete ruptured where it could not expand. The cost of maintenance of highways was therefore high, and state departments of highways were anxious to find satisfactory alternatives.

In response to this need, many major manufacturers tried many different compositions of road seals, including preformed strips (i. e., molded strips) of synthetic rubbers which were inserted between the walls of the joint rather than injected as liquids. The District Court found that none of these early plastic, tar, or pre-formed rubber seals worked satisfactorily.

To perform properly, a seal had to be able to exert a substantial and continuous lateral force against the sides of the joint over several years of thermal cycling; it had to resist the downward push of stones and automobile tires; it had to prevent the seepage of liquids into the joint; and it had to withstand exposure to the elements, and resist the corrosive influences of brine, ozone, and the by-products of petroleum combustion.

The patent in suit, United States Patent No. 3,179,026, was issued on April 20, 1965 to Alfred F. Crone, president of Acme. The patent describes, in general, a pre-formed strip of low-crystallization neoprene which, in cross-section, has a six-sided wedge shape. The strip is placed into the joint, and may be glued to its side. Although hollowed out, the seal has a unique internal configuration of neoprene ribs, which translate vertical forces on the seal into lateral forces to prevent upward or downward slippage of the seal within the joint. The low crystallization material is capable of withstanding exposure not only to the elements, but also to vehicular exhaust, and it remains resilient after many seasons of thermal cycling and in cold weather. Because it exerts a substantial and continuous lateral force against the sides of the joints, the seal prevents entry of liquids and pebbles. After some early testing, the patented device was selected for use and roundly acclaimed by the highway departments of many states. All experts who testified in the District Court acclaimed the device as a significant improvement over the prior art, and the District Court described its introduction as "an accomplishment hitherto unheard of."

II. Validity

The District Court found that Acme's and Brown's sale, manufacture, and public use of the device for more than one year prior to the application for the patent, invalidated the patent, 35 U.S.C. § 102(b) (1964).¹ Acme argues that under 35 U.S.C. § 120 (1964)² the patent was entitled to the filing date of a parent application which was filed prior to any public use of the device. We find that the later application, which was granted, is entitled under section 120 to the filing date of the earlier, and that the patent in suit is valid.

On May 4, 1961, Mr. Crone filed a patent application on a device for sealing highway joints, and on a method for installing the device. Shortly after its filing, in response to a demand by the Examiner, Crone restricted his application to the device, and, apparently, abandoned the claims relating to the method of installing it. See 35 U.S.C. § 116 (1964); 37 C.F.R. § 1.141, et seq. Thereafter, the application was amended four times, new claims were added, and old ones modified. On April 8, 1964, in its final posture prior to abandonment, all claims of the application had been rejected by the Examiner; however, the Examiner indicated that one of the claims, viz. claim 17, "may be allowed" if it were amended to include certain functions which the Examiner found to be "inherent" in the unamended claim. It is unclear from the record of proceedings in the Patent Office that is before this Court, whether the application was expressly abandoned, or whether it was permitted to lapse for want of prosecution for a six-month period. See 35 U.S.C. § 133 (1964); 37 C.F.R. § 1.135 (a).³

In any event, prior to the abandonment of the parent application, on June 5, 1964, Crone filed a continuation-in-part application purporting to embody the same invention embodied in the parent. By this time, the Crone device had been on the market for more than a year. The continuation-in-part application met with greater success in the Patent Office than did its parent, and on April 20, 1965, a patent was granted upon it. The date of the patent related back to the time of filing of the parent application, i. e., May 4, 1961.

It is well established that to come within the purview of section 120, a later application must: (a) disclose an invention which had previously been disclosed in the manner provided in 35 U.S. C. § 112 in an earlier application; (b) be by the same inventor; (c) be filed before the abandonment of the prior application; (d) expressly refer to the prior application. 35 U.S.C. § 120 (1964). See Bendix Corporation v. Balax, Inc., 421 F.2d 809, 816, 817 (7th Cir. 1970); Technicon Instruments Corporation v. Coleman Instruments Corporation, 385 F.2d 391, 393 (7th Cir. 1967) and cases cited therein. There is no dispute that, in the instant case, the second application was by the same inventor (Crone) as the first; that it was filed prior to the abandonment of the first application; that it specifically referred to the first application.

The sole issue is whether the continuation-in-part application discloses an invention which had previously been disclosed, in the manner provided by section 112, in the parent application.

The District Court held that the continuation-in-part application contained four features which were not present in the parent. Those features were considered to be:

"(1) Low crystallization elastomer material — claims 1-3 and 5-8 of the continuation-in-part application;

(2) Low crystallization neoprene synthetic rubber — claim 4;

(3) A top wall comprising two downwardly inclined wall sections which are straight and each of which is thicker than the rib members; also straight wall sections which will deflect downwardly with minimum upward bulge when the side walls are compressed laterally — claims 2, 6 and 8; and

(4) Crossed diagonal support members or ribs of the internal truss structure making an angle of 30° with the side walls — claims 5-8."

In reaching this conclusion, the District Court restricted its comparison of the two applications to the claims of each. In other words, features contained in the claims of the second which were not in the claims of the first were not deemed to be disclosed in the first. Thus, the District Court stated:

"There are two matters which are vital to the claims of the application for the patent in suit which are not common to

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