AIR DEVICES v. AIR FACTORS

• Decision Date: 02 January 1951
• Docket Number: No. 11793.,11793.
• Citation: 88 USPQ 454,94 F. Supp. 819
• Parties: AIR DEVICES, Inc. v. AIR FACTORS, Inc. et al.
• Court: U.S. District Court — Southern District of California

94 F. Supp. 819

88 USPQ 454

AIR DEVICES, Inc. v. AIR FACTORS, Inc. et al.

No. 11793.

United States District Court S. D. California, Central Division.

January 2, 1951.

Lyon & Lyon, Reginald E. Caughey, Los Angeles, Cal., James C. Ledbetter, New York City, for plaintiff.

C. A. Miketta, Los Angeles, Cal., for defendants.

YANKWICH, District Judge.

Action for infringement of Letters Patent 2,240,617, issued May 6, 1941, to P. D. Harrigan, assignor to plaintiff, Air Devices, Inc.

The claims involved are 1, 2 and 5, which read:

"1. An air-distributing device comprising a plurality of plates disposed in spaced substantially parallel relation, the front edges of said plates lying in substantially a single plane and said plates being inclined relatively to said plane, and vanes provided on one surface of each of said plates, said vanes extending in an oblique direction relatively to the longitudinal dimensions of the plates."

"2. An air-distributing device comprising a plurality of plates disposed in spaced substantially parallel relation, the front edges of said plates lying in substantially a single plane, and said plates being inclined relatively to said plane, and vanes provided on one surface of each of said plates, said vanes extending in an oblique direction relatively to the longitudinal dimensions of the plates, and said vanes extending into the spaces between the plates."

"5. An air-distributing device comprising a plurality of plates disposed in spaced substantially parallel relation, the front edges of said plates lying in substantially a single plane, and said plates being inclined relatively to said plane, and vanes provided on one surface of each of said plates, said vanes extending in an oblique direction relatively to the longitudinal dimensions of the plates, and the vanes on one plate extending at an angle to those on an adjacent plate."

The patent is for an "air-distributor". Its validity and that of the claims involved are challenged on the ground of lack of invention in the combination of old elements.

Two cardinal principles which control the problem of the combination of old elements to achieve patentable new uses have been polarized in two recent decisions of the Supreme Court. The conditions which speak for patentability were stated for the Court by Mr. Justice Jackson in Graver Tank & Mfg. Co. v. Linde Air Products Co., 1950, 339 U.S. 605, 608, 70 S.Ct. 854, 856: "The theory on which it is founded is that `if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape.' Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935. The doctrine operates not only in favor of the patentee of a pioneer or primary invention, but also for the patentee of a secondary invention consisting of a combination of old ingredients which produce new and useful results, Imhaeuser v. Buerk, 101 U.S. 647, 655, 25 L.Ed. 945, although the area of equivalence may vary under the circumstances."

The negative rule, couched in language which is almost a warning and command to trial courts, was stated by the same Justice in the Great Atlantic & Pacific Tea Company v. Supermarket Equipment Corporation, 1950, 71 S.Ct. 127, 130: "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

There is also the warning of another leading case that a device must not only be new and useful, but must also amount to invention. Cuno Engineering Corporation v. Automatic Devices Corp., 1941, 314 U.S. 84, 90, 62 S.Ct. 37, 40, 86 L.Ed. 58: "We may concede that the functions performed by Mead's combination were new and useful. But that does not necessarily make the device patentable. Under the statute, 35 U.S.C. § 31, 35 U.S. C.A. § 31, R.S. § 4886, the device must not only be `new and useful', it must also be an `invention' or `discovery'. Thompson v. Boisselier, 114 U.S. 1, 11, 5 S.Ct. 1042, 1047, 29 L.Ed. 76. Since Hotchkiss v. Greenwood, 11 How. 248, 267, 13 L.Ed. 683, decided in 1851, it has been recognized that if an improvement is to obtain the privileged position of a patent more ingenuity must be involved than the work of a mechanic skilled in the art."

The solution of the problem before the Court involves the application of these principles. Involved are Claims 1, 2 and 5 of the letters patent in suit, relating to a combination of louver plates or baffles and vanes in a grill intended for use as an "air distributor". These claims are limited to inclined louvers with edges in a single plane and vanes which extend in an oblique direction relative to the longitudinal dimension of the louver plate.

The object of the invention is to diffuse and deflect air through a grill in an air conditioning system close to the ceiling, so as not to blow downwardly but to gradually diffuse downwardly.

In Answer to Requests for Admissions, — Rule 36, Federal Rules of Civil Procedure, 28 U.S.C.A. — the plaintiff has admitted that the normal and expected function of platelike louver elements arranged in parallel spaced relation in an air distributor or grill is to form passageways between such louver elements which direct air passages through it. It was also conceded that long before the patent in suit, it was known in this country that the direction of flow of air through a grill could be controlled by the angles of the planes in which the louver elements were placed. The prior art shows various elements of louver plates or baffles and vanes.

With these facts in mind, it is evident that the invention is very limited and in a crowded field. The inventor cannot, and does not, claim the discovery of the principle of physics that currents of air can be caused to be mixed at a definite level by mechanical "stirring". All he claims is a special method of introducing and distributing air into a room by means of a ventilating or air conditioning grill constructed in a particular way.

Grills are old in the art, dating back to orifices or openings to allow air into rooms shown in buildings constructed hundreds of years ago, long before formal windows came into use. And louvers to control and regulate the quantum of the flow are old in the art. One patent dates back to 1870. This prior art, especially Oskamp, 2,021,086, Burner, 2,029,153, Young 2,096,271, Germonprez, 2,135,810, Germonprez, 2,195,412, Candor, 2,210,023, and others teach, in one form or another, all the principles taught by this patent and the means of achieving them. Indeed, it was demonstrated at the trial that by merely tilting the louvers of the preferred Candor invention, one obtained a construction according to the teachings of the patent in suit. And, while this is not conclusive, it is very revealing. See Grant v. Koppl, 9 Cir., 1936, 99 F.2d 106, 110; McRoskey v. Braun Mattress Co., 9 Cir., 1939, 107 F.2d 143, 147; Braun, Inc., v. Kendall-Lamar Corporation, 9 Cir., 1941, 116 F.2d 663, 665. Basically, as a method of construction, the object of the invention is to permit an inexpensive construction by casting. The accused device calls for a more complicated, if not more cumbersome, individual shop construction. See, Mantz v. Kersting, D.C., 1939, 29 F.Supp. 706, 710. There is a single deflection of air in the plaintiff's device. The accused device has means for deflecting the air twice. And the fact that the area of the first deflection is so small that the ultimate result is not affected — (See, Houghten and others, Frictional Resistance to the Flow of Air in Straight Ducts, No. 1105, Transactions A SHVE, 1939, pp. 35-41) — is not controlling in determining identity. For we have two separate and distinct mechanical means for achieving the result. The accused device, assuming that its ultimate functional result is the same, achieves it by two mechanical methods of deflection. In addition, the accused device does not have triangular vanes, or vanes on one surface and the baffles in it are at right angles to the plates. So that, assuming that the object of the invention is to direct air into a room in a certain manner and that the accused device achieves this object, it is evident that the accused device resorts to two means of deflection. These are secured by a different and more complex construction, some of the characteristics of which have been referred to.

The result is this: If the claims in suit are read (as plaintiff wishes us to do), so as to include every means for deflecting air into a room by means of parallel louver blades and vanes within a frame, there is no invention. For the criterion required to be met by the cases cited, and especially Cuno Engineering Corp. v. Automatic Devices Corp., supra, are not met. The only escape from invalidity lies in restricting the invention to the specific device embodied in the specifications.

A situation such as this was envisaged by the Supreme Court in Graver Tank & Mfg. Co. v. Linde Air Products, supra, when Mr. Justice Jackson wrote: "The wholesome realism of this...