Aluminum Co. of America v. Amerola Products Corp.

• Citation: 408 F. Supp. 1352
• Decision Date: 05 March 1976
• Docket Number: Civ. A. No. 73-248 and 73-698.
• Parties: ALUMINUM COMPANY OF AMERICA, a corporation, and Alcoa Sport Products Company, a corporation, Plaintiffs, v. AMEROLA PRODUCTS CORPORATION, a corporation, Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

408 F. Supp. 1352

ALUMINUM COMPANY OF AMERICA, a corporation, and Alcoa Sport Products Company, a corporation, Plaintiffs, v. AMEROLA PRODUCTS CORPORATION, a corporation, Defendant.

Civ. A. Nos. 73-248 and 73-698.

United States District Court, W. D. Pennsylvania.

March 5, 1976.

Cloyd R. Mellott, C. Arthur Wilson, Jr., J. W. Montgomery, III, Richard M. Zomnir, Eckert, Seamans, Cherin & Mellott, Pittsburgh, Pa., for plaintiffs.

Edward F. Welsh, William G. Kratz, Parmelee, Miller, Welsh & Kratz, Pittsburgh, Pa., for defendant.

OPINION

GOURLEY, Senior District Judge.

These patent proceedings are presented to the Court by the plaintiffs, Aluminum Company of America and Alcoa Sport Products Company, against the defendant, Amerola Products Corporation, pursuant to the Federal Declaratory Statute, 28 U.S.C.A., § 2201 et seq. A question as to validity and infringement is presented with respect to United States Letters Patent No. 3,479,030, relating to the manufacture of aluminum baseball bats, hereinafter referred to as the "Merola Patent". The Court has afforded the parties a full and complete trial and has considered the briefs and arguments of counsel. Based thereon, it is the considered judgment of the Court that defendant's patent is invalid, lacking nonobviousness, as a matter of law. Since the patent is invalid, no basis exists for concluding that there was any infringement by the plaintiffs.

A brief explanation should be given as to the reasons for two civil actions which challenge the same patent. On March 27, 1973, the plaintiffs instituted a declaratory judgment action against the defendant at Civil Action No. 73-248. However, plaintiffs filed this action prior to the expiration of the ninety day written notice provision for the termination of the licensing agreement which was in effect between the parties based on said patent.

Accordingly, the plaintiffs filed a new complaint at Civil Action No. 73-698 based on the same patent on August 15, 1973, which date was subsequent to the expiration of the ninety day notice period for the termination of the licensing agreement. In order that no possible technical error could arise, plaintiffs filed a supplemental complaint at Civil Action No. 73-248 on September 10, 1973, in which all the allegations in the original complaint at Civil Action No. 73-248 were reaffirmed as well as an allegation that the ninety day period for the termination of the licensing agreement had expired.¹

Prior to trial in this proceeding, by stipulation of the parties, all claims against the other parties involved, other than Amerola Corporation, were dismissed. The parties also entered into a stipulation, which the Court approved, consolidating Civil Action No. 73-698 with Civil Action No. 73-248 since in each and every particular the matters involved in each proceeding were the same.

The facts may be briefly stated. Anthony Merola was issued United States Letters Patent No. 3,079,030 on November 18, 1967. The patent involved the invention of a ball bat with certain physical characteristics, namely, an elongated hollow metal body having substantially uniform weight per unit of length with sound-deadening means disposed in the open end.

The initial attempt to patent the metal ball bat was rejected by the examiner for obviousness as defined in 35 U.S. C.A., § 103.² However, the patent application was finally approved by the Patent Office after certain changes, the most important of which was to claim 1, which happens to be the only independent claim of the patent.³

The law is well settled that the presumption of the validity of a patent may be strengthened where the most pertinent prior art has been considered by the Patent Office. Conversely, where the applicable prior art has not been considered by the Patent Office, such presumption is greatly weakened. Bolkcom v. Carborundum Company, 523 F.2d 492 (6th Cir. 1975). A major factor contributing to the Patent Office's failure to consider applicable prior art is the fact that the Patent Office is too overworked to give adequate attention to patent applications and grants.

In the instant proceeding, the record clearly indicates that some of the most pertinent prior art relative to the patent application for a metal ball bat submitted by Anthony Merola was not considered by the Patent Office. It does not appear that the Patent Office considered the Taylor, et al Patent, United States Letters Patent No. 3,040,156, which discloses a hollow aluminum ball bat, the open ends of which may be plugged by any suitable closure. Nor does it appear that the Duke or Carpenter bats, which were in use prior to "Merola Patent" were considered by the Patent Office. The Duke bat was an aluminum ball bat manufactured during the period 1958-1964 and was made from seamless hollow tubing shaped by the process of spinning with its hollow end closed with a mushroom-shaped metal plug. The Carpenter softball and fungo bats were manufactured and sold between 1939-1940 and were made from swaged aluminum tubing. In addition to having substantially uniform weight per unit of length, the hollow ends of these aluminum bats were closed by inserting mushroom-shaped metal plugs which resulted in a natural deadening effect on sounds and vibrations.

The record further reveals that Anthony Merola had knowledge of this prior art but never disclosed the same to the Patent Office during his application or prosecution of his patent.⁴

In view of the above, the Court is of the considered opinion that no presumption of validity should be accorded to the "Merola Patent".

The paramount question before this Court is whether or not the Merola Patent is invalid because of obviousness as defined in 35 U.S.C.A., § 103? 35 U.S.C.A., § 103 provides in pertinent part: ". . . the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would be obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains." Although the question of obviousness is one of law, the issue can be best determined in light of three factual inquiries: (1) the scope and content of the prior art; (2) the difference between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art. Graham v. John Deere Company, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Prior art has been defined as "the existing state of knowledge in a particular art at the time an invention is made. It includes the issued patents . . . publications, and all other knowledge determined to be common thereto such as trade skills, trade practices and the like." Trio Processing Corporation v. L. Goldstein's Sons, Inc., 461 F.2d 66 (3rd Cir. 1972). In the instant patent proceeding some of the most pertinent prior art consists of (1) "swaging" which is a well known method of working and forming metal tubing which results in the maintenance of a substantially uniform weight per unit of length and the increased wall thickness in the reduced diameter portion of the metal tube; (2) "Alcoa aluminum ball bat" which was manufactured between 1934-1937 and which had its hollow open ends closed by mushroom shaped metal plugs; (3) "Carpenter Aluminum softball and fungo bats" which were made by the process of swaging and revealed an elongated hollow metal body with a free end portion of one diameter tapered to a handle portion of a reduced diameter, the reduced diameter portion having a wall thickness greater than the wall thickness of the free end portion, the body being of seamless construction and having a substantially uniform weight per unit of length, the open end being closed by mushroom-shaped metal plugs; (4) the "Duke alumabat" manufactured from seamless hollow aluminum tubing into the customary shape of a bat by the process of spinning, also revealed an elongated hollow metal body with a free end portion of one diameter tapered to a handle portion of reduced diameter, the reduced diameter having a wall thickness greater than the free end portion, the body being of seamless construction and having essentially the same weight ratios as that of the Carpenter bat, with the open ends closed by mushroom-shaped metal plugs; (5) "End plugs" of all material, wood, plastic, metal, and rubber, and of all shapes and sizes, used to close open ends of metal sporting products, such as ski poles, golf clubs, pool cues, baseball bats, and sky pole vaulting poles; (6) A pool cue manufactured and sold by the defendant, Amerola, and its predecessors since at least 1966 and consisted in part of a swaged aluminum tube filled with a mushroom rubber and/or plastic plug in the handle and club portion of the cue; (7) printed publications describing the Carpenter bat consisted of The Wear-Ever News of January 20, 1939, Aluminum News Letter of February 19, 1939, Alcoa News of February 20, 1939, Forbes Magazine of April 1, 1939, and the Nation's Business Magazine of March, 1939; (8) The "Middlekauff Patent", United States Letters Patent No. 1,611,858 which discloses a baseball bat made of steel, seamless...