Amerline Corporation v. Cosmo Plastics Company

• Decision Date: 03 March 1969
• Docket Number: No. 16449,16863.,16449
• Citation: 407 F.2d 666
• Parties: AMERLINE CORPORATION and Honeywell, Inc., Plaintiffs-Appellants, v. COSMO PLASTICS COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

407 F.2d 666 (1969)

AMERLINE CORPORATION and Honeywell, Inc., Plaintiffs-Appellants, v. COSMO PLASTICS COMPANY, Defendant-Appellee.

Nos. 16449, 16863.

United States Court of Appeals Seventh Circuit.

March 3, 1969.

George B. Newitt, James v. Callaghan, Chicago, Ill., for Amerline Corp.

Walter E. Wyss, Chicago, Ill., John F. Pearne, Cleveland, Ohio, for Cosmo Plastics. McNenny, Farrington, Pearne & Gordon, Cleveland, Ohio, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., of counsel.

Before KNOCH, Senior Circuit Judge, KILEY and FAIRCHILD, Circuit Judges.

KILEY, Circuit Judge.

The district court dismissed the infringement suit of plaintiffs Amerline Corporation and Honeywell Inc. on the ground that the subject matters were obvious, and therefore the patents were held invalid under 35 U.S.C. § 103. The court however denied defendant Cosmo Plastics Company attorneys' fees. Plaintiff Amerline has appealed, and Cosmo has cross-appealed. We affirm.

There were three patents in suit at the trial: Brekke, No. 3,083,930 and Brekke-Johnson, No. 3,131,371, both assigned to plaintiff Honeywell; and Muszynski-Weyrich, No. 3,117,294, assigned to Amerline. The Brekke patent issued April 2, 1963, on application filed August 13, 1959; the Muszynski-Weyrich patent issued January 7, 1964, on application filed September 8, 1959; and the Brekke-Johnson issued April 28, 1964, on application filed March 8, 1959.

The district court found that the subject matters of all patents were obvious. However, this appeal challenges only the finding with respect to the Muszynski-Weyrich patent. The defendant, Cosmo, has conceded infringement, if the Muszynski-Weyrich patent is valid.

This patent, as well as the other two, is concerned with a slot in the flange of a plastic bobbin (a hollow plastic tube having insulating properties) on which an electric coil is wound. The slot is designed to insulate the lead wire from the enamelled wire which is wound in successive layers on the bobbin. The insulation is needed to protect against possible short circuits resulting from the lead wire bearing against the wire wound on the bobbin,¹ breaking the thin enamel insulation, and thus causing electrical contact.

The asserted advantage of the invention claimed is the saving of costs by eliminating the need to position manually the lead wire onto the inner surface of the flange and insulate it from the coil with tape. The Muszynski bobbin, it is claimed, can be wound on an automatic winding machine.

Amerline's Appeal

On the basis of 109 findings of fact, the district court concluded that all the Muszynski claims are invalid for lack of "novelty and/or unobviousness," in view of the prior art within the meaning of 35 U.S.C. § 103. Amerline contends that the findings are clearly erroneous, that the court erred as a matter of law by failing to apply proper tests for "nonobviousness" laid down in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), and that in making the finding with respect to the prior art the court did not consider the evidence showing abandonment of that art.

Amerline has not persuaded us that the court's findings as to obviousness are clearly erroneous. We come to this conclusion despite Amerline's argument that the presumption of validity of the claims was not properly weighed against defendant's burden to prove invalidity with "clear and cogent" evidence. See Devex Corp. v. General Motors Corp., 321 F.2d 234, 238 (7th Cir. 1963).

Bobbins were old in the art. So were flange slots, used for insulating coil windings. Developments in the three slots in the patents before the trial court indicate that the improvement, one over the other, is in the shape of the slot. First, Brekke's original diagonal slot cut completely through the bobbin flange; the next development, Brekke-Johnson, was a diagonal slot that did not completely cut through the flange; and finally, Muszynski-Weyrich had the L-shaped slot, which, also, did not completely cut through the flange. Before the Patent Office, two claims of the Brekke-Johnson and Muszynski-Weyrich patents were placed in interference. The interference was settled and the counts stricken in view of the prior Howenstine patent. Brekke filed new claims covering a slot not going completely through the outer flange surface.

In the Brekke bobbin, the slot is cut diagonally through the flange with the parallel slot walls sloping away from the slot opening on the inner flange surface. The Brekke-Johnson bobbin differs in that the sloping parallel diagonal slot walls do not go completely through the flange. In the Muszynski-Weyrich bobbin, there are four walls, two of which are parallel to the flange surfaces, and two of which are perpendicular to these surfaces. The parallel walls join the perpendicular walls at right angles, to form a slot in the shape of an "L". The essential differences between the three slots can be seen from the sketches here which illustrate the top, or plan, view of three flanges containing the three slots. The heavy black areas represent the terminal lugs, to which the lead wires are connected.

Brekke testified that the distinction between a slot passing completely through the bobbin flange and not doing so was nothing "very earthshaking * * * just engineering, ordinary engineering design." This is the impression we gain from comparing the exhibits. And the court found it significant that the claims purport to be improvements over several slot forms in bobbins developed by Johnson, Howenstine and Eller, prior to or contemporary with the claims developed by Amerline's assignor, indicating a somewhat common idea and precluding an idea of uniqueness or individual inventiveness.

It is clear from the findings that the court determined the scope and content of the prior art, and the level of ordinary skill in the pertinent art. Thus the requirements of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), with respect to decision on the non-obviousness issue are satisfied. Findings 62 to 83 deal with the prior art generally, and with, inter alia, Johnson, Eller and Howenstine. Findings 86 to 95 compare the prior art and the claims in suit. And the court heard testimony upon which it could find that the improvement in the claims in suit over the prior art would be obvious to the average engineer in the art. We think the record gives substantial support to the district court's finding of obviousness.

We see no merit in Amerline's argument on "secondary considerations" that the court failed to consider "critical uncontradicted evidence" with respect to "non-obviousness." There was, as Amerline argues, evidence that defendant in 1963 and 1965 advertised, and in its catalogue praised, "lead slot" grooves with a description, of their use and benefits, and thus implied the Amerline slot was not obvious. This fact is of no aid to Amerline's claim that the district court failed to consider the evidence. The court found prior art invalidated the patent. If this is so, there is no reason why the court should have found that defendant "rode on the crest of Amerline's success" in the advertisement and catalogue. The court was not required to make findings with respect to all evidence introduced. Norwich Union Indem. Co. v. Haas, 179 F.2d 827, 832 (7th Cir.1950). It is sufficient if there is substantial evidence to support the finding. Id. The findings and conclusions support the presumption that the court considered the evidence relevant to the issue of non-obviousness.

Moreover, there is no merit in the claim that the court either ignored or erroneously made findings on the question of commercial success. The court was not required under Rule 52, Fed.R.Civ.P., to make findings on all facts presented. Norwich Union Indem. Co. v. Haas, 179 F.2d 827, 832 (7th Cir. 1950). It found the only evidence that the L-shaped slot was commercially successful related to improvements subsequent to Amerline's original production, and that the evidence failed to show that success would not have resulted "but for" the improvements attributable to...