Anderson Company v. Sears, Roebuck and Co.

• Decision Date: 28 May 1959
• Docket Number: No. 12459.,12459.
• Citation: 265 F.2d 755
• Parties: ANDERSON COMPANY, Plaintiff-Appellee, v. SEARS, ROEBUCK AND CO., and Zaiger Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Seventh Circuit

265 F.2d 755 (1959)

ANDERSON COMPANY, Plaintiff-Appellee, v. SEARS, ROEBUCK AND CO., and Zaiger Corporation, Defendants-Appellants.

No. 12459.

United States Court of Appeals Seventh Circuit.

April 14, 1959.

Rehearing Denied May 28, 1959.

Howard T. Markey, Francis W. Parker, Jr., Parker & Carter, Chicago, Ill., John M. Fogarty, Lynn, Mass., for defendant-appellant, Zaiger Corp.

Frank H. Marks, Lederer, Livingston, Kahn & Adsit, Chicago, Ill., for defendant-appellant, Sears, Roebuck & Co.

James P. Hume, John Rex Allen, Chicago, Ill., Richard S. Melvin, Gary, Ind., James C. Wood, Lloyd W. Mason, Hofgren, Brady, Wegner, Allen & Stellman, Chicago, Ill., for plaintiff-appellee.

Before SCHNACKENBERG and HASTINGS, Circuit Judges, and WHAM, District Judge.

HASTINGS, Circuit Judge.

This is an action for patent infringement. Plaintiff-appellee, The Anderson Company, a corporation, sued Sears, Roebuck and Co., a corporation. The Zaiger Corporation, as manufacturer of the accused devices, submitted to the jurisdiction of the court as a co-defendant and defended the action. Both defendants are appellants herein.

The patent in suit relates to a windshield wiper and is No. 2,596,063 entitled "Windshield Wiper Linkage Assembly." It was issued May 6, 1952 to John W. Anderson, plaintiff's president, and, under subsequent assignments, is now owned by plaintiff. Plaintiff asserted claims 6, 8 and 12 of the thirty-one claims in its patent.

Defendants answered pleading the invalidity of the claims in suit because of an alleged prior public use by defendant Zaiger Corporation, because the patent was anticipated by certain prior patents and because the patent described a non-patentable aggregation. They pleaded further that the claims of the patent were broader than the invention conceived by the patentee; that the plaintiff was guilty of laches; and that there was no infringement.

At the beginning of the trial defendants' counsel, after stating that "we do assert as to all of the claims that they involve no invention over the prior patented art," subsequently conceded that the accused devices would infringe the claims in suit if such claims were valid.

A major portion of the testimony was devoted to the defense of prior public use by Zaiger and plaintiff's efforts to show that defendant Zaiger's wiper device submitted in evidence to show such prior public use (defendants' exhibit D-15) had not been made as testified to by its maker. From this evidence the trial court found that defendants' exhibit D-15 was spurious and known to be such and that the defense of public use had not been established. Defendants have waived this issue on appeal.

The trial in the district court consumed thirteen full trial days; trial briefs were submitted; extended oral arguments were heard; proposed findings of fact and conclusions of law and a form of judgment were submitted by plaintiff's counsel, as well as defendants' written objections thereto; oral arguments on such proposals and objections were heard; and the trial court then signed and entered 65 findings of fact and 14 conclusions of law on the issues raised by the complaint favorable to plaintiff and rendered judgment thereon. Defendants did not file any subsequent motion asking the court to amend its findings or to make additional findings, and they stand as originally entered.

The trial court held, inter alia, that claims 6, 8 and 12 of the Anderson patent were valid and infringed, and permanently enjoined defendants from making, using or selling the accused device and any similar device constituting infringement of these claims. There was a further finding that defendants' infringement of the patent was "wilful and wanton." Plaintiff was awarded damages, attorneys' fees and costs, and the cause was ordered referred to a master for determination of the amount of plaintiff's damages after the judgment has become final.

Defendants have limited this appeal to the sole question of whether or not the patent in suit is invalid under 35 U.S. C.A. § 103¹ because of lack of invention over the disclosures in the prior art, and particularly over the disclosures of two of the several patents set out in their answer.

The errors relied upon arise out of defendants' contentions that the district court adopted erroneous findings and conclusions not supported by or contrary to the evidence and applicable law and its failure to make other necessary findings supported by the evidence and law. Defendants further contend that the trial court failed to apply the correct criteria of patentable invention and ignored or disregarded the applicable rule of law relating to the patentability of a combination of old elements.

Although the record contains a transcript of approximately 2200 pages and numerous exhibits, we may say for the benefit of the parties that, in arriving at our determination of this case, we have given careful and detailed consideration to the whole record.

The history of this patent is marked with contention and litigation. Anderson conceived the invention of the patent in suit in 1944 and filed his application on December 13, 1945. While the application was pending in the Patent Office in 1947 it was involved in a contested interference with an application for a patent owned by Trico Products Corporation. Anderson was awarded priority of invention by the Patent Office Interference Examiner, and the award was affirmed by the Patent Office Board of Appeals and the Court of Customs and Patent Appeals. See Scinta v. Anderson, 1951, 193 F.2d 1020, 39 CCPA 790.

During the pendency of the application and the interference proceeding many of Anderson's claims were rejected by the Examiner both as originally filed and as amended. However, as the result of numerous amendments to the application, frequent conferences with the Examiner and what appears to have been a thorough consideration of the references to the prior art, and following the award of priority over the Trico application (which had been filed in the spring of 1947), the application was allowed (including claims already allowed in another case) and the Anderson patent was issued on May 6, 1952.

In 1953, in the United States District Court for the Western District of New York, plaintiff brought a suit for infringement of the instant patent against Trico Products Corporation, not a party here. The New York court held the Anderson patent valid over the prior art, including the two patents now relied upon by defendants here, but invalid by reason of the alleged Zaiger prior public use, a defense abandoned here. See Anderson Company v. Trico Products Corporation, D.C.W.D.N.Y.1958, 162 F. Supp. 224.

The patent in suit describes this invention as one that "relates generally to windshield or window cleaners or wiper devices and more particularly is directed to a device adapted to clean or wipe a curved surface as well as a substantially planar surface." Claim 6 is typical of the three claims asserted here and reads:

"6. A wiper for cleaning a curved surface, comprising an elongated blade flexible for conforming to the surface curvature, the blade having an elongated flexible backing strip, a primary yoke extending lengthwise of the strip and having an arm attaching portion, and secondary yokes, one secondary yoke connected intermediate at its ends to an end of the primary yoke and having its opposite ends connected to the backing strip at longitudinally spaced points, and another secondary yoke connected intermediate its ends to the opposite end of the primary yoke and having its opposite ends connected to the backing strip at longitudinally spaced points."

The problem of wiping a curved windshield was an old one before the invention of the patent in suit. A windshield wiper must completely remove all rain, snow, dirt and other extraneous matter in the path of its movement or obscure areas will result, handicapping the vision of the driver. Thus, the complete cleaning of the glass is essential. A windshield wiper moving over a curved glass windshield is required to change its shape constantly to conform to the wiped surface. The wiper must continually flex in order to conform to varying degrees of curvature, from curved to substantially straight and then to curved again, for each pass it makes over the windshield.

Anderson accomplished the desired result with a device containing a combination of three essential elements, viz.: (1) a flexible rubber wiping blade, (2) a flexible backing strip for the wiping blade, and (3) a multiple yoke pressure distributor. Since the rubber wiper and backer are flexible, the wiper blade flexes to follow the contour of a curved automobile windshield, the pressure of the wiper arm being distributed on the flexible wiper and backer by the pressure distributor. Each of the three claims in suit is drawn to a combination of these three elements.

Although defendants cited numerous patents in support of its defense that the claims in suit are lacking in invention over the disclosures in the prior art, it now limits its reliance to two of them, namely, Zierer, No. 2,254,343 and Linke-Hofman,² German Patent No. 689,330.

The Zierer patent discloses a device intended to wipe a curved windshield showing a pre-curved blade. Its structure has a wiping element including a rubber blade and a backing portion of spring steel. It employs a movable cam mounted in a rigid holder and pressing upon the middle of the pre-curved back, and a pair of arms, one for moving the blade back and forth in its arc and the other for turning the cam to press on the back of the pre-curved blade to change its shape. The shape of the rubber blade is controlled by the cam whether the blade is in contact with the glass or not. The shape of the blade is pre-curved, and there is nothing to indicate that it can wipe any but the windshield with the curvature for which it was designed, and being pre-curved it could not conform to flat...