Anthony v. Ranco Incorporated

• Decision Date: 29 April 1963
• Docket Number: No. 19468.,19468.
• Citation: Anthony v. Ranco Incorporated, 316 F.2d 509 (5th Cir. 1963)
• Parties: Tony ANTHONY, Appellant, v. RANCO INCORPORATED, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

316 F.2d 509 (1963)

Tony ANTHONY, Appellant, v. RANCO INCORPORATED, Appellee.

No. 19468.

United States Court of Appeals Fifth Circuit.

April 29, 1963.

Palmer A. Niles, Coral Gables, Fla., and Andrew B. Beveridge, Washington, D. C. (Padgett, Teasley & Niles, Coral Gables, Fla., of counsel), for appellant.

Allen Kirkpatrick, Washington, D. C. (John W. Malley and Cushman, Darby & Cushman, Washington, D. C., Roy E. Raney, St. Petersburg, Fla., and John N. Tolar, Fort Lauderdale, Fla., on the brief), for appellee.

Before RIVES, CAMERON, and BELL, Circuit Judges.

GRIFFIN B. BELL, Circuit Judge.

Anthony filed suit against Ranco, a valve manufacturer, charging infringement of Claims 1, 2, and 7 of United States Letters Patent No. 2,765,628 issued October 9, 1956. Ranco counterclaimed for declaratory judgment, asserting the invalidity of the claims of the patent in suit because of lack of novelty and invention, and because Anthony was not the first, original and sole inventor. These assertions were buttressed by citations to prior art.

The patent in suit is entitled "Four-Way Changeover Valve." It is said to relate to heating and cooling systems in which four-way valves are employed. More particularly the invention pertains to a reversing valve adapted for use in a reverse cycle system such as an automatic air conditioning unit which may be alternately employed for heating or cooling purposes.

The District Court held each of the claims to be invalid and void, and thus not infringed by Ranco. We measure validity from the standpoint of a combination patent inasmuch as each of the claims in suit is directed to a combination or system.¹

Claim 1 generally encompasses an air conditioning system consisting of a compressor, a first heat exchanging coil, a second heat exchanging coil, a capillary tube connecting the coils, a blower, means for adapting the system for reverse cycle operation which means is comprised of the four-way changeover valve, together with means connected to the valve so as to automatically operate the system to keep a space such as a room at constant temperature by utilizing it for either heating or cooling purposes.

A basic refrigeration or air conditioning system of the type here involved is composed of these elements and a refrigerant fluid hermetically sealed within the system. The compressor moves the refrigerant through the system so as to extract heat from the coil within the space to be cooled to discharge it through the second coil located outside the space. The system may be reversed to heat rather than cool the space. The purpose of the four-way changeover valve here involved is to facilitate reversal. The system of the combination described is operated automatically to maintain a constant temperature by the use of a solenoid valve thermostatically controlled.

Claim 2 also reads as a combination claim, running to any system adapted for reverse cycle operation, but describing the valve in more detail. This is likewise true as to claim 7 although the valve there is described in even more detail and the system is to include high and low pressure regions and a heat exchange circuit.

The issue presented in the District Court was determined on the basis that appellant, in connecting his valve into a reversing refrigeration system, did nothing more than take a system as described in the Stickney patent and replace the mechanically operated reversing valve of Stickney with a four-way slider type pressure operated reversing valve of the type disclosed in the Maha patent; something that would be obvious to any person of ordinary skill in the reversible refrigeration art. It followed therefore, so the contention and determination went, that claims 1, 2, and 7 of the patent in suit were invalid over Stickney in combination with Maha, plus general knowledge in regard to using thermostats to energize or actuate a solenoid for controlling a reversing valve. Deeming the result reached to be correct, we do not reach the issue of infringement.

The doctrine enunciated in Lincoln Engineering Company of Illinois v. Stewart-Warner Corporation, 1938, 303 U.S. 545, 58 S.Ct. 662, 664, 82 L.Ed. 1008, 1009 cannot be avoided if these claims, as it is agreed, are directed to a combination patent. The combination in that case consisted of a compressor or pump, hose, coupling and a nipple on a bearing to be lubricated. Lubricant was forced under pressure from a container into the bearing. The patentee improved the coupling element. The court held the patent invalid, saying that the invention, if any, was in the improvement of the coupling device alone and not in the combination. The patent was rendered void because it consisted of adding only an improved coupler to old parts or elements having no new function when operated in connection with the coupler. The rule was stated as follows:

"The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention. And the improvement of one part of an old combination gives no right to claim that improvement in combination with other old parts which perform no new function in the combination."

Appellant is bound by the prior art whether or not he had actual knowledge of it. Mast, Foos & Co. v. Stoner Mfg. Co., 1900, 177 U.S. 485, 20 S.Ct. 708, 44 L.Ed. 856; and Walker on Patents, Deller's Ed. Vol. One, p. 117. And there are two combination patents in the prior art which are particularly pertinent; Stickney and Tipton. Patent No. 1,637,756 was issued in 1927 to C. A. Stickney et al. That patent claimed a method and means for maintaining a predetermined temperature within a space to be heated or cooled. Every element in the combination claims in suit was present in Stickney except there the four-way valve was mechanically operated while the four-way valve of the patent in suit is operated by fluid pressure. Both are thermostatically controlled. The Stickney patent is not cited in the patent in suit as part of the prior art. Indeed, only one patent, that of Tipton,...