Ashcroft v. Paper Mate Mfg. Company

• Decision Date: 18 November 1970
• Docket Number: No. 23328.,23328.
• Citation: Ashcroft v. Paper Mate Mfg. Company, 434 F.2d 910 (9th Cir. 1970)
• Parties: Charles D. ASHCROFT and Milton A. Engle, Appellants, v. PAPER MATE MFG. COMPANY, Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

434 F.2d 910 (1970)

Charles D. ASHCROFT and Milton A. Engle, Appellants, v. PAPER MATE MFG. COMPANY, Appellee.

No. 23328.

United States Court of Appeals, Ninth Circuit.

November 18, 1970.

Paul L. Gardner (argued), of Kendrick & Subkow, Los Angeles, Cal., for appellant.

William Poms (argued) of Miketta, Glenny, Poms & Smith, Los Angeles, Cal., for appellee.

Before BARNES, BROWNING, and CARTER, Circuit Judges.

BARNES, Circuit Judge:

This is an action for damages for the infringement of United States Patent No. 3,018,761. The District Court granted defendant's motion for summary judgment and held the appellant's patent invalid under 35 U.S.C. § 101 as lacking novelty, under 35 U.S.C. § 102 as claiming more than was invented by the patentee, and under 35 U.S.C. § 103 as being obvious to a person having ordinary skill in the art. In addition, the Court also found that the facts and circumstances of this case make it "exceptional" within the meaning of 35 U.S.C.A. § 285, and awarded $4,000.00 in attorneys' fees to the defendant.¹

On appeal, the plaintiffs contend that the District Court erred (1) in invoking summary judgment proceedings, (2) in its application of substantive law to find the patent invalid, (3) in awarding partial attorney's fees to the defendant and (4) when upon remand, it permitted the introduction of the missing exhibits, and a new summary judgment, without affording plaintiffs a further hearing.

(1) SUMMARY JUDGMENT

There can be no dispute that the granting of a motion for summary judgment, which renders a patent claim invalid, is proper when "there is no genuine issue as to any material fact and * * the moving party is entitled to judgment as a matter of law". Rule 56(c), F.R.Civ.P. The granting of such a motion is still proper even though there are some issues of fact presented in the affidavits or other evidence before the court, unless those issues are ones of material fact. If they are not, summary judgment may be granted. See Walker v. G. M. Corp., 362 F.2d 56, 59 (9th Cir. 1966), Proler Steel Corp., Inc. v. Luria Brothers and Co., 417 F.2d 272, 273-274 (9th Cir. 1967) and cases cited therein.

(2) THE PATENT CLAIM AND THE APPLICABLE LAW

The patent at issue is directed to a ball-point pen refill unit which comprises a pair of ball-point cartridges detachably connected to one another in tandem or "piggy-back" fashion by a connector element. The connector element joins the two cartridges to form a rigid unit which may be projected and retracted in a conventional pen barrel and readily removed from and inserted into the barrel. The connector also permits ready detachment of the two cartridges so that their positions may be reversed to place either in the writing (lower) position.

In one embodiment, the connector element is a bushing carried in the upper end of each cartridge. The writing end of the other cartridge fits tightly, but removably, into this bushing to form a dual-cartridge unit which may be employed in a conventional ball-point pen barrel. When the lower cartridge is out of ink, the unit may be removed from the barrel and the positions of the cartridges reversed to place the unused upper cartridge in the lower (writing) position. The reassembled unit may then be replaced in the pen barrel and employed until the second cartridge runs dry.

A vent is provided in each cartridge to permit the feed of ink to the writing tip. Provision of such a vent is required, because the tight fit of the writing tip of the upper cartridge in the bushing in the lower cartridge would otherwise seal the lower cartridge from the atmosphere and inhibit the free flow of ink to its writing tip.

Claims 4-6 of the Ashcroft Patent are directed to this first or "bushing" embodiment shown in Fig. 1 (defendants' Exhibit C). In the second embodiment of the Ashcroft Patent, the connector element is a sleeve which tightly but detachably joins the two cartridges. Claims 1-3 of the Ashcroft Patent are directed to this second or "sleeve" embodiment.

The District Court found that the patent was invalid on three grounds. Because we agree that the claims of the appellants "would have been obvious at the time the invention was made to a person having ordinary skill in the art * *", (35 U.S.C.A. § 103), we affirm the decision below and need not, nor will we, reach the patent's validity under §§ 101 and 102.

At the outset we note the teachings of Graham et al. v. John Deere Co. of Kansas City, et al., 1965, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 and Great Atlantic and Pacific Tea Co. v. Supermarket Equipment Co., 1950, 340 U.S. 147, 71 S. Ct. 127, 95 L.Ed. 162, the two more recent Supreme Court decisions on patent validity. This Court extensively discussed the principles announced in these cases in several recent decisions. See Jeddeloh Brothers Sweed Mills, Inc. v. Coe Manufacturing Co., 375 F.2d 85, 87-88 (9th Cir. 1967) and Griffith Rubber Mills v. Hoffar, 313 F.2d 1, 3-4 (9th Cir. 1963). Despite the traditional aversion of American Law to monopoly, exclusive rights to an invention are granted solely as a "reward, an inducement, to bring forth new knowledge. * * * Only inventions and discoveries which furthered human knowledge, and were new and useful, justified the special inducement of a limited private monopoly." Graham, 383 U.S. at p. 9, 86 S.Ct. at p. 689. The history of the American patent system is replete with the continuing tension between a strong public policy against monopoly and a desire to encourage inventions which will benefit the public. This tension has been resolved by the courts setting a high and exacting standard for patent validity. As we noted in Jeddeloh:

"The entire tenor of the Graham decision is that there should be strict observance of all three explicit conditions precedent to the issuance of a patent, namely novelty, utility and non-obviousness, with special emphasis being placed on the latter." (Id. 375 F.2d at 87). (Italics added.)

In the same vein, this Court has stated:

"It follows that though a device may be new and useful it is not patentable if it consists of no more than a combination of ideas which are drawn from the existing fund of public knowledge, and which produces results that would be expected by one skilled in the art. A public grant of the private power to exclude others from making, using, and selling such a device simply `withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.\' No balancing public benefit results from such a patent since the fund of freely available public knowledge is reduced during the period of monopoly, and is only restored rather than enhanced when that period ends." Griffith, supra 313 F. 2d at p. 3 (Citations omitted.)

The applicable standard which we must follow in § 103 cases was clearly outlined in Graham, supra 383 U.S. at p. 17, 86 S.Ct. at 694, where the Court said:

"While the ultimate question of patent validity is one of law (citation), the § 103 condition (nonobviousness), which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy."

While the prior art is quite extensive, the techniques and principles it discloses are basically simple and straight forward. The appellants do not contend that any elements in their claim are new or different. (See Findings of Fact, XII.) Instead, they assert that this combination of old elements serves a new function and is not obviously disclosed by the prior art. The art of writing instruments, which includes pencils, fountain pens, stylographic pens and ball-point pens, is ancient and crowded. Rather than repeat the District Court's exhaustive treatment of the prior art and relevant patents (See Findings of Fact IX-XIX), a short summary will suffice.

The use of more than one writing instrument in axial alignment within the same barrel or casing is disclosed in prior art patents to Greenwald 468,744, Stockman 362,404, Bassi 1,808,489, and Lang (Swiss) 286,000. Similarly, the use of a sleeve coupling between cartridge sections to hold writing instruments in alignment is shown in Stockman, Bassi, and Feigenbaum (British) 633,452. Some couplings hold the two sections together by means of friction while others use a threaded screw technique. Both methods are clearly equivalent and interchangeable to anyone with any mechanical knowledge. In ball-point pen technology, the most modern field in this art, only one technique or principle is relevant to our inquiry. Ball-point pens were widely known and used for several years before this alleged invention. In order for the pasty, viscose ink to flow down to the ball tip, it is necessary to admit air to the rear portion of the ink chamber. For this reason, the ends of most ball-point pen cartridges are open. Prior art clearly discloses that those cartridges which have sealed ends use side vents (e. g. holes or slits) to allow the entrance of atmospheric pressure. (See British Patent 2,413,904 issued in 1947, and Thull Patent 2,593,366 of 1952).

The single, most pertinent prior art patent and the one which presents the most substantial question as to the existence of a genuine issue of material fact is the Swiss Lang patent cited earlier. Although the parties are in dispute over the teachings of this prior...