Austin v. Marco Dental Products, Inc.
| Decision Date | 12 September 1977 |
| Docket Number | No. 76-3749,76-3749 |
| Citation | 195 USPQ 529,560 F.2d 966 |
| Parties | George K. AUSTIN, Jr., Plaintiff-Appellee, v. MARCO DENTAL PRODUCTS, INC., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Ninth Circuit |
J. Pierre Kolisch, of Kolisch, Hartwell, Dickinson & Stuart, Portland, Or., argued, for defendant-appellant.
Kenneth S. Klarquist, of Klarquist, Sparkman, Campbell, Leigh, Hall, & Whinston, Portland, Or., argued, for plaintiff-appellee.
Appeal from the United States District Court for the District of Oregon.
Before WRIGHT and KILKENNY, Circuit Judges, and HARRIS, Senior District Judge. *
This appeal raises issues concerning a patent's validity and infringement: (a) the "on sale" proscription; (b) nonobviousness; (c) combination of known elements; (d) standards for reissuance and (e) intervening rights.
Appellee, George K. Austin, Jr., alleges that appellant, Marco Dental Products, Inc. (Marco Dental), infringed Claim No. 1 in his patent (U. S. Patent No. Re 28,649) for a "dental handpiece control." His company, Adec, Inc., manufactures it under the trade name "Auto-Trol." Marco Dental sells a similar device.
Claim No. 1 describes a mechanism which automatically controls the flow of air and water to a compact dental handpiece. The device combines a dental handpiece, a control block assembly and a hanger valve assembly. In operation it permits the automatic feeding of drive air, cooling water and air, and chip air 1 without requiring the dentist to adjust for each of the three to seven handpieces he may use with a typical patient.
Central to Austin's invention is the innovative use of flexible diaphragms to regulate the flows, such as those required in high speed drills. The district court succinctly described their function:
Behind each handpiece is a control block. When a dentist uses a handpiece, the air and water will flow into the control block, down a port to the diaphragm (which is flexed open when the handpiece is picked up), up the adjacent outlet port, out to the handpiece. When the dentist uses an adjacent handpiece, the air and water flow straight through the interceding control block and into the control block behind the handpiece being used. In this way, air and water only flow across the diaphragm of the particular control block connected to the handpiece being used.
Austin conceived his invention on a summer weekend in 1968 and by August of that year had constructed a prototype of the control block. Adec issued a wholesale price list effective September 1, 1968 giving prices of four Auto-Trol models. A newsletter of October 7, 1968 sent to Adec customers introduced the new unit and other items. The prototype was displayed at a dental convention in Miami on October 27, 1968.
The original patent application was filed on October 24, 1969 and a patent was issued in February 1972 as No. 3,638,310. Three months later Austin sued Marco Dental for infringement.
On September 27, 1974 Austin filed for a reissue of his patent because the language of claims 1 and 4 was defective. He later The "on sale" issue was segregated from others. The district court held a trial in February 1976 on the issue whether the Austin invention had been "on sale" more than one year prior to October 24, 1969, the filing date of the original patent application. The court held that it had not been "on sale" and denied Marco Dental's request for interlocutory certification.
submitted an amendment requesting that claims 17, 18 and 19 be cancelled, based on prior art patents brought to his attention by Marco Dental. Following the patent's reissue (No. Re 28,649) in December 1975, Austin filed an amended complaint for patent infringement.
The remaining issues of validity and infringement of the Austin reissue patent were tried later. Only claim 1 was at issue and the district court entered judgment for appellee after determining that the Austin patent was valid and infringed.
"ON SALE"
The "on sale" provision, 35 U.S.C. § 102(b) states, in pertinent part:
A person shall be entitled to a patent unless
(b) the invention was patented or described . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.
The rule of this circuit in determining whether the invention was "on sale" more than one year before the patent application was expressed in Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426 (9th Cir. 1973), where we said:
A sale or an offering for sale
precludes any inquiry into the experimental nature of the sale unless the contract of sale or the offering for sale contains an express or clearly implied condition that the sale or offering is made primarily for experimental use.
Thus the sale or offering would not ipso facto invalidate the patent nor preclude further inquiry into the experimental nature of the use where the contract or the offer . . . showed that the device was still experimental and that no workable prototype had been made (Americo (sic) Contract Plate Freezers, supra ); . . . .
Id. at 433 (emphasis in original).
The invention must be completed before sales efforts become a bar. Appellant contends that Austin's invention, the control block was fully completed by August 1968, two months before the critical date of October 24, 1968. To support its argument Marco Dental points primarily to the Adec wholesale price list of September 1, 1968 and the October 7 Adec newsletter to its customers with its brief description of the Auto-Trol and the picture of a mock-up.
Amerio Contact Plate Freezers, Inc. v. Belt-Ice Corp., 316 F.2d 459 (9th Cir. 1963), also involved drawings and a mock-up of a freezing device shown to customers prior to the critical date. We held that, unless there was in existence a fully-operative device incorporating the invention prior to the critical date, there could be no "placing of the invention on sale in the sense intended by the statute." Id. at 464.
Ordinarily . . . selling activity . . . prior to the time that a fully-operative article or apparatus incorporating the invention comes into existence, is not a reliable indicium of competitive exploitation. Until at least an operative prototype has been completed and tested, the competitive effectiveness of such activity, in all probability, will be impaired by the aura of continuing developmental, experimental and testing effort. Moreover, at this stage, such activity is likely to be more for the purpose of eliciting needed changes in design and testing whether the market potential warrants continuance of the project, than to launch full-fledged commercial exploitation.
The annual price list was mailed to Adec dealers after the conception of the invention and completion of a test model embodying the underlying principle, but before development of an operative Auto-Trol prototype.
The newsletter invited Adec customers to view the company's new products at Adec's exhibition booth at the American Dental Association convention in Miami on October 27-29, 1968. Many manufacturers including Adec previously had used dental conventions as a sounding board to elicit suggestions from practitioners for modifications and to measure possible acceptance of planned products before production and sale.
After some preliminary tests with air and water connections, a prototype was shipped to Miami about October 22, 1968. It had not been used or tested by dentists. In fact, suggestions were made at the convention for significant design changes. As a result Adec substituted a metal hinge block for a plastic one and developed a "lock-out" device which allowed the handpieces to be engaged independently.
No Auto-Trols were sold before the critical date and pre-October 24 descriptions were of an undeveloped, untested and incomplete device. 2
An examination of the legislative history surrounding the "on sale" provisions reveals that Congress was well aware that, before an invention was considered "fully completed" and the inventor was required to file to avoid the one year bar, it must be reduced to practice.
The first conceptions of ingenuity, like the first suggestions of science, are theories which require something of experiment and practical exemplification to perfect. Mechanical inventions are at first necessarily crude and incomplete. Time is required to develop their imperfections and to make the improvements necessary to their adaptation to practical uses.
S.Rep.No.338, 24th Cong., 1st Sess. 6 (1836). Cf. S.Rep.No.876, 76th Cong., 1st Sess. (1939); H.R.Rep.No.961, 76th Cong., 1st Sess. (1939).
We believe the district court did not err in concluding that "Austin did not engage in the 'competitive exploitation of his invention' until after the critical date."
"NONOBVIOUSNESS"
A new patent must not only be new and useful, but it also must be nonobvious. Section 103 provides:
A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains . . . .
The crucial question is whether the invention would have been obvious to one of ordinary skill in the pertinent art. Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d 1266, 1270 (9th Cir.), cert. denied, 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976).
With the addition of Section 103 as part of the 1962 Amendments to the patent laws Congress reoriented the focus of inquiry from novelty 3 to nonobviousness. Faced with interpreting the meaning of nonobviousness the Supreme Court articulated a three-pronged standard for factual inquiry in Graham v. John Deere, Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
According to that case, a court must examine: (1) the scope and content of the prior art; (2) the...
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