Automated Building Components v. Hydro-Air Engineering, Inc.

• Decision Date: 07 July 1966
• Docket Number: No. 17985,18104,18103,18105.,18004,17985
• Citation: 362 F.2d 989
• Parties: AUTOMATED BUILDING COMPONENTS, INC., Appellant, v. HYDRO-AIR ENGINEERING, INC., Appellee. HYDRO-AIR ENGINEERING, INC., Appellant, v. AUTOMATED BUILDING COMPONENTS, INC., Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

362 F.2d 989 (1966)

AUTOMATED BUILDING COMPONENTS, INC., Appellant, v. HYDRO-AIR ENGINEERING, INC., Appellee.

HYDRO-AIR ENGINEERING, INC., Appellant, v. AUTOMATED BUILDING COMPONENTS, INC., Appellee.

Nos. 17985, 18103, 18104, 18004, 18105.

United States Court of Appeals Eighth Circuit.

July 7, 1966.

Robert E. LeBlanc, of LeBlanc & Shur, Washington, D. C., for Automated Building Components, Inc., Henry Shur, of LeBlanc & Shur, Washington, D. C., and Estill E. Ezell, of Kingsland, Rogers, Ezell, Eilers & Robbins, St. Louis, Mo., were with him on the brief.

Stuart N. Senninger and Donald G. Leavitt, of Koenig, Senninger, Powers & Leavitt, St. Louis Mo., for Hydro-Air Engineering, Inc., and filed brief.

Before VOGEL, Chief Judge, BLACKMUN, Circuit Judge, and STEPHENSON, District Judge.

VOGEL, Chief Judge.

Automated Building Components, Inc. (hereafter Automated), the assignee of the entire interest in United States Letters Patent No. 2,877,520 (hereafter the Jureit Patent), has appealed from the District Court's determination that Claims 1, 3 and 4 of the Jureit Patent are invalid because of being obvious to a person having ordinary skill in the art to which the claims pertain and also because of having been anticipated by the prior art. This determination effectively curtails a patent infringement action brought on the Jureit Patent by Automated against Hydro-Air Engineering, Inc. (hereafter Hydro-Air). Hydro-Air itself appeals from a dismissal of its counterclaim against Automated for treble damages under the Clayton Act, 38 Stat. 731, 15 U.S.C.A. § 15.¹ Hydro-Air's counterclaim is based on allegations of patent misuse and antitrust law violations by Automated through the use of illegal tying agreements entered into between Automated and its customers. Without deciding if there were such antitrust violations, Judge Regan determined that Hydro-Air proved no damages so as to be entitled to recover under the Clayton Act. Certain procedural questions are also involved on these appeals.

The District Court's opinion, published at 237 F.Supp. 247, sets out the facts of these cases in sufficient detail so as to make any further statement unnecessary. With a few additional comments, we affirm the District Court on the basis of Judge Regan's opinion. See, also, Automated Bldg. Components, Inc. v. Structomatic, Inc., Civil No. 61 C 262, N.D.Ill., March 25, 1965, an unreported case which also holds Claims 1, 3 and 4 of the Jureit Patent invalid in law.

§ 103 of the Patent Act of 1952 provides as follows, at 66 Stat. 798, 35 U.S.C.A. § 103:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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 Supreme Court recently rendered its first patent decisions since the enactment of the Patent Act of 1952 in the cases of United States v. Adams, 1966, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572, and Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. Mr. Justice Clark interpreted § 103 in the Graham case, at 383 U.S. 14, 86 S. Ct. 692, 15 L.Ed.2d 554, as follows:

"The section is cast in relatively unambiguous terms. Patentability is to depend, in addition to novelty and utility, upon the `non-obvious\' nature of the `subject matter sought to be patented\' to a person having ordinary skill in the pertinent art."

At page 252 of 237 F.Supp. Judge Regan stated, in regard to the Jureit Patent:

"* * * It was not only obvious to one skilled in the art in 1956 and within the ordinary skill of a worker in the nailing art to modify nail-like fasteners to vary withdrawal resistance but was actually demonstrated in prior art patents, i. e., Kalischer and Berthaud. Without going into what is obvious to this Court but by way of illustration it certainly does not take inventive genius to make joints with plates differing from the French connector plates only in that the Jureit plates have nails struck out from the plate instead of being welded to the plate as shown by Berthaud.

"This Court finds that substantial evidence has been introduced attacking the validity of the Jureit claims and that defendant has overcome the presumption of validity by showing that the subject matter of Jureit\'s Claims 1, 3, and 4 as a whole was obvious, at the time the alleged invention occurred, to a person having ordinary skill in the art to which the Claims pertain."

From a careful reading of the entire record we agree with Judge Regan's conclusion. His opinion, not being clearly erroneous, is conclusive on appeal. Steffan v. Weber Heating & Sheet Metal Co., 8 Cir., 1956, 237 F.2d 601, 602; Trico Products Corp. v. Delman Corp., 8 Cir., 1950, 180 F.2d 529, 530. Though drafted before Graham and Adams...