Berkeley Pump Co. v. Jacuzzi Bros.

• Decision Date: 30 June 1954
• Docket Number: No. 13517.,13517.
• Citation: 214 F.2d 785
• Parties: BERKELEY PUMP CO. v. JACUZZI BROS., Inc.
• Court: U.S. Court of Appeals — Ninth Circuit

214 F.2d 785 (1954)

BERKELEY PUMP CO. v. JACUZZI BROS., Inc.

No. 13517.

United States Court of Appeals Ninth Circuit.

June 30, 1954.

Mellin, Hanscom & Hursh, Oscar A. Mellin, Leroy Hanscom, Jack E. Hursh, San Francisco, Cal., for appellant.

Naylor & Lassagne, Jas. M. Naylor, Frank A. Neal, San Francisco, Cal., for appellee.

Before HEALY, BONE and LEMMON, Circuit Judges.

BONE, Circuit Judge.

Appellant, Berkeley Pump Company (herein Berkeley) and appellee, Jacuzzi Bros. (herein Jacuzzi) are both California corporations engaged in the business of manufacturing and selling motor driven water pumps for use in so-called "deep wells" on small farms. The patent in suit is the property of Berkeley, being Letters Patent U. S. No. 2,280,626, issue date April 21, 1942.

Berkeley brought suit against Jacuzzi, charging the latter with infringement of the Berkeley Pump device, and demanding damages and reasonable attorney's fees. At the conclusion of the plaintiff's case in chief the lower court directed the jury to return a verdict in favor of Jacuzzi.¹ Judgment was entered on this verdict and this appeal followed.

In its answer to the Berkeley suit, Jacuzzi, among other matters, put the validity of the patent in suit in issue by alleging that the Berkeley pump was not an invention and that the Letters Patent were invalid; that the pump alleged to be patented did not require the, or any, exercise of the inventive faculty; that the claimed patent was invalid because anticipated in every material and substantial part as disclosed and described in prior letters patent of the United States and foreign countries or in printed publications prior to the alleged invention or discovery of the patentee of the Berkeley patent; that for more than one year prior to the alleged application for letters patent on the Berkeley device, this alleged invention, and every material and substantial part thereof, was in public use or on sale in the United States; that the alleged invention is devoid of novelty or utility, and therefore the letters patent is null and void.

Other contentions by way of defense were presented in the Jacuzzi answer, but in view of the obvious basis of the lower court's order in directing a verdict, we think that they need not be considered.

At the close of the plaintiff's prima facie case, counsel for Jacuzzi moved for a directed verdict on the premise that the evidence of plaintiff revealed that the subject matter of the patent in suit is not a valid patent. Thereafter the trial judge instructed the jury to return a verdict for the defendant, stating that he was thus instructing the jury "as a matter of law." Obviously, the directed verdict rested on the conclusion of the judge that, in light of all the evidence adduced, it was his judicial duty to direct such a verdict at the hands of the jury.

Mechanical Combinations

At the outset it should be pointed out that we are here dealing with a mechanical device which concededly involves only a combining of old elements all of which were well known in the prior pump art. Under the pleadings the most vital question to be answered is whether the Berkeley combination in suit constitutes patentable invention.

In a recent decision, Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 71 S.Ct. 127, 130, 95 L.Ed. 162, hereafter referred to as A & P Tea, the Supreme Court considered and disposed of the problem of what sort of combinations the lower courts are free to regard as patentable inventions in the mechanical field.² In this decision it established the criteria and standards which must now be applied in determining whether a combination patent is valid. In Kwikset Locks v. Hillgren, 9 Cir., 210 F.2d 483, 486, certiorari denied, 347 U.S. 989, 74 S.Ct. 852 we commented on and applied the standard approved by the high court, and the rule we followed in Kwikset is applicable to the facts of the instant case. Therefore we have examined the record on appeal to determine whether or not it clearly establishes that the Berkeley device meets the rigid standards of invention we must apply, in default of which it must be regarded as an example of mechanical skill in assembling old elements the previous functional operations of which are not changed by their arrangement and inclusion in the device. And see our comments in Jacuzzi Bros., Inc., v. Berkeley Pump Co., 9 Cir., 191 F.2d 632, 637 where we discuss functional operations of old elements which are placed in aggregation. We not Berkeley's contention on this appeal that "the law presupposes in a patentable combination that the parts are separately old." The implications of this broad statement do not require comment in light of the cases we have noted.

The Issues on Appeal

Appellant presents five claims of error. That the lower court erred: (1) in determining that the question of patentable invention was one of law to be decided by the court and not one of fact for the jury, (2) in determining factual questions of novelty, invention and validity, (3) in determining as a matter of law, in view of the evidence adduced, that the patent in suit did not disclose patentable invention, (4) in weighing the evidence and in effect denying appellant a jury trial, (5) in directing a verdict for appellee.

Appellee replies that the only question for disposition is whether the district judge acted within the legitimate scope of his powers in directing the jury verdict.

In the posture of the case on this appeal the issue of infringement need not be considered since the only testimony is that the Jacuzzi pump is a complete duplicate of the Berkeley pump in construction and mode of operation.

The Evidence

Only two witnesses were called at the trial, and the testimony of Fred A. Carpenter takes up almost the entire record. He was President of Berkeley Pump Company, appellant, and the patentee of the patent in suit. He described in detail the structure, operation and function of the Berkeley pump (as well as other pumps, one of which will be noted later) with the aid of his own technical knowledge and experience, as well as drawings, schematic diagrams, physical exemplars and the file wrapper record of the patent in suit.³

In his testimony Carpenter frankly stated that he laid no claim to invention of any of the parts or elements incorporated in his Berkeley pump. His position is epitomized in the claim that his invention is "the complete concept of the entire system * * * what it will do, and how it does it." This boils down his argument to the end product of integration. He readily agreed that deep well turbine pumps were being manufactured and used prior to 1940, these employing impellers and turbine bowls like those used in the Berkeley device. In short, the claim of "invention" in this device resides in the "arrangement" of its elements, with their old functions carried over into combination to produce what he claims to be a particular result.²

Apparently one of the most efficient methods of raising large volumes of water from a deep-well is to install a series of turbine impellers within a pipe-line "casing," one above the other. Each impeller is somewhat like a wheel, which takes water in at its hub, and, by rotating rapidly, throws it with centrifugal force through its spokes and out at its rim. Thus each impeller receives water up from below through its center and in turn throws it upward by this centrifugal force. The impeller or impellers located within and at the bottom of the casing are always immersed in the water in the well. Depending upon the depth of the well, as many such turbine impellers may be connected together in series, one above the other, as is desirable for the well depth in any particular installation. Thus the water is forced up to the surface, at a relatively low pressure, into a "discharge chamber" at the top of the "casing" from which chamber the water is released through a large opening for irrigation purposes for small farms. Such pumps were in use prior to the advent of the Berkeley pump.

For high-pressure discharge (required for household use, or sprinkler systems) one could install another type of system, particularly if one had a so-called shallow-well. This would be a single wheel "impeller" of large diameter located at the top of the casing. This single impeller rotating very rapidly, which (like the aforementioned turbine impellers) would take water into its center and whirl it out at its periphery at high pressure, through an outlet. Pumps of this type were also in use prior to the advent of the Berkeley pump.

One unpatented combination pump (known as the "Advance Pump") bore a marked similarity to the Berkeley pump, although it preceded application for a patent on the Berkeley pump by a half-dozen years. This "Advance Pump" used a jet device to raise the water to the top of the casing, instead of using staged turbines. At the top of the casing, in addition to a discharge chamber, it had a high-speed centrifugal impeller which drew water from the discharge chamber and discharged it under high pressure. It had a low-pressure outlet from the discharge chamber, and a high-pressure outlet from the centrifugal impeller. In order to raise the water to the discharge chamber (at the top of the casing) part of the water discharged by the high-pressure centrifugal impeller was diverted down a shaft and into the jet, where the speed and pressure of that water was utilized to raise water from the well. Because this means of raising well water was less efficient than the staged turbine method (of the Berkeley pump) the "Advance Pump" could not discharge both high and low pressure water simultaneously. The low-pressure discharge could be closed, thereby providing adequate water for the jet and high pressure use; or the high-pressure outlet could be closed so that all of the high-pressure water would be utilized for raising water from the well most of which could...