Besly-Welles Corporation v. Balax, Inc.

• Decision Date: 09 September 1968
• Docket Number: No. 64-C-170.,64-C-170.
• Citation: 291 F. Supp. 328
• Parties: The BESLY-WELLES CORPORATION, a corporation of Delaware, and Sellew Corporation, a corporation of Illinois, Plaintiffs, v. BALAX, INC., a corporation of Wisconsin, and John Van Vleet, an individual, Defendants.
• Court: U.S. District Court — Eastern District of Wisconsin

291 F. Supp. 328

The BESLY-WELLES CORPORATION, a corporation of Delaware, and Sellew Corporation, a corporation of Illinois, Plaintiffs, v. BALAX, INC., a corporation of Wisconsin, and John Van Vleet, an individual, Defendants.

No. 64-C-170.

United States District Court E. D. Wisconsin.

September 9, 1968.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

John R. Collins, Foley, Sammond & Lardner, Milwaukee, Wis., Daniel C. McEachran, Parker & Carter, Chicago, Ill., for plaintiffs.

S. Lawrence Wheeler, Milwaukee, Wis., for defendants.

OPINION

MYRON L. GORDON, District Judge.

The plaintiffs have charged the defendants with infringement of U. S. Patents Re. 24,572 and 3,050,755. In addition, the defendants are charged with appropriation and use of plaintiffs' trade secrets. The original plaintiff was Besly-Welles Corporation, an Illinois corporation. The defendants are Balax, Inc., a Wisconsin corporation, and John M. Van Vleet, an individual and a resident of Wisconsin. The court has jurisdiction under the patent laws of the United States.

After the suit was commenced, the assets of Besly-Welles were acquired by the Bendix Corporation, and the name was changed to Sellew Corporation. A new corporation, Besly-Welles, was also organized under the laws of the state of Delaware; all of the assets and patents of Sellew were transferred to this new company. The court will refer to the plaintiffs collectively as Besly.

The defendants have alleged, in addition to non-infringement of each patent, that both are invalid for several reasons. The individual liability of Van Vleet is denied. The defendants also have entered a counterclaim charging the plaintiffs with violation of the antitrust laws.

Both patents in suit relate to a device known as a fluteless swaging tap. The reissue patent (Re. 24,572) covers the tool itself and the 3,050,755 patent is concerned with the method performed by the tool. The tools involved in this litigation are used to form internal threads in metal. A common use would be to form the internal threads in a nut so that a bolt may be inserted. Prior to the development of the particular type of tool in suit, devices known as cutting taps were used to carry out this function.

The cutting or fluted type of tap actually removes portions of the metal to form the threads, whereas the taps in suit "swage" or displace the metal surrounding the hole into which the tap has been inserted. This method is said to be more economical and easier to perform. The taps have a longer life than cutting taps and there are no metal chips to remove when the job is completed.

Patent Re. 24,572 is a reissue of U. S. Patent 2,807,813. This tap has a shank and a threaded section. The threaded section has a cylindrical portion where the threads are substantially the same diameter and a tapered end portion where the threads are of reduced diameter. The threads have high spots or lobes with relieved areas in between these high spots. It is the lobes that do the actual swaging work since the relieved areas are out of contact with the material being formed. When used, the tool is rotated into a hole and the lobes force their way through the hole. The displaced metal takes the shape of the tap threads.

The '755 patent will also be referred to by the court as the method patent. The method of this patent is performed when the tool of the reissue patent is used in the prescribed manner. The method claims describe the application of pressure from the tap threads and the movement of the metal as it conforms its shape to that of the tap thread.

PRESUMPTION OF VALIDITY

Every patent is presumed valid. The burden of establishing the invalidity of a patent rests with the party asserting it. 35 U.S.C. § 282. This statutory presumption "is only overcome by clear and cogent evidence of invalidity". Ortman v. Maass, 391 F.2d 677, 681 (7th Cir. 1968); Leach v. Rockwood & Co., 404 F.2d 652 (7th Cir. 1968). This presumption of validity has been attributed to the technical and legal expertise of the patent office. See Technicon Instruments Corp. v. Coleman Instruments, Inc., 255 F.Supp. 630 (N.D.Ill.1966). However, this presumption can be weakened by introduction of prior art which was not before the patent office. Leach v. Badger Northland, Inc., 385 F.2d 193 (7th Cir. 1967); A R Inc. v. Electro-Voice, Inc., 311 F.2d 508, 512 (7th Cir. 1962).

IS PATENT Re. 24,572 VALID?

The defendants attack the validity of the reissue patent under 35 U.S.C. § 102 (b).

"§ 102. Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless—

(b) the invention was patented or described in a printed publication in this or a foreign country or 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, or * * *."

The defendants have cited five prior references which are alleged to be anticipatory under the above section:

1. Three are German references, and they concern a tap produced by Ernst Reime. They are the Gebrauchsmuster (hereinafter referred to as GM), the Klepzigs Anzeiger and the Noris catalogue. It is claimed that the German references are anticipatory because the invention was patented and described in a printed publication in a foreign country.

2. The other two references are drawings and taps produced from those drawings by Pratt & Whitney and Detroit Tap & Tool. The defendants claim that the tools made by these two companies were in public use or on sale more than one year prior to the application for the reissue patent.

Anticipation must be shown by clear and convincing evidence. The burden is on the party seeking to have the patent declared invalid. Illinois Tool Works, Inc. v. Continental Can Company, 273 F.Supp. 94 (N.D.Ill.1967), affirmed at 397 F.2d 517 (7th Cir. 1968). In the Illinois Tool Works Case, the trial court stated that the test of anticipation is framed in terms of identity between the prior device and the patented invention; that the disclosure in the prior art must be of a thing substantially identical with the claimed invention. The defense of anticipation was considered in the recent cases of Shea v. Blaw-Knox Co., 388 F.2d 761 (7th Cir. 1968) and Amphenol Corporation v. General Time Corporation, 397 F.2d 431 (7th Cir. 1968). In the latter case, the court said:

"As a rule, in order to have anticipation, all of the elements of the patented device or their equivalents must be found in a single prior device. Firestone v. Aluminum Co. of America, 6 Cir. 1960, 285 F.2d 928, 930; Allied Wheel Products v. Rude, 6 Cir., 1953, 206 F.2d 752, 760. But it is sufficient if the general aspects are the same and the difference in minor matters is only such as would suggest itself to one of ordinary skill in the art. I Walker on Patents (Deller, 2d ed.) § 77 at page 363, citing Model Bottling Machinery Co. v. Anheuser-Busch Brewing Assn., 8 Cir., 1911, 190 F. 573, 579, cert. den. 223 U.S. 732, 32 S.Ct. 528, 56 L.Ed. 634."

In the Illinois Tool Works Case, the district court stated that it was not proper to combine various prior art references with regard to the defense of anticipation. As that court said on page 106:

"A patent or publication `is to be measured as anticipatory, not by what might be made out of it, but by what it clearly and definitely discloses.'"

The court will therefore consider each of the prior references cited separately to see if any of them anticipates the reissue patent's subject matter.

The Gebrauchsmuster is a lesser type of German patent issued for petty or useful models and designs. There is no requirement of non-obviousness in order to obtain a GM, and its purpose is to enable the applicant to obtain speedy protection for a new article. After registration, the specifications and claims become available to the public. See Reeves Brothers, Inc. v. U. S. Laminating Corp., 157 USPQ 235 (E.D.N.Y.1968). It has been stated that a GM can be used as references as prior patents, but not as prior printed publications. Manual of Patent Examining Procedure, § 901.05 (b), 3rd ed. (Rev. Oct. 14, 1967). Since a GM qualifies for anticipation only as a foreign patent, its disclosure is limited to its claims, and its specifications cannot be used. The Reeves court discusses several cases in regard to the anticipatory effect of a GM and concludes as follows on page 250:

"16 The Court concludes that for anticipation purposes under Section 102 a GM, which is a foreign patent but not a printed publication, is a reference only for what is patented, i. e., for what it claims and not for what is disclosed in its specifications. This is consistent with the language of Section 102(a) and (b) which juxtaposes `patented * * * in a foreign country' with the phrase `described in a printed publication in * * * a foreign country'. To permit the effect of such a foreign patent to extend beyond what is actually patented, would appear to indirectly effectuate a form of use and knowledge in a foreign country which is not statutorily allowable as an anticipatory reference to an American patent."

For a contrary position the defendants cite the case of American Infra-Red Radiant Co., Inc. v. Lambert Industries, Inc., 360 F.2d 977 (8th Cir. 1966); there the court used the GM as a reference for what was disclosed in its specifications as well as its claims. However, in that case, the GM was being used to invalidate a patent under 35 U.S.C. § 102(d) which relates to the invention having been patented by the applicant in a foreign country more than one year before filing for application in the United States. The court stated that if an applicant can use his foreign patent to obtain the benefit of an earlier filing date to establish its priority under 35 U.S.C. § 119, the applicant should also be subject to the disadvantages imposed under § 102(d). This court concludes that the holding of the Infra-Red Court as...