O'BRIEN v. O'BRIEN, 10675.

• Decision Date: 02 March 1953
• Docket Number: No. 10675.,10675.
• Parties: O'BRIEN v. O'BRIEN.
• Court: U.S. Court of Appeals — Seventh Circuit

202 F.2d 254 (1953)

O'BRIEN v. O'BRIEN.

No. 10675.

United States Court of Appeals, Seventh Circuit.

March 2, 1953.

Arthur A. Olson, Thorley von Holst, and Ralph E. Church, Jr., Chicago, Ill., for plaintiff-appellee, Thiess, Olson, Mecklenburger, von Holst & Coltman, Chicago, Ill., of counsel.

Charles B. Cannon, George H. Wallace, Daniel V. O'Keeffe and Wallace & Cannon, Chicago, Ill., for defendant-appellant.

Before MAJOR, Chief Judge, and FINNEGAN and SWAIM, Circuit Judges.

MAJOR, Chief Judge.

This is a suit for infringement of patent No. 2,467,849, entitled "Portable Electric Rotary Drain Cleaner," issued April 19, 1949, to John V. O'Brien, plaintiff, and James L. von Harz. The latter has assigned his interest to the plaintiff. Defendant interposed the usual defenses of invalidity and non-infringement. The court found all five claims of the patent valid and infringed and, on July 8, 1952, entered its judgment enjoining the defendant from further infringing and ordered an accounting for general damages sustained by plaintiff by reason of said infringement. From this judgment the appeal comes to this court.

The plaintiff, John V. O'Brien, and the defendant, Howard T. O'Brien, are brothers, engaged in the city of Chicago, Illinois, in competition with each other through their respective companies in the manufacture of sewer and drain cleaning tools and devices, including plaintiff's tool of the patent in suit and that of the defendant found to infringe. Plaintiff is the president of Spartan Tool Company, which is the licensee of the plaintiff under the patent in suit, and defendant conducts his business under the name of O'Brien Manufacturing Company. During a period from about July 1, 1941 to March 2, 1943, they were copartners doing business as O'Brien Manufacturing Company, during which time they were engaged in the manufacture and sale of small portable hand crank operated drain cleaning tools, known as the O'Brien "Speed Gun," as distinguished from the electric or motorized hand drain cleaning tools involved in the present litigation.

The patent invention consists of a tool to be held in the hands of the user for operating a flexible shaft for cleaning drains, consisting of the combination of a motor, a hollow handle secured to one end of the motor and a gear casing secured to the other end, a rotating tubular shaft for driving the flexible shaft, gearing mounted in the casing and connecting the armature of the motor with the tubular shaft, a chuck at the exposed end of the tubular shaft for gripping and releasing the flexible shaft, a stationary guide for the flexible shaft in line with the tubular shaft and extending between the latter and the hollow handle, thus providing a continuous passageway for the flexible shaft through the chuck, the tubular shaft, the stationary guide and the hollow handle. Claim 5, treated by the District Court as typical, is as follows:

"A portable driving tool for the flexible shaft of a drain cleaning device and embodying therein electric motor means including an armature shaft, means secured directly to one end of said motor means and providing a hollow handle for holding the tool, means secured directly to the other end of said motor means and there providing a hollow casing, means providing a passageway having a straight portion for said flexible shaft between said hollow handle and said hollow casing, a tubular shaft journalled in alignment with said straight portion of said passageway, said flexible shaft being adapted to extend through said tubular shaft, said passageway and said hollow handle respectively, means carried by said tubular shaft outside of said casing and operable to connect said flexible shaft to said tubular shaft, and means in said casing for transmitting power from said armature shaft to said tubular shaft."

Defendant contends here, as below, that the patent is invalid over the prior art and relies not only upon a number of prior art patents cited in the Patent Office but also upon the "Speed Gun" manufactured by the parties while they were doing business together, and upon Sanger, both hand crank operated drain cleaning tools, which were not cited in the Patent Office and which defendant argues are more pertinent than the cited prior art. Defendant makes no contention that the patent in suit is anticipated by any prior art reference; in fact, his expert witness refused to name a prior art patent or device which he considered as the most pertinent reference. It is hardly open to question but that the various elements of the invention were old and that if there is patentable invention it is because of their combination so that by reason thereof a new, useful and beneficial result was achieved in a more efficient, economical and facile manner. Defendant argues, in fact his defense insofar as it relates to validity is that the patentee's combination and arrangement of the elements required no ingenuity other than that possessed by an engineer skilled in the art.

Defendant, as often happens, presents his case here as though this were a trial de novo, and urges, in effect, that this court should examine the prior art and reach its independent conclusion on the issues presented. However plausible this argument may be on a record which contains only documents and physical exhibits, it possesses little if any merit on the instant record, where a large amount of oral testimony was heard by the District Court. Each side presented a number of witnesses, including engineers who qualified as experts; in fact, the printed record contains 240 pages of oral testimony. Much of the testimony of the expert witnesses was devoted to an explanation of the accused device, the patent in suit, as well as the prior art relied upon by the defendant to invalidate the patent. A reading of this testimony raises a question as to how informed witnesses could differ so radically on matters purportedly within their common knowledge. The trial court, of course, heard their testimony and, as in any other kind of a law suit, it was the function of that court to appraise their testimony.

The District Court made extensive findings of fact, both on the issue relating to invention and that of infringement. A reading of the testimony, particularly that of the expert witnesses, is convincing that the record furnishes substantial support for such findings. True, there is evidence favorable to defendant's theory of the case, at least on certain subsidiary issues, but even though we assume that such testimony would support findings in his favor, we are still faced with the fact that the court in its judgment chose to make findings predicated upon testimony favorable to the plaintiff. Under such...