Caldwell v. Kirk Manufacturing Company

• Decision Date: 13 August 1959
• Docket Number: No. 16158.,16158.
• Citation: 269 F.2d 506
• Parties: Robert E. CALDWELL, an Individual, and Caldwell Manufacturing Company, a Corporation, Appellants, v. KIRK MANUFACTURING COMPANY, a Corporation, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

269 F.2d 506 (1959)

Robert E. CALDWELL, an Individual, and Caldwell Manufacturing Company, a Corporation, Appellants, v. KIRK MANUFACTURING COMPANY, a Corporation, Appellee.

No. 16158.

United States Court of Appeals Eighth Circuit.

August 13, 1959.

Donald H. Zarley, Des Moines, Iowa (M. Talbert Dick, Des Moines, Iowa, and Herman Ginsburg, Lincoln, Neb., on the brief), for appellants.

Carter H. Kokjer, Kansas City, Mo. (Thomas E. Scofield, Kansas City, Mo., Warren C. Johnson, and Cline, Williams, Wright & Johnson, Lincoln, Neb., on the brief), for appellee.

Before SANBORN, VAN OOSTERHOUT and MATTHES, Circuit Judges.

SANBORN, Circuit Judge.

This is an appeal from a judgment for the Kirk Manufacturing Company, plaintiff (appellee), in a patent infringement action. The patent in suit is No. 2,581,028 issued to William M. Kirk on January 1, 1952, for an "Animal Rubbing and Oiling Station or Apparatus." The plaintiff owns the patent and is engaged in making and marketing the patented device. The defendants (appellants) make and sell a similar device originated by Robert E. Caldwell, which is alleged to infringe the Kirk patent. The accused Caldwell device is covered by two patents: No. 2,706,465 issued on April 19, 1955, and No. 2,785,653 issued on March 19, 1957, both for a "Livestock Oiler and Applicator Apparatus." The defendant Caldwell Manufacturing Company, a Nebraska corporation, with its principal place of business at Kearney, Nebraska, is the assignee of the Caldwell patents.

In answering the plaintiff's amended complaint, the defendants denied infringement of the Kirk patent in suit, and alleged that it was invalid for lack of invention. The issues were tried to the District Court, Claims 1, 7, 11, 17 and 19 of the patent being in controversy. In a carefully considered and comprehensive opinion (163 F.Supp. 157), the District Court determined that the patent claims in issue were valid and that they had been infringed by the defendants.

So far as the question of infringement is concerned, we have no doubt that if the Kirk apparatus for anointing livestock with oil or insecticide reveals inventive genius, and not merely the skill of a mechanic familiar with the art, the finding of infringement must be sustained. See and compare, McDonough v. Johnson-Wentworth Co., 8 Cir., 30 F.2d 375, 383-385 and cases cited; Koochook Co., Inc. v. Barrett, 8 Cir., 158 F.2d 463, 465. Needless to say, if the Kirk patent is invalid for want of invention, as the defendants argue, there can be no infringement of its claims. Briggs & Stratton Corporation v. Clinton Machine Co., Inc., 8 Cir., 247 F.2d 397, 400-401.

It is the question of the validity of the Kirk patent which gives us concern. The Kirk apparatus or device is a combination of old elements which, it is claimed, act in concert to produce a new and useful entirety which rises above the level of its parts and is attributable to inventive genius. It is true, as the District Court points out, that the defendants, who succeeded in procuring patents on their accused apparatus — also composed of old elements and which constitutes no appreciable advance over Kirk — are in a poor position to urge that Kirk's contribution to the art was unpatentable. Nevertheless, as this Court said in Long v. Arkansas Foundry Company, 8 Cir., 247 F.2d 366, 369, "The public is a silent but an important party in interest in all patent litigation * * *." A device which is new and useful but which falls short of revealing more than mechanical skill "has not established its right to a private grant on the public domain." Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 41, 86 L.Ed. 58.

Mr. Justice Douglas in his concurring opinion in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 154-155, 71 S.Ct. 127, 131, 95 L.Ed. 162, said:

"Every patent is the grant of a privilege of exacting tolls from the public. The Framers of the Constitution plainly did not want those monopolies freely granted. The invention, to justify a patent, had to serve the ends of science — to push back the frontiers of chemistry, physics, and the like; to make a distinctive contribution to scientific knowledge. That is why through the years the opinions of the Court commonly have taken `inventive genius\' as the test. It is not enough that an article is new and useful. The Constitution never sanctioned the patenting of gadgets. Patents serve a higher end — the advancement of science. An invention need not be as startling as an atomic bomb to be patentable. But it has to be of such quality and distinction that masters of the scientific field in which it falls will recognize it as an advance. * * *

"The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law. * * *"

In the majority opinion in the Great Atlantic & Pacific Tea Co. case, the Supreme Court took pains to say (at pages 152-153 of 340 U.S., at page 130 of 71 S.Ct.):

"Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. This patentee has added nothing to the total stock of knowledge, but has merely brought together segments of prior art and claims them in congregation as a monopoly."

And in conclusion said (at page 154 of 340 U.S., at page 131 of 71 S.Ct.):

"* * * The defect that we find in this judgment is that a standard of invention appears to have been used that is less exacting than that required where a combination is made up entirely of old components. * * *"

This Court, as well as the Supreme Court, has recognized that if a trial court in a patent case has failed to apply proper legal standards in determining the presence or absence of invention, its finding upon that issue will be reversed on appeal as clearly erroneous. See: Frank Adam Electric Co. v. Colt's Patent Fire Arms Mfg. Co., 8 Cir., 148 F.2d 497, 502-503; Koochook Co., Inc. v. Barrett, supra, at pages 466-467 of 158 F.2d That...