Ceco Corp. v. Bliss & Laughlin Industries, Inc.

• Citation: 557 F.2d 687,195 U.S.P.Q. 337
• Decision Date: 18 July 1977
• Docket Number: No. 75-2552,75-2552
• Parties: The CECO CORPORATION, Plaintiff-Appellee, v. BLISS & LAUGHLIN INDUSTRIES, INC., Defendant-Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

Page 687

557 F.2d 687

195 U.S.P.Q. 337

The CECO CORPORATION, Plaintiff-Appellee, v. BLISS & LAUGHLIN INDUSTRIES, INC., Defendant-Appellant.

No. 75-2552.

United States Court of Appeals, Ninth Circuit.

July 18, 1977.

William E. Lucas, argued, of McCaleb, Lucas & Brugman, Chicago, Ill., for defendant-appellant.

Clarence J. Fleming, argued, McDougall, Hersh & Scott, Chicago, Ill., for plaintiff-appellee.

Appeal from the United States District Court for the Central District of California.

Before CUMMINGS, ^* GOODWIN and KENNEDY, Circuit Judges.

OPINION

CUMMINGS, Circuit Judge.

Plaintiff filed this suit in March 1974 seeking a declaratory judgment that Cunningham Patent No. 3,527,320 held by defendant is invalid or, in the alternative, not infringed by plaintiff's scaffolding. After a trial, the district court held the patent invalid on the grounds of obviousness and prior public use. The court also held that plaintiff's scaffold does not infringe the Cunningham claims, even if valid.

Arthur L. Cunningham was awarded the patent in question on September 8, 1970, on the basis of his patent application filed on July 19, 1968. He was employed by Superior Scaffolding Company in Torrance, California, from 1961 through 1968 as its plant manager and then as its vice president of manufacturing. Defendant acquired the assets and stock of Superior on December 31, 1967.

While Cunningham was employed by Superior, that company manufactured, leased and sold shoring under its Squire Patent No. 3,190,405. ¹ This shoring was known as SHORE-X, and the patent for it was upheld in Bliss & Laughlin Industries, Inc. v. Bil-Jax, Inc., 356 F.Supp. 577 (N.D.Ohio 1972). ² The Squire shore is used as a temporary support for concrete forms in constructing concrete buildings and bridges. Its importance is vigorously championed by defendant as a major breakthrough in modern concrete construction. The SHORE-X units are vertically extendable through the telescoping of vertical members of extension frames within upright tubular members of adjacent base frames. The specification of this Squire patent, in disclosing that telescoping frames were established in the prior art, states that "Telescoping of the legs of an extension frame inside or outside of the legs of a base frame to get varied heights is not basically new * * * " (emphasis added).

In the Squire patent, one or more pairs of base frames is interconnected and supported by diagonal braces. The legs of the extension frames are telescopically received within the vertical tubular members of the adjacent base frames. Pins are positioned in selected holes in the base frames, and the lower ends of the extension frame legs rest on the pins. The position of the removable pins therefore determines the amount of telescoping engagement between the extension frames and the base frames. The extension frames are also braced by diagonal braces which run from the top of the extension frame to the base frame. Cunningham was completely familiar with the Squire structure.

In 1966 or thereabouts, Cunningham designed an extension frame wherein the upright members telescope on the outside of the uprights of adjacent Squire base frames. The tubes are slit to provide a clearance for the horizontal braces of the base frames. The major difference between the Squire and Cunningham units is in substituting exterior telescoping slit tubes. Whereas in the Squire unit the extension frames telescope within the closed upright tubular members of the adjacent base frames, the Cunningham unit uses slit tubes or channels that telescope on the outside of the same base frames used in Squire.

A complete scaffold unit including the Cunningham extension frames was set up in Superior's plant in the summer of 1966. In the unit assembly, Cunningham extension frames were used with SHORE-X base frames as well as with the standard cross bracing members which formed a part of the SHORE-X system. The manner of securing the slit tubes together by horizontal struts was quite similar to the method of securing the SHORE-X's extension legs. Defendant dubs its Cunningham patent as "an improvement" over Squire (Reply Br. 6). ³

In 1971, plaintiff decided to explore the possibility of manufacturing its own scaffolding instead of renting scaffolding as it had done previously. Its Concrete Forming Division's chief engineer, Raymond H. Jurewicz, reviewed the various shoring and scaffolding units on the market and in the available literature. Jurewicz then made the necessary calculations for his scaffolding design in half a day without any knowledge of the Cunningham patent and with scant prior scaffolding design experience. Indeed, Jurewicz did not learn of the Cunningham patent until after his units were already in the field. Defendant asserts that Cunningham's claims 1, 2, 5, 6, 7 and 8 read literally on plaintiff's structure, although claim 1 is most emphasized by defendant.

After considering proposed findings of fact and conclusions of law submitted by both parties and after considering their post-trial memoranda, the district court entered the findings of fact and conclusions of law submitted by plaintiff. They are reported in 186 U.S.P.Q. 114. Because the findings and conclusions adopted below were prepared by plaintiff's counsel, we have scrutinized them more carefully than findings and conclusions drafted by a trial judge. Burgess and Associates, Inc. v. Klingensmith, 487 F.2d 321, 324-325 (9th Cir. 1973). However, we need not consider whether each finding and conclusion of law is correct, ⁴ for we are affirming only on the ground that the subject matter of the Cunningham patent was obvious under 35 U.S.C. § 103 at the time the invention was made. Our review satisfies us that the district court properly applied the obviousness standards developed in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545, in deciding that the Cunningham patent was manifestly invalid for obviousness and that the court's conclusion is supported by the evidence. Nissho-Iwai Co v. Star Bulk Shipping Co., 503 F.2d 596, 597-598 (9th Cir. 1974).

First, as to the scope and content of the prior art, the Squire patent, which issued in 1965 and is also owned by defendant, was clearly the basis for the Cunningham patent. Indeed the Cunningham unit represented merely a reversal of parts with respect to Squire. In Squire, the legs of the extension frames are tubes and telescope within the tubular legs of the base frames. In Cunningham, the extension legs possess channels which telescope on the outside of the same base frames used in the SHORE-X system. Thus Cunningham constituted only a modification of Squire. ⁵

Defendant attempts to identify "seemingly simple" yet "critical" departures from the prior art (Br. 11-12). Defendant emphasizes that Cunningham employs exterior telescoping tubes which were slit to create channel-shaped extension frame stanchions, but so did Erwin Patent No. 1,763,766, which issued in 1930. Moreover, Erwin used channels for the same purpose as Cunningham, viz., to provide clearance for the horizontal and cross struts of the base frame. Although the Erwin patent was labeled "platform construction" and the Squire patent "extendable shore," each could be used as an "extendable shoring scaffold," the nomenclature of the Cunningham patent. In fact, the first sentence of the Erwin patent begins "The present invention relates to improvements in scaffolds * * *." It strains credulity to expect those in the shoring art not to consider the state of the scaffolding art. It is noteworthy, in this respect, to recall that in defendant's Squire patent, the inventor admitted in the patent specification "(t)elescoping of the legs of an extension frame inside or outside of the legs of a base frame to get varied heights is not basically new * * * " (emphasis added). Therefore, it did not require great innovation to derive Cunningham from the prior art.

Experiential data also exists to validate our assessment of Cunningham's obviousness, thus serving as a check that hindsight has not tainted our conclusion. Obviousness is shown because others had used slit pipe or channels for scaffolding prior to or not much later than Cunningham and independently of his work. Erwin's patent application was filed in 1928, forty years prior to Cunningham's filing date. Squire's filing date was in 1961, seven years ahead of Cunningham's. Executive vice president Kabbaz of the Patent Scaffolding Company designed a vertically extendable shoring...