Ceramic Tilers Supply, Inc. v. Tile Council of America, Inc.

• Citation: 378 F.2d 283
• Decision Date: 29 June 1967
• Docket Number: No. 21160.,21160.
• Parties: CERAMIC TILERS SUPPLY, INC., a corporation, Appellant, v. TILE COUNCIL OF AMERICA, INC., a corporation, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

378 F.2d 283 (1967)

CERAMIC TILERS SUPPLY, INC., a corporation, Appellant, v. TILE COUNCIL OF AMERICA, INC., a corporation, Appellee.

No. 21160.

United States Court of Appeals Ninth Circuit.

May 22, 1967.

Rehearing Denied June 29, 1967.

Byard G. Nilsson, Nilsson, Robbins & Anderson, Los Angeles, Cal., for appellant.

James E. Biava, Pfailzer, Robertson, Armstrong & Woodard, Los Angeles, Cal., Granville M. Pine, John A. Diaz, Morgan, Finnegan, Durham & Pine, New York City, for appellee.

Before CHAMBERS and BARNES, Circuit Judges, and HALBERT, District Judge.

HALBERT, District Judge:

Appellant appeals from the decision below which found United States Patents Number 2,934,932 and Number 2,990,382 valid and infringed by appellant's products. Following a trial to the Court the case was referred to a Special Master for determination of damages.

Appellee is a trade association composed of manufacturers of ceramic tile in the United States. The patents involved are products of the research center maintained by appellee for the purpose of developing methods and materials which will promote the use of ceramic tile. In 1955 investigation into then existing problems of tile installation was begun and ultimately resulted in the patents here in issue which provided a method by which ceramic tile could be installed at a substantially lower cost than was involved in the methods then prominent in the industry. Appellee licensed a number of companies who began production and sale of the patented products, which have become the most widely used products of their kind in the industry. Appellant also has produced, without license, products which the court below found to infringe upon the patented products.

United States Patent 2,934,932

The '932¹ patent claims an improved mortar and method for its use in the setting of ceramic tile. It is composed of Portland cement, methyl cellulose, sand or limestone, and water. Appellant asserts that the combination thus disclosed was anticipated by several patents, with particular emphasis upon British Patent Number 743,952 to Spillman. Anticipation is a technical defense which must meet strict standards:

"`Unless all of the same elements are found in exactly the same situation and united in the same way to perform the identical function\' in a single prior art reference `there is no anticipation\'" (Walker v. General Motors Corporation, 362 F.2d 56, 58 (9th Cir. 1966)).

The Spillman patent discloses and claims an improved "coating material" (paint or plaster) containing methyl cellulose, Portland cement, suspended polyvinylacetate, lime "and if desired, further conventional fillers for such coating materials in such an amount that a mixture is obtained which is adapted to be applied as a coating or plaster." (Exhibit J) The description of the manner in which the "plaster" is obtained reveals that to the basic mixture the workman must add equal parts of sand and pulverized chalk whiting and if desired "further finely divided fibrous materials, such as saw dust may be added to the filler." A number of reasons why the Spillman patent does not meet the standard for anticipation quoted above are apparent, but we find it necessary only to hold that the inclusion of chalk and saw dust in the Spillman patent is sufficient to sustain the trial court's finding of no anticipation. That conclusion is clearly correct. We note, however, that much has been made of the difference, or lack of difference, between the "limestone" called for in patent in suit and the chalk called for in Spillman and other prior patents. Without belaboring the point, it should be sufficient to note that there is substantial evidence in the record to support the conclusion that limestone is granular in nature and performs an unique function in the patented mortar. There appears to be no dispute that chemical description of chalk is the same for limestone, but it is also apparent that the functional difference between the two products is substantial. The president of appellant corporation was apparently well aware of that distinction when he described at trial a formula which called for both chalk and limestone (RT 638:6-24). He later noted the distinguishing features of such materials in terms of weight (RT 642:18-643:2). Before the Patent Office and before the trial court appellee has maintained that such a difference is material to the proper functioning of its product. The Patent Office and the trial court agreed with that assertion, and so do we. The other patents offered as proof of anticipation suffer from the same or similar distinctions and accordingly the finding of non-anticipation must be affirmed.

Appellant next asserts that the patented mortar would have been obvious to one skilled in the relevant art and accordingly must be held invalid. That assertion brings into play Title 35 U.S.C. § 103 which was recently construed by the Supreme Court of the United States in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Following that decision this Court emphasized the basic elements of the concept of obviousness:

"As the Supreme Court has recently pointed out, the basic factual background necessary to a determination of section 103 obviousness relates to three matters: (1) `the scope and content of the prior art\'; (2) `differences between the prior art and the claims at issue\'; and (3) `the level of ordinary skill in the pertinent art.\' citation" (Walker v. General Motors Corporation, supra, 362 F.2d at pg. 59).

In order to properly answer those questions this Court must know certain evidentiary facts which are not clearly resolved by the...