Compton v. Metal Products, Inc.

• Decision Date: 16 December 1971
• Docket Number: No. 15248.,15248.
• Citation: Compton v. Metal Products, Inc., 453 F.2d 38 (4th Cir. 1971)
• Parties: Charles E. COMPTON et al., Appellees, v. METAL PRODUCTS, INC., Appellant.
• Court: U.S. Court of Appeals — Fourth Circuit

453 F.2d 38 (1971)

Charles E. COMPTON et al., Appellees, v. METAL PRODUCTS, INC., Appellant.

No. 15248.

United States Court of Appeals, Fourth Circuit.

Argued May 13, 1971.

Decided December 16, 1971.

COPYRIGHT MATERIAL OMITTED

William G. Kratz, Jr., W. Mifflin, Pa. (Edward F. Welsh, and Parmelee, Utzler & Welsh, Pittsburgh, Pa., on brief), for appellant.

Thomas H. Murray, Pittsburgh, Pa. (Brown, Murray, Flick & Peckham, Pittsburgh, Pa., on brief), for appellees.

Before SOBELOFF, WINTER, and CRAVEN, Circuit Judges.

CRAVEN, Circuit Judge:

This is an appeal from a decision by the district court that United States Letters Patent No. 2,760,255, owned by appellee Charles E. Compton and exclusively licensed to appellee Polan Industries, Inc., is valid and infringed by appellant Metal Products, Inc. Metal Products also appeals from the district court's decision that the plaintiffs had not misused the patent monopoly granted to Compton under No. 2,760,255 and three other United States Patents, Nos. 2,594,256, 2,784,955, and 2,719,708.¹ We think that the Patent No. 2,760,255 is invalid for obviousness, 35 U.S.C. § 103. In addition, we think that paragraph 15 of the license agreement between Compton and Joy Manufacturing Company is an unreasonable restraint of trade and constitutes a misuse of the patents by the plaintiffs and that the Joy-Polan agreement unlawfully extends the monopoly granted by the Compton patents, likewise constituting a misuse of the patents.

I

The Compton Patent No. 2,760,255 relates to a highly successful method of manufacturing screw conveyors used in certain types of coal mining operations. When such a screw conveyor is fitted with a leading cutting edge, it forms an enormous drill-like device that can be bored horizontally into the sides of coal-laden hills. Working much like an oversize carpenter's brace and bit,² the cutting edge tears and breaks its way through coal deposits while the screw conveyor, rotating on a central shaft, passes the coal out to waiting receptacles.

The use of rotating helical surfaces predates modern civilization.³ Today, helical devices are employed in a variety of uses—from drilling holes for telephone poles to conveying grain into storage silos. The use of screw conveyors for coal mining is more difficult to accomplish because of larger size, and the tremendous stress created by the passage of tons of coal along its central shaft.

One method used for constructing very large screw conveyors is to connect a series of discs with a central opening, and then stretch the connected discs along a central shaft as in Gredell, Patent 1,738,994 (see appendix, figure 3). Each disc is slit radially and successively connected by being welded to another disc at the slits. The generation of stress at the inner periphery of each disc when stretched out along the central shaft tends to distort the desired helical configuration. The Compton patent relates to an economical method to prevent the stress-generated distortion during the stretching process.

Compton solved the problem by severing the lines of inner periphery stress. He cut a series of yet smaller slits radially from the central opening of the discs (see appendix, figure 1). The only distinction between the Compton method and the method employed by appellant Metal Products is the use of the triangular slots, instead of the Compton slits, to relieve distortive stress (see appendix, figure 2). It is to be noted that the Compton "slits" become slots in appearance upon application (see appendix, figure 1).

We think the mere addition of slits (or slots) to relieve metal stress is obvious in light of the prior art. If cutting a disc once (Gredell) enables a metal worker to bend the disc into a helical configuration, it might occur to one skilled in the trade to cut it again further to facilitate bending. Hohlfeld (Figure 4) teaches multiple cuts in strip metal.

Section 103 of the Patent Act of 1952, 35 U.S.C. § 103, invalidates the patent.

§ 103. Conditions for patentability; non-obvious subject matter.

A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title anticipation, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.

"While the ultimate question of patent validity is one of law . . . the § 103 condition . . . lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved." Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966).

The Patent Office examiner recognized the obvious nature of cutting slits to relieve metal distortion stress when he rejected Compton's first application filed May 26, 1951. In his letter of December 16, 1952, he stated: "No invention is seen in merely providing slits radially disposed around the central hold of the Gredell discs (see appendix, figure 3) to facilitate bending or flexing. It is common to provide slits or slots in the metal working arts to facilitate bending as shown by Hanry, Sibley and Hohlfeld."⁴ Among others, the examiner cited the Hohlfeld (German 1924) Patent (see appendix, figure 4) to illustrate the prior use of slits to relieve metal stress. In constructing a helical configuration like that of a screw conveyor, we find no distinction, as Compton and Polan suggest, between starting with discs, or using a ribbon of metal as in Hohlfeld. Given the prior art (e. g. Gredell and Hohlfeld), the cutting of slits in a disc to reduce stress in bending would, we think, be obvious to one skilled in the metal working arts. Whether one starts with a disc or a metal strip, the problem is the same: a particular piece of metal must be changed from one configuration (disc or strip) to another (helix) by distortive stress. If the change is to be successful, undesirable distortive side effects must be eliminated. Hohlfeld and the other prior art teaches the method used by Compton: relieving lines of stress by cutting the metal. Since the principle of cutting lines of stress was known to those skilled in the metal arts as early as 1924, the Compton result is rendered obvious despite the distinction that Compton chose to start with discs rather than strips of metal. "While it is true that patents have frequently been sustained where mechanical expedients were derived from non-analogous arts and so not obvious, this has not been true where what was borrowed was a common and generally known expedient in mechanical arts." Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co., 332 F.2d 406, 413 (6th Cir. 1964), quoting Detachable Bit Co. v. Timken Roller Bearing Co., 133 F.2d 632, 637 (6th Cir. 1943).

The fact that the Hohlfeld triangular slots compress into slits when wound around a central shaft, and the Compton slits open to triangular slots when stretched along a central shaft, is a distinction without a difference in light of Section 103. See, Formal Fashions, Inc. v. Braiman Bows, Inc., 369 F.2d 536, 538-539 (2d Cir. 1966). Applying the principle to discs (instead of strips) may have required skill, but that does not necessarily support non-obviousness. Blumcraft v. Citizens and Southern National Bank, 407 F.2d 557, 559 (4th Cir. 1969). The end result is merely the combination of methods well known in the prior art. See, Anderson-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969); Great Atlantic & Pacific Tea Co. v. Supermarket Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1952); Continental Can Co. v. Old Dominion Box Co., 393 F.2d 321, 326 (2d Cir. 1968).

Compton and Polan urge upon us the striking financial success of the Compton method and the amount of experimentation required to finally devise the method. The financial success of the patented method is of only secondary importance under the standards of Section 103, Graham v. John Deere Co., supra 383 U.S. at 17-18, 86 S.Ct. 684, and is not a measure of obviousness. Blumcraft v. Citizens & Southern National Bank, supra 407 F.2d at 560. Neither is the amount of time spent by Compton in devising the method a controlling factor. "The ultimate question is whether a hypothetical person having ordinary skill in the art would have readily found the same solution when addressing himself to the same problem". Gass v. Montgomery Ward & Co., 387 F.2d 129, 130 (7th Cir. 1967). See also, University of Illinois Foundation v. Winegard Co., 402 F.2d 125, 127 (8th Cir. 1968). We resolve that question against Compton and Polan and reverse the decision of the district court sustaining the validity of the patent.

II

The district court found that three other United States Patents Nos. 2,594,256, 2,784,955 and 2,719,708, which were issued to Compton, were valid and infringed by Metal Products, enjoined any further infringement⁵ and ordered an accounting for damages for past infringement. No appeal is taken from the findings of validity and infringement. However, Metal Products contends that despite validity and infringement the court should have refused to enforce Compton's rights under the patents because Compton had misused its monopoly. The Special Master found no misuse, and the district court affirmed this conclusion. We reverse.

It is well settled that the monopoly granted to the patentee is a limited one, and that, "The use of the patent to secure an exclusive right or limited monopoly not granted by the Patent Office and which it is contrary to public policy to grant," is...