Connell v. Sears, Roebuck & Co.
| Decision Date | 08 March 1983 |
| Docket Number | Civ. A. No. 81-C-0496-M. |
| Citation | 559 F. Supp. 229 |
| Parties | Jerry F. CONNELL, et al., Plaintiffs, v. SEARS, ROEBUCK AND COMPANY, Defendant. |
| Court | U.S. District Court — Northern District of Alabama |
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Douglas Burns, Thomas E. Davis, Gadsden, Ala., for plaintiffs.
Walther E. Wyss, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., James C. Inzer, III, Gadsden, Ala., for defendant.
This case involves the validity and alleged infringement of United States Letters Patent No. 3,459,199 (`the '199 patent'), issued in 1969 to plaintiff Jerry F. Connell1 for a "teasing and unsnarling implement" for hair. Connell claims that various hair curlers sold by defendant Sears, Roebuck and Company ("Sears") infringe its patent. The case was tried to a jury, which made "special written findings upon each issue of fact." Fed.R.Civ.P. 49(a). The jury's findings indicate that the '199 patent is valid and enforceable; and that the designated Sears curlers infringe the patent in suit. Sears has now renewed its motion for a directed verdict made at the close of the evidence, and it has moved for judgment notwithstanding the verdict. Because the jury's key findings of validity and infringement are unsupported by substantial evidence, the motions will be granted and judgment entered for Sears.
The patent in suit embraces five claims. Only two of those claims (Claim One and Claim Five) are involved in this case. Plaintiffs contend that the hair curlers included in four complete appliance packages2 marketed by Sears infringe these two claims of the patent in suit. Sears responds that its curlers ("the accused devices") do not infringe the claims of the patent in suit; and that if the claims are construed to read on the accused devices, then the patent in suit is invalid, because its claims are both "anticipated by the prior art" and "obvious," under the patent laws of the United States. 35 U.S.C. §§ 102, 103. Further, Sears maintains that if the claims are construed to read on the accused devices, the patent is invalid for failure to properly describe the subject matter of the invention —a requirement of 35 U.S.C. § 112. Finally, Sears insists that the patent in suit is unenforceable.
While a finding of non-infringement by Sears could dispose of this case without reaching the issue of the validity vel non of the patent, this Court is admonished that the public interest is best served by an initial determination of the validity of the patent in suit.3 I.U. Technology Corp. v. Research Cottrell, Inc., 641 F.2d 298, 301 (5th Cir.1981); Harrington Mfg. Co. v. White, 475 F.2d 788, 793 (5th Cir.1973).
Under the United States Constitution, Congress is authorized "To promote the Progress of Science and useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries." U.S. Const. Art. I § 8 Clause 8. It is pursuant to that authority, and in derogation of the common law, that Congress has bestowed on the United States Patent Office the power to grant to an inventor a monopoly over the use of his invention for a period of seventeen years. 35 U.S.C. §§ 1-41. A valid patent, once issued, protects the inventor against the unlicensed use of his device or process, even by one who properly discovers it through independent research. The core of a patent is the right, which it confers upon its holder, of invoking the power of the government to prevent others from using the invention without his consent.
The purposes of the nation's patent laws are several. Obviously, one of the major purposes is to foster and reward invention. Further, these laws promote the disclosure of inventions, and they stimulate further invention. Once the patent expires, the laws contemplate that the public be permitted to practice the invention; and that ideas in the public domain remain there for the free use of the public. Aronson v. Quick Point Pencil Co., 440 U.S. 257, 99 S.Ct. 1096, 59 L.Ed.2d 296 (1971).
The function of a patent, then, is to add to the sum of useful knowledge; a patent is not valid where, on the contrary, it subtracts from former resources freely available to skilled artisans. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950).
Not every invention, however, is patentable. Rather, the patentability of an invention is dependent upon three specific requirements: novelty, utility, and non-obviousness. 35 U.S.C. §§ 101, 102, 103. To be patentable, an invention must first be "new"; and in general, § 102 of Title 35 sets out the basic standards for assessing novelty. An invention is not "new," for patentability purposes, if it were "... known or used by others in this country or patented or described in a printed publication in this or a foreign country...." Further, the invention is not new if it were "... described in a printed publication or in public use or on sale in this country, more than one year prior to the date of the application for a patent." If this "prior art" anticipates the invention, then it is not patentable.
In determining whether the prior art anticipates the invention, the courts must scrutinize the claims of the patent, and not a particular commercial embodiment of them, for "the claims measure the invention." General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 368-69, 58 S.Ct. 899, 901-02, 82 L.Ed. 1402 (1938). Since the patentee's right to exclude others from the use of his invention depends on the scope of his claims, he should be prepared to defend those claims against charges of anticipation. Arbrook, Inc. v. American Hosp. Supply Corp., 645 F.2d 273, 276 (5th Cir.1981).
The prior art claimed to have anticipated an invention must be evaluated according to what it fairly teaches one skilled in the art. Although disclosures of the prior art may fall short of "complete anticipation," anticipation may nonetheless be found where one of ordinary skill in the art may, by the exercise of that skill and relying on the teachings of the prior art, complete the work required for the invention. Ludlow Corp. v. Textile Rubber & Chem. Co., Inc. 636 F.2d 1057, 1059 (5th Cir.1981). While anticipation is established where all of the elements of the patented device or their equivalents be found in a single prior device, "... it is sufficient for anticipation `if the general aspects are the same and the difference in minor matters is only such as would suggest itself to one of ordinary skill in the art.'" Deep Welding, Inc. v. Sciaky Bros. Inc., 417 F.2d 1227, 1234 (7th Cir.1968).5 Moreover, these elements or their equivalents must function in substantially the same way to produce substantially the same result. As a general rule of thumb, that prior art which would infringe if it came later, anticipates if earlier—i.e., if it precedes the invention. Id. 60 Am.Jur. Patents § 23.
The question of anticipation by prior art structures is largely one of fact. Laitram Corp. v. Deepsouth Packing Co., 443 F.2d 928, 932 (5th Cir.1971).
The second patentability requirement is that of utility. The new device must be "useful"—that is, it must be capable of being practically used for the purpose for which it was invented. Smith v. Nichols, 88 U.S. (21 Wall.) 112, 22 L.Ed. 566 (1875). No particular degree of utility is required; and if a patented invention has any degree of usefulness, the patent is not void for want of utility. 1 Deller's Walker on Patents (2d ed.), § 87. The commercial success of a patented device is highly probative, but not conclusive, evidence of its utility; but a lack of commercial success does not establish, per se, a lack of utility. Gandy v. Main Belting Co., 143 U.S. 587, 12 S.Ct. 598, 36 L.Ed. 272 (1892); Technical Tape Corp. v. Minnesota Mining and Mfg. Co., 143 F.Supp. 429 (S.D.N.Y.1976), aff'd, 247 F.2d 343 (2d Cir.1957). The nonuse of a patented device may be considered in determining its utility; but that factor is never decisive. Rown v. Brake Testing Equipment Corp., 50 F.2d 380 (9th Cir.1930); Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th Cir.1943).
"Obviousness" is to be determined as of the time the invention was made.
In determining obviousness, the United States Supreme Court, in the seminal case Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) has held that three factual inquiries must be made: (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 art. John Zink Co. v. National Airoil Burner Co., 613 F.2d 547 (5th Cir.1980). An examination of the prior art may result in an invention being obvious, even though it was not anticipated,6 because obviousness relates to the "inventiveness" of the device, while anticipation speaks only to its novelty.
Where a combination patent, such as the patent in suit, is involved, the linchpin is not whether the individual components of the patent were obvious at the time of the invention, but whether the aggregation produced a new or different result or achieved a synergistic effect. Ingersoll-Rand Co. v. Brunner & Lay, Inc., 474 F.2d 491, 494 (5th Cir.1973). It has been appropriately observed:
No matter how much skepticism an invention is met with and no matter how much...
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Connell v. Sears, Roebuck & Co.
...accused hair curlers, on the ground that the jury's key related findings were unsupported by substantial evidence. Connell v. Sears, 559 F.Supp. 229, 232 (N.D.Ala.1983). Affirmance of the judgment as correctly granted on the basis of obviousness under Sec. 103 makes it unnecessary to discus......