Ebeling v. Pak-Mor Mfg. Co.

• Decision Date: 25 August 1982
• Docket Number: No. 81-1341,PAK-MOR,81-1341
• Citation: 683 F.2d 909
• Parties: Franklin D. EBELING, Ernest C. Ebeling and Ebeling Manufacturing Corporation, Plaintiffs-Appellants, v.MANUFACTURING COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 909

683 F.2d 909

216 U.S.P.Q. 563

Franklin D. EBELING, Ernest C. Ebeling and Ebeling

Manufacturing Corporation, Plaintiffs-Appellants, v. PAK-MOR MANUFACTURING COMPANY, Defendant-Appellee.

No. 81-1341.

United States Court of Appeals, Fifth Circuit.

Aug. 25, 1982.

Gibson, Ochsenr & Adkins, S. Tom Morris, Amarillo, Tex., for plaintiffs-appellants.

Richards, Harris & Medlock, Bryan Medlock, Jr., Dallas, Tex., for defendant-appellee.

Appeal from the United States District Court for the Western District of Texas.

Before RUBIN and REAVLEY, Circuit Judges, and HUNTER^*, District Judge.

ALVIN B. RUBIN, Circuit Judge:

Following the practice sanctioned by our prior decisions, ¹ the district judge submitted to a jury the simple and ultimate question whether the alleged invention described in a patent for a garbage container lifting and emptying device was obvious. The jury found that it was not. The jury also found that this patent was not infringed by similar devices built by the defendant. The district judge concluded that there was substantial evidence to support the jury's verdict and denied plaintiffs' motion for judgment n.o.v. Having considered plaintiffs' attacks on the evidence supporting the verdict, the legal basis for the district judge's conclusions on the issues of obviousness and infringement, and the district judge's trial rulings, we affirm.

I

Franklin D. and Ernest C. Ebeling obtained a patent ² for a "mechanically actuated side-loading arrangement for a vehicle body." This was embodied in a device, called the Emco, that enabled the driver of a garbage truck, without leaving the driver's seat, to drive the truck alongside a garbage container, mechanically pick up the container, elevate it to the top of the truck body, discharge its contents into the truck, and return it to the roadside, then retract the container pick-up mechanism and drive on.

The defendant, Pak-Mor Manufacturing Company ("Pak-Mor"), had been in the business of manufacturing garbage disposal equipment for many years. Pak-Mor produced a garbage container emptying device, the Handi-Lift, that required manual attachment of lift cables to the garbage container before the container could be elevated and dumped, and manual detachment of the cables after the container was returned to the ground. In 1970 the City of Odessa, Texas, sought to induce Pak-Mor to develop an automatic loading device so that a single person could not only drive the garbage truck but also pick up and empty containers without leaving the truck. Pak-Mor did not succeed in developing such a device.

The Ebelings' patent was issued in October 1975. However, sometime after January 1974, Pak-Mor's chief engineer observed and photographed the Emco; there is conflicting evidence on whether the first of the two Pak-Mor devices at issue in this case, the C-Model side-loader, was designed before or after that time. In 1974 Pak-Mor built the C-Model, using a cable-lift, and delivered the first demonstrator to the City of Odessa in November 1974. It performed the same functions as the Emco and was made in part to compete with the Emco. Several years later Pak-Mor built the second device, the M-Model side-loader, which uses a chain-lift.

The Ebelings contended that Pak-Mor infringed their patent. The jury invalidated several of the Ebelings' patent claims because these claims were obvious, finding that the prior art relied on by Pak-Mor was more pertinent than that considered by the Patent Office when it issued the Ebelings' patent, and that the differences between the Ebelings' invention as defined in their patent claims 11 and 12 (and two other claims no longer disputed) and the prior art were such that the subject matter of the invention would have been obvious to a person having ordinary skill in the art at the time the invention was made. It also found that neither the Pak-Mor C-Model cable-lift device nor the Pak-Mor M-Model chain-lift device infringed the Ebelings' patent claims.

On the Ebelings' motion for judgment n.o.v., the district judge found that the testimony of Pak-Mor's expert witness was substantial evidence sufficient to support the jury's finding on the relative pertinence of prior art. It also found that there was substantial evidence to support the verdict on obviousness and held that, as a matter of law, the subject matter of claims 11 and 12 was obvious. ³ Finally, it found that there was substantial evidence to support the verdict on infringement.

The Ebelings contend that Pak-Mor failed to overcome the statutory presumption of patent validity ⁴ and that infringement of the Ebelings' claims by the two Pak-Mor devices was established as a matter of law. They also challenge the district judge's independent finding that claims 11 and 12 were obvious; the district judge's admission of particular expert testimony on the pertinence of the prior art, obviousness, and infringement; and the sufficiency of the evidence to support the jury's findings.

II

There is no real dispute concerning the legal standards to be applied. A patent is invalid if the subject matter sought to be patented 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." 35 U.S.C. § 103; see Whitley v. Road Corp., 624 F.2d 698, 699 (5th Cir. 1980); Steelcase, Inc. v. Delwood Furniture Co., 578 F.2d 74, 76 (5th Cir. 1978), cert. denied, 440 U.S. 960, 99 S.Ct. 1503, 59 L.Ed.2d 774 (1979). Although the question of obviousness under 35 U.S.C. § 103 is one of law, ⁵ its resolution requires factual inquiries. ⁶ In jury cases, the jury may properly resolve such factual questions as the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, 556 (1966), quoted in Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 766 (5th Cir.), cert. denied, 449 U.S. 1022, 101 S.Ct. 589, 61 L.Ed.2d 484 (1980); see Reed Tool Co. v. Dresser Indus., 672 F.2d 523, 527 (5th Cir. 1982). Skepticism of experts, commercial success, long felt but unsolved needs, and the failure of others are relevant secondary considerations. Graham v. John Deere Co., 383 U.S. at 17-18, 86 S.Ct. at 694, 15 L.Ed.2d at 556; John Zink Co. v. National Airoil Burner Co., 613 F.2d 547, 551 (5th Cir. 1980) (quoting Control Components, Inc. v. Valtek, Inc., 609 F.2d at 766); Parker v. Motorola, Inc., 524 F.2d 518, 531 (5th Cir. 1975), cert. denied, 425 U.S. 975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976). The district judge then determines the question of patent validity " 'on the results of (the) factual inquiries' made by the jury." Control Components, Inc. v. Valtek, Inc., 609 F.2d at 767 (quoting National Filters, Inc. v. Research Prods. Corp., 384 F.2d 516, 517 (5th Cir. 1967)).

Although patent infringement is a question of fact, Gaddis v. Calgon Corp., 506 F.2d 880, 886 (5th Cir. 1975), construction of patent claims is a question of law and, if infringement depends upon a proper construction of the claims, the court may decide the issue of infringement as one of law. See Continental Oil Co. v. Cole, 634 F.2d 188, 191 (5th Cir.), cert. denied, --- U.S. ----, 102 S.Ct. 124, 70 L.Ed.2d 106 (1981); Weidman Metal Masters Co. v. Glass Master Corp., 623 F.2d 1024, 1025, 1029 (5th Cir. 1980), cert. denied, 450 U.S. 982, 101 S.Ct. 1519, 67 L.Ed.2d 818 (1981); Sterner Lighting, Inc. v. Allied Elec. Supply, Inc., 431 F.2d 539, 543 (5th Cir. 1970), cert. denied, 401 U.S. 909, 91 S.Ct. 869, 27 L.Ed.2d 807 (1971).

III

The jury and the district judge each found independently that, when the Ebelings conceived their invention, claims 11 and 12 of the patent were obvious to a person having ordinary skill in the art. It is not our function on appeal to evaluate the evidence de novo, ⁷ but merely to determine whether there was substantial evidence to support the jury's findings, ⁸ and whether the district judge applied to those findings the correct legal criteria for determining obviousness. ⁹ If the jury's findings are supported by substantial evidence, they are likely to strengthen the district judge's legal conclusion on the issue of obviousness. ¹⁰

Stripped of patent jargon and stated in plain language, claim 11 describes a garbage truck with an attached fork-lift mechanism. The fork-lift can be extended outward from the truck to a garbage container and engaged to pick up the container. The container is then lifted along a flanged track having a curved upper end. The container, following the curved track, is lifted to the top of the truck, turned upside down, and emptied into an elevated opening in the top of the truck. The emptied container is then lowered along the track and put back on the spot from which it was taken. Claim 12 describes the same truck as claim 11, but, because claim 11 does not describe where on the truck the fork-lift is attached, claim 12 adds the requirement that the fork-lift mechanism be attached to the side of the truck. With this description of the invention, we review the record to determine whether there was substantial evidence to support the jury's findings on the factual inquiries underlying the determination of obviousness and, consequently, the determination of the validity of the Ebelings' patent.

The prior art presented to the district court that had not been considered by the Patent Office ¹¹ included two patents, the Oliver patent ¹² and the Bowman-Shaw patent, ¹³ which Pak-Mor's expert witness relied upon in his testimony. The Oliver patent describes a truck with a fork-lift mechanism on the side. The fork-lift has tracks formed by flanges and a curved upper end to permit a garbage container to be inverted and dumped. The fork-lift of the Oliver patent cannot be extended outward from the truck to engage a container. The Bowman-Shaw patent,...