Finish Engineering Co. v. ZERPA INDUSTRIES
| Decision Date | 27 June 1985 |
| Docket Number | Civ. A. No. 84-202 ERIE. |
| Parties | FINISH ENGINEERING COMPANY, INC. v. ZERPA INDUSTRIES, INC. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
David C. Hanson, Webb, Burden, Robinson and Webb, Pittsburgh, Pa., for plaintiff.
Harry Martin, Erie, Pa., Henry G. Bunsow, and Gayle Hutchins Gossett, Townsend and Townsend, San Francisco, Cal., for defendant.
This is an action under the patent laws of the United States and under the Declaratory Judgment Act seeking a declaratory judgment on the invalidity of a patent issued to defendant and a preliminary and permanent injunction against the enforcement of the patent against an alleged infringement by the plaintiff. The patent involved is Patent No. 4,457,805, "Solvent Recovery Apparatus and Method" issued on the application of the Inventor Pastor, and assigned to the defendant Zerpa Industries, Inc. The patent was applied for on April 22, 1983 and during the pendency of the patent application the defendant notified plaintiff that it was infringing on the claims of the Pastor patent. Plaintiff filed a protest before the Patent Office but the patent was issued on July 3, 1984. This action was filed on the date the patent was issued.
Plaintiff has filed a motion for partial summary judgment addressed to Claims 1 through 7 and Claim 14 of the Pastor patent. Plaintiff's motion asserts that the subject matter of the Pastor patent would have been obvious to one of ordinary skill in the art at the time the invention was made within the meaning of 35 U.S.C. § 103 of the Patent Law.
The Pastor invention is described in the patent as follows:
The claims of the patent in issue here are set forth in the patent as follows (Column 4):
The determination of obviousness under § 103 has been fully treated in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Three conditions are imposed, each of which must be met to satisfy the requirements of the statute:
While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950), at 155, the § 103 condition, which is but one of three conditions, each of which must be satisfied, 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. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. (383 U.S. 17-18, 86 S.Ct. 693-694).
Three references to the prior art are cited in the patent and were considered by the Examiner, among others, and plaintiff relies on these three in support of its claims of obviousness. They are:
2,794,570 6/1957 Downs ...220/63
3,890,988 6/1975 Lee ......134/10
4,323,429 4/1982 Hoover ...202/83
We begin our review of the prior art by reference to U.S. Patent No. 3,890,988, the Lee patent, issued June 24, 1975, for a "Cleaning Assembly for Automotive Parts and the like". This patent describes an apparatus very similar to the construction of the Pastor patent, a faucet and sink for cleaning mounted atop a container for the outflow. It shows the use of a plastic bag lining the container which receives the contaminants. The difference between the Lee patent and the Pastor patent is that the apparatus in Lee contemplates cleaning the contaminants from the solvents by a straining and filtering process, while the Pastor patent contemplates the use of a distillation mode. Otherwise they are remarkably similar as shown by the following quote from the Lee patent:
This apparatus is remarkably similar to the Pastor invention except for the purification of the contaminated solvent in the container by a distillation process which deposits the clean solvent into a separate receptacle from which it is then pumped to the faucet in the sink. The Lee patent further describes the plastic liner and its use as follows: (references to drawings omitted).
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Finish Engineering Co., Inc. v. Zerpa Industries, Inc., 86-747
...is reversed and the case is remanded for trial in accordance with this opinion. REVERSED AND REMANDED. 1 Finish Engineering Co. v. Zerpa Indus., 612 F.Supp. 300 (W.D.Pa.1985).2 The '805 patent, entitled "Solvent Recovery Apparatus and Method" and assigned to Zerpa, issued July 3, 1984 to Ma......
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