Flour City Architectural Met. v. Alpana Alum. Prod., Inc.

• Citation: 454 F.2d 98
• Decision Date: 13 January 1972
• Docket Number: 71-1162.,No. 71-1161,71-1161
• Parties: FLOUR CITY ARCHITECTURAL METALS, Appellee, v. ALPANA ALUMINUM PRODUCTS, INC., Appellant. ALPANA ALUMINUM PRODUCTS, INC., Appellant, v. FLOUR CITY ARCHITECTURAL METALS, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

454 F.2d 98 (1972)

FLOUR CITY ARCHITECTURAL METALS, Appellee, v. ALPANA ALUMINUM PRODUCTS, INC., Appellant.

ALPANA ALUMINUM PRODUCTS, INC., Appellant, v. FLOUR CITY ARCHITECTURAL METALS, Appellee.

Nos. 71-1161, 71-1162.

United States Court of Appeals, Eighth Circuit.

January 13, 1972.

Jack W. Wicks, Wicks & Nemer, Minneapolis, Minn., for appellant.

Mark T. Basseches, Curtis, Morris & Safford, by Robert D. Spille, New York City, Merchant & Gould, by Phillip H. Smith, Minneapolis, Minn., for appellee.

Before MATTHES, Chief Judge, and BRIGHT and STEPHENSON, Circuit Judges.

BRIGHT, Circuit Judge.

This controversy concerns the validity of the United States Patent No. 3,289,377 (the Alpana patent). This patent relates to a thermally insulated frame designed for use in metal windows or doors. In consolidated suits between the patent holder, Alpana Aluminum Products, Inc. (Alpana), and the alleged infringer, Flour City Architectural Metals, the district court, in an unreported opinion, held the patent invalid and, therefore, not infringed. Alpana appeals from the adverse judgment of patent invalidity (Appeal No. 71-1161) and from the separate judgment dismissing the infringement suit (Appeal No. 71-1162). After review of an extensive record, we affirm the district court.

I. THE PATENT IN ISSUE

We turn to a consideration of the Alpana patent. Frank W. Hetman, who assigned the patent to Alpana, submitted his patent application on November 7, 1962. The invention, designated as an "Insulated Frame and Connector Therefor," represented a claimed improvement in the construction of a "thermal break" frame for metal windows and doors.

Since a solid metal frame utilized in an exterior wall of a heated building permits substantial heat loss from the interior of the building as well as moisture condensation upon the interior frame, the insertion of an insulating material or "thermal break" between the inside and the outside of the frame became necessary. The prior art of such "thermal break" frames discloses several different configurations of metal parts and insulation designed to minimize heat conductivity. In the Alpana invention the outer and inner frame members connect by way of overlapping flanges and lips extending from each such member. Extruded vinyl insulation fills the space between the overlapping flanges and lips of the inner and outer frame members, thus creating a tight interlocking fit between them, and providing an effective thermal barrier.

The following photographs labeled "A" and "B" show a cross-section of the Alpana "thermal break" frame. Photograph "B" shows an enlarged front view of the same cross-section encircled in photograph "A".

"A"

"B"

The above photographs illustrate the manner of interconnection between the outer and inner frame members, with the space between the overlapping flanges occupied by a vinyl plastic substance which has been extruded into place to provide both insulation and a tight fit.

Appellant describes the key feature of the patent in question as follows:

The Alpana patent . . . discloses an unique rigid window frame construction including an inner frame, and outer frame, the frames being interlocked with an overlapping arrangement of dual flanges, each flange having a lip with each lip of each of the flanges engaging within a recess in each of an elongated plastic barrier separator member, each barrier with a lip therein and within one of a pair of short flanges and a common bottom wall with movement in any transverse direction prevented with the parts in compression and not in shear thereby providing a rigid interlock connection, which allows expansion and contraction due to temperature changes but still maintaining the high structural integrity . . .. App.Br. at 9 emphasis in original

Alpana concedes that its invention is not a pioneer in the field of "thermal break" frames, but contends that the structural strength provided by its configuration of interlocking frame members distinguishes the invention from the teaching of the prior art, noting particularly that the interlocked frame members are overlapped in such a way that they would not separate in the event that the vinyl insulator were to be destroyed by fire or otherwise.

Although the Alpana patent contains two claims, Alpana relied solely upon the second claim in this litigation.¹ The district court rejected the validity of this claim on two separate grounds: first, for obviousness of the subject matter of Claim 2, tested by the requirements of 35 U.S.C. § 103;² and second for want of the specificity required by 35 U.S.C. § 112 in describing the subject matter of the claim³ because of the patent applicant's failure to particularly point out and distinctly claim the overlap feature as a key feature of the invention.

Because our affirmance of the district court rests upon the first of these two grounds, we find it unnecessary to consider the specificity issue.

II. OBVIOUSNESS—SCOPE OF REVIEW

Alpana contends that the trial court's finding of obviousness was clearly erroneous and should, therefore, be reversed. Appellee, on the other hand, argues that we should sustain this finding under Rule 52(a) of the Federal Rules of Civil Procedure.⁴

Notwithstanding that both parties view our function as one of limited review under Rule 52(a), we find no such unanimity of opinion among the patent decisions announced in this circuit. We deem it appropriate, therefore, to examine in depth the proper scope for reviewing the obviousness issue in patent cases, as a predicate to disposition of this appeal. We focus particularly upon those cases arising subsequent to Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), in which the Supreme Court first considered the statutory standard of obviousness as set forth in § 103 of the Patent Act of 1952, 35 U.S.C. § 103.

In Kell-Dot Industries, Inc. v. Graves, 361 F.2d 25 (8th Cir.), cert. denied, 385 U.S. 842, 87 S.Ct. 95, 17 L.Ed.2d 75 (1966), a panel of this court reversed the district court's determination of nonobviousness. While indicating that the nonobviousness question requires compliance with a statutory standard and thus presents an issue of law, the court actually resolved the question as one of fact, stating:

We are not troubled by this issue as one of fact or one of law because obviousness is apparent from plaintiff\'s own admissions coupled with the undisputed evidence of utilization of single head plates in many and varied extrusion machines found in the prior art. Id. at 30

Almost contemporaneously, another panel of this court expressed doubt that "invention" (or nonobviousness) should always be treated as a question of fact. American Infra-Red Radiant Co. v. Lambert Industries Inc., 360 F.2d 977, 988, n. 4 (8th Cir.), cert. denied, 385 U.S. 920, 87 S.Ct. 233, 17 L.Ed.2d 144 (1966). During the same year, but without discussing the fact-law dichotomy, the court in Skee-Trainer, Inc. v. Garelick Mfg. Co., 361 F.2d 895 (8th Cir. 1966), treated the issue of obviousness as one of law subject to independent evaluation on appeal.⁵

Other cases also demonstrate the unsettled nature of this question within the Eighth Circuit. In Piel Manufacturing Co. v. George A. Rolfes Co., 363 F.2d 57 (8th Cir. 1966), the panel acknowledged that "considerable weight" was to be afforded the district court's determination of obviousness vel non, but added that "the ultimate issue of 'obviousness' must be considered a matter of law." Id. at 61.⁶ In Automated Building Components, Inc. v. Hydro-Air Engineering, Inc., 362 F.2d 989 (8th Cir. 1966), on the other hand, the court relied upon the clearly erroneous rule in affirming the district court determination of patent invalidity, saying, "the district court opinion with respect to obviousness, not being clearly erroneous, is conclusive on appeal." Id. at 991. But in L & A Products, Inc. v. Britt Tech Corp., 365 F.2d 83 (8th Cir. 1966), our court, in reversing a district court determination of patent validity, fully explored the obviousness issue without the constraint of Rule 52(a). Cf. General Mills, Inc. v. Pillsbury Co., 378 F.2d 666 (8th Cir. 1967); Imperial Stone Cutters, Inc. v. Schwartz, 370 F.2d 425 (8th Cir. 1966).⁷ More recently, in Ralston Purina Co. v. General Foods Corp., 442 F.2d 389 (8th Cir. 1971), a panel of this court observed that "the decision of obviousness . . is one of law which we shall rule on ourselves." Id. at 391. But, in Gallo v. Norris Dispensers, Inc., 445 F.2d 649 (8th Cir. 1971), another panel, relying on Rule 52(a), noted as to the obviousness question:

The District Court made a fact determination based in part on this expert testimony and this court will not substitute its judgment for that of the District Court on disputed fact issues unless such determination was clearly erroneous. Id. at 651.

We need to resolve these somewhat conflicting post-Graham cases, and we begin our analysis with that landmark decision. There, the Court stated:

The emphasis on non-obviousness is one of inquiry, not quality, and, as such, comports with the constitutional strictures.

While the ultimate question of patent validity is one of law Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. 147 at 155, 71 S.Ct. 127 at 131, 95 L. Ed. 162, 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

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