Frantz Manufacturing Co. v. Phenix Manufacturing Co.

• Decision Date: 16 March 1972
• Docket Number: 71-1069.,No. 18975,18975
• Parties: FRANTZ MANUFACTURING COMPANY, Plaintiff-Appellee and Appellant, v. PHENIX MANUFACTURING COMPANY, INC., Defendant-Appellant and Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

457 F.2d 314 (1972)

FRANTZ MANUFACTURING COMPANY, Plaintiff-Appellee and Appellant, v. PHENIX MANUFACTURING COMPANY, INC., Defendant-Appellant and Appellee.

Nos. 18975, 71-1069.

United States Court of Appeals, Seventh Circuit.

March 16, 1972.

COPYRIGHT MATERIAL OMITTED

Curtis F. Prangley, Mark H. Clayton, Chicago, Ill., Joseph P. House, Jr., Milwaukee, Wis., for Frantz Mfg. Co.

Glenn O. Starke, Elwin A. Andrus, Milwaukee, Wis., for Phenix Mfg. Co.

Before DUFFY, Senior Circuit Judge, and KERNER^* and STEVENS, Circuit Judges.

STEVENS, Circuit Judge.

Plaintiff originally alleged that defendant's overhead garage doors infringed two mechanical patents and a design patent. Before trial the parties stipulated that the earlier mechanical patent ('699)¹ was not infringed. With respect to the later mechanical patent ('612),² the questions are whether the district court, 307 F.Supp. 822, properly construed 35 U.S.C. § 102(b) in holding that the invention was in public use more than a year before the patent application was filed, and if so, whether he properly rejected plaintiff's alternative contention that the '612 patent was entitled to '699's earlier filing date. With respect to the design patent (Des. '094),³ the questions are whether it satisfied the requirements for patentability set forth in 35 U.S.C. § 171, and if so, whether the finding of infringement was proper.

I.

On June 19, 1959, plaintiff made its first shipment of a fiberglass overhead garage door which was thereafter manufactured and sold in large quantities.⁴ The door was mounted on tracks for movement from a closed vertical position to an open horizontal position within the garage. The door included four rectangular sections arranged (when the door was closed) one above the other, and hinged together to facilitate movement around the curved portion of the track.

Each section included a metal frame enclosing a plastic panel. Each frame performed the dual function of securing the enclosed panel and also forming a hinging joint with the frame of the adjacent section. The joining function is not pertinent here; our attention is directed to the relationship between the metal frame and its enclosed plastic panel. More narrowly, we are specifically concerned with the horizontal rails at the top and bottom of each section.⁵

In the lower three sections of the door, the top rail contained two horizontal flanges, extending from one end of the door to the other, which, if viewed from a cross section, might be likened to an inverted letter "J." The panel was placed between the two flanges and secured by rivets which pierced the longer rear flange. The shorter front flange was pressed snugly against the panel. The pressure thus applied was intended to effect a waterproof closure, but was not sufficient to embed the aluminum flange into the compressible plastic panel.⁶

The door which was sold on June 19, 1959, included various novel features which we need not explain. They were described in the application, filed on August 17, 1959, which led to the issuance of patent '699 some four years later.

On July 5, 1960, plaintiff's assignors filed the application which matured into patent '612. That application related particularly to the construction of the door sections and, more narrowly, to the method of securing the plastic panel in the aluminum frame.

Shortly after plaintiff's first shipment on June 19, 1959, it began to use a power driven roller instead of the hand cranked machine to press the short front flange against the plastic panel. Plaintiff later realized that when the short front flange was embedded in the compressible plastic panel by using the power roller, it was held so securely that it was no longer necessary to use rivets to attach the panel to the rear horizontal flange. This discovery led to the development of an improved door model and to the filing of the July 5, 1960, application and the issuance of patent '612.

The district court held that the public sale on June 19, 1959, more than a year before the filing date of the '612 application, invalidated the patent under 35 U.S.C. § 102(b).⁷ As a matter of law he concluded that the test under § 102(b) is not identity, but whether the difference between the prior sale item and the subject matter of the claims is itself patentable.⁸ As a matter of fact, he found that the only genuine difference between the sale door and the patent did not constitute invention.⁹

Plaintiff thereafter was granted leave to supplement the record by filing a copy of the '699 patent, but the court, 314 F. Supp. 99, rejected the contention that the § 102(b) defense could be avoided by giving the '612 patent the benefit of '699's filing date. The design patent was found valid and infringed. Both parties have appealed.

We first consider the test of invalidity under § 102(b) and whether that test was correctly applied in this case. We shall then discuss the contention that the '612 patent should have the benefit of an earlier filing date. Finally, we shall review the design patent.

II.

There were several differences between the door sold on June 19, 1959, and the improved model described in the '612 patent. In the sale door the front flange was rolled in only on the top rail of the lower three sections; the '612 patent contemplated such rolling on the top and bottom rails of all four sections. The district court found that the flange on the sale door was not actually embedded into the plastic panel; the '612 patent unequivocally describes such embedment. The sale door, although intended to be watertight, actually was subject to leakage between the frame and the panel as a result of capillary action; the '612 patent describes a waterproof closure. In the sale door rivets secured the panel to the rear horizontal flange; the '612 specifications refer to the elimination of such rivets. Thus, it is clear that there was not complete identity between the sale door and the '612 patent.

Plaintiff contends that § 102(b) is inapplicable because defendant failed to prove that the '612 invention was "identically disclosed" by the sale door. Moreover, if a test of nonobviousness rather than complete anticipation is proper, plaintiff contends that the district court erroneously failed to make findings required by Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545.

A. Interpretation of § 102(b).

Plaintiff's position is supported by the language of § 103 which implies that no prior reference is within § 102 if "the invention is not identically disclosed or described" therein,¹⁰ by comments in several opinions written after 1952, and by one holding which, though subsequently overruled by a divided court, was regarded as a correct statement of the law by a member of the Court of Customs and Patent Appeals.¹¹ We are nevertheless persuaded that the enactment of § 103 was not intended by Congress to incorporate a "strict identity" test into § 102(b). In brief, the reasons for our conclusions are the state of the law prior to the 1952 codification, the fact that the 1952 enactment was primarily intended to restate the law, and the fact that the addition of § 103 was directed to a wholly different problem. We first put to one side the authorities on which plaintiff relies.

Plaintiff's principal reliance is upon this court's description of "the defense of anticipation" in Illinois Tool Works, Inc. v. Sweetheart Plastics, Inc., 436 F.2d 1180, 1182-1183 (1971). We there reiterated a dictum from a Tenth Circuit opinion¹² which quoted from two earlier decisions of the Ninth Circuit.¹³ Neither our opinion, nor any of the earlier references, involved the § 102(b) issue which is now before us. As we expressly noted, we were there considering the defense of anticipation predicated on § 102(a);¹⁴ such anticipation "speaks only to the novelty of an invention."¹⁵ In that case, as in each of the other cases upon which plaintiff relies, decision actually turned on acceptance or rejection of the defense of obviousness.¹⁶

Section 102(a), like § 103, focuses upon the state of the art at the date of invention. Section 102(b), however, is not concerned with prior art which anticipated the invention date; it is concerned with the filing of the patent application. Prior to 1952 it was perfectly clear that an invention had to embody a significant conceptual advance over the state of the art existing (a) when the invention was discovered or made and also (b) one year prior to the filing date of the application. Both time requirements were included in the same statutory provision defining the conditions of patentability.¹⁷ The test of "invention" now reflected in § 103 was then applicable equally to the prior art which is now described in § 102(b) as well as to the art described in § 102(a).

A quotation from Hall v. Macneale is appropriate, not because of the similarity between an improvement intended to make safe doors burglarproof and an improvement intended to make garage doors waterproof, but rather because both improvements were discovered after the basic conception had been disclosed and, although novel, neither amounted to invention:

"It clearly appears, from the testimony of the appellant himself, that the idea of making a claim to the invention covered by claim 3 of the patent sued on arose from the introduction into safes, in 1866 or early in 1867, of plates of steel and iron welded together. This enabled the value of the screw-threaded conical bolt to be more fully developed because the screw-thread could be made more effective the whole length of the bolt. But the whole invention existed in the bolt of the patent of 1860. There was no invention in adding to the solid conical bolt the screw-thread of the cored conical bolt.

"Moreover, the use and sale of the solid conical bolts in the Lafayette and Loraine County safes, even though those bolts had no screw-threads on them, constituted a use and sale of the invention

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