Gaddis v. Calgon Corp.

• Decision Date: 15 January 1975
• Docket Number: No. 73-3663,73-3663
• Citation: 506 F.2d 880
• Parties: Preston G. GADDIS, Plaintiff-Appellee, v. CALGON CORPORATION, Defendant-Appellant.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 880

506 F.2d 880

184 U.S.P.Q. 449

Preston G. GADDIS, Plaintiff-Appellee, v. CALGON CORPORATION, Defendant-Appellant.

No. 73-3663.

United States Court of Appeals, Fifth Circuit.

Jan. 15, 1975.

Joseph M. Fitzpatrick, New York City, Stanley E. Neely, Larry M. Lesh, Dallas, Tex., Eugene F. Buell, Pittsburgh, Pa., for defendant-appellant.

V. Bryan Medlock, Jr., Dallas, Tex., for plaintiff-appellee.

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

Before BROWN, Chief Judge, and AINSWORTH and DYER, Circuit Judges.

AINSWORTH, Circuit Judge:

Plaintiff, Preston G. Gaddis, brought this suit for the infringement by Calgon Corporation of United States Patent No. 3,425,669 (Patent '669) issued to plaintiff on February 4, 1969, for a 'Dry Chemical Feeder Method and Apparatus.' Defendant answered and generally denied plaintiff's allegations; it stated that the patent in suit was invalid and void, and further that its practices did not infringe any valid claims of the patent. Defendant also counterclaimed for damages under the antitrust laws of the United States, 15 U.S.C. 1, 2 and 3, and averred that plaintiff had misused the patent in suit by utilizing it to control the sale of unpatented or unpatentable materials to the damage of defendant. The district court submitted 15 special interrogatories to the jury, which found the patent valid, that Claims 1 and 10 thereof were willfully and wantonly infringed by Calgon by its manufacture, use and sale of its own feeder devices, and that Gaddis had not misused the patent in suit. ¹ The trial court entered judgment in accordance with the jury's answers to special interrogatories and further found because of Calgon's willful and wanton infringement that the case was an exceptional one within the meaning of 35 U.S.C. 285, justifying the award of reasonable attorneys' fees to Gaddis. ² A motion for judgment notwithstanding the verdict filed by Calgon was overruled by order of the trial court in which it stated that there was substantial evidence to support the jury's verdict and that

'The only issue remaining is the question of obviousness under 35 U.S.C. 103. This issue is a question of law, although it is determined on the basis of certain factual inquiries which were submitted for determination by the jury. Graham v. John Deere Co., 383 U.S. 1, 17-18 (86 S.Ct. 684, 15 L.Ed.2d 545) (1965). 'Section 103 of the Patent Act of 1952 provides that a patent may not be obtained if the subject matter would have been obvious to a person with ordinary skill in that art. In response to Special Issue No. 9, the jury found that the differences between the Gaddis invention and the prior art, were not differences within the ordinary skill of the art. From this factual determination, this court concludes as a matter of law that the differences between the Gaddis invention and the prior art would not have been obvious to a person reasonably skilled in that art, and that Patent '669 is valid under 35 U.S.C. 103.'

Calgon appeals from the judgment of validity and infringement, from the finding of willful and wanton infringement, and the award of attorneys' fees. We affirm the judgment of validity and infringement, but reverse in respect to willful and wanton infringement and the award of attorneys' fees.

The Gaddis Petroleum Corporation is an oil-producing corporation which, through its Gaco Manufacturing Division, manufactures feeding equipment for the purpose of introducing chemicals into oil. Plaintiff, Preston Gaddis, is a stockholder in the corporation. Calgon is engaged in the manufacture and sale of water-treatment equipment, including filtration devices, pumps and miscellaneous chemical feeders. In 1965, after having experimented with various feeders, Gaddis became satisfied that the principle of pre-wetting individual particles of polymers by dropping them onto a wetting plane, prior to agitating them in a tank, would successfully dissolve these chemicals. In 1966 Calgon's representative, Ben Sloat, approached Gaddis and asked him when he would be able to provide then with a feeder that would do this particular job. In June 1967, Gaddis started producing his DSF-100, the first of what he described as a full-fledged feeder, a prototype of the Dry Chemical '669 feeder, the patent in suit. The device was shown to Sloat who responded enthusiastically. ³ Calgon through an agreement with Gaddis, began using the DSF-100 in the summer of 1967. On November 13, 1967, Gaddis filed his application for the '669 invention. On February 4, 1969, United States Patent No. 3,425,669 issued to Gaddis. During the same month Calgon introduced and offered for sale a line of feeders of its own manufacture similar in construction and performance to the Gaddis No. '669 feeder. In March, or the early spring of 1969 Gaddis discovered that Calgon was infringing his '669 invention and brought it to the attention of Calgon. Calgon representatives promptly met with Gaddis and informed him that it was their belief that the invention was invalid and denied infringement of the claims of Gaddis' patent. Following the meeting with Gaddis, Calgon sought the opinion of Eugene F. Buell, a patent specialist lawyer in Pittsburgh, who made a search of the prior art patents relative to the Gaddis patent and reported to Calgon on July 30, 1969 that it was his opinion that the Gaddis patent was not inventive and there was nothing patentable in the Gaddis broad claims inasmuch as the subject matter was fully disclosed by prior art, particularly the patents of Jamison, Watson, and Harvey, the latter two not having been cited by the Patent Office Examiner. Based on this advice, Calgon continued to manufacture and sell its feeders. Gaddis filed the present action for infringement on October 6, 1969. On November 7, 1969, Calgon employed a Washington, D.C. patent firm to make another search and validity study, resulting in a second opinion that the Gaddis patent was invalid.

I. VALIDITY OF THE GADDIS PATENT

In order to be patentable, a device must not only be useful and novel, it must also be non-obvious in light of the prior art. Graham v. John Deere Company of Kansas City, 383 U.S. 1, 3, 86 S.Ct. 684, 686, 15 L.Ed.2d 545 (1966); Rosen v. Kahlenberg, 5 Cir., 1973, 474 F.2d 858, 867; Ramirez v. Perez, 5 Cir., 1972, 457 F.2d 267, 269; Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 561; Swofford v. B & W, Inc., 5 Cir., 1968, 395 F.2d 362, 364. Calgon contends that the district judge erroneously considered the factual determination by the jury-- that the differences between the Gaddis patent and the prior art were not differences within the ordinary skill of the art-- as the basis for his holding of non-obviousness. While the ultimate question of obviousness is one of law, Graham v. John Deere Company of Kansas City, supra; Garrett Corporation v. American Safety Flight Systems, Inc., 5 Cir., 1974, 502 F.2d 9, this issue nevertheless lends itself to the following basic factual inquiries: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the art. Graham v. John Deere Company of Kansas City, supra, 383 U.S. at 17, 86 S.Ct. at 694. The trial judge thoroughly instructed the jury in respect to Calgon's burden of proving obviousness under the requirements demanded by Graham, supra. The jury found, in response to interrogatories incorporating those requirements, that Calgon had failed in its proof. Thereafter, in denying Calgon's motion for judgment notwithstanding the verdict, the trial judge independently concluded as a matter of law, based on the factual determinations made by the jury, that the prior art would not have been obvious to a person reasonably skilled in the art. In determining non-obviousness, the trial judge specifically cited Graham, supra, as a basis for his conclusion. We have independently analyzed the testimony and the numerous graphic illustrations and exhibits introduced in evidence and are unable to agree with Calgon that the district court failed to apply the correct legal standards for determining non-obviousness. ⁴

The Patent Examiner cited patents issued to Jamison, Gart, Martin and Katzer. Calgon contends that certain prior art-- the Syntron, Watson and Harvey devices, which were not considered by the Patent Office-- is much more pertinent than the cited patents and discloses the same combination of elements and performance of function as the patent in suit, thereby invalidating the Gaddis patent.

A patent of course is presumed valid and the burden of establishing invalidity rests upon the party asserting it. 35 U.S.C. 282. However, pertinent prior art not considered by the Patent Office weakens the presumption of validity which normally attaches to a patent and requires a court to scrutinize the patent more closely. Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555, 557; Ingersoll-Rand Company v. Brunner & Lay, Inc., 5 Cir., 1973, 474 F.2d 491, 496; Cornell v. Adams Engineering Company, 5 Cir., 1958, 258 F.2d 874. Nevertheless, the presumption of validity is a strong one and is not to be overthrown except by clear and cogent evidence, that is, 'evidence (which) has more than a dubious preponderance.' Radio Corporation v. Radio Engineering Laboratories, 293 U.S. 1, 8, 55 S.Ct. 928, 931, 79 L.Ed. 163. Thus, the pertinent question here is whether Calgon has met its burden by demonstrating that the teachings of the prior art relied on by it clearly destroy the presumption of validity.

The Gaddis patent.

The inventiveness of the Gaddis device is the economical, efficient and quick method and means of feeding and mixing free-flowing agglomerative dry chemicals with water, in a manner which provides for pre-wetting of the difficult-to-dissolve polymers before agitation, thereby precluding massing or globbing of the...