Garrett Corp. v. American Safety Flight Systems, Inc.

• Decision Date: 10 October 1974
• Docket Number: No. 73-2476,73-2476
• Parties: The GARRETT CORPORATION, Plaintiff-Appellant-Cross-Appellee, v. AMERICAN SAFETY FLIGHT SYSTEMS, INC., Defendant-Appellee-Cross-Appellant.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 9

502 F.2d 9

183 U.S.P.Q. 386

The GARRETT CORPORATION, Plaintiff-Appellant-Cross-Appellee, v. AMERICAN SAFETY FLIGHT SYSTEMS, INC.,

Defendant-Appellee-Cross-Appellant.

No. 73-2476.

United States Court of Appeals, Fifth Circuit.

Oct. 10, 1974.

Robert S. Swecker, Washington, D.C., Karl V. Hart, Miami, Fla., for plaintiff-appellant-cross-appellee.

Woodrow M. Melvin, Jr., Miami, Fla., Guy P. Smith, Los Angeles, Cal., for defendant-appellee-cross-appellant.

Before RIVES, GEWIN and RONEY, Circuit Judges.

RIVES, Circuit Judge:

This patent infringement suit involves inflatable escape slides intended primarily for use in evacuating passengers from aircraft under emergency conditions. The Garrett Corporation (Garrett) filed a complaint against American Safety Flight Systems, Inc. (American Safety) seeking an injunction and damages for infringement of U.S. Patents numbered 2,765,131 and 3,102,623. American Safety counterclaimed for a declaratory judgment of invalidity and noninfringement of the Garrrett patents. American Safety also contended that this is an 'exceptional case' under 35 U.S.C. 285 and sought an award of attorneys' fees. The district court concluded that both patents are invalid and also not infringed, but denied the award of attorneys' fees to American Safety. We affirm as to invalidity of the patents and hence do not reach the issue of infringement. ¹

I

On October 2, 1956, the United States Patent Office issued a patent numbered 2,765,131 to James F. Boyle, the owner of Garrett's predecessor, Air Cruiser's Company. This patent, entitled 'Inflatable Escape Chute Assembly,' involves a slide intended for use to aid the escape of persons from a grounded aircraft. The objects of the patent are (1) to provide a chute which can be compactly stowed and carried in an aircraft, (2) to overcome the disadvantages associated with the use of hand-held fabric sheets, and (3) to provide an inflatable chute with means for distending its stiffening elements even under low temperature conditions, which preclude the use of carbon dioxide as the distending medium.

The Boyle patent discloses an inflatable structure comprised of a large, middle, closed-end, flexible, inflatable fabric tube and, longitudinally seamed to it and in communication with its interior through holes, a pair of cross-sectionally smaller, stiffening, slideway-defining side tubes. The patent teaches that these tubes when inflated properly are fluid-trussed beams with high resistance to bending strains. The lower end portion of each side tube is of diminishing cross-section and curves back under itself in such a way as to provide for stability of ground contact when the slide is in use. A fabric girt, a girt bar, and brace lines are utilized to secure the upper end of the slide assembly to the airplane or other structure. An aspiratortype inflation device is mounted in the large middle tube at its upper end, and a hose connects the aspirator to a bottle of compressed air. The complete chute assembly, deflated and rolled or folded, is carried in a container. In an emergency, the girt bar is secured, the slide is allowed to unfold, and the inflation system is activated. As compressed air inflates the tubes, the slide quickly unfolds. Persons may then slide to the ground on the external surface of the large middle tube. ²

On September 3, 1963, the United States Patent Office issued a patent numbered 3,102,623 to Kenneth N. Schacht and Frank S. Panetta, assignors to Garrett. The Schacht-Panetta patent relates to an escape device which Garrett characterizes as 'an improvement on the Boyle invention.' ³

The patent discloses a slide having a strip of material, such as canvas, forming a slideway surface and two inflatable fabric side tubes secured on the strip of material to form a trough-shaped slide. The slide is supported on two inflatable beams which are held parallel by inflatable top and bottom spacer tubes. According to the specifications, when the supporting structure is inflated, the strip of material is drawn taut to form a 'laterally flat and quite rigid slideway surface.' The specifications further state, 'Thus the slide-way surface is formed with no sag and, except for a slight bending which may occur due to the weight of a person or cargo sliding on it, forms a smooth surface for the person or cargo.' The entire slide structure is attached to the aircraft or other structure, and is inflated, in a manner similar to the Boyle slide. ⁴

II

American Safety urged and continues to urge that the patents are invalid in light of the prior art at the time of the inventions. Particular emphasis is placed upon certain prior art not presented to or considered by the patent office. This attack 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, 439 F.2d 1369. ⁵

After a seven-day trial, the district court asked both parties to prepare and submit proposed findings of fact and conclusions of law. The district court then made 63 findings of fact, and concluded that the pertinent claims of both patents are invalid and not infringed. ⁶

With regard to the Boyle patent, the district court found that Claim I was anticipated generally by the prior art, and anticipated specifically by noncited Carpenter U.S. Patent No. 200,694 (1878) and noncited Dixon U.S. Patent No. 2,191,374 (1940). ⁷ The district court also made a number of findings relating to obviousness, ⁸ and in summary concluded that,

'At the time of the Boyle invention the differences between the subject matter invented and sought to be patented and the prior art were such that the subject matter as a whole would have then been obvious to a person having ordinary skill in the art to which the subject matter of the Boyle invention pertained.' ⁹

Adopting the narrow reading of Boyle urged by American Safety, the district court stated:

'Each of Claims 1, 2, 3 and 4 of the Boyle patent is limited to an escape chute assembly in the use of which an evacuee slides upon the external surface of the inflated slideway structure and none of these claims may be read upon defendant's slide construction.' ¹⁰ In reaching its conclusion on this matter, the district court relied in part upon the file history of Boyle. According to the district court, in order to distinguish his device from a prior art reference, Boyle 'limited his claims to so position an evacuee as to put an evacuee in sliding contact with the external surface of the inflated structure, as opposed to moving within or upon the internal surface of the structure or upon a member suspended from or within an inflated chute.' ¹¹ The district court further held that Garrett's interpretation of the Boyle claims was not consistent with 'the plain meaning of the claims (and) the disclosure of the specifications.' ¹²

The district court found that the three claims of the Schacht-Panetta patent are invalid. The district court held that, 'Each of the three claims of the Schacht patent reads directly upon, and is fully anticipated by, the disclosure of the noncited Hailstone patent No. 3,070,023.' ¹³ The district court also indicated at several points in its opinion that the Schacht-Panetta patent was void for obviousness:

'It was well within the skill of a person of ordinary skill in the art prior to the Schacht patent to employ a slideway surface which would be slack, taut , or any combination thereof in a slideway construction, such as the combination of the Canadian and Heyniger patents proposed by the Patent Office Examiner.' ¹⁴

'As evidenced by the British, Canadian and Hailstone patents, supra, it was well within the ken of a person of ordinary skill in the art, prior to December, 1959, to devise an inflatable rectangular tube support structure for an aircraft evacuation slide in which the slideway was provided by a fabic sheet stretched upon or between the support tubes.' ¹⁵

III

Our examination of the record convinces us that the district court did not err in its conclusions that the Boyle and the Schacht-Panetta patents are invalid as obvious.

A. The Boyle Patent.

Section 103 of Title 35 provides:

'A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole 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. Patentability shall not be negatived by the manner in which the invention was made.'

The Supreme Court outlined in Graham v. John Deere Co., 1966, 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, the nature of the inquiry required under 103:

'While the ultimate question of patent validity is one of law, A. & P. Tea Co. v. Supermarket Corp., supra, 340 U.S. (147) at 155, 71 S.Ct. (127) at 131 (95 L.Ed. 162 (1950)), 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.'

In Lear, Inc. v. Adkins, 1969, 395 U.S. 653, 676, 89 S.Ct. 1902, 23 L.Ed.2d 610, the Court referred to the test in Graham as a ...