Gass v. Montgomery Ward & Co.
| Decision Date | 08 November 1967 |
| Docket Number | No. 15991.,15991. |
| Citation | 387 F.2d 129 |
| Parties | David L. GASS and Gem Mfg. Co., Plaintiffs-Counter-Defendants-Appellees, v. MONTGOMERY WARD & CO., and Superior Industries, Inc., et al., Defendants-Counter-Plaintiffs-Appellants. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Max R. Kraus, Chicago, Ill., Francis A. Utecht, Fulwider, Patton, Rieber, Lee & Utecht, Los Angeles, Cal., for appellants.
James R. McKnight, Chicago, Ill., for appellees.
Before KNOCH, CASTLE, and FAIRCHILD, Circuit Judges.
Actions for infringement of a patent.1 Defendants challenged validity, but admitted infringement if the patent be valid. The district court gave judgment for plaintiffs, deeming the patent valid. Defendants appealed.
The issue is obviousness, i. e., whether the differences between the subject matter sought to be patented and the prior art were such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art. 35 U.S.C. § 103.
The analytical steps which a court must take in determining the issue of validity under sec. 103 (obviousness) have been clearly described:
The district court did not spell out in its opinion, findings, and conclusions the steps above prescribed. The court did, in its conclusions, characterize the subject matter as a "new, original and non-obvious combination." It apparently based the conclusion of nonobviousness upon findings that the product made by Gem under its license attained a degree of commercial success and filled a long felt but unsolved need, and that Gass had sought to solve the problem for several years before succeeding. Although these three matters are relevant, they are not conclusive. The first two have been referred to as "secondary considerations" which may have relevancy.3 The difficulty experienced by a particular individual is not conclusive because the ultimate question is whether a hypothetical person having ordinary skill in the art would have readily found the same solution when addressing himself to the same problem.4
Although we have indicated that in cases where the trial court has not applied the Graham technique in determining the issue of obviousness, it is generally sounder procedure to remand the issue for trial court determination,5 we consider the present record makes it sufficiently clear that the subject matter was obvious to make the determination here.
1. The problem solved by plaintiff's product. Automobile owners desire to buy bumper guards which can be fastened to bumpers and will prevent them from riding over or under the bumper of another car on impact in minor collisions. There is great variation in the vertical profiles of bumpers on current model automobiles, and a bumper guard tailored to the bumper of one make or model will not fit others. If a type of universal bumper guard were available, capable of fitting most bumpers, a retailer of automobile accessories would likely stock those, rather than a greater variety of bumper guards fitting only particular makes or models.
2. Plaintiffs' solution. The bumper guard manufactured by Gem and copied by defendants will fit the bumpers of many makes and models. A familiar type of vertical bumper guard, extending above and below the bumper, is arranged so that it can be fastened to the bumper by a bolt, running from the guard through a hole in the bumper. Between the guard and the bumper, the bolt passes through an "adapter" of hard resilient material, such as hard rubber. The face of the adapter which meets the surface of the bumper is curved to conform only approximately to the profiles of bumpers, generally, but when the guard is drawn tight to the bumper, the adapter conforms to the bumper surface.
Claim 1 of the patent is representative, for this purpose. It reads:
3. The prior art. Seven patents were cited as references. Defendants rely more particularly on a patent not cited and an unpatented bullet bumper guard developed by Gass and on sale and in public use for more than one year before application for the instant patent.
One of the cited patents was No. 2,214,514, issued Sept. 10, 1940 to Mercer D. Walklet, "Automobile Bumper Construction." The application contained the following statement:
The patent not cited was No. 2,291,370, issued July 28,...
To continue reading
Request your trial
-
General Foods Corp. v. Perk Foods Company, 64 C 1829.
...v. John Deere Co., 383 U.S. 1, 86 S. Ct. 684, 15 L.Ed.2d 545 (1966), as recently interpreted by this Circuit in Gass v. Montgomery Ward & Co., 387 F.2d 129 (7th Cir. 1967). 18. There is no file wrapper estoppel or other limitation in the claims or specification requiring this Court, in adju......
-
National Business Systems, Inc. v. AM Intern., Inc.
...the time the invention was made. Popiel Brothers, Inc. v. Schick Electric, Inc., 494 F.2d 162, 167 (7th Cir. 1974), Gass v. Montgomery Ward, 387 F.2d 129, 130 (7th Cir. 1967). VanDerLinden's testimony is supported by evidence of prior art patents (Patents Nos. '007, '207 and '917) not consi......
-
I. U. Technology Corp. v. Research-Cottrell, Inc., RESEARCH-COTTREL
...automobile bodies, including hinges, was that of engineers of substantial training, and specialized skill"); Gass v. Montgomery Ward & Co., 387 F.2d 129, 132 (7th Cir. 1967) ("The level of ordinary skill in the field appears to be that of mechanically inclined men with long experience in de......
-
Deep Welding, Inc. v. Sciaky Bros., Inc.
...skill in the art would have readily found the same solution when addressing himself to the same problem." Gass v. Montgomery Ward & Co., 387 F.2d 129, 130 (7th Cir. 1967). These standards are to be strictly applied. As the Supreme Court held in Graham, 383 U.S. at 18 and 19, 86 S.Ct. at We ......