Glaros v. HH Robertson Co.
| Decision Date | 28 June 1985 |
| Docket Number | No. 79 C 1803.,79 C 1803. |
| Citation | 615 F. Supp. 186 |
| Parties | Emanuel M. GLAROS, Plaintiff, v. H.H. ROBERTSON COMPANY, a Pennsylvania corporation, and Inryco, Inc., a Delaware corporation, Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
William J. Harte, Lawrence Stanner and Glenn E. Schreiber; George P. McAndrews, Allegretti, Newitt, Witcoff & McAndrews, Chicago, Ill., for plaintiff.
William Marshall and Nate Scarpelli, Merriam, Marshall & Bicknell; William M. Lee and William M. Lee, Jr., Lee & Smith, Chicago, Ill., for defendants.
This matter is before the Court after a jury trial for consideration of proposed conclusions by the Court with respect to the issues of obviousness, claim interpretation and prosecution history estoppel and on the motions of the defendants for a judgment notwithstanding the verdict or for a new trial, with respect to which the Court rules as follows.
Plaintiff, Emanuel M. Glaros is the owner of United States Letters Patent No. 3,535,844 (the "Glaros patent"), issued on October 27, 1970, for an invention entitled "Structural Panels" in the name of Emanuel Michael Glaros, on application No. 744,901, filed July 15, 1968. Defendant, H.H. Robertson Company ("Robertson"), is a corporation organized and existing under the laws of the State of Pennsylvania. Defendant, Inryco, Inc. ("Inryco"), is a corporation organized and existing under the laws of the State of Delaware.
Claim 2 of the Glaros patent is a dependent claim, incorporating by reference all the provisions of Claim 1. Nonetheless, its patentability must be determined independently of the patentability of Claim 1. Claim 2 of the Glaros patent is presumed to be valid. At trial, the defendants had the burden of proving by clear and convincing evidence that the Glaros invention, as defined by Claim 2, would have been obvious.
The jury's findings in Interrogatory No. 7, that the differences between the subject matter sought to be patented by Claim 2 of the Glaros patent and the prior art are such that the subject matter as a whole would not have been obvious at the time the invention was made to a person having ordinary skill in the art to which the subject matter pertains, are supported by the credible evidence. (The answers to the Interrogatories are attached hereto as Appendix "A").
The legal conclusion of nonobviousness must be based on factual considerations including: (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; (3) the level of ordinary skill in the pertinent art at the time the invention was made; and (4) whatever objective evidence may be present as indicia of obviousness or nonobviousness. Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).
(1) Scope and Content of the Prior Art
In response to Interrogatory No. 1A the jury found that the Kautz panel of Robertson was not a prior invention which was not abandoned or concealed. In response to Interrogatory No. 1B the jury found that Disclosure 606 of the Robertson was not a prior invention which was not abandoned or concealed. These findings are supported by the credible evidence to the effect that Robertson abandoned and either concealed or suppressed, as those terms are used in 35 U.S.C. § 102(g), both the Kautz and Disclosure 606 panels.
In response to Interrogatory Nos. 2a.-i., the jury found that the references listed where not more pertinent to Claim 2 of the Glaros patent than the references cited in the Patent and Trademark Office during the prosecution of the Glaros patent application. These findings are supported by credible evidence.
Particular attention was given to the Pimsner Patent No. 3,047,154 in granting summary judgment on Claims 1 and 3 (Memorandum Opinion November 14, 1984). However, as noted in footnote 2 of the opinion, the parties did not center on the question of whether a wall panel for an oven can be prior art for structural wall panels. Slip op. at 7, n. 2.
The evidence at trial disclosed that structural panels pose problems of attachment quite unlike those faced by an oven wall. See, e.g., Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed.Cir.1983) (). In addition, the Pimsner panel was not designed to be foamed or made to contain an insulant which adheres securely to the inner surfaces of the skins. There was also credible evidence introduced at trial that the Glaros panel was also designed to avoid delamination of the skins. The preferred embodiment of Claim 2 protrudes the tongue forward of the groove. The tongue is designed to grip the insulant providing a mechanical interlock to prevent removal of the skin from the insulant even if delamination should occur. Pimsner's single thickness tongue design would not provide a mechanical interlock with insulant. These factors illustrate the different problems faced in the design of oven/refrigerator and exterior wall panels.
The jury was instructed that prior art included only those references "in the same field as the invention" or "in other fields ... if a person of ordinary skill seeking a solution to a problem in one art would seek the solution by referring to that other art" or if "the problem presented and overcome by the invention is the same as that overcome by the prior art." See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 620 (Fed.Cir.1985); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572 (Fed.Cir.1984) (). Having heard the evidence, the Court concludes that the jury was entirely correct in rejecting Pimsner as pertinent prior art governing Claim 2. There is also credible evidence in the record to support the jury's findings that prior art references 2b.-i. were each not more pertinent as that word was described in the instructions than the references cited to the Patent and Trademark Office during the prosecution of the Glaros patent application.
Contrary to Inryco's assertion, the jury's responses to Interrogatory No. 2 do not display any "lack of comprehension of the issues." Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1452 (Fed.Cir. 1984). Rather, they reveal an appreciation of one aspect of the issue (ignored by the defendants in their post-trial papers) which, although not pursued by Glaros to preclude summary judgment as to Claims 1 and 3, was presented to the jury at trial.
(2) Differences Between the Prior Art and the Claimed Invention
In response to Interrogatory Nos. 3A and 3B, the jury responded that the following features of Claim 2 were not found in the prior art:
a double tongue and groove side edge where the tongue of one panel member is spaced from the groove of the other panel member forming an offset portion a fastening means inserted between the spaced first and second side edges and passing through the offset portion.
The defendants offer only Pimsner as disclosing these features. The Court has found the jury properly determined that Pimsner is not within the relevant prior art. The same may be said of Kautz and Disclosure 606; they simply were not in the relevant prior art. Snyder (and its commercial embodiment, the Butler F103 panel) does not disclose either of these elements. Nor does the Fenestra type C panel disclose an offset tongue and grove interlock.
(3) Level of Skill
The parties have stipulated that the level of skill of a person of ordinary skill in the art at the time Glaros designed his insulated building panel was either (1) a person with 5 to 7 years experience in the design, development, manufacture and erection of insulated building panels, or (2) a graduate engineer having 3 to 5 years of such experience. The jury's findings of fact are all consistent with this stipulation. This stipulation was also a relevant factor in the jury's determination of the credibility of the testimony of the witnesses.
(4) Objective Evidence of Nonobviousness
In response to Interrogatory No. 4, the jury found that the panels of Glaros enjoyed commercial success and that this success was due to the elements of Glaros' patent Claim 2. There is credible evidence to support a finding of commercial success (albeit modest). Inryco itself chose Glaros' design to market before "developing" the accused panel. Further, there is no evidence that the commercial acceptance of Glaros' device resulted from other than his design. The jury also found, in response to Interrogatory No. 5, that the Inryco and Robertson panels enjoyed commercial success; and that such success was due to the elements of the Glaros patent Claim 2. There is credible evidence to support these findings. Changes made by Robertson in its panels brought those panels progressively closer to the subject matter of Glaros' Claim 2. The jury was instructed that it could find the success of those defendants' panels to be relevant only if their panels so embodied the Glaros design that these panels infringed the Glaros patent.
Further, the factors identified by Robertson as the basis for the success of its Formawall 1000 panels are generic to each and every one of the products Robertson markets. A poorly designed product marketed by Robertson would presumably fail in the marketplace despite these "advantages," so that these marketing factors are not sufficient (but may be necessary) conditions for commercial success in the structural panel market. The required nexus between the success of Robertson's panel and Glaros' design, Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575 (Fed.Cir.1984), cert denied, ___ U.S. ___, 105 S.Ct. 2138, 85 L.Ed.2d 496 (1985), which the jury found Robertson's panel embodied, is sufficiently established.
In response to Interrogatory Nos....
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