Gross v. JFD Manufacturing Co.

• Decision Date: 01 March 1963
• Docket Number: Docket 27861.,No. 223,223
• Citation: 314 F.2d 196
• Parties: Jerome GROSS, Plaintiff-Appellee, v. JFD MANUFACTURING CO., Inc., Defendant-Appellant.
• Court: U.S. Court of Appeals — Second Circuit

314 F.2d 196 (1963)

Jerome GROSS, Plaintiff-Appellee, v. JFD MANUFACTURING CO., Inc., Defendant-Appellant.

No. 223, Docket 27861.

United States Court of Appeals Second Circuit.

Argued January 23, 1963.

Decided March 1, 1963.

Donald H. Shaw, New York City (S. Stephen Baker, New York City, on the brief), for defendant-appellant.

John M. Calimafde, New York City (Roy C. Hopgood, Paul H. Blaustein, Hopgood & Calimafde, New York City, of counsel), for plaintiff-appellee.

Before FRIENDLY, KAUFMAN and MARSHALL, Circuit Judges.

MARSHALL, Circuit Judge.

JFD Manufacturing Co., Inc., defendant below, appeals from an order of the United States District Court for the Eastern District of New York, John F. Dooling, J., adjudging plaintiff's patent valid and infringed. Plaintiff, Jerome Gross, sought relief for alleged infringement of his patent No. 2,688,655, issued September 7, 1954, on a stand-off insulator for television antenna lead-ins and similar high frequency conductors. Jurisdiction was asserted under 28 U.S. C.A. §§ 1338 and 1400. After trial without a jury, Judge Dooling issued an order accompanied by findings of facts, conclusions of law, and a memorandum opinion. His decision in favor of the validity of the patent was based on the presumption of validity of patents and on "rejection of the contention that `obviousness' is self-evident."¹

Stand-off insulators are so named because they are used to hold a television or radio cable away from the side of a building or structure. Prior to 1953 the conventional stand-off insulator for leadin lines from a television antenna down the side of the supporting building to the receiver was a long-shanked wire eyebolt with a straight shank end threaded and the eye-end not quite closed on the shank. In the eye-end, a disc-like insert made of a low-loss dielectric such as polyethylene was snugly fitted within the encircling wire eye. The insert was radially slotted to receive television transmission lines and could be rotated in the eye so that its radial slot could be turned to the gap between the shank of the eye-bolt and the end of the eye wire. These insulators could then be installed in a wall or mast and the transmission line slipped into the eye and insert slot without threading the whole line through the insulator from end to end.

The introduction of Ultra High Frequency television in 1952 and 1953 brought about study of the problems involved in receiving UHF signals, including the problem of the interference caused by the complete encircling of the lead-in cable by the metal eye. The Gross insulator solved this problem by having the wire bent at a right angle and tightly affixed around the base of a rectangular holder instead of encircling a round one. By using a transverse, rather than peripheral, connection the insulator avoided interference with UHF transmission and reduced or eliminated standing waves, impedence mismatch, and capacitance signal loss. The patent was obtained on September 7, 1954. By letter of October 21, 1954, plaintiff notified defendant of its patent and alleged infringement by the defendant. Six years later this case was filed.

Judge Dooling's findings of fact are not seriously challenged. Rather, defendant JFD argues against the legal conclusions as to patentability. It is our duty to review the order upholding the validity of the patent. Titcomb v. Norton Co., 307 F.2d 253, 255 (2 Cir., 1962). We have done so, find the patent invalid, and reverse.

In order to prevail Gross had to bring its insulator within the provisions of Sections 101 and 103 of Title 35 of the United States Code:

"§ 101.

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

"§ 103.

"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."²

We recognize that there is a presumption, which is rebuttable, in favor of the Gross patent and that the burden of establishing the invalidity of the patent is on JFD. 35 U.S.C.A. § 282; Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed. 983 (1937). The balance was recently struck by this court in Lorenz v. F. W. Woolworth Co., 305 F.2d 102, 105 (2 Cir., 1962):

"Appellant places great weight on the presumption of validity attached by statute to a duly issued patent (35 U.S.C. § 282 (1958) ). The presumption of validity relieves the patent holder of the burden of establishing that validity as a requisite for the successful maintenance of an infringement action, and places the burden of establishing invalidity on the alleged infringer who asserts it. International Carrier-Call & Television Corp. v. Radio Corp. of America, 142 F.2d 493, 495 (2d Cir. 1944); Western States Mach. Co. v. S. S. Hepworth Co., 147 F.2d 345, 348 (2d Cir.), cert. denied, 325 U.S. 873, 65 S.Ct. 1414, 89 L.Ed. 1991 (1945). More than that, the most that can be said of the presumption is that it requires that reasonable doubt on the question of validity be resolved in favor of the patent holder. See Mumm v. Decker & Sons, 301 U.S. 168, 171, 57 S.Ct. 675, 81 L.Ed. 983 (1937). The statute does not require that the presumption be accorded the weight of actual evidence or that the use of the presumption should affect a decision of invalidity that would otherwise be reached with confidence. This court has recognized the unavoidable obstacles to an accurate and impartial decision that are inherent in ex parte proceedings in the patent office, Guide v. Desperak, 249 F.2d 145, 148 (2d Cir. 1957). We cannot properly allow decisions of that office to alter the preponderance of the evidence on the question of validity. See Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 156, 71 S.Ct. 127, 95 L.Ed. 162 (1950); In re Thomson, 26 App.D.C. 419, 425 (1906); cf. Lyon v. Boh, 1 F.2d 48 (S.D.N.Y. 1924) (L. Hand, J.), rev\'d, 10 F.2d 30 (2d Cir. 1926)."

Gross insists that we cannot reverse without holding the District Judge's findings of fact to be "clearly erroneous." This is not true. Great Atlantic & Pacific Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950).³ The question of the validity of a patent is a question of law. Mahn v. Harwood, 112 U.S. 354, 5 S.Ct. 174, 6 S.Ct. 451, 28 L.Ed. 665 (1884); Gillman v. Stern, 114 F.2d 28 (2 Cir., 1940), cert. denied, 311 U.S. 718, 61 S.Ct. 441, 85 L.Ed. 468 (1941).

The order of the District Court was erroneous because the legal standards for determining whether a patent is valid were not properly applied. The terms of the statute draw a clear line between devices which are true discoveries and devices which 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." 35 U.S.C.A. § 103. If an improvement is to obtain the privileged position of patent protection, more ingenuity must be exercised in its creation than merely that which is possessed by an ordinary mechanic acquainted with the business and skilled in the art. Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530 (2 Cir.), cert. denied, 350 U.S. 911, 76 S.Ct. 193, 100 L.Ed. 799 (1955). As was said in Hobart Mfg. Co. v. Landers, Frary & Clark, 26 F.Supp. 198, 202 (D. Conn.), affirmed per curiam, 107 F.2d 1016 (2 Cir., 1939):

"Assuming that the devices disclosed in the three patents relied on by the defendant have some defects, it is obvious that a mere difference or change in the mechanical construction in size or form of the thing used, in order to obviate known defects existing in the previous devices, although those changes are highly advantageous, and far better and more efficacious and convenient, does not make the improved device patentable. In order to be patentable, it must embody some new idea or principle not before known. It must be a discovery, as distinguished from mere mechanical skill or knowledge."

The District Judge found that the Gross insulator had electrical and mechanical advantages not combined in the prior art. However, a careful examination of the entire record and exhibits, including the several types of lead-in insulators, convinces us that these advantages resulted from the use of a mechanical skill which cannot be deemed to reach the level of invention. In order to avoid...