Hammerquist v. Clarke's Sheet Metal, Inc.

• Decision Date: 13 October 1981
• Docket Number: No. 79-4589,79-4589
• Citation: 212 USPQ 481,658 F.2d 1319
• Parties: Peter A. HAMMERQUIST, Plaintiff-Appellee, v. CLARKE'S SHEET METAL, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1319

658 F.2d 1319

212 U.S.P.Q. 481

Peter A. HAMMERQUIST, Plaintiff-Appellee, v. CLARKE'S SHEET METAL, INC., Defendant-Appellant.

No. 79-4589.

United States Court of Appeals Ninth Circuit.

Argued and Submitted April 14, 1981.

Decided Oct. 13, 1981.

Daniel P. Chernoff, Chernoff & Vilhauer, P. C., Portland, Or., for defendant-appellant.

M. H. Hartwell, Jr., Kolisch, Hartwell, Dickinson & Stuart, Portland, Or., for plaintiff-appellee.

Appeal from the United States District Court for the District of Oregon.

Before DUNIWAY and GOODWIN, Circuit Judges, and PALMIERI, ^* District Judge.

GOODWIN, Circuit Judge.

Clarke's Sheet Metal, Inc. appeals from a judgment, following a jury verdict, that held claims 1, 2 and 3 of Hammerquist's U.S. Patent No. 3,854,910 to be valid and willfully infringed.

The Hammerquist patent claims described an apparatus for collecting dust from industrial plants. The apparatus is a combination of devices: (1) a dust collector for heavy dust particles known as a "centrifugal dust collector" (often called a cyclone); and (2) a dust filtering device for smaller particles (often called a baghouse) composed of a chamber within which is housed a circular array of pervious fabric bags for collecting dust. The system operates by filtering air from the cyclone through the baghouse. It is cleaned by reverse air flowing from the baghouse to the cyclone.

Hammerquist first constructed his baghouse filter in August 1972 (the Aero-Vac filter). He installed it by mounting it directly on top of the cyclone; i. e., "hatmounted." On the basis of this invention he applied for and received a patent. At a later date, Hammerquist dismounted the baghouse and cyclone placing them side-by-side with a pipe connection. This second model, INV Aero-Vac was sold but not patented.

Clarke Sheet Metal, Inc. for some time had been trying to manufacture an industrial dust collector. Its own unit, the Carter-Day filter (the Pneu-filter), was difficult to service and expensive to operate. Hearing of Hammerquist's Aero-Vac, Clarke personnel visited Hammerquist and viewed his invention. Sometime later, Clarke developed a new filter to replace the Carter-Day, and patented it as U.S. Patent No. 3,871,845. The only significant difference between the Clarke and the Hammerquist filters is that the Clarke filter is like the unpatented INV Aero-Vac unit; i. e., it is free-standing, separate and apart from the cyclone rather than hatmounted.

When Clarke began selling its Pneu-filter, Hammerquist sued Clarke for infringement. Clarke counterclaimed, alleging that the Hammerquist patent was invalid for obviousness, indefiniteness, and overclaiming. The case was tried to a jury. The jury returned a verdict finding that Hammerquist's patent was valid, and that Clarke had infringed it. The trial judge ¹ adopted the jury's findings without elaboration. From that judgment Clarke appeals.

PERMISSIBILITY OF GENERAL JURY VERDICTS IN PATENT CASES

Clarke contends that the trial court should have submitted to the jury interrogatories presenting the issues of fact which are subsidiary to and underlie the legal question of obviousness. Instead, the court submitted the following question to the jury:

"3. Do you find that Clarke's Sheet Metal, Inc. has proved that the difference between the subject matter claimed in each of the asserted claims in U. S. patent 3,854,910 (claims 1, 2 and 3) and the prior art are such that the subject matter of such claims as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art?

The failure to submit Clarke's interrogatories is not error. Clarke's argument rests on two beliefs: (1) that obviousness, as a question of law, requires judges, not juries, to decide the patent's obviousness, and thus validity; and (2) that the customary procedure of submitting specific interrogatories in many patent cases has somehow been elevated to a rule of law.

The judge in the case below put the question of obviousness to the jury much as he would put to the jury a question of negligence in a tort case. He read the jury the law and let the jury answer the ultimate issue framed according to the Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), standard. There was nothing improper in so doing. The question of obviousness for the purpose of allocating the work between judge and jury ² is a question for the trier of fact upon proper instruction on the law. See Velo-Bind, Inc. v. Minn. Mining & Mfg. Co., 647 F.2d 965, 971 (9th Cir. 1981). The fact that obviousness may be deemed a question of law for other disparate purposes ³ does not affect the conclusion reached above; i. e., that the jury may consider the issue of obviousness. ⁴ See Velo-Bind, supra, 647 F.2d at 971. Thus, the jury is not limited to answering specific interrogatories on the factual issues underlying the question of obviousness. ⁵

The second basis for Clarke's argument is similarly without merit. Although specific interrogatories may be customarily submitted in many patent cases, the trial judge acted within the bounds of discretion in denying Clarke's motion for special verdicts and specific interrogatories. Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1060-61 (4th Cir. 1976); Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 We are satisfied that the trial judge carefully performed his duty in reviewing the jury's verdict. He adopted as his own the jury's law application. ⁶ We must now review that application again, because it has been challenged on appeal.

F.2d 225, 227-28 (7th Cir. 1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973). Mere custom to the contrary does not signal an abuse of discretion. In the immediate case, the trial judge's submission of a general verdict was proper.

OBVIOUSNESS

The test for obviousness is set forth in Graham v. John Deere, supra. The trier of fact must determine (1) the scope and content of the prior art, (2) ascertain the differences between the prior art and the claimed invention, and (3) measure their difference by the level of ordinary skill possessed by a person familiar with the pertinent art in order to decide whether the differences would have been obvious to such a person. Relevant subconsiderations include the commercial success of the invention, the extent to which it resolved long-felt needs, and the difficulty of the problem solved by the invention.

A. Scope and Content of Prior Art.

Clarke presented at trial various pieces of prior art. The most pertinent seem to be the Morse U. S. Patent No. 827,460 and the Abrams U. S. Patent No. 2,369,649. The Morse patent was not considered by the patent office. Ordinarily, the existence of undisclosed prior art would mean that no presumption of validity could attach to the Hammerquist patent under 35 U.S.C. § 282. Globe Linings, Inc. v. City of Corvallis, 555 F.2d 727, 729 (9th Cir.), cert. denied, 434 U.S. 985, 98 S.Ct. 611, 54 L.Ed.2d 479 (1977). But the jury in this case considered the Morse patent and returned a verdict of nonobviousness. We must assume, therefore, that the presumption remained intact and the Morse patent was thought by the jury to be cumulative of other prior art. There was substantial evidence for the jury to so find. See NDM Corp. v. Hayes Products, Inc., 641 F.2d 1274, 1277 (9th Cir. 1981). The Morse patent did not add anything new to the existing prior art. Its teachings essentially duplicated the teachings of the Clarke U. S. Patent 540,720 which were considered by the patent office. As Clarke ably demonstrates in his comparison of Morse and Clarke patents given in an appendix to his brief, albeit not for this purpose, there is little if any difference between the two. The jury was thus correct in finding that the Hammerquist patent's presumption of validity had not been overcome by the evidence. Del Mar Engineering Laboratories v. Physio-Tronics, 642 F.2d 1167, 1172-73 (9th Cir. 1981).

B. The Differences Between the Prior Art and the Hammerquist Patent.

The Hammerquist patent is a combination patent. The test of synergism must therefore be applied to determine whether § 103's standard of patentability was met. ⁷

                This means that Hammerquist's patent is subject to strict scrutiny, and that it must demonstrate some "unusual or surprising result" to warrant patentability.  Hewlett-Packard Company v. Tel-Design, Inc., 460 F.2d 625, 629 (9th Cir. 1972).  8  "Consequently, there must be an express finding ... which could be so construed."  Id
                

The jury was instructed as to the requirement of "an unusual or surprising result." The jury found Hammerquist's patent to be nonobvious. It must have therefore found the patent to manifest synergism. We agree with the jury. The patented device did manifest synergism.

" 'Invention,' for patent purposes, has been difficult to define. Efforts to cage the concept in words have proved almost as unsuccessful as attempts verbally to imprison the concept 'beautiful.' Indeed, when one reads most discussions of 'invention,' one recalls Kipling's, 'It's pretty, but is it Art?' and the aphorism that there is no sense in disputes about matters of taste. Anatole France once said that literary criticism is the adventure of the critic's soul among masterpieces. To the casual observer, judicial patent decisions are the adventures of judges' souls among inventions. For a decision as to whether or not a thing is an invention is a 'value' judgment...." Picard v. United Aircraft Corporation, 128 F.2d 632, 639 (2nd Cir.) (Frank, J. concurring), cert. denied, 317 U.S. 651, (63 S.Ct. 46, 87 L.Ed. 524) (1942).

It was no less of a value judgment for the jury in this case. If substantial evidence exists to support it, that judgment must stand.

Mr. Franks' testimony concerning the Aero-Vac system, and his comparison of it with prior art filtering devices, convinces us that substantial supporting...