Himes v. Chadwick

• Decision Date: 24 September 1952
• Docket Number: No. 13100.,13100.
• Citation: 199 F.2d 100
• Parties: HIMES et al. v. CHADWICK.
• Court: U.S. Court of Appeals — Ninth Circuit

199 F.2d 100 (1952)

HIMES et al. v. CHADWICK.

No. 13100.

United States Court of Appeals Ninth Circuit.

September 24, 1952.

Mellin, Hanscom & Hursh, Oscar A. Mellin, LeRoy Hanscom and Jack E. Hursh, San Francisco, Cal., for appellant.

Duane C. Bowen, C. M. McCune and Ford E. Smith, Seattle, Wash., for appellee.

Before HEALY, BONE and POPE, Circuit Judges.

POPE, Circuit Judge.

Appellant as owner of "Parks" patent No. 2,011,232,¹ and the "Himes" patent No. 2,243,421,² brought this action to recover damages for alleged infringement of both patents by the appellee. After a trial by jury, and at the conclusion of the evidence, the appellee moved for a directed verdict. The motion was denied and the case submitted upon instructions the correctness of which is not challenged by either party. The jury returned a verdict finding the claims in issue to be valid and infringed. Thereupon defendant-appellee moved for judgment notwithstanding the verdict, which motion was sustained. Judgment was entered adjudging the claims in issue under both patents to be invalid and that the claim of the Himes patent which was in issue was not infringed.³ In granting the prayer of defendant's counterclaim, the judgment enjoined plaintiffs from prosecuting in any court any suits or actions against the defendant or his customers for infringement of either of the patents.

On this appeal from the judgment, primary emphasis is placed upon the proposition that the presence or absence of patentable invention, and whether there was infringement, were questions of fact and that it was the province of the jury to weigh the evidence and decide these questions. It is asserted that the circumstances of this case are not such that the trial court had the right or the power to set aside the verdict because there was substantial evidence of novelty and invention in respect to each patent as well as substantial evidence of infringement of the Himes patent.

The question before us is whether "the evidence is such that without weighing the credibility of the witnesses there can be but one reasonable conclusion as to the verdict"⁴ and that such conclusion was the one arrived at by the trial judge.

The right and duty of the trial judge to direct a verdict in a patent case, where the circumstances indicate that the jury has departed from the relevant legal criteria by which either a jury or a judge must be guided in their or his fact-finding function, was well expressed in Packwood v. Briggs & Stratton Corp., 3 Cir., 195 F.2d 971, 973, as follows: "A jury in a patent case is not free to treat invention as a concept broad enough to include whatever discovery or novelty may impress the jurors favorably. Over the years the courts of the United States, and particularly the Supreme Court, have found meaning implicit in the scheme and purpose of the patent laws which aids in the construction of their general language. In this process, rules and standards have been developed for use as guides to the systematic and orderly definition and application of such a conception as invention in accordance with what the courts understand to be the true meaning of the Constitution and the patent laws. Once such standards and rules are authoritatively announced any finding of `invention' whether by a court or a jury must be consistent with them." We proceed them to inquire whether this was an appropriate case for the exercise of this power by the trial judge.

In granting the motion for judgment n. o. v. the court necessarily held that claims 2 and 5 of the Parks patent were invalid.⁵ Cartons constructed pursuant to the descriptions contained in the claims accomplish three things for the user of the devices. First, when the carton is assembled for packing and shipping it lies flat, as the hinged connections of the side-walls permit the carton to be collapsed and the parts which form the bottom of the carton, themselves hingedly connected to the lower edges of the adjacent sidewalls, are so creased for folding as to permit the bottom to fold flat within the collapsed sidewalls. This capacity for collapsing and flattening makes it possible to ship the cartons in large quantities within limited space. Second, the portions of the carton which form the bottom are so attached to the lower edges of the sidewalls that when the carton is to be set up for use it is necessary only that the operator push with both hands upon the flattened sidewalls moving them into a rectangular position which movement brings the sections forming the bottom into position. This feature is useful in assembly line operations as it permits very rapid setting up of the carton. Third, two of the four sections forming the bottom are equipped with a lug or rounded interlocking part so that when the carton is shoved into its rectangular shape and the bottom portions are thereby drawn into position, the two lugs on opposite sides of the bottom engage and lock, preventing the recollapse of the carton and holding it firmly in its erected position.

Folding cardboard cartons or boxes are produced in a field of art both old and crowded. The hingedly connected sidewalls, the collapsing of the carton for shipment, and the construction of the bottom sections falling inside of the sidewalls when they are collapsed, are all old and antedate the patents here in question. One of the appellants testified that in his view the thing that distinguished the Parks box or carton from those which preceded it was what he called "the automatic non-returnable locking of the bottom", the feature described as item "third" above.

The appellee asserts that the Parks claims 2 and 5 are invalid because anticipated by the disclosure of the Berkowitz patent No. 1,700,733, of February 5, 1929. Appellee, in an effort to demonstrate this, has pointed out that the Parks claims here involved literally "read on" the Berkowitz drawings. He has incorporated in his brief plates on which these drawings are reproduced and alongside of which are printed the text of the Parks claims. An examination of these plates in themselves does seem to disclose that the phraseology in the claims are apt descriptions of the Berkowitz drawings. The Berkowitz patent was one for "a folding box with self-locking bottom". The appellants do not question the fact that the Parks claims do "read on" the Berkowitz drawings, but their answer to the inferences sought to be drawn from this fact is that a carton constructed in accordance with the disclosures of the Berkowitz patent is inoperable when the carton is oblong. They say that even if the Berkowitz carton when constructed in a square form would perform its intended function, it cannot be made to work or to lie flat or otherwise function when the length of the carton exceeds its width.

We do not undertake to pass upon either of these contentions, that is to say, as to the inferences to be drawn from the "reading on" mentioned or as to the consequences of the inoperability with respect to which there was some evidence. As for the proposition that the Parks claims "read on" the Berkowitz drawings, we think that this does not necessarily negative invention. Resort must be had to the specifications and drawings to aid in the construction of the claims for the purpose of ascertaining the presence or absence of invention. Payne Furnace & Supply Co. v. Williams-Wallace Co., 9 Cir., 117 F.2d 823, 825, certiorari denied 313 U.S. 572, 61 S.Ct. 958, 85 L.Ed. 1530.⁶

When the Parks claims are read in connection with the Parks specifications and drawings, the demonstration of "reading on" the Berkowitz drawings is not convincing.⁷ We must inquire whether the patent relied upon as an anticipation would teach the mechanic skilled in the art the solution to the problem claimed to be solved by the invention now in issue. Cold Metal Process Co. v. Carnegie-Ill. Steel Corp., 3 Cir., 108 F.2d 322, 333, certiorari denied 309 U.S. 665, 60 S.Ct. 590, 84 L.Ed. 1012.

If the Berkowitz and Parks "blanks" drawings are placed side by side much of the similarity which appears from the reading of the Parks claims on the Berkowitz drawings disappears. These drawings follow.

The principal difference, it will be noted, is that the bottom of the Parks carton is formed by extensions from each of the four sidewalls, while the Berkowitz drawing shows that it has extensions from two such sidewalls only. This difference alone, we believe, is sufficient to rebut the attempted inference sought to be gathered from the mere reading of the Parks claims on the Berkowitz drawing. The case cannot be disposed of by the simple "reading on" process upon which the appellee lays such great store.

The question remains whether, applying the standards commonly followed in cases involving claims of anticipation, it can be said that the disclosures of the prior art negative invention notwithstanding some differences and advances which may in the circumstances be no more than those which would occur to any person possessed of ordinary mechanical skill. Leishman v. General Motors Corp., 9...