HK PORTER COMPANY v. Goodyear Tire & Rubber Company

• Decision Date: 27 January 1971
• Docket Number: No. 19911.,19911.
• Citation: 437 F.2d 244
• Parties: H. K. PORTER COMPANY, Inc., Plaintiff-Appellee, v. The GOODYEAR TIRE & RUBBER COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — Sixth Circuit

437 F.2d 244 (1971)

H. K. PORTER COMPANY, Inc., Plaintiff-Appellee, v. The GOODYEAR TIRE & RUBBER COMPANY, Defendant-Appellant.

No. 19911.

United States Court of Appeals, Sixth Circuit.

January 27, 1971.

Paul L. Ahern, Chicago, Ill., for defendant-appellant; Timothy F. McMahon, Cleveland, Ohio, Richard Russell Wolfe, Chicago, Ill., on brief; Thompson, Hine & Flory, Wolfe, Hubbard, Voit & Osann, Chicago, Ill., of counsel.

Lawrence F. Scinto, New York City, for plaintiff-appellee; Laurence E. Oliphant, Jr., Cleveland, Ohio, Charles B. Cannon, Paul E. O'Donnell, Jr., New York City, on brief; Squire, Sanders & Dempsey, Cleveland, Ohio, Ward, McElhannon, Brooks & Fitzpatrick, New York City, of counsel.

Before PHILLIPS, Chief Judge, and WEICK and McCREE, Circuit Judges.

McCREE, Circuit Judge.

The Goodyear Tire and Rubber Company appeals from a judgment declaring valid and infringed certain patents for the manufacture of "Flexible Hose," a product designed as a replacement for factory-installed original equipment automobile radiator hose.

On August 21, 1962, United States Patent No. 3,050,087 was granted to David M. Caplan as inventor of "Flexible Hose," and three years later, on July 13, 1965, Patent No. 3,194,705 was granted to him as inventor of a method and apparatus for manufacturing this flexible mold-formed radiator hose. Five months later, H. K. Porter Company, the current owner of both patents, brought this action against Goodyear, charging infringement of both the '087 and '705 patents. Goodyear denied infringement and attacked the validity of the patents. After an extensive trial, the District Court held the patents valid and infringed, and granted declaratory and other injunctive relief. We affirm.

Replacement radiator hoses play an important role in the automobile repair field. Original equipment hoses often fail because of internal pressure, vacuum collapse, the corrosive effect of radiator additives on rubber tubing and other causes. These hoses are designed to the specifications of a particular make and model of automobile. Replacement hoses, on the other hand, to be commercially successful, must be capable of substantial standardization. They must not only be able to resist bursting under pressure and to avoid vacuum collapse, but they must also resist bending collapse when they are contorted to permit their being fitted into the varying distances between the engine blocks and radiators of different manufacturers' cars. These technical challenges stimulated intensive inventive activity, some of which gave rise to this litigation.

Considerations of flexibility mandated the use of a material possessing this characteristic of rubber and having sufficient strength to resist bursting under pressure and resistance to the corrosive effect of radiator additives. Also, rigidity is necessary to avoid vacuum collapse, and this requirement presented a difficult problem. In original equipment radiator hoses, an internal spring is commonly used to impart this property. However, original equipment hoses are of uniform length and need not possess the flexibility for adjustment of length as must replacement hoses. Accordingly, the internal spring device was found unacceptable and an external helical reinforcing wire coil spring was considered to give the desired rigidity without preventing flexibility. The precise problem concerned finding a commercially feasible method of incorporating this coil spring appropriately into the rubberoid body of the hose.

Caplan testified that he accomplished this in the following manner:

A. What we have here is a radiator hose formed of its component parts — I should say simultaneously formed and cured of its component parts, and has a section that is interiorly and exteriorly convoluted, that has a reenforcement embedded in the apex of those convolutions, and the only covering over that reinforcement is part of the same material which was used to form the body of the tube.

Q. Is that what you consider to be your invention?

A. Well, I\'m not great shakes on these statements, but all I know is that I took something that wasn\'t there and made it and it was a success in the field and made a great difference in the industry. I think it was invention.

Goodyear, which produced a similar product, challenges the validity of the patents in suit on three grounds: prior invention and disclosure; anticipation by the prior art; and obviousness. It also asserts as a defense against the infringement claim the doctrine of file wrapper estoppel. We consider each of these grounds separately, and conclude that the patents are valid and that they have been infringed.

Prior invention and disclosure. Goodyear claims that one Robert E. Roberts invented the same process before Caplan, and that he disclosed this invention to Caplan and to plaintiff's predecessor in interest, the Voit Rubber Company, in 1950 and 1951. Here, the issue of disclosure presents a question of fact, because evidence was introduced in support of the contentions of both parties. The District Court resolved the factual conflict against Goodyear, and its findings are not clearly erroneous. Rule 52(a), Fed.R.Civ.P.

Goodyear's claim of prior invention rests primarily on Roberts' victory over Caplan in Patent Interference No. 91,640. This proceeding concerned an alleged conflict between Roberts' Patent No. 2,936,812 and claims 1 through 4 of Caplan's '705 patent. The Roberts patent prevailed, and the Caplan '705 application was therefore modified and, as modified, was the basis of the patent issued by the Patent Office. That agency specifically took notice of the interference proceeding, and held that Caplan's patent was valid nevertheless. The decisions of the Patent Office, of course, enjoy a strong presumption of validity under 35 U.S.C. § 282. Simplicity Mfg. Co. v. Quick Mfg., Inc., 355 F.2d 1012, 1014 (6th Cir. 1966). Here the District Court found that all of the elements of the challenged claims of the '705 patent were not found in the Roberts '812 patent, or in any other single one of the five prior patents relied on by Goodyear, and this finding is supported by evidence in the record. Any conflict between the language of claim 16 of the '812 patent and the '705 patent assumes significance only if the invention disclosed by the language, drawings, and specifications of the '812 patent conflicts with the invention claimed and disclosed in...