Hobbs v. Wisconsin Power & Light Company

• Citation: 250 F.2d 100
• Decision Date: 06 December 1957
• Docket Number: No. 11973.,11973.
• Parties: James C. HOBBS, Plaintiff-Appellant, v. WISCONSIN POWER & LIGHT COMPANY and William Powell Company, Defendants-Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

250 F.2d 100 (1957)

James C. HOBBS, Plaintiff-Appellant, v. WISCONSIN POWER & LIGHT COMPANY and William Powell Company, Defendants-Appellees.

No. 11973.

United States Court of Appeals Seventh Circuit.

December 6, 1957.

H. F. McNenny, Cleveland, Ohio, William H. Spohn, Madison, Wis., B. D. Watts, Cleveland, Ohio, Spohn, Ross, Stevens, Lamb & Pick, Madison, Wis., Richey, Watts, Edgerton, McNenny & Farrington, Cleveland, Ohio, for appellant.

Donald R. Stroud, Madison, Wis., Edward A. Haight, Chicago, Ill., Frank Zugelter, Cincinnati, Ohio, John W. Hofeldt, Chicago, Ill., for appellee.

Before FINNEGAN, HASTINGS and PARKINSON, Circuit Judges.

HASTINGS, Circuit Judge.

This action was brought to enjoin and to seek an accounting for damages resulting from alleged infringement of two patents on inventions relating to valves and joint seals for large flows of high temperature, high pressure fluids. Appellant, James C. Hobbs, maintains that William Powell Company, by manufacturing and selling certain valves and joint seals, and the Wisconsin Power and Light Company, by buying and using these same accused structures, have infringed the patents in suit. The district court held that claims 1 through 10, 12 through 15, 17, 19, 20, 22 and 23 of patent Re. 23,272 and claims 1, 5, 6 and 7 of patent Re. 23,137, presented for adjudication at the trial, were invalid, and ruled further that there was no infringement by appellees as to "any valid claim of any letters patent of the United States owned by the plaintiff." The district court's findings of fact, conclusions of law and judgment are printed at 145 F.Supp. 64, 71 (1957). Error relied upon in this appeal arises from alleged erroneous applications of the law to the facts by the trial court.

The district court indicated in its findings that prior to 1938 there had been a long standing valve problem of preventing the body-bonnet joints of steam plant bolted bonnet valves from being pried open due to pressure and temperature forces. The bolted bonnet valves include a cover or bonnet, removably bolted to a flange around the access opening in the body (pipe) by a circle of bolts. A ring of compressible material such as asbestos or soft metal is used to seal the crevice between the bolted flanges of the bonnet and the body. The joints are sealed initially by tightening the bolts, but the joints tend to leak from the loads created by temperature changes and the pressure of confined liquid. Patent Re. 23,272 sought to eliminate this leakage and maintenance problem. Appellant maintains that a new result was achieved by a new combination and arrangement of parts and that, briefly, this result was "accomplished by a floating guide slidably telescoped in the body" to align the valve stem with the valve seat in the body (instead of the fixed guide of the prior art), a pressure sealing joint between the floating guide and the cylindrical wall of the body, and a yoke connected to transmit forces from the valve stem to the body so that none of the forces could act to open the joint.

Patent Re. 23,137 relates to alleged new seals for the ends of pipes carrying fluids under high pressures. It is appellant's contention that there is nothing in the prior art showing the claimed pressure seal joint with a wedge-shaped sealing ring contacting at its thin end a conical surface of an inner member and a substantially cylindrical wall of the body, the sealing ring being inclined at a small angle of "approximately 2°" to the conical surface of the inner member.

Patent Re. 23,272 was granted September 26, 1950 on application filed April 29, 1950 for the reissue of patent number 2,321,597, dated June 15, 1943 which was granted on application filed February 23, 1940. Patent Re. 23,137 was granted July 26, 1949 on application filed May 26, 1949 for the reissue of patent number 2,443,187 dated June 15, 1948 which was granted on application dated August 15, 1944. Both reissue patents are the property of the appellant, James C. Hobbs, who, after studying and teaching mechanical engineering at the Carnegie Institute of Technology started working, in 1911, in the operation and design of steam power equipment. While working with the Diamond Alkali Company at Painesville, Ohio, he designed and built in 1928 and in 1933 to 1934, two steam power plants to generate steam at higher temperatures and pressures than used previously by that company. It is appellant's contention that prior to June of 1937, he and his assistants at Diamond Alkali had completed a series of drawings disclosing the invention of patent Re. 23,272 and that a final drawing, submitted in evidence as exhibit 52, was made up from this series. The court found that this drawing was sent to leading valve manufacturers along with requests for bids for necessary valves for a proposed new high pressure plant. It is admitted that Powell Company did submit to appellant's company several drawings of proposed steam and water valves of various types, incorporating much designing effort and skill on the part of Powell Company personnel, and that subsequently, Powell Company manufactured and sold the pressure seal valves to Diamond Alkali. The district court found also that these valves "embodied a pressure seal joint having a differential angle between the metallic ring, the bonnet and the body and which responded fully to Claims 1, 5, 6 and 7 of Patent Re. 23,137 * * *." These pressure seal valves went into operation June 3, 1939, were used successfully in the Diamond Alkali plant and achieved widespread acceptance and extensive commercial success.

The district court concluded that patent Re. 23,272 was invalid because the patentee was not the original and first inventor, because the alleged invention amounted to an exhausted combination or an aggregation of old elements, because of anticipation and want of invention, and, finally, because the patent specification did not contain, "a written description of the alleged invention, and of the manner and process of making and using it, in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains, to make and use the same, and does not set forth the best mode of carrying out the alleged invention." Patent Re. 23,137 was determined invalid for anticipation and want of invention and also because the subject matter of the patent was in public use or on sale more than one year before the patent application was filed by the patentee.

Appellant maintains that the trial court erred as to all of these conclusions, and that each involves an erroneous application of the law to the facts. A regularly issued patent is presumed valid until the presumption has been overcome by convincing evidence of error. Mumm v. Jacob E. Decker & Sons, 1937, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed. 983; Radio Corp., Laboratories, 1934, 293 U.S. 1, 54 S.Ct. 752, 78 L.Ed. 1453. The question of whether or not a trial court has employed the correct criteria of invention in determining the validity of a patent is one of law subject to review on appeal. Great A. & P. Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162; Noble Co. v. C. S. Johnson Co., 7 Cir., 1957, 241 F.2d 469, 475. Also, this court, under Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. must make due allowance for the advantages possessed by the trial court in resolving any conflicting testimony, reversing only clearly erroneous findings of fact. Weller Manufacturing Co. v. Wen Products, Inc., 7 Cir., 1956, 231 F.2d 795, 797; Noble Co. v. C. S. Johnson Co., supra. After a careful consideration, in line with these holdings, this court concludes that the contentions of appellant are, on the whole, without merit.

Closely related questions arise in the determination of whether the patentee, Hobbs, was the inventor of the subject matter of the patent (see 35 U.S.C.A. § 102(f)) and the determination of whether there was anticipation by, and lack of invention over, the prior art as to this purported invention. (See 35 U.S.C.A. §§ 102(e), and 103.) Appellant urges that he conceived the principle of invention, embodied it in a drawing (exhibit 52) and disclosed that drawing to Powell Company. Appellant then contends that the trial court was misled by evidence that Powell Company had contributed a certain amount of engineering and designing skill in the construction of the pressure seal valves into the conclusion that the patentee was not the sole first and original inventor. It is fundamental that an inventor is one who discovers the new principle of an invention and that he is not deprived of the right to patent by the fact that others performed the engineering and mechanical work. United Shirt & Collar Co. v. Beattie, 2 Cir., 1906, 149 F. 736, 741-742, certiorari denied 205 U.S. 547, 27 S.Ct. 795, 51 L.Ed. 924; Walker, Patents, Deller's Edition 399. Appellant, in thus presenting this issue, puts Powell Company in the position of a defendant claiming to be a joint inventor. This is not the case. Appellee, Powell Company, asserted in its answer that the disclosures in patent Re. 23,272 did not originate with appellant but were abstracted or copied from information and data that he obtained from Powell Company and other persons who negotiated with him in good faith. This is not a claim of joint invention but rather that the invention was not made by appellant.

Appellees contend that Hobbs was shown not to be the inventor of what patent Re. 23,272 discloses because the idea or principle of invention, that is, a high pressure valve with a pressure seal joint, was disclosed to him in March of 1937 by an advertisement for the Bredtschneider United States patent number 2,029,606. That advertisement described the patent of a high pressure seal and stated it was available for use in pressure vessels such as valves. The findings of fact further show, appellees point out, that appellant...