Honeywell, Inc. v. Diamond
| Decision Date | 24 September 1980 |
| Docket Number | Civ. A. No. 79-2283. |
| Citation | 208 USPQ 452,499 F. Supp. 924 |
| Parties | HONEYWELL, INC., Plaintiff, v. Sidney A. DIAMOND, Commissioner of Patents and Trademarks, Defendant. |
| Court | U.S. District Court — District of Columbia |
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Andrew E. Taylor, Walter C. Gillis, Arlington, Va., Sheldon W. Witcoff, L. Michael Jarvis, Chicago, Ill., Charles G. Merserequ, Clyde Blinn, Minneapolis, Minn., for plaintiff.
Joseph F. Nakamura, Sol., Fred E. McKelvey, Associate Sol., U. S. Patent & Trademark Office, Washington, D. C., for defendant.
Following denial of its application by the Patent and Trademark Office for a patent on a two-wire time-controlled thermostat, plaintiff invoked 35 U.S.C. § 145 (1976) and pressed its claims before this Court in a trial de novo. The Court has filed Findings of Fact and Conclusions of Law separately and submits this Memorandum to amplify the legal issues that have been fully briefed and argued by the parties.
As the conclusions of law state, the Court has determined that plaintiff has met only the first two requirements and failed as to the third, thus requiring that judgment be entered for defendant.
The Board of Appeals determined that plaintiff's application revealed claims that were obvious over the prior art. See R-246 to 253. Similarly, the patent examiner had found that "Since Schaf is concerned with providing an alternate power source for a timer motor, the Examiner considers that it would be obvious to modify Nelson et al. by the addition of such a Schaf circuit." R-128. Plaintiff bears the burden of proof in demonstrating that its invention — contrary to the Patent Office finding — is not obvious. DeSeversky v. Brenner, 424 F.2d 857, 858 (D.C. Cir. 1970).
To test obviousness, the finder of fact must review the prior art, the differences between the prior art and the claims at issue, and the skill that could be expected of those working in the art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966). Id. at 17-18, 86 S.Ct. at 694; see Scandiamant Aktiebolag v. Commissioner of Patents, 509 F.2d 463, 466 (D.C. Cir. 1974).
The defendant set forth the prior art. The Nelson patent involves a thermostat with a "box" in the basement to provide the power necessary for the set-back function, while the Schaf patent discloses a clock powered by a rechargeable power source. The differences between the prior art and the device set forth by plaintiff were discussed at length both at trial and before the patent examiner and the Board of Appeals. Although it is difficult to determine exactly every difference between the plaintiff's invention and some combination of Schaf and Nelson, it is clear that no combination of the Nelson and Schaf patents eliminates the need for additional circuitry in the basement — away from the main thermostat unit — in order to achieve the set-back function. Because the expressed goal of plaintiff's efforts in developing the Kompelien invention was to eliminate the need for additional circuitry, and thus ease installation and reduce expense, it is apparent that plaintiff's invention, which is self-contained and does not need additional circuitry elsewhere, involves more than just a combination of the two prior patents cited.
Although those skilled in the enterprise would realize that the Nelson and Schaf patents could not simply be superimposed to create a new thermostat, it is not at all evident that one skilled in the art could make the further adjustments necessary to create plaintiff's device. Indeed, the evidence is otherwise. Nelson himself, testifying at trial, stated that his patent and the combination of his patent with Schaf's did not render the Kompelien device obvious. See Tr. 72-74. What persons actually did in the prior art is indicative of the level of ordinary skill in the art, U.S. Philips Corp. v. National Micronetics, Inc., 550 F.2d 716, 722 (2d Cir.), cert. denied, 434 U.S. 859, 98 S.Ct. 183, 54 L.Ed.2d 131 (1977), and in this case it took researchers more than a decade to perfect and market a set-back thermostat of the type plaintiff seeks to patent. The solution of a long-standing problem in the art is evidence that the combination was not obvious, as is the commercial success of the invention. Graham v. John Deere Co., supra, 383 U.S. at 17-18, 86 S.Ct. at 693-694; Pollack v. Ladd, 346 F.2d 799, 800 (D.C. Cir.), cert. denied, 382 U.S. 893, 86 S.Ct. 182, 15 L.Ed.2d 150 (1965).
Defendant contends — with some merit — that the delay in marketing a two-wire time-controlled set-back thermostat came not from technical difficulties, but from the problem of securing inexpensive yet accurate components that would make such a thermostat commercially successful. To this extent, defendant argues, any solution of a long-standing problem or evidence of commercial success of the invention claimed cannot be given much weight in determining whether or not it was obvious. Defendant's argument, however, only minimizes and does not eliminate the fact that commercial success and satisfaction of a long-felt need are indicia that plaintiff has gone beyond the prior art in some way that involves inventiveness.
The parties have wrangled at length over the weight to be given the decision in Robertshaw Controls Co. v. Emerson Electric Co., C.A. No. 6-71848 (E.D. Mich. 1978). In that decision, the claims in the Perkins patent identical to those of plaintiff were held not obvious over the prior art. There are two difficulties, however, in placing too much reliance on the Michigan decision: the prior art considered by that Court differed from the prior art here, and the decision was later withdrawn pursuant to a stipulation of the parties dismissing the case.1 Without deciding precisely what weight those differences should be given, it is simply worth noting in support of the conclusion here that the same claims were upheld as not obvious by a federal district court that ruled on the merits.
For all these reasons, the Court finds that the Kompelien patent is not obvious in light of the prior art, and thus satisfies that criterion as set forth in 35 U.S.C. § 103 (1976).
These requirements must be satisfied separately. In re Newton, 414 F.2d 1400, 1406 (C.C.P.A.1969). Because defendant is the party asserting noncompliance, it bears the burden of persuasion. Weil v. Fritz, 601 F.2d 551, 555 (C.C.P.A.1979).
There is no serious question that plaintiff satisfies the first prong of this test. The issue is whether plaintiff — by failing to disclose the Quartzmatic motor — failed to set forth the best mode contemplated by the inventor for carrying out his invention. Plaintiff asserts, and the evidence adduced at trial demonstrates, that the Quartzmatic clock motor was both widely known in the art and publicly available. See Finding of Fact 35. Plaintiff notes, quite correctly, that "an applicant for a patent need not expressly set forth in his specification matters which are commonly understood by persons skilled in the art," Lundy Electronics & Systems, Inc. v. Optical Recognition Systems, Inc., 362 F.Supp. 130, 152 (E.D.Va.1973), affirmed, 493 F.2d 1222 (4th Cir. 1974) (citing In re Johnson, 282 F.2d 370, 372 (C.C.P.A.1960)). Furthermore, plaintiff notes that its competitors in marketing time-controlled two-wire thermostats used a different clock motor; this is evidence, plaintiff suggests, that disclosing a particular brand was not essential.
Defendant, in opposition, points out that plaintiff could have applied for a patent on the Kompelien invention in 1963, but chose not to do so because plaintiff could not obtain a clock motor suitable for its use. When plaintiff did find a clock motor — after a 10-year search — it failed to disclose that motor in its patent application. Defendant contends that this failure is commensurate with the failure of Union Carbide to disclose a known valve, see Union Carbide Corp. v. Borg-Warner Corp., 550 F.2d 355, 361 (6th Cir. 1977), or the failure of Reynolds Metal Company to disclose a known epoxy resin and a filler that had been used successfully, see Reynolds Metals Co. v. Acorn Building Components, Inc., 185 U.S.P.Q. 30, 32, 36 (E.D.Mich.1975), affirmed, 548 F.2d 155, 163 (6th Cir. 1977).
Certainly it would have been preferable for plaintiff to have disclosed in greater detail the components it found best suited for use in constructing the Kompelien invention. Plaintiff's competitor, the ...
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