Jamesbury Corp. v. Litton Indus. Products, Inc., 6

• Court: U.S. Court of Appeals — Second Circuit
• Writing for the Court: Before OAKES, GURFEIN and MESKILL; GURFEIN
• Citation: Jamesbury Corp. v. Litton Indus. Products, Inc., 586 F.2d 917, 199 USPQ 641 (2nd Cir. 1978)
• Decision Date: 23 October 1978
• Docket Number: No. 6,D,6
• Parties: JAMESBURY CORPORATION, Appellant, v. LITTON INDUSTRIAL PRODUCTS, INC., Appellee. ocket 78-7004.

Page 917

586 F.2d 917

199 U.S.P.Q. 641

JAMESBURY CORPORATION, Appellant, v. LITTON INDUSTRIAL PRODUCTS, INC., Appellee.

No. 6, Docket 78-7004.

United States Court of Appeals Second Circuit.

Argued Sept. 11, 1978.

Decided Oct. 23, 1978.

Arthur I. Neustadt, Arlington, Va. (Robert C. Miller and Oblon, Fisher, Spivak, McClelland & Maier, Arlington, Va., and J. Read Murphy and Murtha, Cullina, Richter & Pinney, Hartford, Conn., of counsel), for appellant.

John A. Diaz, New York City (J. Robert Dailey and Morgan, Finnegan, Pine, Foley & Lee, New York City, and Thomas F. Parker and Gross, Hyde & Williams, Hartford, Conn., of counsel), for appellee.

Before OAKES, GURFEIN and MESKILL, Circuit Judges.

GURFEIN, Circuit Judge:

This is an appeal from a summary judgment in favor of an alleged Direct infringer in a patent infringement case. The issue on appeal is whether summary judgment was properly granted against the patentee on the ground that claims 7 and 8 of appellant's Patent No. 2,945,666, entitled "Ball Valve", are invalid for overclaiming. Having found the patent invalid for overclaiming, the District Court did not reach the question of novelty or obviousness, nor the question of whether there has been an infringement. ¹

The District Court of Connecticut (Hon. M. Joseph Blumenfeld, Judge) held the claims invalid on the authority of Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938), which we discuss below. We are called upon to interpret the test for patent overclaiming established by this precedent of a generation ago, and to determine its applicability to the facts of the present case.

The patent claims involved in this case disclose a ball valve, comprised of a valve chamber, a ball, and a seat or seal. ² The basic mechanism has been in use for at least fifty years, ³ though it has been found that "(p)rior to the development of the plaintiff's patented valve, ball valves were not generally accepted or used by industry". Jamesbury Corp. v. United States, 518 F.2d 1384, 1386, 207 Ct.Cl. 516 (1975). It is designed to control the flow of fluid in both directions through pipelines. The chamber has both an inlet and an outlet opening. The ball, which is mounted for rotation, has a passage bored through it. When the ball is rotated to an "open" position, the passage is aligned with the chamber openings so as to permit flow. When rotated to a "closed" position, the passage is at a right angle to the chamber openings, and the surface of the ball operates to cut off flow. The seal or seat has two purposes. It holds the ball in place and it seals the junction between ball and chamber to prevent leakage. Two such seals are often employed, one on either side of the ball. ⁴

As the preamble to appellant's patent indicates, ⁵ the claimed novelty of its invention lies primarily in the seal. The patent is addressed to the "especially difficult sealing problem" occasioned by use of ball valves for handling corrosive or radioactive materials and fluids at high temperature in various industrial settings. The essence of this problem is that "(i)t is essential to form a perfectly tight seal between the ball and the seat, usually on both the upstream and downstream side," while at the same time permitting the valve to "open and close easily." The preamble states that the principal object of the invention is "to produce a valve seat construction which provides maximum security against leakage, which reduces wear on the seats to a minimum, and which ensures smooth opening and closing of the valves." To achieve this purpose, the ball and valve "may be of generally conventional construction." They are to be used, however, in combination with the new sealing element. The seal, which is given a more technical description in claims 7 and 8, has a lip which remains in constant contact with the ball, which may flex to permit rotation and reduce wear, but which is so constructed and placed that it remains tight against the surface of the ball at all times.

The District Court did not reach the question whether the sealing element, considered in isolation, had enough novelty to be patentable. Instead, it addressed itself to the question whether by claiming patentability for the valve, ball and seal, in combination, the plaintiff had overclaimed and hence forfeited its claim to patentability.

The same patent was in suit in Jamesbury Corp. v. United States, supra. ⁶ The Court of Claims adopted the trial opinions of then Commissioner Lane and Trial Judge Colaianni. The first of these opinions held that Jamesbury's ball valve, with its new seal, "solved the problems of temperature variation, pressure variation, and valve wear" which had been inherent in prior art. Id., 518 F.2d at 1387. Solution of these problems was made possible by employment of "a novel sealing ring utilizing a principle different from . . . compression sealing rings" known to prior art. Id. The importance of the innovation was emphasized by reference to the Jamesbury valve's striking commercial success. Id. ⁷ The second opinion by Judge Colaianni upheld the patent against a claim of anticipation by prior art patents. Id. at 1398-99.

In rendering summary judgment for appellees, Judge Blumenfeld does not appear to have taken issue with the novelty of the sealing ring itself. ⁸ Instead, perceiving that claims 7 and 8 distinctly extend to the ball and valve casing as well as the seal, he treated the patent as an attempt to claim a combination of elements: a ball, a valve, and by virtue of improvement in a single element of the ball valve a sealing ring. Cf. Lincoln Engineering Co. v. Stewart-Warner Corp., supra; Bassick Mfg. Co. v. R.M. Hollingshead Co., 298 U.S. 415, 56 S.Ct. 787, 80 L.Ed. 1251 (1936); Holstensson v. V-M Corp., 325 F.2d 109 (6th Cir. 1963), Cert. denied, 377 U.S. 966, 84 S.Ct. 1646, 12 L.Ed.2d 736 (1964).

The District Court applied the test for combination patents advanced by Lincoln Engineering, supra, 303 U.S. at 549, 58 S.Ct. 662, which purportedly requires disclosure of a "new function". The District Court found that no new function was disclosed:

There is nothing to indicate that a ball valve incorporating the new seal performs any "additional or different function" than other ball valves. It does not function in a new manner. It may be more efficient or durable, but it does what ball valves have always done. Cf. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). Even the use of a seat/seal in a ball valve was not new. . . . The patentee may have invented a seat and seal suitable for use in a ball valve, but there is not the slightest doubt that the plaintiff did not invent a ball valve.

442 F.Supp. at 267-68. The court thus rejected appellant's contention that patentability can be based on an "improved result," as well as the contention that this combination performs a novel Sealing function. Although the Judge intimated that the sealing ring itself might have been patentable, he found the claim for the combination, with the conventional elements added, to be fatally overbroad. On this view of the case, the court held, quite properly, that if the claims were, indeed, overbroad, resort could not be had to the specifications in an attempt to limit the patent to its single novel element. See Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 277, 69 S.Ct. 535, 93 L.Ed. 672 (1949); Cf. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 149, 71 S.Ct. 127, 95 L.Ed. 162 (1950). Claims 7 and 8 were therefore declared invalid in their Entirety. The court thus found the patent invalid for overclaiming. The District Court excluded from consideration the earlier decision of the Court of Claims upholding the validity of the same patent, because it believed that the issue of overclaiming had not been presented to the Court of Claims.

Subsequent events indicate that the District Court may have been unwittingly in error when it made that assumption. A memorandum of the Court of Claims in Jamesbury v. United States, supra, Nos. 189-63; 520-71 (June 2, 1978) after Judge Blumenfeld's decision, states that the issue of overclaiming Was raised in that case and was rejected, without discussion. Because the present case involves a different defendant and is before a different court, the earlier decision on the issue of overclaiming is neither "law of the case" nor binding precedent in this circuit. Nonetheless, we think that the contrary decision of the Court of Claims should give us pause in considering the propriety of a summary judgment in favor of the opponent of the same patent. ⁹

The issue in this case is a narrow one. We do not believe that it concerns an attempt to patent a combination, All the elements of which are old. See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. at 151-53, 71 S.Ct. 127. See also Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 59, 90 S.Ct. 305, 307, 24 L.Ed.2d 258 (1969) ("Each of the elements combined in the patent was known in the prior art."). Nor does it involve a patent where the interrelationship of the elements is a matter of convenience rather than necessity, and where each element could adequately perform its designed function in isolation. See Anderson's Black Rock, Inc. v. Pavement Salvage Co., supra, 396 U.S. at 60, 90 S.Ct. 305. Instead, we have a combination with one element, the seal, which is distinctly novel but which is "capable of serving no useful function alone." Rosen v. Lawson-Hemphill, Inc., 549 F.2d 205, 209, n.2 (1st Cir. 1976). As a matter of utility, the novelty lies in the very combination of valve, ball and sealing ring.

If we were to apply the premise of the District Court, its reasoning would be...