Jervis B. Webb Co. v. Southern Systems, Inc., 84-568

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore KASHIWA, BENNETT, and SMITH; KASHIWA
Citation742 F.2d 1388,222 USPQ 943
PartiesJERVIS B. WEBB COMPANY, Appellant, v. SOUTHERN SYSTEMS, INC., Appellee.
Docket NumberNo. 84-568,84-568
Decision Date16 August 1984

Neal A. Waldrop, argued, Troy, Mich., for appellant; Thomas R. Prewitt, Memphis, Tenn. and Christopher J. Webb, Farmington Hills, Mich., on brief.

John R. Walker, III, argued, Memphis, Tenn., for appellee.

Before KASHIWA, BENNETT, and SMITH, Circuit Judges.

KASHIWA, Circuit Judge.

This is an appeal from a judgment of the United States District Court for the Western District of Tennessee (Civil Action No. 80-2465-M), entered September 7, 1983. The district court declared that claims 1-12 of appellant's patent, U.S. Patent No. 3,451,352 (the "352 patent") were invalid. The district court, accordingly, dismissed appellant's complaint and entered judgment against appellant. We affirm in part and vacate in part.

The Invention

Appellant's invention relates to a power and free conveyor for carrying heavy loads such as automobile parts in a factory. The invention is best illustrated by the broadest independent claim of the patent:

1. A conveyor including a track for supporting a load carrier having a main driving dog movable between non-driving and driving position and engageable in the latter position by a pusher of a propelling member, and an auxiliary dog located on the carrier in longitudinally spaced trailing relation to the main dog with respect to the forward direction of carrier movement, characterized by means mounting the auxiliary dog on the carrier for movement between an operative position in which the auxiliary dog is engageable by a pusher and an inoperative position in which the auxiliary dog is not so engageable, means normally urging the auxiliary dog to one of said positions, and cam and follower means mounted on the carrier and on the carrier

supporting track for moving the auxiliary dog to the other of said positions independently of any change in position of the main driving dog

All nonessential reference numerals are deleted from the drawings in this opinion.


As best shown in Figure 2 of the '352 patent, a load carrier 10 carries a load (unnumbered). Load carrier 10 includes a front trolley 12 and a rear trolley 14. Each trolley has rotary wheels which travel in a track 15 that is comprised of rails 16 and 17, as best shown in Figure 4.



As best shown in Figures 2 and 6, front trolley 12 includes a main driving dog 1 (projection) 18 and a holdback dog 20. Rear trolley 14 includes a supplementary

driving dog 22. When trolleys 12 and 14 are travelling under the power of forwarding propelling chain 24, they are propelled by pushers 30 which travel on track 25; when trolleys are travelling under the power of receiving propelling member (chain) 32, they are propelled by pushers 34 which travel on track 35



Both main driving dog 18 and holdback dog 20 are normally in operative (up) positions, as shown by dotted lines in Figure 6. Supplementary dog 22 is normally in an inoperative (down) position, as best shown in Figure 3. It is urged to the inoperative position by a counterweighted nose 52. Holdback dog 20 moves to the inoperative position and supplementary driving dog 22 moves to the operative position at a junction of two power tracks, e.g., forwarding chain 24 and receiving chain 32.

In operation, a pusher 30 catches a main driving dog 18 which is in its normally up position. Pusher 30 is trapped between dog 18 and holdback dog 20, also in its normally up position. As load carrier 10 approaches the junction, a cam member 60 secured to lower track 15 engages follower 56 of dog 22, forcing supplementary dog 22 to its operative position, as best shown in Figure 5. A trailing pusher 30 then catches supplementary dog 22.

In transferring load carrier 10 from forwarding chain 24 to receiving chain 32, pusher 30 first disengages from dog 18 when track 25 diverges from the forward direction. Load carrier 10, however, is still going in the forward direction on track 15 due to a trailing pusher 30 that is still pushing supplementary dog 22. To prevent interference between a pusher 34 of receiving chain 32 (as it tries to catch dog 18) and holdback dog 20, a cam member 64a mounted on track 15, as shown in Figure 2, engages follower pin 54 of dog 20, causing holdback dog 20 to move to an inoperative position. Having engaged main driving dog 18, pusher 34 propels load carrier 10 forward even after the disengagement of trailing pusher 30 with supplementary dog 22.

As carrier 10 crosses the junction, supplementary dog 22 moves to its normally inoperative position when it reaches the end of cam 60, and holdback dog 20 returns to its normally operative position at the end of cam 64a.

For stopping load carrier 10, a carrier stopping device 40 is used, as best shown in Figures 1, 3, and 6. As front trolley 12 approaches stopping device 40, a cam 64b mounted on track 35 cams holdback dog 20 to its inoperative position and a plate of device 40 depresses driving dog 18 to an inoperative position. The engagement of the stopping plate with abutment surface 70 of holdback dog 20 stops the forward movement of load carrier 10.

District Court Proceeding

Appellant, Jervis B. Webb Company ("Webb"), asserted infringement of claims 1, 3 and 11 of its '352 patent by appellee, Southern Systems, Inc. ("Southern"). Southern, in turn, filed a declaratory judgment counterclaim that asserted invalidity and noninfringement of claims 1-12, all of the claims of the '352 patent. In addition, the district court denied Webb's pre-trial motion to substitute infringement of claim 9 for infringement of claim 11.

After a bench trial, the district court invalidated the claims of the '352 patent on

two grounds. First, claims 1 and 11 were found to have been anticipated by British Patent No. 819,343 (the "British Orwin patent"). Next, claims 1-12 were found to have been obvious in light of the prior art. The district court also denied Webb's post-trial motion to amend the pleadings to conform to trial evidence of infringement of claim 9 OPINION

Since the obviousness issue is dispositive of this case, we need not and do not reach the anticipation issue. In its obviousness analysis, the district court enunciated several incorrect, albeit harmless, points of law. First, the district court stated that "there is no synergism produced by the combination of old elements of the '352 patent." We, however, have stated several times that synergism is not a necessary element in an obviousness determination. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1349-50, 220 USPQ 777, 786 (Fed.Cir.1984) (en banc). 2 Since the district court properly analyzed obviousness under the tests mandated by 35 U.S.C. Sec. 103 and Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-694, 15 L.Ed.2d 545 (1966), its reliance on lack of synergism in this case is harmless. Gardner, 725 F.2d at 1350, 220 USPQ at 786.

Next, the district court implied that a combination of old elements is less worthy of patent protection than other types of invention. We have also stated numerous times that the conditions for patentability of so-called combination inventions are the same as those for other inventions. Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563, 1566, 220 USPQ 97, 99-100 (Fed.Cir.1983). 3 In light of the district court's Graham analysis, we also find this error to be harmless. Id., 721 F.2d at 1566, 220 USPQ at 100.

Last, the district court misapplied the presumption of patent validity as enunciated in 35 U.S.C. Sec. 282. The district court stated that since "[t]he most relevant prior art [the British Orwin patent] * * * was not cited by the Patent Office during the prosecution of the application which matured into the '352 patent * * *[,] * * * any presumption of validity which the '352 patent may have had is largely, if not wholly vitiated." We, however, disagree. Regardless of the prior art introduced by the party asserting invalidity, the presumption remains intact. Leinoff v. Louis Milona & Sons, Inc., 726 F.2d 734, 738, 220 USPQ 845, 847-48 (Fed.Cir.1984). Rather, the party asserting invalidity, having offered new prior art, would be more likely to carry the burden of persuasion imposed by section 282. 4 American Hoist & Derrick

Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1358-60, 220 USPQ 763, 769-71 (Fed.Cir.1984). In this case, however, the error was harmless since the district court did not shift the burden. Medtronic, 721 F.2d at 1567, 220 USPQ at 100

A determination of obviousness is a question of law that is subject to a full and independent review by an appellate court. Gardner, 725 F.2d at 1344, 220 USPQ at 782. Such a determination of obviousness must be based on a set of factual inquiries which are mandated by 35 U.S.C. Sec. 103. Graham, supra. These factual inquiries cannot be overturned unless they are clearly erroneous. Fed.R.Civ.P. 52(a); United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 541, 92 L.Ed. 746 (1948). Each of the factual inquiries will be discussed separately below.

A. Scope and Content of the Prior Art

The first element of the obviousness test enunciated in Graham is scope and content of the prior art. In this regard, the district court discussed thirteen United States and foreign patents all of which except the '645 and '942 patents, infra, were not before the examiner during the prosecution of the patent at issue.

The district court found that U.S. Patent No. 3,229,645 (the " '645 patent"), which was considered by the examiner, disclosed a system that is similar...

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