John Zink Co. v. National Airoil Burner Co., Inc., 77-3071

• Decision Date: 12 March 1980
• Docket Number: No. 77-3071,77-3071
• Citation: 205 U.S.P.Q. 494,613 F.2d 547
• Parties: JOHN ZINK COMPANY, Plaintiff-Appellee Cross-Appellant, v. NATIONAL AIROIL BURNER COMPANY, INC., Defendant-Appellant Cross-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

Page 547

613 F.2d 547

205 U.S.P.Q. 494

JOHN ZINK COMPANY, Plaintiff-Appellee Cross-Appellant, v. NATIONAL AIROIL BURNER COMPANY, INC., Defendant-Appellant Cross-Appellee.

No. 77-3071.

United States Court of Appeals Fifth Circuit.

March 12, 1980.

Jack W. Hayden, Houston, Tex., Zachary T. Wobensmith, Philadelphia, Pa., for defendant-appellant cross-appellee.

James F. Weiler, Houston, Tex., James R. Head, Tulsa, Okl., for plaintiff-appellee cross-appellant.

Appeals from the United States District Court for the Southern District of Texas.

Before GOLDBERG, FAY and ANDERSON, Circuit Judges.

FAY, Circuit Judge:

John Zink Company (Zink) brought this action against National Airoil Burner Company, Inc. (NAO) for infringement of claims 5, 6, 8, and 10 of Zink's patent number 2,779,399 ('399 patent), for a Flare Stack Gas Burner, ¹ issued January 29, 1954. NAO denies that it infringed the patent, and claims that the patent is invalid and obvious in view of the prior art. NAO appeals from a judgment of $100,000 for Zink. Zink cross-appeals contesting the amount of damages. We affirm the district court's judgment.

I. FACTS

The subject matter of the '399 patent is a flare stack burner tip design for smokeless emission of waste gases. The petroleum refining and chemical process industries must periodically dispose of large quantities of hydrocarbons and inflammable materials, known in the industry as waste or dump gases. These waste gases are released through tall stacks and burned. Burning these materials is the only efficient means of disposal, yet the combustion must occur under stable conditions so that the burning gas is not extinguished by wind or rain, causing release of unburned toxic and inflammable gases into the air.

In the early 1950's, many communities adopted antismoke ordinances, which confronted the industries with the additional problem of burning their waste gases without smoke. Socony-Vacuum Oil Company asked Zink to design a smokeless flare for the tip of their smoke stacks. Earlier design attempts had failed because the extreme heat from burning gas would melt and cant the tip of the stack. The attempts of John S. Zink and Robert D. Reed to solve the problem led to the '399 patent.

During combustion, hydrocarbons often separate into the carbon and hydrogen molecules, a process called "cracking." The hydrogen burns rapidly, but the carbon burns very slowly. Black smoke results when unburned carbon escapes into the air. Dr. Reed learned that when the hydrocarbon waste gas has a higher molecular weight ratio of hydrogen to carbon, less smoke is emitted. ² This principle led to the notion of increasing the amount of hydrogen in the burning operation to increase the ratio. Steam vapor was used to supply the hydrogen. Dr. Reed concluded that for the reaction to occur the steam had to be injected at high speed above and into the emerging and already burning gases.

Figure 2 is a bird's-eye view of the plaintiff's invention; figure 3 shows a cross-section. Waste gases pass up the tube, emerge at the end of the tip (item 21), and are ignited by an external pilot (items 23, 26, 27). The manifold (item 46) encircles the tube and holds in place several nozzle pipes (items 48), which are slanted radially inward. These nozzles and other nozzles in the center of the tube (items 54, 56) inject steam into the gases as they combust.

Zink's invention permitted smokeless combustion of waste gases. Because the high velocity steam nozzles were open to the atmosphere, they also inspirated outside air into the burning gases which aided the burning, increased the heat, and improved efficiency in converting steam to hydrogen. The design also eliminated the need for a surrounding wind protective shroud. The district court found that Zink's design was the first to reveal and teach the concept of injecting steam from a plurality of points into the gases as combustion occurred above the point where waste gases emerged from the tip of the tube.

In 1970, NAO developed and marketed three smokeless flare burners. Zink brought this action claiming NAO's burners infringed the '399 patent. The district court, sitting without a jury, held the patent valid and infringed. The court then awarded $100,000 damages.

II. OBVIOUSNESS

A. Legal Standards

To receive a patent, the applicant must show that the invention is novel, useful, and nonobvious. 35 U.S.C. §§ 101, 102, 103 (1976). NAO first defends the infringement action by claiming the '399 patent is invalid because it was obvious. A patent cannot be issued

if the difference between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

Id. § 103. Obviousness is a question of law; its resolution, however, rests on factual inquiries. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545 (1966); Control Components, Inc. v. Valtek, Inc., 609 F.2d 763 (5th Cir. 1980); Robbins Co. v. Dresser Industries, Inc., 554 F.2d 1289 (5th Cir. 1977). The factual inquiries are reviewed under the clearly erroneous standard. Fed.R.Civ.Proc. 52(a); Cathodic Protection Service v. American Smelting & Refining Co., 594 F.2d 499, 506 (5th Cir. 1979). The factual inquiries are: (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the art. Graham v. John Deere Co., 383 U.S. at 17, 86 S.Ct. at 693; Control Components, Inc. v. Valtek, 609 F.2d at 766; Parker v Motorola, Inc. 524 F.2d 518, 531 (5th Cir. 1975). Secondary considerations include "(s)kepticism of experts, commercial success, long felt but unsolved needs, and the failure of others." Control Components, Inc. v. Valtek, 609 F.2d at 766; Citing United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

When the patent involves a combination of elements found in prior art, the claims are scrutinized "with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950). See Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976). The combined elements must perform a new or different function, produce "unusual or surprising consequences," or cause a synergistic result. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969); Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. at 151-53, 71 S.Ct. at 129-30; Parker v. Motorola, Inc., 524 F.2d at 534. Long-accepted factors that deter investigation, known disadvantages which discourage the search, and disbelief by experts in the combination's success are indications of a patentable combination. United States v. Adams, 383 U.S. at 52, 86 S.Ct. 714.

Generally, patents are presumed valid and the burden falls on the challenger to prove invalidity. 35 U.S.C. § 282 (1976). See White v. Mar-Bel, Inc., 509 F.2d 287 (5th Cir. 1975); Waldon, Inc. v. Alexander Manufacturing Co., 423 F.2d 91 (5th Cir. 1970). The burden is more than a mere preponderance of the evidence. Parker v. Motorola, Inc., 524 F.2d at 521. Nevertheless, the presumption of validity is not conclusive, Robbins Company v. Dresser Industries, Inc., 554 F.2d at 1290, and it can be weakened when the patent office has not considered all the prior art. Parker v. Motorola, Inc., 524 F.2d at 521.

B. Pertinent Prior Art

Before turning to the scope and content of the prior art, we must ascertain which of the some twenty-six specimens NAO submitted are relevant prior art for the '399 patent. The district court made the following findings:

16. A review of the prior art cited by the Defendant reveals the lack of relevance or materiality of such art and demonstrates that, because of the nature of the invention and the usage requirements in the waste gas flare industry, only the references of Schellentrager et al, Patent No. 2,506,972, and its companion article in Petroleum Processing, July 1950, pages 736-738; Rodman et al, U.S. Patent No. 2,537,091; Clevenger et al, U.S. Patent No. 2,661,798; Campbell et al, U.S. Patent No. 2,802,521, and its companion article in the Petroleum Processing, September 1950, pages 965-968; British Patent No. 430,738; and Green U.S. Patent No. 1,561,848 are pertinent.

17. The remaining patents cited by the Defendant are in many ways irrelevant and not considered pertinent, and deal, for example, with processes unrelated to smoke suppression using steam in burning gases. Many were concerned with burning after combustion has taken place in locomotives, smoke stacks, chimneys, or steam boilers.

Findings of Fact PP 16-17, Record at 203. The statute requires a search of "the art to which said subject matter pertains." 35 U.S.C. § 103 (1976). This circuit has interpreted this phrase as including prior art in analogous fields. Cathodic Protection Service v. American Smelting & Refining Co., 594 F.2d at 507-08. It is therefore necessary to review the subject matter of the prior art proffered by NAO. ³

Of the patents NAO claims the district court should have considered, ⁴ three were considered by the patent office and were not found to render the '399 patent obvious. These patents are Hanke, No. 919,309; Neff, No. 160,785; and Lampe, No. 2,433,463. The Lampe patent deals with nonanalogous spraygun art. ⁵ The Neff patent concerns a dissimilar arrangement for flame retention in face of wind. The German Hanke patent concerns burning of smoke, not smokeless burning. Upon review of the record, we hold that the conclusions of the Patent Examiner and the district court are supported by substantial evidence and are not clearly erroneous.

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