Johns-Manville Corp. v. Cement Asbestos Products Co.

• Decision Date: 13 July 1970
• Docket Number: No. 28659.,28659.
• Citation: 428 F.2d 1381
• Parties: JOHNS-MANVILLE CORPORATION, Plaintiff-Appellant, v. CEMENT ASBESTOS PRODUCTS COMPANY, Defendant-Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

428 F.2d 1381 (1970)

JOHNS-MANVILLE CORPORATION, Plaintiff-Appellant, v. CEMENT ASBESTOS PRODUCTS COMPANY, Defendant-Appellee.

No. 28659.

United States Court of Appeals, Fifth Circuit.

July 13, 1970.

Hobart A. McWhorter, Jr., Birmingham, Ala., C. Willard Hayes, John S. Hale, Washington, D.C., John A. McKinney, Joseph J. Kelly, Manville, N. J., for plaintiff-appellant; John S. Hale, Cushman, Darby & Cushman, Washington, D. C., of counsel.

Hugh P. Carter, Drayton T. Scott, L. Murray Alley, Birmingham, Ala., for defendant-appellee; Jennings, Carter, & Thompson, Cabaniss, Johnston, Gardner & Clark, Birmingham, Ala., of counsel.

Before TUTTLE, DYER and CLARK, Circuit Judges.

DYER, Circuit Judge:

In a suit brought by Johns-Manville Corporation (J-M) against Cement Asbestos Products Company (CAPCO) for infringement of Letters Patent No. 2,738,992, the District Court found Claims 1 and 2 invalid because of anticipation and obviousness; but if valid, there was infringement. J-M appeals. We affirm.

The patent in suit is entitled "Pipe Coupling" and is claimed to be an improvement in the field of couplings for joining the ends of pipes. It was granted to J-M as assignee of the inventor, Robert Heisler.

The validity of this patent has previously been considered by this Court in Italit, Inc. v. Johns-Manville Corporation, 5 Cir. 1964, 331 F.2d 663, cert. denied, 379 U.S. 836, 85 S.Ct. 71, 13 L.Ed. 2d 43. There we held the patent valid but not infringed by a coupling which worked on a V-ring principle. In that litigation, however, neither the Bell coupling nor other couplings considered by the District Court in this case were introduced into evidence. Because of the difference in parties and prior art there considered, that decision adjudging the patent valid is not binding on either principles of res judicata or estoppel by judgment. See Edward Valves, Inc. v. Cameron Iron Works, Inc., 5 Cir. 1961, 286 F.2d 933, 937, rehearing denied and decision modified, 289 F.2d 355, cert. denied, 368 U.S. 833, 82 S.Ct. 55, 7 L.Ed. 2d 34; Graham et al. v. Cockshutt Farm Equipment, Inc., 5 Cir. 1958, 256 F.2d 358.

Although a presumption of validity ordinarily attaches to patents that have survived the scrutiny of the Patent Office, this presumption rests on the fact that the approval is a species of "administrative determination supported by evidence." Beckman Instruments, Inc. v. Chemtronics, Inc., 5 Cir. 1970, 428 F. 2d 560. Accordingly, when a defendant in a patent infringement suit attacks the validity of a patent on the ground that it was issued without a consideration of prior art not submitted to the Patent Office, the basis for the presumption vanishes, and the presumption is significantly weakened. Beckman Instruments, Inc. v. Chemtronics, Inc., supra; Zero Manufacturing Co. v. Mississippi Milk Producers Ass'n, 5 Cir. 1966, 358 F.2d 853; Cornell v. Adams Engineering Co., 5 Cir. 1958, 258 F.2d 874. The file wrapper in the Heisler patent shows that the Patent Office did not consider the Bell coupling, discussed infra, or several other patents relied upon by CAPCO to show anticipation and obviousness.

The Heisler coupling device consists of a combination of an outer pipe, either a bell or a sleeve, in which there is an O-ring groove at each end, an O-ring gasket in each groove, and a shoulder on the inner pipe so located that, when pushed against the O-ring, further movement of the inner pipe relative to the outer pipe is arrested or stopped, thus assuring that the inner end of the pipe does not strike the bell or the end of another pipe when a sleeve is employed. The coupling thus affords end separation of the inner pipes which is especially important when asbestos-cement pipe is employed because asbestos-cement has the inherent characteristic of being expansible under increase in moisture content such as is encountered when put into water main service.¹ By providing space to permit expansion of the individual sections of the pipe the device avoids the establishment of a rigid, abutting engagement between pipe ends and the line as a whole is afforded greater flexibility. Flexibility is also afforded by the use of gaskets that seal on the O-ring principle. The essential characteristic of an O-ring seal is that the rubber gaskets are readily deformable because they do not fill the O-ring groove and, thus the gasket yields when pressure is applied by the pipe thereby allowing limited canting.² The combination of parts in the Heisler patent produces a joint that is leak-proof and resistant to blowout of gasket rings under high internal pressure while at the same time it is relatively easy to assemble even under adverse construction conditions. Its commercial utility is obvious.

The District Court found that important instances of prior art, in the form of patents, publications and prior uses within the United States, were proved and relied upon by CAPCO and that these were not made known either to the District Court or to the Court of Appeals in the Italit litigation and they were not considered by the Patent Office. The Court found that the following instances of prior art disclosed the precise combination of elements covered by the patent in suit and constituted literal anticipations of the same: Ulrich, U.S. Patent 2,533,640, Dec. 12, 1950; Earle et al., U.S. Patent 2,674,469 April 6, 1964; quick disconnect couplings of the Hansen Manufacturing Company; the catalogue of the Hansen Manufacturing Company with drawings disclosing the combination; quick disconnect couplings of the Breco Company; the so-called Bell Telephone conduit manufactured and sold by J-M and the J-M letter dated February 8, 1949, accompanying the drawing.

The District Court also found that, even if it were mistaken in holding that the instances of prior art specifically discussed in its findings of fact constituted anticipations of Heisler's Claims 1 and 2, the art as a whole, and, more particularly the Bell Telephone conduit coupling, rendered the claimed Heisler combination obvious within the purview of 35 U.S.C.A. § 103.³ Since we affirm on the ground of obviousness, it is unnecessary to reach the anticipation issue. Cf. Sisko v. Southern Resin & Fiberglass Corporation, 5 Cir. 1967, 373 F.2d 866, cert. denied, 389 U.S. 824, 88 S.Ct. 60, 19 L.Ed.2d 78; J. R. Clark Company v. Murray Metal Products Company, 5 Cir. 1955, 219 F.2d 313.

In Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, the Court construed the language of 35 U.S.C.A. § 103 to mean that a patent may not be obtained, although the invention has not been identically disclosed in the prior art, when the differences between the patent and the prior art are such that they would have been obvious to a person having ordinary skill in the art to which the subject matter pertains. Sisko v. Southern Resin & Fiberglass Corporation, supra, 373 F.2d at 868; accord, Up-Right, Inc. v. Safway Products, Inc., 5 Cir. 1966, 364 F.2d 580.

In determining the legal question of the validity or invalidity of a patent due to obviousness, Graham requires that the Court establish the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art at the time of the invention under attack.

In this case the District Court found that the most important part of the prior art, as to both scope and content, was a coupling made by J-M in 1948.⁴ A drawing of the coupling, together with specifications concerning it, were sent by J-M to...