King-Seeley Thermos Co. v. Refrigerated Dispensers, Inc., 8016.

• Decision Date: 27 December 1965
• Docket Number: No. 8016.,8016.
• Parties: KING-SEELEY THERMOS CO., Appellant, v. REFRIGERATED DISPENSERS, INC., Diamond Ice Machine Company, and the Diamond Corporation, Appellees.
• Court: U.S. Court of Appeals — Tenth Circuit

354 F.2d 533 (1965)

KING-SEELEY THERMOS CO., Appellant, v. REFRIGERATED DISPENSERS, INC., Diamond Ice Machine Company, and the Diamond Corporation, Appellees.

No. 8016.

United States Court of Appeals Tenth Circuit.

December 27, 1965.

Don K. Harness, of Harness, Dickey & Pierce, Detroit, Mich. (Crowe, Boxley, Dunlevy, Thweatt, Swinford & Johnson, Oklahoma City, Okl., and Cyrus G. Minkler, Detroit, Mich., with him on the brief), for appellant.

Morris Spector, Chicago, Ill. (Head & Johnson and Paul H. Johnson, Tulsa, Okl., with him on the brief), for appellees.

Before PHILLIPS, PICKETT and HILL, Circuit Judges.

PICKETT, Circuit Judge.

The appellant, King-Seeley Thermos Company, is a Michigan corporation and the owner of U.S. Letters Patent Nos. 2,753,694, (694), and 3,034,311, (311), relating to machines for making flaked ice.¹ It brought this action alleging that the appellees were committing acts of infringement upon the aforesaid patents. By answer, the appellees denied infringement and alleged invalidity of the patents in suit on various grounds, and by counterclaim asked for a judgment declaring the patents involved to be invalid and not infringed. The trial court held that the patents were invalid and that Claim 4 of Patent 694, and Claim 9 of Patent 311 were not infringed.

The machines defined in plaintiff's two patents are designed to manufacture saleable flake ice under varying conditions. They consist of a vertical, elongated, cylindrical freezing compartment which is surrounded by a freezing jacket. Water is supplied to the cylinder through an inlet tube near the bottom, and is maintained at a uniform level. Within the freezing compartment is a rotatable auger with its blades closely fitted to the cylinder wall. The auger is rotated by a motor at a speed which permits ice to be frozen on the cylinder wall. The thin layer of ice is then scraped from the cylinder wall by the action of the auger blades, and conveyed upward as a hollow column of ice. When the ice reaches the top of the cylinder it is saturated with water trapped between the thin layers, and is unusable "slush ice."

The upper end of the cylinder is closed, with a stationary solid bronze unit extending downward within the cylinder to a point above the upper portions of the auger. The unit is referred to as a "breaker-head" in the 694 machine, the lower end having a beveled surface for peeling the ice from the auger and breaking and deflecting the column of slush ice and changing its direction as it is conveyed upward. Inside the breaker-head is a stainless steel "bushing", or bearing, to keep the upper end of the auger shaft steady.

As to the 694 patent, Claim 4 is the only one in suit. It reads:

"4. An ice chip producing machine comprising

an elongated freezing chamber having an open end,

means for supplying water to the inside of said freezing chamber, means for cooling at least a portion of said freezing chamber to freeze ice on the inside surface thereof,

an ice conveying auger rotatably mounted in the freezing chamber with its spiral edge disposed in closely spaced relation to the inside wall of said chamber,

means for constantly rotating the auger to cause said spiral edge to shear off ice frozen on the inside wall of the chamber constantly to deliver ice to said open end of the freezing chamber,

and an outwardly inclined ice disintegrating and removing member positioned in said open end of the chamber and provided with an ice peeling mold-board-like surface positioned to engage ice carried by the auger,

said constant rotation of the auger serving positively and constantly to convey ice to and force it against said mold-board-like surface to break up and positively remove ice from the auger and discharge it as discrete ice chips."

The trial court held that all the elements of this claim are old in the art, and disclosed in the Bartlett Patent No. 2,418,746, and a machine invented by Nitsch and incorporated in a machine furnished to plaintiff's successor by Nitsch and Hamner.

It is undisputed that as the ice column is pressed against the "mold-board-like" surface of the breaker-head by the upward movement of the auger, it is broken up, thereby releasing the entrapped water to such an extent that relatively dry, discrete ice chips are discharged through windows in the cylinder wall into a storage bin in a condition which prevents welding or packing together.

Prior to the year 1950 there was a substantial commercial and industrial demand for crushed or flaked ice. Local ice dealers generally satisfied this demand by crushing blocks of ice or ice cubes. There was no machine on the market which would manufacture a suitable or saleable ice flake. John M. Nitsch and George F. Hamner of Tuscaloosa, Alabama, experimented for years attempting to perfect such a machine, but they were not successful. However in 1952, Nitsch was issued U.S. Letters Patent No. 2,597,515. Prior to this time King-Seeley's predecessor was engaged in the manufacture and sale of automatic ice cube machines. It learned of the Nitsch and Hamner efforts and arranged for delivery of the machine to its factory in Michigan. Plaintiff obtained a license from Nitsch, and thereafter acquired the patent.

The success of a flake-ice producing machine of this type depended upon a practicable method of freezing the water to a proper consistency and then removing the excess water therefrom. Nitsch and Hamner had experimented with a triangular sheet metal ice splitter² at the top and outside of the cylinder, but the only reliable evidence reveals that it did not tend to solve the difficulties, and the machines continued to produce only unsaleable ice. King-Seeley's engineers unsuccessfully experimented for months with the Nitsch machine, both with and without the ice splitter. It was not until the development of the combination of the auger-freezing chamber arrangement and the breaker-head device of patent 694 by which excess water was removed from the ice, that a successful machine was produced.³ For efficiency purposes, the original 694 breaker-head was improved by placing on it two beveled surfaces which divided the ice column. There was pressure against each of the beveled surfaces in the same general manner as when there was but one curved, or beveled, surface. The ice was then discharged from the cylinder through two openings rather than one. The success of this machine, simple as it may seem in retrospect, resulted from the use of the breaker-head in the top portion of the vertical freezing cylinder against which the column of thin ice layers is compressed, disintegrated and dewatered. It had immediate commercial success, as from 1952 to 1963 approximately 80,000 units were sold for about $50,000,000.⁴ After considering the Nitsch machine and others, the patent office issued letters patent No. 694.

There is no substantial conflict in the evidence as to the foregoing facts. It was contended by King-Seeley in the trial court, as it is here, that while all the elements of its machines, as disclosed in Patents 694 and 311, may not be new to the art, the combination of these elements in its machines, which were the first to produce flake ice acceptable to the market, was an invention subject to patent. We agree with this contention.

It is elementary patent law that a regularly issued patent is presumed valid, and a party asserting invalidity has the burden of establishing such invalidity by clear and convincing evidence. 35 U.S.C. § 282; Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed. 983; M. B. Skinner Co. v. Continental Industries, Inc., 10 Cir., 346 F.2d 170; McCullough Tool Co. v. Well Surveys, Inc., 10 Cir., 343 F.2d 381; Mott Corp. v. Sunflower Industries, Inc., 10 Cir., 314 F.2d 872; Admiral Corp. v. Zenith Radio Corp., 10 Cir., 296 F.2d 708; Bewal, Inc. v. Minnesota Mining and Mfg. Co., 10 Cir., 292 F.2d 159; Jamco, Inc. v. Carlson, 10 Cir., 274 F.2d 338. One asserting the invalidity of a patent on the ground of anticipation in the prior art has the same burden of proof. Mott Corp. v. Sunflower Industries, Inc., supra, 314 F.2d at 879; Consolidated Electro. Corp. v. Midwestern Instruments, 10 Cir., 260 F.2d 811; Hollywood-Maxwell Co. v. Street's of Tulsa, 10 Cir., 183 F.2d 261.

A combination of various elements already known to the art is patentable if it accomplishes either a new or an old result "in a more facile, economical, and efficient way in a particular environment which presented peculiar and difficult problems." Consolidated Electro. Corp. v. Midwestern Instruments, supra, 260 F.2d at 816; Oliver United Filters v. Silver, 10 Cir., 206 F.2d 658, 662; Harris v. National Machine Works, 10 Cir., 171 F.2d 85, 88, cert. denied 336 U.S. 905, 69 S.Ct. 491, 93 L.Ed. 1070, reh. denied 336 U.S. 929, 69 S.Ct. 655, 93 L.Ed. 1090. As said in Mott Corp. v. Sunflower Industries, Inc., supra, 314 F.2d at 879, "An invention or discovery is new or possesses the requisite element of novelty if it involves the presence of some element, or the new position of an old element in combination, different from anything found in any prior structure."

To be patentable, the machine or process must add to the existing art something new and useful which is not obvious to one of ordinary skill in the art pertaining to the subject matter. 35 U.S.C. § 103;⁵ Mott Corp. v. Sunflower Industries, Inc., supra; Admiral Corp. v. Zenith Radio Corp., supra. In more simple language, an alleged invention is not patentable if prior development by others was sufficient to make it obvious to a knowledgeable person, or if it is nothing more than an application of mechanical skill. Obviousness is to be determined as of the time when a solution of the problem was being sought, not after the time when the solution has been pointed out.

In determining whether an improvement is an invention or merely the work of a mechanic skilled in the art, simplicity of the improvement is...