Koppers Company v. Foster Grant Co., 6971.

• Decision Date: 06 June 1968
• Docket Number: No. 6971.,6971.
• Citation: 396 F.2d 370
• Parties: KOPPERS COMPANY, Inc., Plaintiff, Appellant, v. FOSTER GRANT CO., Inc., Defendant, Appellee.
• Court: U.S. Court of Appeals — First Circuit

396 F.2d 370 (1968)

KOPPERS COMPANY, Inc., Plaintiff, Appellant, v. FOSTER GRANT CO., Inc., Defendant, Appellee.

No. 6971.

United States Court of Appeals First Circuit.

June 6, 1968.

Melvin R. Jenney, Boston, Mass., with whom Wayne L. Benedict, William L. Mathis, Washington, D. C., Kenway, Jenney & Hildreth, Boston, Mass., and Burns, Doane, Benedict, Swecker & Mathis, Washington, D. C., were on the brief, for appellant.

Malvin R. Mandelbaum, New York City, with whom Harold M. Willcox, Boston, Mass., Theodore S. Kenyon, James H. Callahan, New York City, Leroy G. Sinn, Leominster, Mass., and Kenyon & Kenyon, New York City, were on the brief, for appellee.

Before ALDRICH, Chief Judge, McENTEE and COFFIN, Circuit Judges.

ALDRICH, Chief Judge.

This is an appeal from a decision of the district court holding Grim Patent No. 2,673,194, issued March 23, 1954, invalid for want of invention. The patent is for a formula or process for polymerizing monomers¹ which, concededly, achieved great commercial success in a field crowded with method, but none of which had afforded practical, large-scale production. Grim produced polymer beads of consistent quality, of high molecular weight and of assured clarity, by use of a relatively low ratio of processing water, a combination which even defendant's expert, one DeBell, conceded was "indeed * * * a contribution."² The question is whether the district court's finding, 269 F.Supp. 342, that Grim was obvious in the light of the prior art was supportable.

As is not unusual in patent cases, both parties are guilty of considerable over-claiming. Plaintiff-appellant's insistence that Grim's achievement included the clarity of the beads is in no way reflected in the patent's introductory recitation, a portion of patents not customarily devoted to modesty or concealment. The only mention of clarity of beads is an oblique reference to the fact that parties wishing such may take a certain step. This was not indicated to be invention, and on the record it was not. On the other hand, with even greater emphasis throughout its brief, defendant maintains that Grim is not to be credited for its accomplishments of high molecular weight using a relatively small proportion of water because they were not mentioned in the claims, and "the claims alone * * * are the measure of the invention."³ Such a contention is far from helpful. Defendant overlooks the settled principle that claims and specifications are to be read together, United States v. Adams, 1966, 383 U.S. 39, 48-49, 86 S.Ct. 708, 15 L.Ed.2d 572, and confuses the mechanical measure of the invention and its teaching. Applying defendant literally, Grim could not even be the contribution which its witness DeBell conceded it to be, because the claims, being purely mechanically descriptive, did not mention accomplishments at all. Yet it must be that marked improvement in result, while not a primary consideration, is to be viewed "as indicia of obviousness or nonobviousness." Graham v. John Deere Co., 1966, 383 U.S. 1, 18, 86 S.Ct. 684, 15 L.Ed.2d 545. Grim's accomplishments are not "irrelevant on this appeal." (n. 3, supra.) On the other hand, of course, they cannot alone save the patent. Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888, 894.

Coming to the merits, this is a case where we believe no useful purpose would be served in discussing the prior art in detail. We agree with the plaintiff that, fundamentally, the appeal presents a question of law, and we believe that the question can be stated in the form of a principle. This principle is pointed up by certain conclusions advanced by defendant's expert DeBell in cross-examination after he had discussed the prior art in detail.

"I feel that this group of patents is a complete anticipation of Grim * * * As I look at the Grim claim, it comes down to saying that of all these things which are well-known, .05 to .0005 is this invention.⁴

"XQ. Then your testimony is that you must combine the teachings of these ten items in order to anticipate Grim? A. I would expect that you could take any two or three of them and get, take those teachings and have Grim and I would expect by experimentation you would inevitably be led to that.

"XQ. By experimentation you mean you would be led to it? A. By trying the experiments which are shown, which are indicated by the prior art and the procedures and the very careful — there is much experimentation in the prior art * * *."

The question is whether in speaking of inevitability DeBell was referring to the type of experimentation that comes from mankind's compulsion to progress,⁵ or whether it was experimentation taught by, or within the scope of, the prior art. Certain of DeBell's testimony, standing alone, notably his concession that there were "too many references * * * the trouble would be to discriminate between them," may suggest that he was not talking in the...