Langsett v. Marmet Corporation

• Decision Date: 05 June 1964
• Docket Number: Civ. A. No. 3449.
• Citation: 141 USPQ 903,231 F. Supp. 759
• Parties: Victor M. LANGSETT, Trustee, and Kesko Products, Inc., Plaintiffs, v. MARMET CORPORATION, Defendant.
• Court: U.S. District Court — Western District of Wisconsin

231 F. Supp. 759

141 USPQ 903

Victor M. LANGSETT, Trustee, and Kesko Products, Inc., Plaintiffs, v. MARMET CORPORATION, Defendant.

Civ. A. No. 3449.

United States District Court W. D. Wisconsin.

June 5, 1964.

Herbert Terwilliger, of Genrich, Terwilliger, Wakeen, Piehler & Conway, Wausau, Wis., Bryan Medlock, of Arnold & Roylance, Houston, Tex. for plaintiffs.

John W. Kelley, Wausau, Wis., John W. Hofeldt, Haight, Simmons & Hofeldt, Chicago, Ill., for defendant.

RABINOVITZ, District Judge.

This is a patent infringement action. Victor M. Langsett, a resident of Illinois, is trustee of the Kessler patent. Kesko Products, Inc., is the exclusive licensee of the Kessler patent. Kesko is an Indiana corporation. Marmet Corporation is a Wisconsin corporation, having its principal place of business in Wausau, Wisconsin. Letters Patent, Number 2,654,920, were issued to the late Ward P. Kessler on October 13, 1953.

Defendant denied infringement, and alleged that the patent in suit is invalid because the patent was anticipated by the prior art; that it was obvious in light of the prior art; and that it was on sale more than one year prior to the date of the application for the patent.

This case was tried the week of October 15, 1962, in this District before Judge Patrick T. Stone, who died prior to rendering his decision. The parties agreed that judgment should be made upon further briefs, the transcript, exhibits and oral arguments. A full day of oral arguments was had on April 21, 1964, whereat this Court had the benefit of a full explanation of the patent in suit and the accused device.

The Kessler patent is for an "Insulated Metal Window Closure". The problem to which both Kessler and Marmet have directed their efforts is known as "through-metal conductivity". The use of metal window frames may result in moisture or condensation forming on the inside of the window because of the rapid or efficient heat transfer characteristics of metal.

Plaintiffs and defendant both claim this problem has been solved by use of an insulating medium to separate the window frame into exterior and interior metal channels. Dispute arose as to the duration of this problem. Plaintiffs maintain the problem is of long duration, dating back to the Crystal Palace erected in the 1850s in England. Defendant maintains the problem is one of limited scope and one which did not come into commercial significance until after World War Two. After the War, this country's expanded aluminum facilities found new use for their capacity in civilian lines. Increased knowledge of metal fabrication is factor. Defendant further maintains the problem is limited to places having exceptionally high humidity problems, such as indoor swimming pools.

This Court believes that the matter of validity may be disposed of on one of several grounds. However, I believe that the interests of justice and efficient administration of the rights of litigants require a complete disposal of the case. In other words, all points will be discussed. Halstead v. Globe Hoist Co., 141 U.S.P.Q. 465, 231 F.Supp. 1012 (D.C.N.D.Cal.S.Div.1964). A court has the power to adjudge a patent, which it has found not to have been infringed, invalid. Lockwood v. Langendorf United Bakers, Inc., 324 F.2d 82 (9th Cir. 1963). With the public also a party to patent litigation, a full consideration should be in order. This should be the approved practice. Philip and K & J Trading Corp. et al. v. Wildman Jacquard Co., 225 F.Supp. 955 (D.C. E.D.Pa.1963). Such a practice was employed by the District Court for the Eastern District of Wisconsin in Miller v. Zarharias, et al., 72 F.Supp. 29 (E.D. Wis.1947), wherein the Court said: "In the event it should be determined by a reviewing court either that the amendment should not have been allowed, or that the plaintiff was not estopped in this action by reason of the provisions of his license agreement, I should make known my views as to the validity of the claims of the patents here in issue." In accord: W. F. and John Barnes Co. et al. v. International Harvester Co. et al., 51 F.Supp. 254 (N.D.Ill.E.D.1943) and Barry, et al. v. General Tire & Rubber Co., et al., 31 F.Supp. 879 (N.D.Ill.E.D. 1940).

PRESUMPTION OF VALIDITY OF PATENT IN SUIT

The granting of a patent raises a presumption as to the validity of said patent. 35 U.S.C.A. § 282. However, such presumption is not conclusive; it may be rebutted by demonstrating invalidity by convincing evidence of error. Hobbs v. Wisconsin Power & Light Co., 250 F.2d 100 (7th Cir. 1957). The Patent Office in the instant case did not cite what this Court finds to be pertinent prior art. Specifically, Pierson, Coulson and Marsh, Jr. were not cited. The presumption of validity does not exist as against a showing that the prior art was not cited by the Patent Office. "(T)here is every indication, contrary to appellant's statement, that the prior art was not before the Patent Office at the time it passed on the patent here in issue." Hobbs v. Wisconsin Power & Light Co., supra.

Kesko cites Elgen Mfg. Corp. v. Grant Wilson, Inc., 285 F.2d 476 (7th Cir. 1961). There the Patent Office had not cited certain prior art, which was in the same class and subclass as the patent in suit. The court there said that it "concluded the examiner reviewed these patents and discarded them." Further, the court determined such prior art did not "meet the invention singly," that it was not analogous art.

In AR, Inc. v. Electro-Voice, Inc., 311 F.2d 508 (7th Cir. 1962), it is stated, "* * * there is no presumption that a patent is valid as embodying an invention over pertinent prior art not cited or considered by the Patent Office." The court distinguished the Elgen case on the ground that the prior art in Elgen would not suggest to anyone skilled in the field how to combine the prior art and obtain the result as shown in the patent in suit. The posture of the case at bar is aptly described by Ar, Inc., "The Olson patent in and of itself disclosed both combination and the functional relationship of Villchur. There can be no presumption that the examiner reviewed and discarded it. It is more likely that he missed it."

This Court is satisfied that the patent examiner failed to consider relevant prior art. Further, as appears below, the examiner failed to understand the significance of one pertinent example of prior art before him.

Witness Clarence T. Fishleigh^* testified at the trial for the defendant as follows: "Well, there is no possible question in my mind that the patents cited by defendant in this litigation are far closer to the — and far more pertinent to the question for the validity of the Kessler patent than were those cited by the file wrapper — or by the Patent Office and appearing in the file wrapper."

"In fact, I would say that, in the many years that I have worked with patents and patent litigation, I can't recall of a case where there was such a striking difference between the pertinency of the prior art cited by defendant and that which was considered by the Patent Office."

The Gustafsson patent was cited by the Patent Office, but it missed the pertinency of the patent. Had none of the relevant patents been cited by the Patent Office, possibly less weight would be given to the failure to cite the prior art. Briggs v. M & J Diesel Locomotive Filter Corp., 228 F.Supp. 26 (N.D.Ill.E.D. 1964). However, because the prior art not cited is so pertinent to the validity of the Kessler patent, and because the patent examiner failed to recognize the pertinency of Gustafsson, this Court concludes that the statutory presumption has been completely destroyed.

Further, the presumption of validity is not as strong where the defendant has followed the prior art rather than the patent in suit. Hazeltine Research, Inc., v. Admiral Corp., 87 F.Supp. 72 (N.E.Ill.E.D.1949).

PATENT IN SUIT IS ANTICIPATED

The method of analysis in determining the validity of a patent in suit is well stated in Armour & Co. v. Wilson & Co. Inc., 274 F.2d 143 (7th Cir. 1960). There the court broke down the issue into its component parts. "What the prior art was and what the patentee did to improve upon it, and then, whether what the patentee did is properly to be classified as an invention." The court determines what the prior art was, what improvements, if any, have been made in the prior art — has anything new been taught? If there is no improvement, the device is anticipated under section 102, of 35 U.S.C.A.

If the court finds improvement over the prior art, then the matter of obviousness must be determined, within the meaning of 35 U.S.C.A. § 103.

The prior art is replete with references which teach the principles employed by Kessler.

The Pierson patent number 697,746 (1902), not cited by the Patent Office, teaches the use of a rigid wood member contained within metal channels. Pierson states at Col. 1, lines 36-38, "* * * as the wood being a non-conductor is not susceptible to change with heat and cold * * *". Pierson patented a sash bar for greenhouses, the purpose of which was to reduce the size of the bars and reduce maintenance costs. The figures accompanying his patent clearly show the glass resting on the wood, secured inwardly and outwardly by metal strips or channels.

The Coulson patent, number 834,890 (1906), not cited by the Patent Office, teaches the use of double glazed panels for insulation purposes, the modern day version of "Thermopane" windows. Coulson patented corner posts for holding the glass panes. He used a wooden member to hold the glass panes. On either side of the wood there is attached metallic face plates which are the same shape as the rigid wooden post. A thermal-break is present; although not so stated in the specifications, it does appear in the drawings.

The Marsh, Jr. patent, number 2,009,142 (1935), not cited by the Patent Office, was for refrigerated display cases. He states, "More particularly this invention...