Lear Siegler, Inc. v. Aeroquip Corp.

• Decision Date: 03 May 1984
• Docket Number: No. 83-1005,83-1005
• Citation: 733 F.2d 881,221 USPQ 1025
• Parties: LEAR SIEGLER, INC., Appellant, v. AEROQUIP CORPORATION and Midtown Ignition and Parts Co., Appellees. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 881

733 F.2d 881

221 U.S.P.Q. 1025

LEAR SIEGLER, INC., Appellant, v. AEROQUIP CORPORATION and Midtown Ignition and Parts Co., Appellees.

Appeal No. 83-1005.

United States Court of Appeals, Federal Circuit.

May 3, 1984.

William Douglas Sellers, Pasadena, Cal., argued for appellant. With him on the brief was W. Melville Van Sciver, Chicago, Ill.

Don K. Harness, Birmingham, Mich., argued for appellees. With him on the brief were John C. Sterritt and Jerry K. Harness, Birmingham, Mich.

Before MARKEY, Chief Judge, and DAVIS and BENNETT, Circuit Judges.

BENNETT, Circuit Judge.

This is an appeal under 28 U.S.C. Sec. 1295(a)(1) (1982) of the decision of the United States District Court for the Northern District of Illinois, Eastern Division, entered without a jury on April 13, 1983, declaring United States Patent No. 3,291,004 owned by appellant, Lear Siegler, Inc. (Lear), invalid and, if valid, not infringed by the Maxibrake II brake assembly manufactured by appellee, Aeroquip Corporation (Aeroquip) and sold by appellee, Midtown Ignition and Parts Company.

The determination below of invalidity is affirmed. Accordingly, the issue of infringement will not be reached.

BACKGROUND

United States Patent No. 3,291,004 to Stevenson, et al. (the Stevenson patent), issued December 13, 1966, relates to a brake unit for vehicles in which brakes normally operated by air pressure are automatically applied by a powerful spring upon a loss of that pressure. Figures 2 and 3 of the patent are included below with nonessential reference numerals deleted.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

Normal brake operation is effected by the action of compressed air entering the right side of flexible heavy-duty diaphragm 26 located in brake booster chamber 25. The resultant air pressure against diaphragm 26 moves it, plate 27, and attached rod 15 leftward against the bias of spring 28 to apply the brakes. (Neither Figure 2 nor 3 depicts the brake assembly in such a state of selective activation.) The same compressed air as is selectively applied to booster chamber 25 to operate the brakes is supplied continuously to the left side of a second heavy-duty diaphragm 32 located in emergency chamber 30. The pressure of this compressed air against diaphragm 32 is sufficient to move bearing plate 36 into its extreme rightward position, compressing emergency spring 38, as depicted in Figure 2. Plate 34 attached to force transmission shaft 33 is urged by spring 35 against diaphragm 32.

In the absence of the mechanisms housed in emergency chamber 30, a loss of air pressure would preclude operation of the brakes. In such circumstances, however, air pressure is lost simultaneously in emergency chamber 30, thereby permitting emergency spring 38 to expand, moving bearing plate 36, diaphragm 32, and force transmission shaft 33 leftward to the position shown in Figure 3. Correspondingly, shaft 15 is moved leftward to apply the brakes automatically, despite the failure of air pressure.

Once a vehicle with failed brakes has been stopped in this manner, it is desirable to be able to manually release, or "lock out," the brakes, so it can be moved from the roadside or repaired. The issues upon which this appeal focuses relate to the means provided for mechanically retracting the powerful emergency spring to do this.

The Stevenson patent makes reference in this regard to the prior teachings of a co-pending patent application, Serial No. 97,368, a continuation application of which ultimately issued prior to the Stevenson patent on November 15, 1966, as United States Patent No. 3,285,672 to Avrea (the Avrea patent). A portion of Figure 2 from this patent is reproduced below with nonessential reference characters deleted.

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The Avrea patent discloses a brake assembly in which an air pressure activated booster section 49 and an emergency chamber 33 housing a flexible diaphragm 101, a bearing plate 111, and powerful emergency springs 113 and 114 function together similarly to corresponding structure disclosed in the Stevenson patent. Thus, upon failure of the air pressure necessary to selectively operate the brakes in the Avrea patent, air pressure is lost on the left of diaphragm 101 and emergency springs 113 and 114 expand, forcing bearing plate 111 leftward to apply the brakes automatically.

Emergency brake "lock out" is achieved using a retraction shaft in the form of a threaded stem 118. When one end of stem 118 is threaded into the rear of bearing plate 111, the other end extends beyond housing 108 through opening 109 therein, even when the emergency brake is activated. Nut-and-washer assembly 120 can be turned onto this end of stem 118 to engage housing 108. Continued rotation of assembly 120 then draws stem 118 out of emergency chamber 33, retracting bearing plate 111 and compressing springs 113 and 114 to release the brakes. The specification of the Avrea patent in describing the nature of the attachment of stem 118 to bearing plate 111 discloses only that each brake assembly "is equipped with a threaded stem 118 threaded into hub 110 of follower [or bearing plate] 111."

The free end 126 of stem 118 is marked with a series of indicator bands 129. When the emergency brake is on, some of the indicator bands 129 remain exposed beyond a removable protective cover disc 122 and serve as a visual indication of the remaining wear or braking capacity of the brake shoe linings.

In the Stevenson patent the means for compressing the emergency spring to release the brakes is a lockout tool 18 (shown in Figure 3, above) which comprises a threaded stud having at one end a pair of laterally extending projections 20. These co-operate in bayonet-like fashion with a hook portion 37 on the rear of bearing plate 38 to removably attach tool 18 to plate 38. When the expansion of emergency spring 38, as in Figure 3, has set the emergency brakes, this attachment is accomplished by removing a dust plug 40 from a hole 39 in the casing 12 and inserting the end of lockout tool 18 to establish the desired connection with bearing plate 36. A nut 19 is then threaded down the free end of tool 18 to encounter the exterior of casing 12. Further rotation of nut 19 draws the shaft of tool 18 outward, retracting bearing plate 36 and compressing emergency spring 38, in an identical manner as that disclosed in the Avrea patent. As the lockout tool of the Stevenson patent is explicitly removable from its attachment to bearing plate 36, a storage pocket for its convenient retention and protection with nut 19 is provided on the exterior of casing 12.

The claims of the Stevenson patent are thus directed to a brake operating booster in combination with a means for mechanically operating the booster in an emergency. This mechanical means, which is recited as comprising a housing containing a diaphragm, a coil spring, and a bearing plate, also includes a pocket on the housing for storing a lockout tool which can be attached to the bearing plate to compress the spring and manually release the emergency brake. Independent claim 1 ¹ recites one end of the lockout tool as being so constructed as to "detachably interlock with [a] temporary holding means" on the bearing plate. Dependent claim 2 recites in additional detail the nature of the structure of the bearing plate and lockout tool required for effecting the bayonet-type detachable interlock between the two.

Lear brought suit against Aeroquip for infringement of these claims. The district court found that the Avrea patent, while constituting the closest prior art to the Stevenson patent, had not been before the examiner who allowed it to issue. It conducted an analysis of the obviousness of the claims at issue according to the directions of Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966). Setting forth findings as to 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, the court concluded that the Stevenson patent was invalid for obviousness under 35 U.S.C. Sec. 103. If valid, the Stevenson patent was further found to be not infringed by the accused product of Aeroquip.

Lear appealed both conclusions, but as that regarding invalidity will be affirmed here, the question of infringement will not be discussed.

OPINION

I

The presumption of patent validity found in 35 U.S.C. Sec. 282 ² is but a procedural device which places on a party asserting invalidity the initial burden of going forward to establish a prima facie case on that issue. The decisionmaker is thus required to begin by accepting the proposition that the patent is valid and then look to the challenger for proof to the contrary. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534, 218 USPQ 871, 875 (Fed.Cir.1983). Additionally, section 282 establishes that the burden of persuasion on the issue of invalidity also rests throughout the litigation with the party asserting invalidity, though this burden may be more easily carried by evidence consisting of art more pertinent than that considered by the examiner. Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730 F.2d 1452 at 1459 (Fed.Cir.1984); Solder Removal Co. v. United States International Trade Commission, 582 F.2d 628, 633, 199 USPQ 129, 133, 65 C.C.P.A. 120 (1978). "In the end, the question is whether all the evidence establishes that the validity challenger so carried his burden as to have persuaded the decisionmaker that the patent can no longer be accepted as valid." Stratoflex, 713 F.2d at 1534, 218 USPQ at 876. Thus, a holding that the burden has been met is synonymous with invalidity. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 699 n. 9, 218 USPQ 865, 871 n. 9 (Fed....