Lewyt Corporation v. Health-Mor, Inc.

• Decision Date: 03 June 1950
• Docket Number: No. 9924.,9924.
• Citation: 181 F.2d 855
• Parties: LEWYT CORPORATION v. HEALTH-MOR, Inc., et al.
• Court: U.S. Court of Appeals — Seventh Circuit

181 F.2d 855 (1950)

LEWYT CORPORATION v. HEALTH-MOR, Inc., et al.

No. 9924.

United States Court of Appeals Seventh Circuit.

May 4, 1950.

Rehearing Denied June 3, 1950.

Max W. Zabel, Benton Baker, Robert L. Kahn, Chicago, Ill., for appellants.

Carlton Hill, Chicago, Ill., David S. Kane, New York City, The Firm of Charles W. Hills, Chicago, Ill., Duell & Kane, New York City, for appellee.

Before KERNER, LINDLEY and SWAIM, Circuit Judges.

LINDLEY, Circuit Judge.

Defendants appeal from a judgment entered in a declaratory judgment action instituted by plaintiff, which sought an adjudication of invalidity of Yonkers Patent No. 2,198,568 and Martinet Patent Nos. 2,280,495 and 2,296,359, all of which relate to electrically operated suction or vacuum cleaners. The complaint also charged Health-Mor, the exclusive licensee of Yonkers, and Yonkers with unfair competition. Defendants answered and filed counterclaims charging plaintiff with infringement of claims 2, 4, 7 and 8 of the Yonkers patent and with unfair competition. The portion of the complaint charging unfair competition having been dismissed, the District Court entered judgment dismissing the counterclaims and adjudging claims 2, 4, 7 and 8 of the Yonkers patent and claims 1 and 2 of Martinet Patent No. 2,280,495 invalid and not infringed. Defendants appeal from so much of the judgment as dismissed defendants' first counterclaim and declared invalid and not infringed the disputed claims of the Yonkers patent.

Yonkers discloses and describes a canister type suction cleaner, designed to eliminate the disadvantages inherent in the earlier stick and tank type cleaners, both of which employed a cloth bag into which dirt-laden air was drawn by means of a suction fan, the porous bag acting as a filter through which only the air could pass and as a receptacle for the dirt which remained within it. His object was to build a cleaner which would function more efficiently than the older devices, whose operating efficiency was decreased by the fact that the pores of the cloth bag tended to become clogged with dirt and dust particles, and, which, at the same time, would eliminate the disagreeable task of periodically emptying and cleaning the bag employed in old cleaners. To accomplish this, he prescribed a conical paper filter, held in place by a perforated metal support; to protect the paper filter, from destruction by the dirt particles which are drawn into the canister, he provided a tangential introduction of the dirt-laden air into the canister, thus creating a centrifugal force which keeps the heavier dirt particles well away from the filter and maintains the latter in a relatively clean condition. His structure is described in the language of the claims in issue, which read as follows:

"2. In a suction cleaner, a housing having a dust compartment in the bottom thereof, a generally conical air filter forming the top cover of said compartment with the apex of the cone extending inwardly toward the bottom of said compartment, said filter comprising a perforated supporting member and a flexible filtering member against said supporting member, an intake connection into said dust compartment below said filter, said intake connection terminating in a nozzle for discharging dirt-laden air adjacent to and parallel with the filter surface and an exhaust connection above said filter.

"4. In a suction cleaner, a housing having a dust compartment in the bottom thereof, a generally conical fragile filter forming a cover for at least part of said compartment and extending down therein, a perforated member above said filter for supporting and maintaining said filter against collapse, means for generating a suction above said filter, an air intake for said housing below said filter, and means for guiding the incoming dirt-laden air so that the air takes a generally circular path generally parallel to the filter surface and adjacent thereto.

"7. In a suction cleaner, a housing having a dust compartment in the bottom thereof, at least a portion of the sidewall of which housing compartment is cylindrical in form, a generally conical fragile filter forming a cover for the cylindrical portion of said compartment and extending down therein in coaxial relation therewith, a perforated member above said filter for supporting and maintaining said filter against collapse, means for generating a suction above said filter, an air intake for said housing below said filter, and means for guiding the incoming dirt-laden air so that the air takes a generally circular path generally parallel to the cylindrically coaxially housed filter and adjacent thereto.

"8. In a suction cleaner, the combination of an opentopped cylindrical dust receptacle having an annular portion adapted to receive and support a filter element, a generally conical flexible filter element marginally supported upon said annular receptacle portion against downward movement, and a removable group constituting a cover for said compartment and a retainer for holding said filter in said recited association with said dust compartment, said group including a motor-driven suction-generating means and a perforated generally conical filter support bearing upon the receptacle-supported marginal portion of said filter element, complementarily fitted within the filter element proper and bracing same against collapse under differential air pressure induced by said suction-generating means." 84 F.Supp. 189, 192.

The District Court, in its opinion, criticized Yonkers for failing to state in his claims (with the exception of claim 8) whether it was the combination itself or merely one element thereof which constituted invention, and indicated that "claims 2, 4 and 7 might well be held invalid, * * for the failure of Yonkers to specify just what it was that he was claiming." However, it appears that the judgment of invalidity rested not upon this thought but upon the court's conviction that certain prior art patents (Upton Patent No. 1,789,203; Korittke Patent No. 1,921,085; Kirby Patent No. 1,100,575) anticipated Yonkers, for it stated: "In my opinion each of the features for which Yonkers claims invention is old. Any one having in mind the designing of a vacuum cleaner and looking over the prior art would find each of the elements of the Yonkers patent, and the combination of them to produce the Yonkers cleaner did not constitute invention." Moreover, the findings as to both invalidity and infringement are predicated on the prior art patents to Upton, Korittke, and Kirby.

Defendants contend that the District Court misconceived the true character of the Yonkers cleaner, which, they maintain, is a novel combination of elements producing a novel result and substantially advancing the art, and that the court applied an impossible standard of invention when it dissected the Yonkers combination, matched its elements against similar elements in the very same prior art patents over which the Patent Office had allowed the claims, and erroneously concluded that the combination was not patentable. They insist that the prior art patents, whether considered separately or collectively, fail to disclose or suggest the Yonkers cleaner, and they urge that the trial court's decision that the Yonkers combination is unpatentable is clearly erroneous. They assert also that the District Court gave no heed to the usual presumption of validity, which, they argue, is enhanced in this case by the fact that the Patent Office, after a consideration of all the prior art patents relied on by plaintiff, allowed the claims which the court declared invalid. Lewyt, however, maintains that the District Court correctly decided that the Yonkers claims do not achieve invention; moreover, Lewyt contends that should the claims be deemed valid, they cannot, in view of the prior art patents to Kirby and Korittke, be construed to cover...