Metaframe Corporation v. Biozonics Corporation

• Citation: 352 F. Supp. 1006
• Decision Date: 07 December 1972
• Docket Number: Civ. A. No. 70-1019.
• Parties: METAFRAME CORPORATION v. BIOZONICS CORPORATION.
• Court: U.S. District Court — District of Massachusetts

352 F. Supp. 1006

METAFRAME CORPORATION v. BIOZONICS CORPORATION.

Civ. A. No. 70-1019.

United States District Court, D. Massachusetts.

December 7, 1972.

Abraham Friedman, New York City, for plaintiff.

David Wolf, Boston, Mass., for defendant.

RUBIN,^* District Judge:

In a competitive struggle, almost as determined as that of two male betta splendens, or Siamese fighting fish, the manufacturers of concededly similar aquarium filtering devices, one the patent assignee, the other its challenger, here join battle to determine the validity of the patent. Since the patent is virtually conceded to possess utility, the victory turns on whether the two other legislative requisites¹ are met: whether the device was obvious at the time it was conceived to a person of ordinary skill in the art, and whether the concept was novel. The issues are clear, but the waters are deep.

Metaframe Corporation (Metaframe) acquired a patent originally issued to Allan H. Willinger, covering an aquarium filter apparatus, an embodiment of which has been marketed under the trademark "Dynaflo Motor Filter." Biozonics Corporation (Biozonics) is marketing a competing similar device, the Biozonics Filter, which it concedes would infringe claim 3 of the patent,² if it is valid. This claim, the only one involved in this suit, will be referred to as the Willinger patent.

I. THE PROBLEM

The devices involved are used in home aquariums. Everyone has seen one kind or another of the conventional glass tanks for tropical fish. The fish must of course be fed. And they excrete waste. The remnants of food, the excreta, and other contaminants foul the water, making it not only less pleasant to view, but a threat to the health of the fish. Hence it is necessary to have some means to filter these impurities from the water.

Appliances to accomplish filtration by various means have been on the market for many years. Some were mounted outside the tank. Others worked from inside the tank, or from the bottom of the tank.

There were various problems in connection with each of the devices on the market. Some were expensive—too expensive for the average home hobbyist. Others used motors that caused noise or unpleasant vibration. Most of them required some maintenance from time to time.

II. SEARCH FOR SOLUTION

Willinger had become interested in the aquarium hobby as a boy. He later worked for a manufacturer of aquarium heaters, eventually opened an aquarium shop, and finally became a manufacturer of aquarium supplies. He knew of the need for a filter that would be efficient, inexpensive, trouble-free, and reasonably quiet.

Reading an article about automobile speedometers in a magazine, Popular Mechanics, Willinger learned about magnetic coupling. This is a device by which a motor can drive a mechanism without a mechanical link. The driving mechanism moves a plate containing magnets. The down mechanism is linked to a plate containing magnets. When the two plates are placed near to each other the attraction of each set of magnets for the other compels the plates to move in unison; the plate in the driving mechanism turns the plate in the driven mechanism and its attachments.

The inherent virtue of this mechanism is that the driving and driven plates can be separated by a glass or plastic divider. The driven plate and its operating mechanism can thus be enclosed in a sealed unit without danger of contamination from outside substances. In the automobile speedometer, for example, the delicate mechanism that turns the gauge seen by the driver is in an enclosed unit. The sealed unit contains the driven plate, with its magnets; this is turned by a driving plate operated outside the unit. No dirt, dust, oil or water can enter the sealed speedometer. If there is a defect in the driving mechanism, it can be repaired without touching the sealed unit.

This principle had been used for other applications. Lunch counters frequently display juice dispensers in which orange juice or some other beverage is propelled in a spray around the walls of a clear plastic bowl. The customer is thus attracted by the sight of the foaming juice. The spray impeller keeps the juice aerated and foaming. In this application the liquid inside the bowl is sprayed by a pump operated through magnetic couplings by a driving plate and driving mechanism outside the juice container. The sealed container keeps the food product free from contamination, and divides the pumping mechanism into two physically separate units.

Willinger knew nothing of these other applications, nor had the magnetic coupling been used in this manner in the aquarium business. But the Popular Mechanics article directed his thought to an application for fish tanks. He was able to produce a model using parts readily available in the commercial market. Later he obtained the patent in suit.

III. THE WILLINGER PATENT

Generally, the Willinger patent describes an aquarium filter apparatus that is hooked to an aquarium tank. Water is siphoned from the tank into the filter apparatus where it is cleaned; then it is returned to the tank. The water enters the filter device from the top. The filter material, e. g. charcoal, is placed on a horizontal divider in the chamber. The water flows down by gravity, filters through this material and passes into a clean water chamber. A centrifugal pump, supported in the divider, returns the filtered water to the aquarium tank through a water outlet.

The centrifugal pump is operated by an electric motor that is coupled to it magnetically. The pump itself is located outside the aquarium tank, but inside the filter device. Beneath the impermeable bottom wall of the filter device outside of the fish tank is a driving magnet, directly connected to the electric motor. Thus the motor turns the driving magnet, and the driving magnet turns the driven magnet, motivating the pump. In this way, the water cannot be contaminated by oil or foreign material from the driving magnet or motor.

The similarity of the Willinger device to the Biozonics filter caused this suit for infringement to be filed. Because Biozonics confesses the similarity, the single issue is the validity of the Willinger patent.

IV. OBVIOUSNESS

One of the three tests for patent validity is that the device not be "obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103. This requirement of validity was codified by statute in the Patent Act of 1952, but the identical test existed jurisprudentially many years before. The Court had in Hotchkiss v. Greenwood, 1851, 11 How. 248, 13 L.Ed. 683, laid the foundation for the test of obviousness. The Court stated:

"Unless more ingenuity and skill * * * were required * * * than were possessed by an ordinary mechanic acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor." At p. 267. (emphasis added)

The 1952 Act did not come before the Supreme Court for interpretation until fifteen years after its enactment, in Graham v. John Deere & Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. The Court there referred to the Hotchkiss test of 1851:

"The Hotchkiss formulation" the court stated, "however lies not in any label, but in its functional approach to questions of patentability." The adoption of § 103 did not change the standards for patentable invention, but rather was "merely as a codification of judicial precedents embracing the Hotchkiss condition . . . ." Graham, supra at 693.

The three steps in applying section 103 were also formulated in Graham. "The scope and content of the prior art are to be determined; the differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved." Graham, supra at 694. Strict observance of this analysis is required. Anderson's Black Rock v. Pavement Salvage Co., 1969, 396 U.S. 57, 90 S.Ct. 305, 308, 24 L.Ed.2d 258.

The validity of a patent is ultimately an issue of law because it is a decision of the legal status of the idea embodied in a document issued by the patent office. But "the determinations underlying the question of obviousness are essentially factual ones primarily entrusted to the district court." Nashua Corp. v. RCA Corp., 1st Cir. 1970, 431 F.2d 220; Koppers Co. v. Foster Grant Co., 1st Cir., 1968, 396 F.2d 370.³ See also Graham, supra, 86 S.Ct. at 694; Great A. & P. Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, at 151, 71 S.Ct. 127, at 131, 95 L.Ed. 162. And, in the decision of those factual issues, the application of the "non-obviousness" test must necessarily proceed on a case-by-case basis with the continuous development of a body of jurisprudence. Graham, supra 86 S.Ct. at 694.

V. THE PRIOR ART

Prior to the development of the Willinger patent, magnetic coupling devices were in common use. Thus, a driven and driving magnet on opposite sides of a fluid impermeable wall had been used to couple a motor to a pump-impeller for pumping fruit juices and similar beverages;⁴ for deep well pumps and power transmission arrangements;⁵ for gas and fuel pumps;⁶ for refrigeration systems;⁷ for chemical and dairy pumps;⁸ and for centrifugal pumps generally.⁹ The use of an open tank raising water by siphon, aerobic filtration by charcoal, employing gravity for filtration—all of these were likewise in common use. Willinger's patent consists of a combination of these previously existing elements.

There are two other patents of special importance: Canterbury and Supreme. The Canterbury patent was filed on October 2, 1963, more than eight months before Willinger's application. It was issued in September, 1966, at which time it was made public; the Willinger patent was issued on May 23, 1967.

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