Metal Arts Company v. Fuller Company

• Decision Date: 06 February 1968
• Docket Number: No. 24123.,24123.
• Citation: 389 F.2d 319
• Parties: METAL ARTS COMPANY, Appellant, v. FULLER COMPANY, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

389 F.2d 319 (1968)

METAL ARTS COMPANY, Appellant, v. FULLER COMPANY, Appellee.

No. 24123.

United States Court of Appeals Fifth Circuit.

February 6, 1968.

Jefferson D. Giller, William A. Stout, Dudley R. Dobie, Jr., Fulbright, Crooker, Freeman, Bates & Jaworski, Houston, Tex., for defendant-appellant.

James G. Ulmer, Baker, Botts, Shepherd & Coates, F. Walter Conrad, Houston, Tex., for appellee, Fuller Co.

Before BELL, COLEMAN and GODBOLD, Circuit Judges.

GRIFFIN B. BELL, Circuit Judge:

This appeal by Metal Arts Company is from a judgment holding that it had infringed appellee's patent for a low pressure pneumatic conveyor designed to solve the problem of streamer formation in the conveyance of polyethylene pellets. The patent, No. 2,784,038, was issued to appellee on March 5, 1957 on the application of George Schneider filed January 11, 1956.

Appellee Fuller Company, the plaintiff in the District Court, charged Metal Arts with infringing the two claims of the patent and sought an injunction and an accounting. Metal Arts by way of answer and counterclaim for declaratory judgment, denied infringement and asserted the invalidity of the patent claims. After a non-jury trial on the merits, the court entered judgment for Fuller. The judgment held the patent valid; and that Metal Arts had directly and contributorily infringed, and had actively induced infringement of both claims of the patent. Metal Arts was enjoined from further infringement and damages were ordered paid for the infringement. The question as to the amount of damages to be awarded was referred to a special master. All relief prayed for by defendant was denied.

The issues presented go to validity and infringement but only in the context of whether the patent was anticipated by the prior art, 35 U.S.C.A. § 102(b); and whether there was infringement in fact of the claims of the patent in suit.¹ We affirm.

I.

Polyethylene as a raw material for making consumer products is a relative newcomer to the American market. We are concerned with its manufacture and use in the form of pellets. As a particulate or granular material, the pellets are easily moved in a pneumatic conveyor. When polyethylene came into use on a large scale, the Dust Recovery and Conveying Co., or Dracco, now a division of appellee Fuller Company, began to market its pneumatic conveyors for conveyance of raw polyethylene.

Fuller's assignor, George Schneider, to whom the patent was issued, prior to his retirement in 1965, spent forty years as an engineer in the pneumatic conveying field with Dracco. Pneumatic conveyors, as such, are not new devices. This mechanism is, broadly speaking, an apparatus comprising a tube or conduit, a blower, a feeder, and a receiver. Air is forced through the conduit by the blower at a velocity sufficiently high to prevent the conveyed material from settling inside the conduit when fed into the airstream. Prior to 1955 cast-iron pipe, black iron or steel pipe, stainless steel pipe, or aluminum pipe were used in pneumatic conveyor systems as conduit. Stainless steel and aluminum were preferable in the polyethylene industry since steel and cast iron tended to contaminate the end product.

By 1955 a great problem faced the industry of pneumatic conveyors of polyethylene. Companies using pneumatic conveyors were experiencing a problem called "skinning" or streamer formation. Polyethylene pellets tended to slide along the smooth walls of the conduits. This sliding, coupled with the frictional heat created thereby, tended to coat the conduit walls with polyethylene. This coating would eventually dislodge in the form of long streamers. These streamers would ball up and foul the conveying equipment and interfere with the eventual molding of polyethylene products.

The evidence showed that Monsanto Chemical Company had spent large sums and the time of many experts in an attempt to solve the streamer problem. One of Fuller's customers was having much trouble with streamers and demanded that Fuller solve the problem or lose a prospective sale of systems to be used in the company's new plant. Against this background Mr. Schneider went to work on the problem. The trend of the industry had been to try to avoid skinning by making smoother conduit. Mr. Schneider went the opposite way and discovered that streamer formation was avoided by roughening the inner walls of the pipe. The roughened walls prevented streamer formation by reason of the creation of an "abruptly descending velocity gradient" in the airstream adjacent to the walls. Stated differently, this caused the air close to the conduit walls to move more slowly than the air in the center and thus frictional contact with the walls was minimized. The other effect of the roughening process was that particles tended to bounce off the small peaks or "rugae" which create the roughness rather than to slide along the walls.

The patent described two types of conduit wall. The first is lined with closely spaced annular rings. There is no contention that appellant had produced conveyors of this type. The second type of conduit wall is specified in pertinent part as follows:

"Here the conduit surface is roughened, as by sand blasting, etching or anodizing, to a sandy finish comprising innumerable small peaks or rugae * * *"

The invention claimed, then, is a low pressure pneumatic conveyor with:

"* * * means associated with the walls of said conduit for maintaining an abruptly descending velocity gradient between the main body of said air stream and the walls of said conduit and for interfering with continuous sliding surface contact of said particles with said side walls, said last named means comprising a multiplicity of rugae distributed randomly on the walls of said conduit * * *"²

Metal Arts has sold more than 40 conveyor systems since 1963 utilizing sandblasted conduits. These systems were sold in unassembled component form.

II.

The claims in issue are for an apparatus and not a method. They go to a combination. We proceed to the contention that the claims are invalid because they simply describe a new use of an old apparatus or combination. This assignment of error must be considered in the light of certain established principles of patent law. First, 35 U.S.C.A. § 102 proscribes the issuance of a patent where the invention was anticipated by knowledge of or use of others or had been theretofore patented. This type of invalidity is sometimes termed "lack of novelty". The invention must exhibit utility and novelty. Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. There is no contention that the invention is lacking in utility. Cf. Anthony v. Ranco, Inc., 5 Cir., 1963, 316 F.2d 509.

Second, patent validity is a question of law to be decided on the basis of factual inquiries. Graham v. John Deere Co., supra; Up-Right, Inc. v. Safway Products, Inc., 5 Cir., 1966, 364 F.2d 580; Sisko v. Southern Resin & Fiberglass Corporation, 5 Cir., 1967, 373 F.2d 866. In Graham the court noted several preliminary factual inquiries which are pertinent in determining validity in the face of a defense based on obviousness but the principle is equally applicable to a defense involving lack of novelty. Two of these are the scope and content of the prior art and the difference between the prior art and the claims in issue. The conclusionary inquiry then is to determine the question of novelty vel non on the basis of the preliminary findings. The clearly erroneous rule applies in such cases. Hughes Tool Company v. Varel Mfg. Company, 5 Cir., 1964, 336 F.2d 61. But it is to be noted that the rule does not apply in full force to an ultimate factual conclusion. Cf. Industrial Instrument Corporation v. Foxboro Company, 5 Cir., 1962, 307 F.2d 783, footnote 2. Moreover, when prior public use is alleged, the proof "must be clear, satisfactory, and, by some it is said beyond a reasonable doubt * * *" See Southern Implement Mfg. Co. v. McLemore, 5 Cir., 1965, 350 F.2d 244; citing Coffin v. Ogden, 1874, 18 Wall. 120, 85 U.S. 120, 21 L.Ed. 821; and Inglett & Company v. Everglades Fertilizer Company, 5 Cir., 1958, 255 F.2d 342, 346.

A patent awarded by the patent office is presumed valid and the burden is on the party asserting invalidity. 35 U.S.C.A. § 282. Primary responsibility for sifting out unpatentable material lies in the patent office. See Graham, supra, at 383 U.S. 18, 86 S.Ct. 684. It is true that if pertinent references were not considered by the patent office, then this presumption may be diluted or even extinguished. Rosaire v. Baroid Sales Division, National Lead Company, 5 Cir., 1955, 218 F.2d 72, 75. The relevant inquiry, however, since references other than those cited by the patent office may usually be found, is whether these new references raised in the District Court are of such significance that the presumption of validity is affected. This may be done by comparing the references brought up in the District Court to those cited in the patent office. See Otto v. Koppers Company, 4 Cir., 1957, 246 F.2d 789,801. Therefore to determine whether the patent in suit is entitled to the presumption of validity, we must inquire into the similarity...