Milton Manufacturing Co. v. Potter-Weil Corporation, 14278.

• Decision Date: 28 February 1964
• Docket Number: No. 14278.,14278.
• Citation: 327 F.2d 437
• Parties: MILTON MANUFACTURING CO., Inc., Plaintiff-Appellant, v. POTTER-WEIL CORPORATION, and Weil Service Products Corporation, Defendants-Appellees. U. Z. FOWLER, an individual, d/b/a Fowler-Pem Company, Plaintiff-Appellee, v. MILTON MANUFACTURING CO., Inc., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

327 F.2d 437 (1964)

MILTON MANUFACTURING CO., Inc., Plaintiff-Appellant, v. POTTER-WEIL CORPORATION, and Weil Service Products Corporation, Defendants-Appellees.

U. Z. FOWLER, an individual, d/b/a Fowler-Pem Company, Plaintiff-Appellee, v. MILTON MANUFACTURING CO., Inc., Defendant-Appellant.

No. 14278.

United States Court of Appeals Seventh Circuit.

January 28, 1964.

Rehearing Denied February 28, 1964.

Clarence E. Threedy, Edward C. Threedy, Chicago, Ill., for appellant.

James R. Dowdall, Sidney Neuman, Chicago, Ill., Reed Lawlor, Los Angeles, Cal., of counsel, for appellees.

Before SCHNACKENBERG, KILEY, and SWYGERT, Circuit Judges.

SWYGERT, Circuit Judge.

This appeal involves United States Patent No. 2,865,695 granted to Albert Mazeika and entitled "Automatic Sealing Mechanism for Pistons and the Like." Two related actions were consolidated for trial in the district court. The actions and the respective parties were as follows:

FIRST ACTION | Action for infringement of | the Mazeika patent by Milton Manufacturing Company, | the sale of a pencil type v. > tire air gauge manufactured Potter-Weil Corporation and Weil | by the Fowler-Pem Service Products Corporation. | Company and sold by | Potter-Weil Corporation | and Weil Service Products | Corporation. Potter-Weil Corporation, Weil | Counterclaim asking judgment Service Products Corporation, | of noninfringement v. > and invalidity of the patent. Milton Manufacturing Company. | SECOND ACTION | Declaratory judgment action U. Z. Fowler and Fowler-Pem Company, | brought by the manufacturer v. > of the gauge Milton Manufacturing Company. | asking that the Mazeika | patent be declared invalid | and not infringed.

The district court held the Mazeika patent invalid and that it was not infringed by the air gauge sold by Potter-Weil and Weil Service Products. It also granted the declaratory judgment requested by Fowler-Pem.

The subject matter of the patent relates generally to an automatic seal in an air gauge. Specifically, the object of the patent is to provide a seal, between a plunger and the inner wall of the cylinder within which the plunger operates, by means of a resilient member (in the Mazeika patent, a spring) associated with a pliable washer fastened at the head of the plunger. The spring when compressed forces the cup-shaped washer against the wall of the cylinder thereby causing the seal.

Mazeika's application for a patent contained five claims. All were rejected by the Patent Office examiner as unpatentable because of prior patents issued to Reynolds, No. 2,612,420, and Oliver, No. 2,000,187.

Following this rejection, Mazeika cancelled the original claims and substituted another claim. The examiner then found that the patent issued to Druge, No. 2,530,005, disclosed the basic essentials of an effective sealing structure although not the precise combination of the Mazeika patent. He advised Mazeika that his "invention, if any, * * * appears to be in the sealing washer and this should be claimed per se." Mazeika then substituted the claim which now is the single claim of the issued patent.¹ To avoid Druge, Mazeika emphasized that the cup-shaped washer in his device provided a "spring seat" and that the compression spring "seated in" the spring seat of the washer. The patent was then granted.

In finding the Mazeika patent invalid the district judge concluded that it lacked invention over the prior art. Specifically, the judge ruled that the patent had been anticipated by three prior patents: Steedman, No. 1,000,563; Wahl, No. 1,866,140; and Fleck, No. 1,894,372. The file wrapper does not indicate whether these patents were considered by the examiner.

While the statutory presumption of validity must be considered, this court has adhered to the proposition that the presumption is greatly weakened when prior art patents have not been cited or considered by the Patent Office. Kennatrack Corp. v. Stanley Works, 314 F.2d 164 (7th Cir. 1963); A R Inc. v. Electro-Voice, Inc., 311 F.2d 508 (7th Cir. 1962). Failure of the Patent Office to cite prior art should not make the presumption of validity conclusive. We do not think that the examiner's failure to cite the pertinent prior art means that he considered the art and found it irrelevant; rather, it may be presumed he overlooked it.

The district judge analyzed the Steedman, Wahl, and Fleck patents and compared them with the Mazeika patent. We think no purpose would be served by an attempt to restate the findings; it suffices if we incorporate those which are pertinent.²

Milton argues that in order that the claim in issue be anticipated by the prior art, "all the elements of the combination, or their mechanical equivalents, should be found in a single patent or description, where they do substantially the same work by substantially the same means," citing this court's decision in Chicago Lock Co. v. Tratsch, 72 F.2d 482, 487 (7th Cir. 1934); and that an examination of the Steedman, Wahl, and Fleck patents shows that none meets this requirement. We disagree. Judge La Buy found the same or equivalent elements in each of the prior patents when compared with the claim in issue. There was no error in his findings or in the legal conclusion drawn therefrom that there was no invention. Each of the prior patents fully anticipated what Mazeika now claims is a patentable improvement of an air gauge.

Since the Mazeika patent was anticipated, we need not consider the relevancy of section 103 of the Patent Act even though the district judge rested his decision in part on obviousness.

Moreover, we do not consider any commercial success Milton may have enjoyed by manufacturing the Mazeika patent. Commercial success per se does not supply the quality of invention. Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950)

In view of our holding on the issue of validity, we do not reach the question of infringement.

Milton contends that there was no finding that it ever charged Fowler with infringement of the Mazeika patent; that the declaratory judgment action was filed for the purpose of harassing Milton; and because of Fowler's bad faith in instituting the action, the district court erred in not dismissing the action and awarding costs and attorney fees.

The district judge ruled that the declaratory judgment action involved validity as well as infringement and that it was not brought by Fowler in bad faith. We think the judge's ruling was correct.

The judgment is affirmed.

1 The claim reads:

"A seal for an expellable plunger of an air gauge, said plunger at one end thereof providing a circular flange, a cup-shaped washer mounted on the opposite side of said flange of said plunger, a member threadably connected...