Moon v. Cabot Shops, Inc.
| Decision Date | 28 October 1959 |
| Docket Number | No. 16132.,16132. |
| Citation | 270 F.2d 539 |
| Parties | James MOON, Edmond M. Wagner and Philip Subkow, Appellants, v. CABOT SHOPS, INC., and Howard Supply Company, Appellees. CABOT SHOPS, INC., and Howard Supply Company, Appellants, v. James MOON, Edmond M. Wagner and Philip Subkow, Appellees. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Philip Subkow, Beverly Hills, Cal., in pro. per., and for appellants.
Lyon & Lyon, Charles G. Lyon, Los Angeles, Cal., Kenway, Jenney, Witter & Hildreth, Kenneth W. Brown, Boston, Mass., for appellees.
Before BARNES, HAMLEY, and JERTBERG, Circuit Judges.
Plaintiffs Moon, Wagner, and Subkow, as owners of Letters Patent No. 2,671,537, brought this action for damages and injunctive relief against Cabot Shops, Inc., and Howard Supply Company, claiming infringement of their patent.1 Defendants denied infringement and affirmatively pleaded that the patent is invalid. The patent is invalid, defendants alleged, because the claims of the patent do not evidence invention over the prior art. As additional reasons for challenging the validity of the patent, defendants alleged that the material elements and combination of elements recited in the claims had been disclosed in prior publications and patents, and were in public use for more than one year prior to the filing date of the Moon patent.
The court, after hearing, adjudged the patent valid but not infringed and dismissed the action. Plaintiffs have appealed from that portion of the judgment holding the patent not infringed; defendants have cross-appealed from that portion of the judgment holding the patent to be valid.
The patent in suit involves a portable derrick of the type used for drilling and servicing oil wells. A telescopic derrick is mounted above the driver's cab at the front end of a truck chassis. An engine is mounted at the rear of the chassis. Winches are positioned between the driver and the engine. A hinge about which the derrick rotates is so positioned at the front of the chassis that when the derrick is transported it lies above the engine and the driver with its bottom to the front of the chassis. Means are provided to rotate the derrick on the hinge so that it may be erected. The derrick is transported in a collapsed position but is extended to working height on erection.
Prior to 1938 the conventional or permanent type of derrick was in common use in most oil fields. Subsequently, Franks Manufacturing Company, the predecessor of Cabot Shops, Inc., produced a portable derrick mounted on a truck chassis. This development made possible the servicing of many wells by a single derrick unit.
The Franks derrick was mounted on a conventional truck chassis with the truck motor at the front and the cab behind the motor. The derrick, of the telescopic type, was hinged at the rear of the truck and erected at that location. Before the derrick could be erected, however, it was necessary to back the truck into position in close proximity to the well head.
It is admitted that although this first portable derrick was a significant achievement it contained several disadvantages inherent in its design.
First among these was the necessity of having to back the truck into position at the well head. The backing process was often time-consuming and difficult to accomplish. Second, this back-in type of derrick presented certain problems with regard to safety. It had only a small margin of stability. Moon testified that he had seen a back-in unit overturn. In addition, the hinging of the derrick at the rear of the chassis created some danger to the driver in the event the derrick should fall back during or after the erection process. Third, the back-in type, because of its weight and arrangement of components, was illegal for transportation over the highways of many states.
Moon filed his patent application June 28, 1948. On October 18, 1949, the Patent Office examiner rejected all the claims on the basis of the prior art. The examiner stated that the Moon structure was merely a reversal of the derrick from the rear to the front of the truck chassis and that such a change was a matter of mechanical expedience and not invention.2
This rejection was not acceded to and subsequently amendments and additional claims were filed. These amended and new claims were also rejected by the Patent Office as too broad in view of the prior art.
On September 15, 1952, Moon requested the cancellation of all prior claims and submitted four new claims. These new claims were more specific with respect to the position of the derrick hinge. The examiner, although objecting to the form of these claims, indicated he would allow three of them if certain changes in language were made. He stated:
"The claims should specifically set forth the particular width relationship of the derrick legs and also the location of the cross bracing elements so as to indicate that the derrick legs will straddle the cab without interference with said cab or cross bracing. * * *"3
Moon acceded to the limitation suggested by the examiner and incorporated it into what is now claim one. The four previous claims were then canceled and four new ones were submitted. Claim five was added subsequently. The patent was granted March 9, 1954.
We turn first to the question of patent validity.
A presumption of validity arises from the issuance of a patent.4 The presumption is predicated upon the expertness of the Patent Office acting within its specific field, and can be overcome only by clear and convincing proof. The burden of proof in such cases is upon the party attacking the patent, and reasonable doubts must be resolved in favor of validity. See Patterson-Ballagh Corp. v. Moss, 9 Cir., 201 F.2d 403, 406.
Defendants question the validity of the patent in suit on three grounds. They claim that Moon's structure is nothing more than a collection of elements old in the art combined in an obvious manner to produce an obvious result. Further, they contend that his structure lacks invention over the prior art. Finally, they maintain that the patent in suit was described in printed publications published more than one year prior to the filing of the application for the patent.5
The district court found that the structure described in the patent represented an inventive advance over the prior art. It also found that the invention of the patent was not patented or described in a printed publication more than one year prior to the filing of the application for the patent. It concluded that the patent was validly issued.
Defendants argue specifically that the only novelty involved in the patented structure is in the straddling of the driver's position by the derrick legs, and they deny that such straddling amounts to invention. They contend that such straddling is neither useful, desirable, nor advantageous.
Our review of the Patent Office proceedings convinces us that the examiner found the inventive feature of the Moon structure to be in the positioning of the derrick so that the legs straddle the driver's position. As before noted, the examiner rejected Moon's earlier claims on the ground that they were merely reversals of the prior art. When Moon qualified his claims, however, so that provision was made for the legs to straddle the driver's position, the claims were allowed. It would seem therefore that in the opinion of the examiner the straddling of the cab by the derrick legs was the crux of the invention.
We cannot say that the conclusion of the examiner in this regard was unwarranted. The Moon structure solved many of the problems posed by the back-in units. The derrick as combined with the chassis and the cab produced a structure which was at once stable, safe, and maneuverable. It was the interaction of the derrick with the chassis and the cab positioned as described in the claims that made for patentability in this case. It was that interaction which produced the desired stability, safety, and maneuverability not previously achieved by any portable derrick unit.
We cannot agree with defendants that the Moon structure lacks invention over the prior art. None of the cited prior art patents teaches the value of positioning the derrick so that its legs straddle the cab. None solves the problems of stability, safety, and maneuverability. In solving these problems, Moon's structure went beyond the prior art.
Defendants contend that the patent in suit is invalid by reason of prior publication. The district court found that the patent in suit had not been patented or described in any printed publication more than one year prior to the filing date of the patent in suit. Defendants argue that this finding is clearly erroneous because a number of pictures or sketches of the Moon structure were published more than a year before the application was filed. They argue that the pictures or sketches disclose the structure of the patent. The district court found that it was not clearly apparent from the evidence that the printed publications embodied the invention of the patent in suit.
The pictures or sketches of the Moon device in the printed publications show, with one exception, the derrick in its collapsed and horizontal position on top of the chassis. The pictures or sketches are of an advertising nature and are not detailed. In none of them is the hinge position clearly shown. Nor is it apparent that the driver's cab enters between the derrick legs. Numerous other details have also been omitted and must be filled in by the observer's imagination. In addition, the expert testimony of engineers as to what these pictures or sketches disclose was in conflict. The resolution of that conflict was for the trial court. It resolved it against the defendants. We do not think its finding on this point was clearly erroneous.6
We hold that the trial court did not err in concluding that Moon's structure involved invention and...
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