Namirowski v. Nabisco, Inc., 73 C 196.

• Decision Date: 15 September 1976
• Docket Number: No. 73 C 196.,73 C 196.
• Citation: 421 F. Supp. 349
• Parties: A. M. NAMIROWSKI, Plaintiff, v. NABISCO, INC., a Foreign Corporation, Defendant.
• Court: U.S. District Court — Northern District of Illinois

421 F. Supp. 349

A. M. NAMIROWSKI, Plaintiff, v. NABISCO, INC., a Foreign Corporation, Defendant.

No. 73 C 196.

United States District Court, N. D. Illinois, E. D.

September 15, 1976.

Alan D. Katz, Chicago, Ill., for plaintiff.

Sidley & Austin, Chicago, Ill., for defendant.

MEMORANDUM OPINION AND ORDER

FLAUM, District Judge.

This cause is before the court on defendant's motion for summary judgment.¹ Defendant seeks: (1) the dismissal of plaintiff's complaint; (2) judgment on its counterclaim declaring invalid U.S. Patent No. 3,448,698 which was issued to plaintiff on June 10, 1969. For the reasons set forth infra, defendant's motion is granted.

A. Nature of U.S. Patent No. 3,448,698

The nature and operation of plaintiff's device is quite simple. The patent describes an apparatus which is used in the handling and making of food products, particularly crackers. In the usual production of crackers, the raw dough is placed in separate pieces onto a conveyor belt which is passed beneath a salt-spreading machine used to deposit salt onto the dough. These uncooked pieces of salted dough are then moved by the conveyor into an oven where the cooking of the crackers takes place. Plaintiff's "improvement" consists primarily of two parts: first, a wire mesh conveyor belt, containing openings small enough to support the dough but large enough to allow salt to pass through, which accepts the unbaked cracker dough from a separate conveyor system before the dough reaches the salting machine and which carries the dough beneath the salting device thereupon depositing the salted dough pieces onto a third conveyor belt which leads to the oven; and second, a collecting means, i. e., a pan, located beneath the wire mesh conveyor belt and the salting machine which collects the salt not deposited on the unbaked dough after it passes through the wire mesh belt. Furthermore, the patent describes an air blowing device which directs forced air against the wire mesh belt on its return trip thereby forcing any salt which adhered to the belt to fall into the collecting means.

The purpose of the invention is also quite simple. By means of a wire mesh conveyor belt, any excess salt which is not placed on the unbaked dough will pass immediately through the wire mesh and never reach the baking ovens. This is important in the cracker industry as when salt enters the ovens periodic cleanings are needed which delay production. Plaintiff claimed in his patent that "virtually all" the salt not deposited onto the separate pieces of dough will fall into the collecting means and avoid entering into and fouling up the oven.

Plaintiff's claims in his patent are only five in number. In claim 1, plaintiff claims as his invention:

"A conveyor belt . . . defining a plurality of spaced-apart openings having a maximum dimension whereby adequate support will be provided for the pieces and a minimum dimension which will permit passage of salt through the belt, said belt supporting said pieces as salt is deposited thereon and being completely independent of the conveying means for transporting the pieces to and from said station, whereby virtually all of the material which is not deposited on said pieces falls through the belt and is, therefore, not transported to said oven, and including a collecting means for said material located beneath both the upper and lower flights of said conveyor belt whereby said material passes through both flights before being collected by said collecting means."

Claims 2 through 5 all refer back to claim 1, with claim 2 describing the conveyor belt as a wire mesh belt, claim 3 describing the collecting pans as being removable so that the salt collected therein can be recycled, and claim 5 describing the collecting pan as portable so that it can be removed and replaced without disturbing the continuing operation of the machine. Claim 4 describes the air blowing device.

B. Defendant's Challenge to Plaintiff's Suit for Infringement

In the present motion for summary judgment, defendant asserts that plaintiff's patent No. 3,448,698 is invalid and therefore an action for infringement will not lie. As to the primary claim 1, as well as claims 2, 3, and 5, defendant relies on 35 U.S.C. §§ 102(a), (b) in arguing that the Namirowski invention is unpatentable. Sections 102(a) and (b) provide:

A person shall be entitled to a patent unless — (a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent, or

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States . . ..

Thus, defendant argues that the invention described in claims 1, 2, 3, and 5 was: (1) in prior publication before 1965, the earliest date ascribed to the invention's discovery; (2) anticipated by a prior patent and publications; (3) in prior public use and on sale in the United States more than one year before plaintiff's application for his patent; and (4) not new or novel in the light of prior art.

As to claim 4, defendant argues that it must fail since first, it is dependent for its validity on claim 1 which is invalid, and second, the claim violates 35 U.S.C. § 103 in that

the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

1. The Validity of Claims 1, 2, 3, and 5.

In support of its position that the Namirowski patent is invalid on the grounds of prior publication and public use or sale, lack of novelty, and anticipation, defendant relies on British Patent No. 507,931, issued in 1939 to T. & T. Vicars Ltd. ("Vicars patent"), as well as machines used or sold by Schulze and Burch Biscuit Co., Tiefenthaler Machinery Co., Thomas L. Green & Co., Inc., J. W. Greer, Inc., and Baker Perkins, Inc. The Vicars patent involves a device for "improvements in biscuit making machinery,"

in which . . . salt . . . for dusting or spraying from the dusting or spraying device which does not come upon any dough biscuit is collected after passage through the open space of the reticulate conveyor comprising an interlinked wire meshwork and returned to the dusting or spraying device.

The other machines mentioned above, all in use prior to 1965, comprise devices used in the production of crackers in which unbaked cracker dough is sent by conveyor to a wire mesh belt positioned beneath a salting machine and which have a collecting mechanism to collect any excess salt which falls on the wire mesh belt. The collecting means in each machine is removable so that the collected salt can be reused in the production process.

Before proceeding to discuss the merits of defendant's arguments, the court notes that the greatest scrutiny of the record is required prior to a determination of a motion for summary judgment in a patent case. However, the Seventh Circuit has approved of summary judgment in patent litigation when it is clear that there are no genuine issues of material fact and a trial on the merits would be useless. See Ropat Corp. v. McGraw-Edison Co., 535 F.2d 378 (7th Cir. 1976); Research Corp. v. NASCO Indus., 501 F.2d 358 (7th Cir.), cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974). Moreover, although the plaintiff argues that the presumption of patent validity mandates extreme caution in summary judgment motions challenging a patent's validity, in this case no such presumption exists. Thus, the cases of Fredman v. Harris-Hub Co., 442 F.2d 210 (7th Cir. 1971), T. P. Laboratories, Inc. v. Huge, 371 F.2d 231 (7th Cir. 1966), and Scott Paper Co. v. Fort Howard Paper Co., 432 F.2d 1198 (7th Cir. 1970), cert. denied, 401 U.S. 913, 91 S.Ct. 882, 27 L.Ed.2d 812 (1971), establish the principal that, "There is no presumption of patent validity when the pertinent prior art was not before the patent examiner." Fredman v. Harris-Hub Co., 442 F.2d 210, 214 (7th Cir. 1971). In the case at bar, neither the Vicars patent nor the other machines mentioned before was cited to the patent office in Namirowski's application for patent. Therefore, there is no presumption of validity as to U.S. Patent No. 3,448,698.

It is the court's conclusion, after reviewing the Vicars patent, and the affidavits presented describing the other machines used in the United States to bake crackers, that claims 1, 2, 3, and 5 are invalid pursuant to 35 U.S.C. §§ 102(a) and (b) on the grounds of prior publication and use, anticipation and lack of novelty. Claims 1, 2, 3, and 5 refer to two components which delineate the patentable aspect of plaintiff's device; a wire mesh conveyor belt that has holes large enough to allow salt to pass through, and a means for collecting the salt that fails to land on the unbaked cracker dough. All the machines mentioned previously, as well as the Vicars device, contain the identical wire mesh belt and portable collecting mechanism. As stated by the Seventh Circuit in Popeil Bros, Inc. v. Schick Electric, Inc., 494 F.2d 162 (7th Cir. 1974):

In essence Section 102(a) requires that a method or device, in order to be patentable, be novel. Under the statute such novelty is lacking where a purported invention has been anticipated by a foreign or domestic patent or printed publication or domestic knowledge or use prior to the inventor's date of invention. A previous patent, printed publication or domestic product anticipates a purported invention only where, except for insubstantial differences, it contains all of the same elements in the same fashion to perform an identical function.

Id. at 164 (emphasis supplied).

Plaintiff does not dispute that the Vicars patent and the other machines cited by defendant contain the same elements described by his...