Nickola v. Peterson, 76-1916
| Court | United States Courts of Appeals. United States Court of Appeals (6th Circuit) |
| Citation | 198 USPQ 385,580 F.2d 898 |
| Docket Number | No. 76-1916,76-1916 |
| Parties | , 3 Fed. R. Evid. Serv. 177 Anne D. NICKOLA, Plaintiff-Appellant, v. Kenneth PETERSON, d/b/a Kaydee Products Company, Defendant-Appellee. |
| Decision Date | 23 June 1978 |
Charles W. Chandler, Gifford, Chandler, Sheridan & Sprinkle, Birmingham, Mich., for plaintiff-appellant.
John K. McCulloch, Saginaw, Mich., for defendant-appellee.
Before CELEBREZZE, Circuit Judge, LIVELY, Circuit Judge, and MARKEY, Chief Judge of the U. S. Court of Customs and Patent Appeals. *
MARKEY, Chief Judge, Court of Customs and Patent Appeals.
Appeal under 28 U.S.C. § 1291 by plaintiff-patentee, Anne D. Nickola (Nickola), from the district court's patent invalidity decision after a six-day jury trial. 1 The complaint against defendant, Kenneth Peterson d/b/a Kaydee Products Company (Peterson), contains count I, alleging infringement of claims 4 and 21 in Nickola's patent, 2 and count II, alleging wrongful use of trade secrets. In a special verdict of fifteen interrogatories, the jury found for Nickola on the patent count and determined her damages as $6,230.00. On the trade secret count, the jury returned a general verdict for Peterson. The district court then granted Peterson's motion for judgment notwithstanding the verdict on the patent count, denied his alternative motion for a new trial, set aside part of the special verdict, declared the two patent claims invalid, and entered judgment for Peterson on both counts. Nickola appeals only the patent invalidity decision. We affirm.
The invention, intended to furnish gas and electric service to individual mobile homes, is the combination of an upright post, with an electric power box, an electric meter, and a heating fuel meter (e. g., a gas meter) mounted on the post.
Fig. 2 in Nickola's patent is reproduced here:
NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE
Referring to Fig. 2, the patent describes a mobile home 42, an elongated post 10, "conventional" electric meter 14, "conventional" electric power box 16, electric cable 54 connecting the power box to the mobile home, ground wire 34 connecting "conventional" mobile home ground wire connection 44 to "conventional" underground metal water pipe 40, "conventional" gas meter 78, "conventional" gas pipes 82 and 84, "conventional" telephone box 62, and "conventional" telephone cable 69.
Claim 4 recites a combination of four structural elements:
(Bracketed matter and paragraphing added.)
Claim 21 recites a combination of six structural elements:
(Bracketed matter and paragraphing added.)
Nickola's company, Adnic Products Co., sells a metal post 8 ft. in length, with an L-shaped mounting plate on one end, bearing the trademark POWER PACK PEDESTAL. The post and an electric power box are sold as a unit.
The buyer (e. g., a mobile home park operator) installs the unit in an upright position by burying approximately half of the post in the ground at a mobile home site. The local utility company provides underground gas and electric service to the post, and also provides and mounts the gas and electric meters on the post.
Trial was in November, 1975. Nickola, who demanded a jury trial, 3 testified, so far as material here:
That she was manager of a mobile home park; that in about 1960 electric meters for mobile homes were mounted on a "gang rack" at the rear of the park; that in 1960 mobile homes used "bottled gas"; that in about 1965, when gas service became available, the gas meters were also mounted on a gang rack at the rear of the park, with individual underground supply lines running from each gas meter to a mobile home site; that the next event was introduction of an "electrical pedestal" mounting an electric meter at each mobile home, replacing the central gang rack of electric meters; that she then "introduced the first safe pedestal that combined gas and electric."
Nickola told of a mobile home fire in about 1965, when firemen fought against "live gas and a live electric" because they had disconnected the "wrong gas" and "wrong electric" at the gang racks, and that, in conceiving her invention in May, 1966, she "put something together and worked it out where utilities could be on the same device."
Nickola said her first pedestals for gas and electric meters were approved for her park by the local utility (Consumers) and placed in service on December 18, 1967. She consulted a patent attorney, had prepared a "Record of Invention" form dated April 26, 1967, and had filed her original patent application in the Patent Office (now the Patent and Trademark Office) on November 20, 1967 (exhibit 4). She said that, with commercial sales beginning in 1968, "40 to 50,000" units had been sold.
On cross-examination, she answered that the gas meter, the electric meter, and the other devices which can be mounted on the post, each "work independently of the other."
Kenneth DeVerna, long time employee of Consumers and member of its product evaluation committee, testified that, to his knowledge, Nickola's pedestal was the first approved by his company for combined gas and electric service. John D. Gribble, another
Consumers employee, gave essentially the same testimony. 4When Nickola rested, Peterson moved orally for a directed verdict on the ground that Nickola had not proved infringement. That motion being denied, Peterson testified primarily with respect to infringement and trade secrets. Peterson then presented Francis B. Boyle as "an expert in the art relating to utility pedestals."
In summary, Boyle testified that from 1962 until his retirement in 1972 he had been designing, manufacturing, and installing utility pedestals; that one of his mobile home pedestals was an elongated post mounting an electric meter and an electric power box, as shown in a photograph dated September, 1963; that in 1963 or 1964 "customers" requested him to "put a hole in there (in the post) for the mounting bracket to support a gas meter," that he designed a second utility pedestal like his first, as shown in a photograph dated June, 1966; that Consumers approved his second pedestal for mobile homes on July 8, 1966; that on the same day he visited Nickola and offered to supply his pedestals; that "in the summer of 1966," in his opinion, it would have been "obvious * * * to mount a gas meter and an electric meter and power box on the same pedestal," 5 though he "didn't like the idea of mounting a gas meter on the same post as an electrical meter" because if "the (gas) pipe broke and there were a spark, it would ignite;" and that his second pedestal is described in U. S. Patent No. 3,450,951 (exhibit 13), for "Outdoor Electrical Meter Box and Service Outlet For Mobile Homes," granted June 17, 1969 on an application filed July 12, 1967. 6
In rebuttal, Nickola gave her opinion that it would not have been obvious in May, 1966 (her conception date) "to combine both a gas meter and an electric meter on the same post" because gas "was just newly introduced," "there was a lot of opposition," and "people dislike the gas and electric on the same thing because of fires and dangers of that sort." She further stated that Boyle's visit to her occurred in September, 1968 (not on July 8, 1966).
Peterson again moved orally for a directed verdict on the ground that Nickola had not proved infringement. That motion was denied. Nickola then moved orally for a directed verdict of patent validity, on the ground that Peterson had not overcome the
statutory presumption of validity, 7 and arguing that there had been "no evidence to go to the jury to challenge the validity of the patent under Sec. 102 8 of the Patent Act, the novelty requirement," nor "any competent testimony to go to the jury to challenge the validity of the patent under Sec. 103." 9 In opposition, Peterson argued that the patent was invalid because "the combination of the elements such as electric power boxes and meters and gas meters is really an aggravation (sic, aggregation) of elements * * *, they have no other function among themselves or one upon the other" and because "the mounting of a gas meter on a pedestal which already supports an electric meter and a power box is obvious and was obvious at the time plaintiff made her invention, whenever she made her invention."The district court denied Nickola's motion for a directed verdict, stating "there are issues of fact to go to the jury as to the validity of the patent."
Aware that the trial judge intended to treat validity as a question of law, after submitting interrogatories to the jury, Nickola moved orally to submit the "issue of validity itself" to the jury because it "can be tried by the jury" under Fed.R.Civ.P. 38. In denying this motion, the district court observed that "it was held," in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), "the question of patent validity is one of law."
Of the fifteen interrogatories answered by the jury in its special verdict, 10 these six are material here:
Is plaintiff's claimed invention 'different' from the prior art by its...
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