Penn Intern. Industries v. Pennington Corp.

• Decision Date: 01 September 1978
• Docket Number: 77-3501,Nos. 77-2142,s. 77-2142
• Citation: 200 USPQ 651,583 F.2d 1078
• Parties: PENN INTERNATIONAL INDUSTRIES, a California Corporation, Plaintiff-Appellee, v. The PENNINGTON CORPORATION, a California Corporation, the Bedroom, a corporation, and the Comfort Zone, a corporation, Defendants-Appellants, and William Pennington, an Individual Defendant. AMERICAN THERMO SEAL, INC., Plaintiff-Appellee, v. PENN INTERNATIONAL INDUSTRIES, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1078

583 F.2d 1078

200 U.S.P.Q. 651

PENN INTERNATIONAL INDUSTRIES, a California Corporation, Plaintiff-Appellee, v. The PENNINGTON CORPORATION, a California Corporation, the

Bedroom, a corporation, and the Comfort Zone, a

corporation, Defendants-Appellants,

and

William Pennington, an Individual Defendant.

AMERICAN THERMO SEAL, INC., Plaintiff-Appellee, v. PENN INTERNATIONAL INDUSTRIES, INC., Defendant-Appellant.

Nos. 77-2142, 77-3501.

United States Court of Appeals Ninth Circuit.

Sept. 1, 1978.

Rehearing Denied Oct. 16, 1978.

Glen R. Grunewald, of Warren, Chickering & Grunewald, Oakland, Cal., for defendants-appellants.

Robert J. Schaap, of Romney Schaap Golant Scillieri Disner & Ashen, Beverly Hills, Cal., for plaintiff-appellee.

Appeals from the United States District Court for the Northern District of California and from the United States District Court for Central District of California.

Before WRIGHT and TANG, Circuit Judges, and THOMPSON, ^* District Judge.

EUGENE A. WRIGHT, Circuit Judge.

We consolidated these appeals to consider two challenges to Patent No. 3,778,852 (air-frame water bed) held by Penn International Industries (Penn).

In No. 77-2142 Penn sued Pennington Corporation, a water bed manufacturer, and several of its retailers for infringement in District Court for the Northern District of California. Among its defenses, Pennington alleged that the patent was invalid for obviousness. The court found the patent valid and infringed, and on appeal we affirmed most of the judgment ¹ but remanded for further consideration of the obviousness issue. The court again held the patent valid and Pennington appeals.

In No. 77-3501 American Thermo Seal (American), another water bed manufacturer, sought a declaration of patent invalidity in the District Court for the Southern District of California. Penn responded by claiming that American was infringing its patent. The court granted summary judgment for American and Penn appeals.

For the reasons explained below we affirm the judgment of validity in No. 77-2142 and vacate and remand the judgment in No. 77-3501.

I. The Patent in Suit

Penn's patent claims a water bed consisting of a water chamber constructed of heat-sealed polyvinyl chloride, surrounded by a single air chamber of equal or greater height. The vertical wall of the water chamber is formed by an inner sheeting, sealed to the chamber's top and bottom sheets at a point inward from their edges. The top and bottom sheets thus extend beyond the water chamber and are sealed to one another at their edges to form the surrounding chamber of air.

When the bed is filled for use, air is introduced into its chamber at a pressure sufficient to depress the inner wall against the liquid, thereby framing it. This configuration eliminates the necessity of a rigid (usually wooden) frame and supports the encased water to provide a flat sleeping surface. Eliminating the solid frame makes entering and leaving the bed less difficult, provides a comfortable seating area at the bed's edge, and renders the bed, when emptied, completely collapsible and easily transportable.

The Penn design's other primary advantage is that all of the bed's water-enclosing seams are located internally so that, should they fail, water and air will move between their respective chambers but will not escape the confines of the bed. This feature renders Penn's bed suitable for indoor use.

II. No. 77-2142

In the earlier appeal we remanded because the trial judge did not consider the patent's obviousness in light of the "Suntanner," an air-frame water bed prior to Penn's:

On the question of the patent's validity, we hold that the Suntanner was relevant prior art and that since it was not taken into consideration by the Patent Office, the presumption of the patent's validity is dissipated. We hold further that the Suntanner was the most pertinent prior art, being the only air-frame water bed in the prior art, and that in appraising the advance of the Penn patent over prior art, the advance over the Suntanner must be ascertained and appraised.

Penn International Industries v. The Pennington Corp., No. 75-2839 (unpub. memorandum, 9th Cir. Dec. 13, 1976).

On remand the court exhaustively considered the Suntanner's teachings and the level of skill in the art and concluded that the Penn patent is nonobvious. The appellants do not challenge the court's factual findings but raise the following issues.

1) When a patented invention is not supported by evidence of the secondary considerations set forth in Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), can a holding of patent validity stand as a matter of law? As a "related sub-issue" appellants challenge the sufficiency of the factual findings to support the conclusion of nonobviousness.

2) When the only experienced patent licensee has been unsuccessful in attempts at commercial production, is the patent invalid under 35 U.S.C. § 112?

A. Obviousness and Secondary Considerations

Section 103 of 35 U.S.C. establishes nonobviousness as one of three conditions of patentability. ² The ultimate question of patentability is one of law, but the legal conclusion is resolved against the background of three factual inquiries:

a) scope and content of the prior art;

b) differences between the prior art and the claims in suit; and

c) the level of skill in the pertinent art.

Graham, 383 U.S. at 17, 86 S.Ct. 684. See also Austin v. Marco Dental Products, 560 F.2d 966, 970 (9th Cir. 1977), Cert. denied 435 U.S. 918, 98 S.Ct. 1477, 55 L.Ed.2d 511 (1978).

In Graham the Supreme Court approved appraisal of secondary considerations such as "commercial success, long felt but unsolved needs, failure of others, etc.," to cast light on the circumstances surrounding the origin of the item sought to be patented. Graham, 383 U.S. at 17-18, 86 S.Ct. at 694. The Graham court made clear that such inquiries are secondary and that the resort to them is permissible but not required. Id. at 18, 86 S.Ct. 684.

To be patentable an item must be novel, useful and nonobvious, 35 U.S.C. §§ 101-103; Graham, 383 U.S. at 12, 86 S.Ct. 684. Consideration of secondary factors will often assist in ascertaining whether the alleged invention is obvious, but neither their presence nor absence is alone determinative of the question.

Pennington asserts that the court's findings of fact do not support the conclusion of patent validity. In addressing this contention we must first consider whether Penn's patent comprehends new elements or is merely a combination of old ones. Combination patents are subjected to rigid scrutiny.

Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. . . . A patent for a combination which only unites old elements with no change in their respective functions . . . obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men.

Sakraida v. Ag Pro, Inc., 425 U.S. 273, 281, 96 S.Ct. 1532, 1537, 47 L.Ed.2d 784 (1976) (quoting Great A & P Tea Co. v. Supermarket Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950)).

To withstand challenge a combination patent must be synergistic; it must result "in an effect greater than the sum of the several effects taken separately." Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 61, 90 S.Ct. 305, 308, 24 L.Ed.2d 258 (1969). See also Sakraida, 425 U.S. at 282. Phrased differently, to be valid a combination patent must produce an "unusual or surprising result." Kamei-Autokomfort v. Eurasian Automotive Products, 553 F.2d 603, 608 (9th Cir. 1977); Austin v. Marco Dental Products, 560 F.2d at 972.

Whether the combination patent standards for validity come into play requires consideration of external evidence and depends on the state of the prior art. The Suntanner is the only prior art under consideration in this case and the district court found that Penn's patent included numerous elements not found in the Suntanner. ³ We therefore conclude that, on this record, the Penn patent cannot be deemed a combination and need not demonstrate an unusual or surprising result to be valid.

We recognize that the Penn structure is not complex, but its simplicity is one of its primary virtues. "This court has made it clear, moreover, that an invention will not be denied a patent because it embodies a solution which seems simple and obvious with the benefit of hindsight." Saf-Gard Products, Inc. v. Service Parts, Inc., 532 F.2d 1266, 1272 (9th Cir.), Cert. denied 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976) (citing National Sponge Cushion Co. v. Rubber Corp., 286 F.2d 731, 735 (9th Cir. 1961), Cert. denied, 368 U.S. 976, 82 S.Ct. 480, 7 L.Ed.2d 438 (1962)).

The Penn bed's suitability for indoor use marks a definite functional advance over the Suntanner. Even minor changes from the prior art can produce a patentable invention so long as the result could not have been predicted beforehand by a person skilled in the art. Saf-Gard Products, 532 F.2d at 1272.

The district court's conclusion that the patent in suit is not obvious in light of the Suntanner is supported by the record and by findings of fact which are not clearly erroneous.

B. Validity under 35 U.S.C. § 112

Appellants contend that the patent is invalid because it does not contain a written description of the invention "in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains . . . to make and use the same." 35 U.S.C. § 112.

Appellants failed to raise this issue in the prior appeal and it is now too late for them to do so. Calhoun v. Bernard, 359 F.2d 400, 401 (9th Cir. 1966). We note, however, that the district court did consider the argument and entered findings which resolved it in Penn's favor.

The judgment of patent validity in No. 77-2142...