Potter Instrument Co., Inc. v. ODEC Computer Systems, Inc., 74-1081.

• Decision Date: 27 June 1974
• Docket Number: No. 74-1081.,74-1081.
• Citation: 499 F.2d 209
• Parties: POTTER INSTRUMENT COMPANY, INC., Plaintiff, Appellant, v. ODEC COMPUTER SYSTEMS, INC., Defendant, Appellee.
• Court: U.S. Court of Appeals — First Circuit

499 F.2d 209 (1974)

POTTER INSTRUMENT COMPANY, INC., Plaintiff, Appellant, v. ODEC COMPUTER SYSTEMS, INC., Defendant, Appellee.

No. 74-1081.

United States Court of Appeals, First Circuit.

Argued June 3, 1974.

Decided June 27, 1974.

Richard L. Aitken, Washington, D. C., with whom Anthony M. Lorusso, Washington, D. C., Kenway, Jenney & Hildreth, Boston, Mass., Gilbert H. Hennessey, and Lane, Aitken, Dunner & Ziems, Washington, D. C., were on brief, for plaintiff, appellant.

Albert E. Fey, New York City, with whom Thomas H. Quinn, Swan, Keeney, Jenckes & Asquith, Providence, R. I., William J. Gilbreth, and Fish & Neave, New York City, were on brief, for defendant, appellee.

Before COFFIN, Chief Judge, McENTEE and CAMPBELL, Circuit Judges.

COFFIN, Chief Judge.

This appeal stems from a patent infringement action initiated by the appellant in the district court, resulting in a judgment dismissing the complaint on grounds that the claims in issue in two patents were invalid for obviousness, under the standard of 35 U.S.C. § 103. 370 F.Supp. 198 (D.R.I. 1974). Appellant contends that, as to one of these patents,¹ the district court failed to consider relevant evidence which would have shown that the patent was not "obvious" at the time of application.

The patent claim in question (Potter patent) concerns a chain type belt for high speed printing, used to print output information from computers and similar data processing equipment. The belt, with "teeth" spaced on its inner surface, retains printing slugs (with type faces), which are clipped onto the belt and engaged with the "teeth" so that they are kept in proper relation to each other. The belt's "teeth" also mesh with gears that drive the belt. As the belt rotates, its printing slugs (and their type faces) are carried past a row of hammers, each of which is fired when the appropriate type face comes opposite it, thereby enabling an entire line to be printed with each rotation of the belt.

It is not disputed that before the Potter patent was issued, the general idea for a chain type belt for high speed printing of one line per belt rotation had already been developed. Problems occurred, however, because the impact of the hammers against the slugs, which were clamped and screwed into place on the belt, caused stresses and strains which had tended to throw the slugs out of position or cause them to break. The Potter patent helped solve these problems in two ways: first, its one-piece printing slugs, which clipped onto the belt, could withstand hammer pressure better than clamped and screwed slugs; second, its "teeth", on the belt's inner surface, could hold the slugs in position better than the alternative of holding each slug in position by its abutting slugs.

The district court found, however, that the Potter patent's one-piece slug, clipped onto the timing belt, was an "obvious" expedient at the time the patent was issued. It noted, most particularly, that the identical expedient had previously been suggested (although not considered by the Patent Office as part of the prior art) for moving paper in a printer, by way of attachments mounted on a timing belt for carrying paper feed pins.² Further, it found persuasive certain testimony that it would have been obvious, at the time, to mount printing slugs on a timing belt.

As to the teeth on the belt's inner surface, used to hold the slugs in position, the district court determined that this, too, was an obvious mechanism at the time the patent was issued. Appellant had admitted as much in its patent application, when it stated that a prior patent, incorporating teeth-like indentations on a belt, had cured the problem of retaining the proper spacing of printing slugs.³ The court also pointed out that two other patents in the prior art used flexible belts with uniformly spaced teeth on the inner surface.

Appellant maintains that the district court used an incorrect legal standard to determine "obviousness", since it ignored "such secondary considerations as commercial success, long felt but unsolved needs, and failure of others . . . .", Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L. Ed.2d 545 (1966). Appellant points out that the Potter patent solved the problem which had occurred in other chain printers due to the impact of the hammers against the print slugs and that, although the need for a solution had existed for several years, none of the prior art—including the mechanism for moving paper in a printer—had suggested the Potter solution even to the company (IBM) which had disclosed the device in its bulletin. While each of the different patents in the...