Quaker City Gear Works, Inc. v. Skil Corp.
| Decision Date | 09 November 1984 |
| Docket Number | Nos. 84-634 and 84-649,s. 84-634 and 84-649 |
| Citation | 223 USPQ 1161,747 F.2d 1446 |
| Parties | QUAKER CITY GEAR WORKS, INC. and Karlheinz Roth, Appellants/Cross-Appellees, v. SKIL CORPORATION, Appellee/Cross-Appellant. Appeal |
| Court | U.S. Court of Appeals — Federal Circuit |
John W. Logan, Jr., Fort Washington, Pa., argued for appellants; with him on the brief was Thomas M. Ferrill, Jr., Fort Washington.
Clarence J. Fleming, Chicago, Ill., argued for appellee; with him on the brief was Robert W. Slater, Chicago, Ill.
Before BENNETT, Circuit Judge, COWEN, Senior Circuit Judge, and NIES, Circuit Judge.
Appeal 84-634 is from the judgment of the United States District Court for the Eastern District of Pennsylvania (Green, J.), entered September 21, 1983, holding invalid U.S. Patent No. 3,247,736, owned by Quaker City Gear Works, Inc. The case was tried to a jury, which returned a special verdict under Rule 49(a), Fed.R.Civ.P., responding to a series of factual and legal questions tending to uphold Quaker City's position that its patent was valid and infringed. The district court, however, directed entry of judgment for Skil Corporation on the basis that the '736 patent failed to comply with the disclosure requirements of Sec. 112 by incorporating by reference "essential material" from an unavailable publication, German Industrial Standard 58400 (draft September 1963). We conclude that this action was correct.
In Appeal No. 84-649, Skil asks for attorney fees under 35 U.S.C. Sec. 285. We are unconvinced that the record provides a basis for finding the case to be "exceptional", as required for an award of attorney fees.
Accordingly, the judgment is affirmed.
The patent in suit, entitled "Involute Gear Combinations" and issued April 26, 1966 to Karlheinz Roth, relates to a speed-reduction gear train for the transmission of power in which a pinion with a relatively small number of teeth meshes and drives a parallel gear with a relatively large number of teeth. 1 The invention can be applied in the gearing mechanism for a hand-held power drill, as illustrated below:
The pinion, or drive gear, labelled 1 in the above figure, has helical teeth which mesh with, and transmit power to, a second helical gear with many more teeth (the "wheel"), labelled 2. The gear curvatures are designed so that the number of teeth on the pinion is kept to a minimum, resulting in gear ratios obtainable in a single gear stage that were previously attainable only in multiple gear stages. The invention is advantageous in substantially lowering the cost of the gear train required for a given speed-reduction ratio.
The patent specification discloses both a single tooth and a double tooth pinion as embodiments of the invention. The specification teaches that, to practice the invention, the disclosed pinion is "preferrably combined" with a helical wheel gear made according to "German Industrial Standard 58400 draft September 1963." The standard, in fact, is mentioned at six locations in the specification as follows:
Further, in a step-down involute gear combination according to the invention it is preferred to use as the basic profile for the wheel the standard profile for precision work as laid down by German Industrial Standard No. 58400 (draft September 1963).
* * *
The mating profile can be a standard profile, preferably according to German Industrial Standard 58400 draft September 1963 for the precision industry....
The standard profile for the precision industry according to German Industrial Standard No. 58400 is complementary to the basic profile of FIG. 1 .... Thus, in the case of the standard profile according to German Industrial Standard 58400 draft September 1963, a portion of the dedendum available for power transmission is not used in the gear combination in question.
* * *
The pinion of FIG. 4 can likewise be combined with a helical gear made according to German Industrial Standard 58400 draft September 1963. The basic profile of FIG. 2 is also complementary to the profile of German Standard 58400 draft September 1963. [Emphasis added.]
The standard is also claimed in dependent claim 5, a claim not in issue in the present litigation.
The Roth application was filed in the U.S. Patent and Trademark Office (PTO) on December 12, 1963. Although the patent issued with a claim for priority based on a German application, filed January 17, 1963, there are significant differences between the two applications, and Quaker City no longer relies on the earlier date.
The U.S. application received a first action allowance by the PTO examiner, with no questions raised as to the six references in the specification to the 58400 German Standard, despite the fact that the Standard was claimed in claim 5.
The Office Action allowing the application was sent to Roth's German patent agent by the U.S. patent attorney handling the prosecution. In a letter dated June 22, 1965, acknowledging receipt of the Office Action, the German patent agent wrote the U.S. attorney, querying In the English documents of the application, reference is made on several pages and also in claim 5 to the DIN Standard (German Industrial Standard) 58400 and also (on page 6, 1) to DIN 867. We ask you to check whether this reference to German standards can be retained or whether it is necessary to carry out a substitution by American standards or by a literal description before the granting.
The U.S. attorney responded:
In connection with the reference to the German Industrial Standards appearing in the specification and Claim 5, assuming that these Standards are available to the public in printed form, we see no reason why it would be necessary to replace them in the specification by a reference to a corresponding United States Industrial Standard or by a more complete structural description. With respect to the use of this terminology in Claim 5, the situation is not quite so clear, but in our opinion, we believe that claim should be allowed to remain in its original form. We must point out that the use of this type of terminology in a claim is quite irregular by U.S. claim writing standards, and we are somewhat surprised that the Examiner did not object thereto. However, it is also true that some U.S. Examiners will allow considerable latitude in claiming an invention providing that the way in which the invention is claimed is not clearly contrary to established procedures. We believe that the Examiner could find no concrete reason for objecting to Claim 5 and, thus, he is prepared to allow it in its present form. While we would have preferred to write a more exact description of the structure involved, in view of the fact that the claim has been allowed and the Examiner has closed out prosecution on merits and, further, in view of the fact that Claim 5 is a dependent claim, we would suggest that this claim be allowed to remain as it presently is. We would suggest, however, that in any future cases where a similar situation is present that a more complete structural definition of the invention be given, particularly in the claims. We think that the present application involves a unique situation in which the Examiner has gone much farther than is customary in allowing us to claim the invention in this fashion, and we think that it would be highly doubtful that this would be repeated in another case. [Emphasis added.]
The U.S. application was thus issued without a description of the German Standard or a reference to any corresponding U.S. Standard.
Quaker City instituted a patent infringement suit against Skil in the United States District Court for the Eastern District of Pennsylvania. Despite repeated discovery requests by Skil, Quaker City was unable to produce a copy of the referenced September 1963 draft of German Industrial Standard 58400.
The case was tried to a seven member jury over a two week period. The jury heard conflicting testimony concerning, inter alia, the adequacy of the patent disclosure to enable one of ordinary skill in the art to make and use the invention under 35 U.S.C. Sec. 112, first paragraph. 2 At one point, while being questioned on the related German priority application, the inventor, Roth, testified that the referenced German Standard was "necessary" to design the wheel of the invention.
At the conclusion of the trial, the jury was asked to return a special verdict in the form of answers to 22 interrogatories. In accordance with Judge Green's instructions, the jury did not answer questions on which they could not unanimously agree. The jury found that the scope and content of the prior art did not include any of nine references put into evidence by defendant, that the references were not more pertinent than art considered by the examiner, that the invention would not have been obvious from various combinations of the above references, that the patentee did not withhold pertinent prior art, that the claims distinctly claimed the invention, did not cover inoperable combinations of gears, did not attempt to patent a mathematical expression or merely a desired result, did cover an arbitrary range, and did not contain an incorrect formula. Finally, the jury found that Skil willfully infringed. The jury could not agree on whether the person of ordinary skill in the art had a high school or college education.
With respect to enablement, the specific interrogatories, and the answers provided by the jury, read as follows:
Interrogatory # 11
Does the specification of the Roth patent, that is, the portion of the patent in Columns 1, 2, 3, 4 and the first four lines of Column 5, contain a written description, including its drawings and text, of the alleged invention in such full, clear,...
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