Refrigeration Engineering v. York Corporation

• Decision Date: 29 June 1948
• Docket Number: No. 11642.,11642.
• Citation: 168 F.2d 896
• Parties: REFRIGERATION ENGINEERING, Inc. v. YORK CORPORATION. YORK CORPORATION v. REFRIGERATION ENGINEERING, Inc.
• Court: U.S. Court of Appeals — Ninth Circuit

168 F.2d 896 (1948)

REFRIGERATION ENGINEERING, Inc. v. YORK CORPORATION.

YORK CORPORATION v. REFRIGERATION ENGINEERING, Inc.

No. 11642.

Circuit Court of Appeals, Ninth Circuit.

June 29, 1948.

Lyon & Lyon, Frederick S. Lyon, Lewis E. Lyon and Charles G. Lyon, all of Los Angeles, Cal., for appellant Refrigeration Engineering.

Meserve, Mumper & Hughes, H. Calvin White and Shirley E. Meserve, all of Los Angeles, Cal. (Alexander C. Neave, Clarence D. Kerr and William J. O'Hearn, Jr., all of New York City, of counsel), for appellant, York Corporation.

Before MATHEWS, BONE and ORR, Circuit Judges.

BONE, Circuit Judge.

York Corporation (herein called plaintiff) brought this action in the district court for a declaratory judgment that the McAdam patent, No. 2,219,393, issued October 29, 1940, was invalid and for an injunction restraining Refrigeration Engineering, Inc. (herein called defendant), owner of the patent, from bringing or prosecuting any action charging plaintiff with infringing the patent. Defendant filed an answer which contained a counter-claim (improperly called a cross-complaint) charging that plaintiff had infringed the patent and praying for an injunction against such infringement and for an accounting of profits and damages. Plaintiff filed a reply (improperly called an answer) denying infringement and alleging that the patent was invalid. There was a trial resulting in a judgment from which both parties appeal.

Plaintiff appeals from that part of the judgment which held that claim 13 of the patent was valid and infringed by plaintiff, enjoined such infringement, dismissed the complaint, awarded costs to defendant, directed that defendant recover damages and attorneys' fees from plaintiff, and ordered an accounting for the ascertainment of such damages and attorneys' fees. Defendant appeals from that part of the judgment which held that claims 1-12 and 14 of the patent were invalid.

The patent relates to an invention of a "defrosting device" employing ordinary "tap-water" from city mains or other source, for removing frost and ice from refrigeration coils designed to be installed and to operate within a space employed in the refrigeration of commodities (referred to herein and in the specification and claims of the patent as a "refrigerated space") which "space" is required to be continually maintained at a temperature below the freezing point of water.¹

"Defrosting," in the refrigeration art, means the removal of frost or ice from "refrigeration coils" which contain a "refrigerant" which chills them and produces therein the low temperatures required in various refrigeration operations. Frost or ice collects on the surface of the coils, its presence serving to "insulate" them and interfere with their function of "refrigeration." This frost and ice must be removed at more or less regular intervals and during the removal period the coils cease to perform their normal function of creating a low temperature. The longer the time employed in defrosting them, the greater the danger that the temperature in the space under refrigeration will rise above the temperature required to be maintained.

As indicated above, the claimed invention was devised and intended to be used within a refrigerated space. As described in the specification, the invention consists of a combination the essential elements of which are a coil, a spray-head over the coil, means for supplying water to the spray-head, a self-draining conduit leading from the spray-head to a point outside the refrigerated space, a drip pan under the coil and a conduit leading from the drip pan to a point outside the refrigerated space, all of which elements are fully described in the specification.

These elements are combined to form a unit whereby the coil can be defrosted while maintaining within the refrigerated space a temperature below the freezing point of water. This is done by supplying water from a source outside the refrigerated space to the spray-head, whence it is sprayed on the coil, caught in the drip pan and drained therefrom by one of the conduits. Unused water remaining in the spray-head is drained therefrom by the other conduit. By these conduits, all water is removed from the refrigerated space without being frozen and without materially affecting the temperature of such space.

A device embodying the claimed invention is described in the specification. In that device, the coil has fins, a fan is used to blow the air of the refrigerated space over the coil, and an electrically controlled valve is used as a means of supplying water to the spray-head. It is clear, however, from the specification that the fins, the fan and the valve are not essential elements of the claimed invention.

Plaintiff alleged that the patent was invalid "because the applicant therefor McAdam was not the original and first inventor of the alleged invention described and claimed therein, but the same, in all its material and substantial parts, was invented, known to and used by others in this country before his alleged invention or discovery thereof; was patented and described in printed publications in this and foreign countries, or more than two years prior to his application for patent; and was in public use and on sale in this country for more than two years prior to his said application." Defendant denied these allegations, and the trial court found that they were untrue. Plaintiff specifies the finding as error.

Defendant concedes that all elements of the claimed invention were old and well known to the refrigeration art prior to such invention. Its position is that McAdam's arrangement and assembly of these old elements has created a new combination which unites these old elements in such manner as to provide or create a new entity divorced from any one element; that in the "composite," or union of all its elements, the effect produced by their joint action is a new, final and combined result in the art of refrigeration never produced before; and that this combination introduced a new function in an old art by producing a new, useful and final effect, result and method which performs an old function in the art of refrigeration in a new and more advantageous way.

An expert witness for defendant testified that: "In this combination you have a new entity which brings out a different result and a combined result of all of those elements to produce the final result which makes the thing successful." And again, "Each of the elements is old but in being brought into this particular combination it has provided a new entity which is divorced from any one element and is the composite of all of those elements which produced a new result which has never been produced before." (Emphasis supplied)

Plaintiff urges that the contentions of defendant (in effect) turn apparatus claims into method claims, and that method claims were abandoned by defendant during the prosecution of the McAdam application and were cancelled, as a result of which the patent is for an apparatus — a mechanical device which consists of a combination of old parts — all in combination with a refrigerated space. It argues that "it was old to use all of these parts in combination with a refrigerated space * * * the whole purpose of the unit was to refrigerate a space * * * prior patents and prior uses show that such units were so used." While abandonment of method claims is thus suggested argumentatively in plaintiff's brief, no mention is made concerning such an issue in the findings of the court, the statement of points to be relied upon on appeal, or in plaintiff's specifications of error, and the contention will not be considered here. In any event, the expert witness on behalf of defendant testified that all of the claims of the patent are appartus claims, and that each of the claims is for a combination of structural elements. There is no method claim among them.

Defendant meets plaintiff's contentions with the averment that unless it can be shown that the combination is old,² it is not open to the attack here made upon it, since the law does not look to the elements or factors of an invented combination as the subject for a patent, but looks only to the combination itself as a unit distinct from its parts. See City of Grafton v. Otis Co., 4 Cir., 166 F.2d 816, 817.

Plaintiff did not, in its pleadings, allege that the patent or any claim thereof was invalid for lack of invention. However, it introduced evidence tending to show that the McAdam combination did not involve invention. Defendant introduced evidence tending to show that it did involve invention, and the court so found. Plaintiff specifies the finding as error.

The court, by its above mentioned findings, determined two questions — the question of novelty and the question of invention. Both were questions of fact. Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co., 9 Cir., 151 F.2d 91; Maulsby v. Conzevoy, 9 Cir., 161 F.2d 165. The findings are supported by substantial evidence, are not clearly erroneous and should not be disturbed. Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c; Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co., supra; Maulsby v. Conzevoy, supra.

The patent contains 14 claims. As indicated above, claim 13 was held valid and infringed, and claims 1-12 and 14 were held invalid. Plaintiff specifies as error the holding as to claim 13.

Claim 13 reads: "In combination with a refrigerated space, a coil adapted for periodic defrosting, a spray-head positioned to distribute water over said coil for defrosting thereof, a fan to...