Refrigeration Patents Corp. v. Stewart-Warner Corp., 8804

CourtUnited States Courts of Appeals. United States Court of Appeals (7th Circuit)
Citation159 F.2d 972
Docket NumberNo. 8804,8805.,8804
PartiesREFRIGERATION PATENTS CORPORATION v. STEWART-WARNER CORPORATION. POTTER REFRIGERATOR CORPORATION v. SAME.
Decision Date20 March 1947

John D. Black, Ross O. Hinkle, Leon F. Shackell and Albin C. Ahlberg, all of Chicago, Ill., for appellant.

Watson, Bristol, Johnson & Leavenworth, Leonard A. Watson, Lawrence Bristol, David A. Woodcock and Elmer R. Helferich, all of New York City, Arne B. Hummeland and George A. Chritton, both of Chicago, Ill., for appellees.

Before SPARKS and KERNER, Circuit Judges, and BALTZELL, District Judge.

SPARKS, Circuit Judge.

By separate complaints the defendant was charged on the same day with infringement of three United States patents, to wit: No. 2,056,165 issued to Bronaugh and Potter on October 6, 1936, on an application filed February 16, 1931, and subsequently assigned to plaintiff, Refrigeration Patents Corporation; No. 2,171,712 issued to Potter on September 5, 1939, on an application filed October 25, 1935; and No. 2,258,959 issued to Potter on October 14, 1941, on an application filed June 5, 1934. The latter two patents were subsequently assigned to plaintiff, Potter Refrigerator Corporation.

The usual defenses of non-infringement and invalidity were pleaded, and both cases were submitted to the same jury, which returned a verdict of not guilty as to the third patent, and guilty as to the first and second patents. The jury assessed damages in favor of the Refrigeration Patents Corporation, for infringement of the first patent, in the amount of $225,000, and in favor of Potter Refrigerator Corporation in the sum of $13,000, for infringement of the second patent. Judgments were rendered accordingly, and from those relating to the first and second patents, defendant has appealed. There is no appeal from the judgment with respect to the third patent.

The asserted revolutionary disclosure here involved is a household refrigerator which has two separate storage compartments, one called a cooling compartment, having a temperature above freezing, whose coil, therefore, never requires defrosting; and a cold storage compartment for housing frozen foods, ice cubes and the like. The avoidance of frosting on the coil in the cooling chamber is effected by means of a thermal control on the coil in that compartment which prevents the temperature from falling to the freezing point, thus preventing the freezing of the moisture which normally condenses on the coils. The maintenance of comparative temperatures in the two compartments is also aided by the proportioned insulation of the two separate chambers (as well as by the fact of their physical separation) in that the insulation is heavier around the cold storage, or freezing, compartment. The temperature of the freezing compartment is regulated by an expansion valve in the refrigerant circuit leading to the freezing chamber. As stated in the specifications: "This arrangement whereby one temperature is controlled by a thermostat and another by an expansion valve is a novel feature of our invention."

The specifications further state:

"The main object of this invention is the design of a refrigerator which will make it possible at one and the same time and over long or short periods of time to perform several highly desirable tasks, namely to form ice or freeze desserts quickly, to provide cold storage for frozen meat and food stuffs, and to provide storage for food at temperatures above freezing.

"The second object is to construct a cabinet in which the ice-making or freezing unit is thermally insulated from the food storage department.

"The third object is the construction of a refrigerator which is not a compromise between a quick freezing refrigerator and one which is ideal for food storing, but which will possess both of these properties in maximum quantities. * * *

"The seventh object is to eliminate completely all defrosting and objectionable drying out of the foods."

Appellees assert that heretofore in the household refrigeration art the construction has been a compromise between the desired objects of a freezing compartment and a cooling cabinet; that one of the inherent drawbacks to the single cabinet was that the freezing process withdrew moisture from foods, such as vegetables and fruits, making them less palatable, whereas in their structures the foods in the cooling chamber retained their moisture; the coil structure itself (such as a "finned" coil), in the cooling chamber is such that it retards the forming of frost, in that it has greater surface area than formerly utilized.

The claims in suit are quoted in the margin.1

We are at once confronted by the very recent opinion of the Supreme Court in the case of Halliburton Oil Well Cementing Co. v. Walker, 67 S.Ct. 6, 7. There the Court held a patent invalid for failure to comply with Rev.Stat. 4888, 35 U.S.C.A. § 33. That statute requires the patentee to state his invention in "such full, clear, con- cise, and exact terms as to enable any person skilled in the art or science to which it appertains * * * to make, construct, compound, and use the same; and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. * * *"

It is readily apparent that the emphasis is upon clarity of the invention claimed. This is not alone to teach those interested in the art the manner of constructing the new invention — it is to delimit the rights of the patentee and thereby permit others freely to do further research in bettering the invention, without fear of threat of infringement.

In the Halliburton case the Supreme Court held that the claim must state the "physical structure" of the device, — the physical relation of the improvement to the old machine. The claim must describe "the manner in which the * * * addition will operate together with the old * * * machine so as to make the `new' unitary apparatus perform its designed function." It held that the claims failed adequately to depict the structure, mode and operation of the parts of the combination.

The Court further held that the claim should not describe the new element "in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus," and that the same rigid standards of description required for product claims is required for a combination patent embodying old elements only.

Before applying the statutory test to the instant problem we are confronted by the further rule of law that the sufficiency of description of a claim, under the foregoing statute, is a question of fact for the jury or trial court. Bank v. Rauland Corp., 7 Cir., 146 F.2d 19. We have carefully studied the trial judge's admirable exposition of patent law in his instructions to the jury in the instant case. He submitted the issue of validity of the claims and their infringement, to the jury, giving them instructions on many specific angles of the patent law, but he nowhere cited this requirement of the statute, or its phraseology, nor did he submit that phase of the issue of their validity to them for their consideration and determination. At the beginning of the instructions he stated that patents "are presumed to be valid, but that presumption can be overcome and the patents held to be invalid if they do not fulfill or come up to the legal standards and requirements. These standards and these requirements will be discussed more at length later in this charge." But the issue of clarity and phraseology was not submitted to them. It was not passed upon in the trial court's memorandum on the petition for rehearing. Nor did defendant's motion for a directed verdict mention this point. However, paragraphs 12, 13 and 15 of defendant's answers do clearly and specifically raise the issue of validity of the claims under the statutory requirement of Sec. 33.

As we view the record, there has been no determination of the validity of the claims, as to their sufficiency under the statute, unless such conclusion be inherent in a verdict and judgment of recovery against the defendant. We conclude that where, as here, there was no instruction on the matter, the issue was ignored and therefore must be determined by this court.

We have studied the claims of the patents in suit, the points raised in appellees' brief on the issue of clarity of phraseology, and the Supreme Court's opinion in the Halliburton case, supra. We conclude there has been such a want of clarity that, as a mattter of law, the patents must be held invalid.

Appellees state: "The contention that the means for maintaining the upper coil below freezing and the differential insulation are functionally claimed only, are technical objections that could be raised in practically any case where the claimed invention was not limited to the precise details shown. It is the last resort of the infringer brought to book."

In the Halliburton case, supra, the Court said: "* * * The language of the claim thus describes this most crucial element in the `new' combination in terms of what it will do rather than in terms of its own physical characteristics or its arrangement in the new combination apparatus. We have held that a claim with such a description of a product is invalid as a violation of Rev.Stat. § 4888 * * *." We can not, therefore, discard as captious the statutory requirement of specificity of description.

Again, appellees state that appellant, in quoting the statute, has omitted the vital clause which provides: "and in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to...

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