Republic Industries, Inc. v. Schlage Lock Co.

• Court: U.S. District Court — Southern District of Illinois
• Writing for the Court: Tim Swain, II, Peoria, Ill., Henry L. Brinks and Richard G. Lione, Chicago, Ill., for defendant
• Citation: Republic Industries, Inc. v. Schlage Lock Co., 433 F.Supp. 666 (S.D. Ill. 1977)
• Decision Date: 05 July 1977
• Docket Number: No. P-CIV-76-0017.,P-CIV-76-0017.
• Parties: REPUBLIC INDUSTRIES, INC., Plaintiff, v. SCHLAGE LOCK COMPANY, Defendant.

433 F. Supp. 666

REPUBLIC INDUSTRIES, INC., Plaintiff, v. SCHLAGE LOCK COMPANY, Defendant.

No. P-CIV-76-0017.

United States District Court, S. D. Illinois, N. D.

July 5, 1977.

Donald G. Beste, Peoria, Ill., William E. Lucas and John K. Lucas, Jacob L. Fox, Robert A. McGrath, Chicago, Ill., for plaintiff.

Tim Swain, II, Peoria, Ill., Henry L. Brinks and Richard G. Lione, Chicago, Ill., for defendant.

DECISION AND ORDER

ROBERT D. MORGAN, Chief Judge.

Plaintiff is the assignee of Slaybaugh Patent No. 3,852,846, which relates to a door holder-closer. It alleges that the Slaybaugh invention achieves a unique combination of two functions in a single unit, namely, multi-point hold-open¹ and monetary manual release.²

Defendant, through its LCN Division at Princeton, Illinois, in this district, manufactures and sells a door holder-closer which is alleged to infringe Claims 8 and 9 of the Slaybaugh patent. Defendant has filed a counterclaim for a declaratory judgment that the patent is invalid under 35 U.S.C. § 103, or, if the same be valid, not infringed by the accused device.

The invention claimed in Claim 8 is a combination of components comprised of a door-closing spring, a piston activated by such spring which operates within an enclosed cylinder, hydraulic fluid within the cylinder, a fluid escape passage to the right of the piston, a valve which closes such fluid escape passage, and a solenoid which exerts a pressure upon the valve sufficient to close the valve and maintain it in closed position and thus overcome the opposed force of the closing spring. In its commercial embodiment, the plaintiff's unit is completely encapsulated, with the solenoid chamber behind the valve being also filled with hydraulic fluid under low pressure.³ As the door is opened to any desired position, the closing spring is depressed, with the force thus created being counteracted by the solenoid force closing the valve, thus preventing fluid interposed between the piston and the valve from escaping. The door remains open so long as the differential between the opposed forces of the spring and the solenoid remains constant.

The self-closing function of the device is activated by a manual push of the door. The force thereof, in conjunction with the force of the pent closing spring, activates the closing gear mechanism to force the piston toward the valve. The forces, in combination, are sufficient to overcome the solenoid and unseat the valve. The piston forces the high-pressure fluid interposed between the piston face and the valve seat past the valve through the escape passage to the low-pressure side of the piston. The valve is constructed with a projected face area which is larger than the area of its seat, which permits the pressure created in the fluid by the movement of the piston toward the valve seat to continue to overpower the solenoid to such degree that the valve remains open to evacuate the high-pressure fluid from the chamber at a restricted rate until the door reaches full closure and the pressure within the unit is equalized at its low ebb.⁴

As the plaintiff conceives its claim of invention in its trial brief:

"This unique dual function * * * is the result of several factors. First, the force of the main closing spring, the area of the valve seat, the entire projected area of the valve face and the force exerted by the solenoid are so proportioned, within disclosed and claimed ranges, that once the valve opens, the fluid pressure acting on the entire face area develops a force greater than the opposing solenoid force. The valve must be closely contained within its chamber to allow a sufficient pressure drop across the valve, when it is open, to enable the valve to overpower the solenoid. Second, the restricted escape passage * * * maintains this pressure drop across the open valve and allows the door to close slowly as the high pressure fluid escapes."

It summarizes its position as to the inventive concept of the patent as a "new combination" of basic elements comprising seven elements, namely, "a door-closing main spring, a piston which slides in a cylinder, hydraulic fluid in the cylinder ahead of the piston, a fluid escape passage from the high-pressure end of the cylinder, a closely-contained, dual-area valve which closes the fluid escape passage, and a solenoid * * which exerts a force upon the valve to close it." Parenthetically, plaintiff adds, in this context, that, "of course, there must be a drain behind the valve to insure free valve movement, since accumulation of fluid behind the valve would block its movement."

That parenthetical statement forms one crux of this controversy as it relates to both the question of validity and the question of infringement. Defendant correctly contends that if the parenthetical element is omitted from the recitation of essential elements of the claim, plaintiff is attempting to reclaim a position which it abandoned in the prosecution of the patent application. The file wrapper reveals that the examiner rejected a claim encompassing plaintiff's seven elements as unpatentable over the Martin patent.⁵ In response to that rejection, Slaybaugh redrafted his claim to add the limitation, inter alia, of a means providing a fluid escape passage from the valve chamber behind the valve when the valve is in its open position.⁶ Thus, that limitation is an essential element of the claimed invention.⁷ Plaintiff cannot now construe the claim to avoid that limitation and recapture a monopoly which it abandoned in order to overcome the rejection of its original claim. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 137, 62 S.Ct. 513, 86 L.Ed. 736 (1942); Keating v. Stearnes Imperial Co., 347 F.2d 444, 447 (7th Cir. 1965).⁸

Validity

The presentation of each party is largely geared to application of the subject evaluation required of lay jurists of the several elements set forth in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), to guide the determination whether a patent is nonobvious and valid under the provisions of Section 103.⁹ Scant attention is paid to the effect of the concept of synergism, which first found articulation in Anderson's-Black Rock v. Pavement Co., 396 U.S. 57, 61, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969).

Time will, hopefully, demonstrate the effect engrafted upon the patent law of the term "synergism," which emerged in Black Rock.¹⁰ Pending that demonstration by time, this court must determine whether the synergistic concept has engrafted upon the body of patent law a new test which must be applied when it is contended that a combination claim is an obvious extension of the art within the intendment of Section 103.

At least as early as 1950, there appears a hint as to the synergistic concept. In A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162 (1950), the Court said that a claim might create a monopoly in the combination of old elements only if the whole in some way exceeds the sum of its several component parts. What that means is rather nebulous, though the statement was, in intervening years, construed to require only the achievement of some striking result which answered a long-felt need in the particular art. Nineteen years were to elapse before the term "synergism" emerged. Anderson's-Black Rock v. Pavement Co., supra.

Black Rock involved a claim comprised of the combination of a radiant-heat burner, a bituminous paving machine, and an asphalt shaper apparatus mounted on the same chassis. The combination was designed to achieve a weathertight joinder of lanes of bituminous pavement laid, consecutively, the one beside the other. The function of the burner was to heat the cold joint inherent in the paved lane first laid, in order that the bituminous material comprising the abutting second lane would readily adhere to achieve a bonding between the two. All three elements were old in the art. The patentee's contribution was the combining of the three elements into a single paving machine.

In holding the claim invalid, because the combination would have been obvious to persons skilled in the art, the Court said that the combination did not produce a new or different result, ibid. 396 U.S. at 60, 90 S.Ct. 305, and it did not satisfy the standards for nonobviousness established by the Deere decision. Id. at 61-63, 90 S.Ct. 305. In the context of that exposition, the Court said:

"A combination of elements may result in an effect greater than the sum of the several effects taken separately. No such synergistic result is argued here. It is, however, fervently argued that the combination filled a long felt want and has achieved commercial success. But those matters `without invention will not make patentability.'" Id. at 61, 90 S.Ct. at 308, citing A. & P., supra.

Thus, Black Rock does not appear to be subject to an interpretation of having established a new test for obviousness under Section 103. In the context of the Court's discussing and applying the requirements of Deere, the quoted passage seems merely to note the advent of a phenomenon which may emanate from a combination claim, without any indication by the Court that the phenomenon must be present in every case to satisfy the requirements of Section 103. What the opinion seems to reiterate is the requirement that the combination of old elements must rise above the ministrations of the skilled artisan and achieve an inventive concept which had eluded others. In essence, the Court held that it was not invention to pick up, bodily, a radiant-heat burner, which theretofore had been used to heat asphalt to achieve adherence, and place it upon the front of a chassis with the already appended paver and shaper.

However, that decision has led to conflicting interpretations in the several appellate courts. The most articulate analysis of Black Rock appears in Application of Fielder, 471 F.2d 640, 644-645 (C.C.P.A.1973), in which the court...