Saf-Gard Products, Inc. v. Service Parts, Inc.

• Citation: 532 F.2d 1266,190 USPQ 455
• Decision Date: 23 March 1976
• Docket Number: No. 74-1319,SAF-GARD,74-1319
• Parties: PRODUCTS, INC., et al., Plaintiffs-Appellees, v. SERVICE PARTS, INC., et al., Defendants-Appellants.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

Page 1266

532 F.2d 1266

190 U.S.P.Q. 455

SAF-GARD PRODUCTS, INC., et al., Plaintiffs-Appellees, v. SERVICE PARTS, INC., et al., Defendants-Appellants.

No. 74-1319.

United States Court of Appeals, Ninth Circuit.

March 23, 1976.

Rehearing Denied May 10, 1976.

Eugene C. Knoblock (argued), Oltsch & Knoblock, South Bend, Ind., for defendants-appellants.

William H. Drummond (argued), Drummond, Nelson & Anderson, Phoenix, Ariz., for plaintiffs-appellees.

OPINION

Before WALLACE and KENNEDY, Circuit Judges, and FITZGERALD, ^* District Judge.

ANTHONY M. KENNEDY, Circuit Judge:

Saf-Gard Products, Inc. brought suit for damages and injunctive relief from patent infringement and related acts of unfair competition. Service Parts, Inc., named as defendant, ¹ asserted that the patent was invalid. The trial court determined that Saf-Gard's patent was valid, that Service Parts had infringed it, and that Service Parts had otherwise engaged in unfair competition. The court further ruled that this is "an exceptional patent case within the meaning of Title 35 U.S.C. §§ 284 and 285." ² It reserved damage determination until the accounting phase of the trial.

Service Parts appealed pursuant to the statute granting jurisdiction to review a patent case that is final except for an accounting. 28 U.S.C. § 1292(a)(4). We affirm the trial court's determination that Saf-Gard's patent was valid and that Service Parts infringed upon it. For the reasons set forth below we do not rule on the other determinations of the district court.

I. DESCRIPTION OF THE PATENTED DEVICE

The patent in question, U.S. Patent No. 3,601,181, is entitled, "Method and Apparatus for Purging Air from Internal Combustion Engine Cooling Systems." ³ The patented device is designed to increase the efficiency of automobile engine cooling systems.

The inventor of the patented device is Walter C. Avrea, a mechanic and vehicle maintenance superintendent, who holds other patents in the automotive field. From study and experimentation the inventor determined that the following performance and maintenance problems in engine cooling result, wholly or in part, from the presence of air inside the system: formation of a froth which retards heat transfer; formation of sludge, which impairs circulation of liquid coolant; oxidation of metal parts and corrosion of rubber hoses, which promote boiling; cavitation, ⁴ which strains, or sometimes breaks, the water pump. The inventor claims the patented device attacks these problems by purging air from the cooling system during engine operation and by preventing re-entry of air when the engine stops.

The invention can be made accessory to a standard radiator system. It uses a vessel called an accumulator, which serves as second liquid storage tank. The accumulator has a vent, and is mounted in the engine compartment. A tube connects the low point in the accumulator with the overflow outlet in the radiator's filler neck. Another essential component of the system is a special radiator cap, ⁵ with threads and gasket designed to assure a hermetic seal whose function is to prevent leakage of air into the radiator. ⁶

Upon installation, the cooling system is filled to overflowing and sufficient liquid is placed in the accumulator to cover the opening of the overflow tube. Thermal expansion of the liquid in the cooling system builds overflow pressure and causes the ejection of air, liquid and steam through the overflow tube into the accumulator. Expelled gaseous matter bubbles to the top of the liquid in the vented accumulator leaving the coolant in the accumulator air free. After the engine is stopped, contraction of the cooling liquid in the radiator causes a pressure differential with the outside atmosphere, forcing liquid from the accumulator back into the radiator. Because the opening of the overflow tube is at all times kept below the surface of the fluid in the accumulator, no gaseous matter is readmitted into the otherwise hermetically sealed system. After several cycles of operation, substantially all air is eliminated from the cooling system, leaving only noncompressible liquid coolant. The system therefore becomes pressurized very quickly after the engine is started, thus preventing boiling of the coolant at normal engine temperatures.

II. THE ACTS OF INFRINGEMENT

Approximately one year after starting business, Saf-Gard, the corporation owning the Avrea patent, began negotiations with representatives of Service Parts who sought a license to manufacture and sell the patented device. ⁷ During negotiations, representatives of Saf-Gard disclosed critical items of information, including the source of the special radiator caps, results of experimentation and research, and detailed technical data regarding operation of the patented device. Fifty-five days after meeting with Saf-Gard, Service Parts, without performing any research, development or experimentation, began selling a device that was substantially identical in structure and function to the patented product. In the ensuing period until trial in 1973, Service Parts sold approximately one quarter million such devices. These findings of fact are not clearly erroneous, Fed.R.Civ.P. 52(a), and support the finding of an infringement if the patent is valid.

III. PATENT VALIDITY

The question of validity was considered at length by the trial judge. We must consider whether his subsidiary findings of fact support the legal conclusion that the patent was valid. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693-94, 15 L.Ed.2d 545, 556 (1966); Hensley Equipment Co. v. Esco Corp., 375 F.2d 432, 436 (9th Cir. 1967); Chicago Rawhide Manufacturing Co. v. Crane Packing Co., 523 F.2d 452, 460 (7th Cir. 1975).

The appellant contends that the district court committed error by its determination that the Saf-Gard patent met the statutory requirements that it be novel, 35 U.S.C. § 102(a), and that it not have been obvious to a person of ordinary skill in the art, id. § 103. ⁸ We consider each of these objections.

A. Novelty

The invention was novel under section 102, because, as the trial court concluded, it was not anticipated by a previously known or described method or device. This finding was proper in light of the narrow reading given that section:

"(A)nticipation is strictly a technical defense. Unless all of the same elements are found in exactly the same situation and united in the same way to perform the identical function" in a single prior art reference "there is no anticipation."

Walker v. General Motors Corp., 362 F.2d 56, 58 (9th Cir. 1966), quoting, Stauffer v. Slenderella Systems, Inc., 254 F.2d 127, 128 (9th Cir. 1957). There was no such single prior art reference proven in this case. ⁹ Thus, the patent is not invalid for failure to meet the standards of section 102.

B. Obviousness

The substantial issue here is whether or not the Avrea invention would have been obvious to a person of ordinary skill in the art, the determinative test of patentability under section 103. We agree with the trial court's conclusion that the invention was not obvious.

In considering this question the trial court recognized the statutory presumption of validity accorded to patents pursuant to 35 U.S.C. § 282. Appellant contends that presumption was destroyed or greatly weakened because the patent examiner failed to consider adequately certain pertinent items of prior art: the Herbon patent, the Triumph "No-Loss" Cooling System, the Gratzmuller patent, and the Karmazin patent. ¹⁰ See Norwood v. Ehrenreich Photo-Optical Industries, 529 F.2d 3, 9 (9th Cir., 1975); Deere & Co. v. Sperry Rand Corp., 513 F.2d 1131, 1132 (9th Cir.), cert. denied, 423 U.S. 914, 96 S.Ct. 218, 46 L.Ed.2d 142, 44 U.S.L.W. 3238 (1975); Hewlett-Packard Co. v. Tel-Design, Inc., 460 F.2d 625, 628 (9th Cir. 1972).

The trial court made a general finding that the patent office had considered "all of the patents asserted by the defendants to constitute conflicting prior art." The record supports this finding as to the Herbon and Gratzmuller patents. As to the Triumph system, the court specifically found that the patent office had considered the British Leyland patent, and thus had before it the mechanically equivalent system used on Triumph automobiles manufactured by British Leyland. Appellees point to no evidence in the record warranting a finding that the patent office considered the Karmazin patent; but the Herbon patent and Triumph system were more pertinent than Karmazin. Since the patent office considered items which were representative of the prior state of learning and which were more pertinent than one allegedly omitted, the failure to consider Karmazin does not destroy the presumption that the patent office made a proper determination. "Alleged art that is cumulative to cited art does not weaken or destroy the presumption of validity." Schnadig v. Gaines Manufacturing Co., 494 F.2d 383, 391 (6th Cir. 1974). And the presumption is further strengthened on appeal where, as here, the trial court conducted an independent examination of the pertinent prior art and concluded that the patent was validly issued. Farr Co. v. American Air Filter Co.,318 F.2d 500, 502 (9th Cir.), cert. denied, 375 U.S. 903, 84 S.Ct. 192, 11 L.Ed.2d 143 (1963); Neff Instrument Corp. v. Cohu Electronics, Inc., 298 F.2d 82, 87 (9th Cir. 1961).

However, finding that the presumption remains applicable does not end the inquiry because defendants could, by clear and convincing evidence, rebut it. Hayes Spray Gun Co. v. E. C. Brown Co., 291 F.2d 319, 322 (9th Cir. 1961); Patterson-Ballagh Corp. v. Moss, 201 F.2d 403, 406 (9th Cir. 1953). This the defendants have failed to do.

In this case the trial court did not rely exclusively on the presumption of validity. It made an independent inquiry to determine if the patent was obvious. It considered no fewer than 89 prior art references and made extensive inquiries into the state of the art as it...