Saunders v. Air-Flo Co.

• Decision Date: 10 August 1977
• Docket Number: No. S 74-83.,S 74-83.
• Citation: 435 F. Supp. 298
• Parties: W. Selden SAUNDERS and Rudkin-Wiley Corporation, Plaintiffs, v. AIR-FLO COMPANY, Robert G. Geiger, and Recreational Supply and Equipment, Defendants.
• Court: U.S. District Court — Northern District of Indiana

435 F. Supp. 298

W. Selden SAUNDERS and Rudkin-Wiley Corporation, Plaintiffs, v. AIR-FLO COMPANY, Robert G. Geiger, and Recreational Supply and Equipment, Defendants.

No. S 74-83.

United States District Court, N. D. Indiana, South Bend Division.

August 10, 1977.

John T. Mulvihill, Thornburg, McGill, Deahl, Harman, Carey & Murray, South Bend, Ind., Francis T. Carr, Robert D. Fier, Albert J. Breneisen, Anthony Amaral, Jr., Kenyon & Kenyon, Reilly, Carr & Chapin, New York City, for plaintiffs.

Eugene C. Knoblock, James D. Hall, Oltsch & Knoblock, South Bend, Ind., for defendants.

MEMORANDUM OPINION

ALLEN SHARP, District Judge.

This is an action in which Plaintiffs allege infringement of U.S. Patents Nos. 3,241,876 ('876) and 3,309,131 ('131) and of trademark Reg. No. 887,396 by Defendants. Defendants deny all counts in the complaint. The trial of the action consumed one week before this Court. The purpose of this Memorandum Opinion is to state the legal basis and reasons for the separately entered Findings of Fact and Conclusions of Law.

The Patent Issues

Both patents in suit are directed to the mounting of a windshield or deflector upon the cab of a truck. The '876 patent relates to the mounting of a windshield on the cab of a truck-trailer combination having a gap between the truck and the trailer. The '131 patent is directed to the mounting of a windshield or deflector on the cab of a truck having a large load carrying van body behind the cab. The purpose of the windshield in each patent is to reduce the frontal air pressure or drag encountered by the portion of the vehicle behind the shield so as to consume less fuel than otherwise would be necessary.

The '876 patent claims a shield of specified shape and size mounted in a specified position relative to the cab and the trailer. The '131 patent claims a shield mounted in a specified position on the cab and of a specified range of dimensions.

Witnesses for the Plaintiffs included the inventor, an officer of the licensee of the patents in suit, an aerodynamic expert and representatives of marketing survey firms. Plaintiffs also called to the stand or introduced depositions of the Defendant Robert G. Geiger and three other representatives of Defendants.

The Defendant Air-Flo Company manufactures and sells an air deflector of a different shape than the shape disclosed and claimed in the Saunders patents and recommend to purchasers the mounting of that deflector on the cab of a truck in a selected spaced relation above the cab rather than in "air impervious" contact with the cab as specified in the '876 patent. In a few instances Defendant Air-Flo Company has installed a deflector for a customer.

The Issue of Validity

Anticipation — 35 U.S.C. § 102

Defendants introduced at trial a number of prior patents and publications which taught and disclosed numerous types and shapes of shields or baffles mounted upon vehicles of different types and in numerous positions and relations, all in a manner to deflect air away from a following portion or article in or on the vehicle. Defendants introduced in evidence publications showing various examples of streamlining of vehicles and uses of windshields which have occurred over the years for such purposes as protection of the occupants of a vehicle from exposure to the wind, reduction of drag and fuel consumption, and facilitating ease of handling of a vehicle. The vehicles to which such prior devises have been applied include automobiles, trucks and tractor-trailer combinations. Defendants also introduced a number of prior patents which disclosed shields and deflectors of the same shape and configuration as claimed in the patents in suit, and/or of other shapes so sized and positioned as to deflect air from a vehicle, such as a trailer behind the cab, and thus reduce drag.

The prior art includes the Stamm patent (DX-D13) issued to the Chrysler Corporation which discloses the mounting of a baffle upon the cab of a truck towing a trailer spaced behind the cab, which shield or deflector is so shaped, sized and positioned as to deflect air away from the front of the trailer. The shield or deflector of the Stamm patent is slightly different in shape from that utilized by Plaintiff Rudkin-Wiley Corp.; however, the shield of the Stamm patent is substantially identical to that illustrated in Fig. 21 of Saunders '876 patent. Thus the Stamm patent fully anticipates the Fig. 21 embodiment of the Saunders patent '876 and completely anticipates the combination and arrangement of parts specified and claimed in Saunders patent '876.

Further anticipation of the subjects matter of the patents in suit is to be found in the reports (PX-18A,B,C) of wind tunnel tests made at the University of Maryland prior to 1962, by which workers in the art are clearly taught that the use of a fairing or deflector mounted on the cab of a tractor-trailer vehicle and terminating forwardly of the trailer will reduce air drag and increase fuel economy.

The only subject claimed by Saunders which has not been specifically shown by the Stamm patent and the University of Maryland publications has been a forwardly convexed shape of a windshield and a range of dimensions and proportions of the shield and the vehicles. However, the teachings of the Stamm patent and the University of Maryland publications are directed to the use of truck-trailer-deflector combinations, describe the air drag reduction achievable by air deflectors or fairings, and are sufficiently clear to enable persons skilled in the art who read them to achieve air drag reduction by applying the disclosures thereof in mounting a deflector on a tractor-trailer combination of a type and size in which the reader is interested. The respective combinations and arrangements of parts shown in the Stamm patent and in the University of Maryland publications are the same as those claimed in the Saunders patents, and hence are effective anticipations under 35 U.S.C. § 102(a) because the Stamm patent and the University of Maryland publications were prior to the work of the patentee Saunders, and were patented or published more than one year prior to the date of the applications for the Saunders patents.

The Patents In Suit Are Invalid Under 35 U.S.C. § 103

35 U.S.C. § 103 reads as follows:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

Any contention by Plaintiffs that the precise parameters of shape, size and position of the windshield claimed in the patents in suit have not been disclosed in the Stamm patent and the University of Maryland publications is fully answered by reference to exhibits introduced in this case including prior patents and publications which must be considered in connection with the defense of invalidity because of obviousness of the subject matter claimed under 35 U.S.C. § 103. Thus Hoerner's book (DX-AB) published before the dates of filing the applications for the Saunders patents in suit, includes an illustration by the noted Italian scientist of ancient times, Leonardo da Vinci, disclosing the occurrence of low pressure eddies behind a wind baffle. The shaping of wraparound automotive windshields, i. e. forwardly convexed horizontally and rearwardly upwardly inclined, was known and in common use long prior to the dates of the applications for the Saunders patents in suit. Furthermore, the patentee Saunders testified that a flat inclined shield would achieve a drag reduction benefit (R 1204, 165).

The range of dimensions and ratios specified in the claims of the two Saunders patents were admitted by Saunders not to be critical to the accomplishment of air drag reduction. Thus Saunders stated that air drag reduction would be achieved if the shield was of a height less than claimed in the patent (R 1202), or if the spacing between the shield and the trailer was less than the claimed range (R 1203), or if the width of the shield was less than that of the range in the patent (R 1204). Optimization of the functions of a known arrangement of parts in a device does not characterize patentable invention. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 95 L.Ed. 162; A. R. Inc. v. Electro Voice, Inc., 311 F.2d 508 (7th Cir. 1962).

Inasmuch as the only features of the claims of the two Saunders patents which are not precisely defined in the Stamm patent and in the University of Maryland publications are not critical, as admitted by Mr. Saunders, and could be easily ascertained by anyone skilled in the art, as by test of a unit to observe the bug pattern on the trailer as explained by Mr. Geiger (R 683, 714), we have a classic basis for a determination of obviousness of the subject matter of the Saunders claims under Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, which stated this test:

"Under Section 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background the obviousness or nonobviousness of the subject matter is determined."

Here the prior art includes the Stamm patent, the University of Maryland publications, numerous bug deflector patents for devices mounted on the hood of an automobile to deflect air currents so that bugs will not strike a windshield. The bug deflectors shown in these patents are of various shapes and configurations and various spacings relative to the...