Selmix Dispensers, Inc. v. Multiplex Faucet Co.(Inc.)

• Citation: 277 F.2d 884
• Decision Date: 10 May 1960
• Docket Number: No. 16276.,16276.
• Parties: SELMIX DISPENSERS, INC., Appellant, v. MULTIPLEX FAUCET CO. (INC.), Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (8th Circuit)

277 F.2d 884 (1960)

SELMIX DISPENSERS, INC., Appellant, v. MULTIPLEX FAUCET CO. (INC.), Appellee.

No. 16276.

United States Court of Appeals Eighth Circuit.

May 10, 1960.

Ralph L. Chappell, New York City, for appellant.

Edmund C. Rogers, St. Louis, Mo., for appellee.

Before GARDNER, VOGEL and VAN OOSTERHOUT, Circuit Judges.

VAN OOSTERHOUT, Circuit Judge.

This is an appeal by plaintiff Selmix Dispensers, Inc., from a judgment holding Claim 10¹ of Brown Patent No. 2,673,005 for a Fountain Dispenser, which patent had been assigned to plaintiff, invalid for lack of patentable invention. Defendant's right to use most of the component parts of its continuous flow dispenser is not challenged by this suit. Defendant has been engaged in the business of making and selling fountain dispensers for 50 years. It manufactures slug type dispensers which discharge only syrup and continuous flow dispensers which mix syrup and water and deliver a mixed drink, such as Coca-Cola. Continuous flow dispensers have been in use for many years. The only part of the dispensing device involved in this suit is the unit that delivers the syrup.

Pepsi Cola and Coca-Cola are large purchasers of fountain dispensers. Pepsi Cola in 1947 and Coca-Cola in 1948 advised both plaintiff and defendant that their continuous flow dispensers were proving unsatisfactory in that they failed to produce a uniform drink, because the ratio of syrup to water fluctuated. The syrup was fed by gravity from a container. The dispensers had the common fault of not maintaining the proper ratio of syrup to charged water because when the syrup container was full, the syrup was under a greater head or pressure and came out faster than it did when the container was nearly empty. Thus, drinks drawn when the container was full had too much syrup and those drawn when it was nearly empty did not have enough. Pepsi Cola and Coca-Cola suggested to plaintiff and defendant the use of a float control in the syrup dispensing unit to create a more uniform flow of syrup. Both parties commenced work on the suggested improvement. There is dispute as to which party first perfected the incorporation of the float control in its dispensing device. Each party filed a patent application, defendant filing first. The patent applications were heard before different divisions in the patent office. The patent in suit was granted upon plaintiff's application. Defendant's patent application was denied. Plaintiff brought this suit against the defendant for infringement of its patent rights.

The principal object of plaintiff's invention as expressed in its patent is:

"To provide an improved fountain dispenser for dispensing syrup and charged water * * * which effectively maintains the proper ratio of syrup and charged water in the dispensed mixed drink * * * which is simple in construction and inexpensively manufactured, and which may readily be disassembled for cleaning purposes."

Claim 10, upon which the plaintiff relies, reads:

"In a fountain dispenser for intermittently dispensing syrup, a syrup container having a float chamber in the bottom thereof, said float chamber being of smaller diameter than said container and being connected at its top to said container by an internal shoulder, an outlet port in the bottom of the float chamber for intermittently withdrawing syrup therefrom, a removable disc having peripheral seal means engaging said shoulder to form a partition separating the float chamber from the syrup container and provided with a valve port therethrough, a float vertically movable in the float chamber and having a valve co-operating with the valve port to regulate flow of syrup through said port, guide means operatively associated with said float for guiding the vertical movement of said float to maintain said valve in substantial alignment with said valve port, and a vent tube mounted on said removable disc and extending upwardly through said container, said vent tube communicating at its lower end with the interior of said float chamber and terminating at its upper end near the top of said syrup container."

Defendant in its answer denied the validity of plaintiff's patent and asserted other defenses which become material only if the validity defense fails.

The court, after hearing the evidence, filed detailed findings of fact and conclusions of law and dismissed plaintiff's complaint upon the ground that plaintiff's claims under its patent are invalid for lack of patentable invention. Timely appeal followed.

The trial court had jurisdiction by reason of 28 U.S.C.A. § 1338(a) and 35 U.S.C.A. § 281. This court has jurisdiction to consider the appeal. 28 U.S.C.A. § 1291.

If the district court is right in its determination that the patent plaintiff relies upon is invalid for want of invention, such determination is decisive of this case and no consideration need be given to the infringement issue or the other issues raised. In speaking of a similar situation, in Caldwell v. Kirk Manufacturing Co., 8 Cir., 269 F.2d 506, 507, this court said:

"Needless to say, if the Kirk patent is invalid for want of invention, as the defendants argue, there can be no infringement of its claims. Briggs & Stratton Corporation v. Clinton Machine Co., Inc., 8 Cir., 247 F.2d 397, 400-401."

Plaintiff asserts that it is entitled to a reversal on the patent invalidity issue, stating:

"The District Court erred in failing to find that there was a long-felt want for the invention of claim 10 of the patent in suit and in failing to conclude therefrom that the making of the invention was not obvious and in finding that the claim is invalid for lack of patentable invention as an obvious combination of old elements performing the same function they perform in the prior art."

Plaintiff argues that there are no contested fact issues in this case and hence the clearly erroneous rule as to fact findings does not apply. We believe that disputed fact questions are presented. We have no doubt, however, that the trial court's decision should be reversed if it was induced by an erroneous view of the law. Great A. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 153-154, 71 S.Ct. 127, 95 L.Ed. 162; Caldwell v. Kirk Manufacturing Co., supra, 269 F.2d at page 508.

Article I, Section 8, of the Constitution, authorizes Congress to reward inventive genius by providing for the issuance of patents, but does not authorize the issuance of patents as a reward for mechanical skill alone. Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 86 L. Ed. 58; Steffan v. Weber Heating & Sheet Metal Co., 8 Cir., 237 F.2d 601, 604.

While a presumption of validity of a patent arises from its issuance by virtue of 35 U.S.C.A. § 282, this presumption is rebuttable. The many cases cited and briefly discussed by Justice Douglas at pages 156-158 of 340 U.S., at page 132 of 71 S.Ct. of his concurring opinion in Great A. & P. Tea Co. v. Supermarket Equip. Corp., supra, clearly demonstrate that the presumption of validity has frequently been overcome in patent validity cases. Justice Douglas concludes his opinion as follows:

"The fact that a patent as flimsy and as spurious as this one has to be brought all the way to this Court to be declared invalid dramatically illustrates how far our patent system frequently departs from the constitutional standards which are supposed to govern."

The Supreme Court in the A. & P. case states that no precise test can be laid down for determining the validity of a patent. The court does state certain principles to be applied in determining patentability. Among them:

"The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devises patentable. Elements may, of course, especially in chemistry or electronics, take on some new quality or function from being brought into concert, but this is not a usual result of uniting elements old in mechanics. * * *

"Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, such as is presented here, obviously withdraws what already is known

...