Sims v. Mack Trucks, Inc.

• Decision Date: 08 February 1978
• Docket Number: 76-2070.,Civ. A. No. 75-985
• Citation: 444 F. Supp. 1277
• Parties: R. W. SIMS, Trustee, and R. W. Sims Trust v. MACK TRUCKS, INC.
• Court: U.S. District Court — Eastern District of Pennsylvania

444 F. Supp. 1277

R. W. SIMS, Trustee, and R. W. Sims Trust v. MACK TRUCKS, INC.

Civ. A. Nos. 75-985, 76-2070.

United States District Court, E. D. Pennsylvania.

February 8, 1978.

John A. Young, Fort Wayne, Ind., for plaintiff.

Pepper, Hamilton & Scheetz, Deborah F. Cohen, Jon A. Baughman, Philadelphia, Pa., Bernard & Brown, Martin J. Brown, Washington, D. C., for defendant.

OPINION

JOSEPH S. LORD, III, Chief Judge.

Count One of the amended complaint alleges infringement by the defendant of plaintiffs' patent for a front-discharge concrete mixing truck, and Count Two alleges unfair competition by defendant. Defendant has moved pursuant to F.R.Civ.P. 56(b) for summary judgment as to each count. Defendant contends as to the patent infringement count that the patent held by plaintiffs was invalid ab initio because of obviousness. Defendant seeks summary judgment on Count Two on the grounds that plaintiffs lack standing to sue and that no facts support plaintiffs' claims.

Because we are unable to resolve at this point at least one factual issue necessary to the determination of patent validity, defendant's motion for summary judgment as to Count One will be denied. As to Count Two, however, we hold that plaintiffs, as holders of the patent for mixers who are engaged only in the business of granting licenses to manufacture and sell mixers, cannot hold defendant liable for the tort of unfair competition in the manufacture and sale of these products. Defendant's motion for summary judgment therefore will be granted as to Count Two.

I. THE PATENT INFRINGEMENT CLAIM:

Plaintiffs sue under 35 U.S.C. § 281, alleging the infringement of U.S. Patent No. 2,859,949, issued November 11, 1958, to J. Jack Willard for a Forward Discharging Transit Concrete Mixer ("the Willard patent"). For the purposes of this motion, defendant does not contest either that it infringed the Willard patent or that plaintiffs were the assignees of the Willard patent at the time of the infringement and consequently have the right to maintain this suit under the federal patent laws. The sole basis for defendant's motion for summary judgment is that the Willard patent was invalid from its inception under 35 U.S.C. § 103, and hence was improperly granted by the United States Patent Office.¹

Section 103 provides in pertinent part:

"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. . . ."

Non-obviousness has long been recognized as a requirement of patentability, Hotchkiss v. Greenwood, 11 How. 248, 52 U.S. 248, 13 L.Ed. 683 (1851), but it was not included in the federal statutory scheme until the enactment of § 103 in the Patent Act of 1952. The Supreme Court charted the course which trial courts must follow in § 103 cases in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Graham observed that the issue of patent validity (i. e., of obviousness vel non) ultimately is a question of law, Great Atlantic & Pacific Tea Co. v. Supermarket Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950), but went on to enumerate three factual inquiries whose resolution must precede the consideration of that ultimate issue. First, what are the scope and content of the relevant prior art? Second, what are the differences between the prior art and the claims raised by the patent whose validity is challenged? Third, what is the level of ordinary skill in the pertinent art? The tripartite factual inquiry mandated by Graham remains the proper approach in a § 103 case. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Dann v. Johnston, 425 U.S. 219, 96 S.Ct. 1393, 47 L.Ed.2d 692 (1976).

The first two issues of fact, regarding the prior art and the differences between it and the claims of the Willard patent, might well be resolvable at this time. The relevant prior art relied on by defendant includes two types of patents antedating the Willard patent. First, defendant points to U.S. Patent Reissue No. 23,320, reissued in 1951,² for a cement mixing drum. The patented invention was of a drum in which concrete could be mixed by rotating the drum in one direction and could be discharged by rotating the drum in the opposite direction. The second category of prior art relied on by defendant includes several patents of what the defendant describes as front-discharge mixers. We find that at least one of these, U.S. Patent No. 1,509,055, issued to Charles Payne in 1924, was indeed for a truck which had front-end discharge of concrete. We hasten to add that although we have all the prior art before us in the form of Patent Office documents, we are reluctant to construe it without the aid of expert testimony.³

Similarly, we might be able to assess on the basis of these documents the differences between the prior art and the claims of the Willard patent. It is the contention of defendant that the Willard patent merely combines the ingredients of the prior art, by placing a concrete mixing drum of the type described above on a front-discharge mixer essentially like that patented by Payne and others. We will assume, without deciding the matter, that defendant's characterization of combination is correct. We reiterate, however, our lack of confidence in arriving at such factual findings without hearing adequate expert testimony on the matter.

It is at the final factual stage, the level of ordinary skill in the pertinent art, that defendant's motion for summary judgment as to patent infringement fails. We note that this factual inquiry actually involves two issues: the definition of the pertinent art, and the ascertainment of the level of ordinary skill in that art. The record in this case is barren as to both of these sub-issues.

The Third Circuit's case law suggests that this deficiency in the record is fatal. In Systematic Tool & Machine Co. v. Walter Kidde & Co., Inc., 555 F.2d 342 (3d Cir. 1977), the court reversed the district court's finding that a patent for a tomato-slicing device was non-obvious on the ground that the district court had erred by defining the persons possessed of ordinary skill in the pertinent art to be slicers of tomatoes (i. e., consumers) rather than mechanics. That is, the "hypothetical person having ordinary skill in the art" was defined improperly. Id. at 348 (footnote omitted). Similarly, in Universal Athletic Sales Co. v. American Gym, Recreational & Athletic Equipment Corp., Inc., 546 F.2d 530 (3d Cir. 1976), the district court's finding of obviousness was reversed. In that case Judge Adams held that the district court erred in defining the person in the pertinent art as a mechanical engineer rather than a designer of body-training devices. In the instant case, defendant's failure to introduce any competent evidence as to what the pertinent art is for § 103 purposes leaves us at a total loss in defining that art.

Even were we able to hypothesize the probable conclusion that the relevant artist is the designer of cement-mixing truck bodies and chassis, we would have to engage in the gross speculation as to what the level of ordinary skill in that field was at the time the design of the Willard patent was invented. Universal Athletic Sales Co. held that, on the basis of a record which the trial court admitted was "deficient" as to the level of ordinary skill in the pertinent art, the trial court should have determined that the Graham criteria for obviousness were not met. 546 F.2d at 543. No record could be more deficient on that point than this one, and we accordingly are unable to grant the motion for summary judgment under the Graham analysis.

One possibility exists which might enable us to hold the Willard patent invalid as obvious without making findings as to the level of skill in the pertinent art. If the court were convinced that the inventions contained in the Willard patent would have been obvious on the basis of prior art to a reasonable man without any special skills associated with truck designing, a fortiori the inventions would be obvious to the hypothetical person of ordinary skill in the pertinent art. To suggest that the relevant differences would be less likely to be obvious to such an artist than to the reasonable man would be illogical. We find, however, that insofar as we are able, unassisted by expert testimony, to comprehend the prior art and the differences between it and the Willard patent, these differences would not have been obvious to a reasonable man. Hence, this alternative theory for reaching § 103 obviousness, whatever its merits, is inapplicable to this case.

Defendant has attempted to characterize the Willard patent as a combination of two components known in the prior art, the mixing drum and front-discharge mixer, and argues that such combinations are not patentable under Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950). But, as both the A & P decision and the cases decided under § 103 make clear, the characterization of a device as a "combination" is not dispositive. Recent Supreme Court decisions focus on the concept of synergy in determining whether a combination of elements known in the prior art is patentable. Accepting arguendo defendant's contention that the Willard patent is a mere combination, the relevant test would be whether that combination produces a result whose effect is greater than the sum of the effects of its component parts taken separately. Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976); Anderson's-Black Rock v. Pavement Salvage Co., 396 U.S. 57, 61, 90 S.Ct. 305, 24 L.Ed.2d...