Sisko v. Southern Resin & Fiberglass Corporation

• Decision Date: 06 March 1967
• Docket Number: No. 23471.,23471.
• Parties: John M. SISKO, Appellant, v. SOUTHERN RESIN & FIBERGLASS CORPORATION, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

373 F.2d 866 (1967)

John M. SISKO, Appellant, v. SOUTHERN RESIN & FIBERGLASS CORPORATION, Appellee.

No. 23471.

United States Court of Appeals Fifth Circuit.

March 6, 1967.

George N. Hibben, Chicago, Ill., Francis D. Thomas, Jr., Washington, D. C., Lynn F. Lummus, Wm. R. Dawes, Miami, Fla., Hibben, Noyes & Bicknell, Chicago, Ill., Bacon & Thomas, Washington, D. C., Dawes & Lummus, Miami, Fla., of counsel, for appellant.

A. D. Freeman, Jr., New Orleans, La., W. Philip Churchill, Charles B. Smith, New York City, Melvin T. Boyd, Miami, Fla., Fish, Richardson & Neave, New York City, Blackwell, Walker & Gray, Miami, Fla., Morphy, Freeman & Batt, New Orleans, La., for appellee.

Before BROWN, BELL, and AINSWORTH, Circuit Judges.

GRIFFIN B. BELL, Circuit Judge.

This appeal by the plaintiff below is from a judgment holding all six claims of United States Letters Patent No. 3,139,371 invalid and not infringed by defendant-appellee. The District Court sustained the asserted defenses of invalidity based on an absence of novelty over the prior art, invalidity in that the claimed invention was obvious to persons having ordinary skill in the art, and invalidity by reason of the product of the patent having been sold and used commercially more than a year prior to the filing date of the patent. The court also concluded that there was no infringement. Findings of fact and conclusions of law were entered with respect to each of the defenses. We affirm on the ground of obviousness. For that reason it is unnecessary to reach the other assignments of error. Cf. J. R. Clark Company v. Murray Metal Products Company, 5 Cir., 1955, 219 F.2d 313 on the appropriateness of this procedure.¹

The patent in suit is entitled "Core Block Construction." It is an improvement patent in the field of core materials. It was granted on June 30, 1964 to appellant Sisko on an application filed May 24, 1963. The patent involves a construction material for use in forming laminated boat hulls.² It consists of a plurality of balsa core blocks, preferably three inches long and three inches wide, arranged in side-to-side, end-to-end coplanar relation to form a core sheet. These blocks are attached to a flexible and stretchable backing material, preferably a nylon hexagonal mesh, by means of a spot adhesive. The backing material is bonded to each block by glue spaced inwardly from the edges of the blocks in order to facilitate the relative movement of the individual blocks with respect to one another. The gluing and spacing of the blocks when combined with the stretchable backing material permits the sheet to be incorporated into a flat laminate or one of single or compound curvature, ideal for the construction of boat hulls.

The file wrapper indicates that the patent application was rejected by the Patent Office until the claims were limited to two critical features. One of these called for using a stretchable backing material for the blocks. The other called for the backing material to be attached to the blocks by a spot adhesive placed at points inwardly from the edges of the blocks.

Appellee is the distributor of the accused product, "Contourkore." This product was manufactured by Balsa Development Corporation, a subsidiary of the Balsa Ecuador Lumber Corporation of New York, and had been made in two forms. The product made prior to September 1964 was composed of a layer of balsa wood blocks held together by a fiberglass backing, spot glued to one surface of the blocks inwardly from the edges of the blocks. The product made after September 1964 was similarly composed, but the fiberglass fabric was secured to the balsa blocks by glue lines extending completely across the face of the blocks.

The defense of noninfringement was based on two features which were claimed as distinguishing the accused "Contourkore" from the patent in suit: a different backing material, and the manner in which the blocks were bonded to this material. These were said to avoid the two critical features which gave the Sisko claims patentability. First, in the Sisko patent the backing material, nylon mesh, was stretchable. In the "Contourkore" product, the fiberglass backing was non-stretchable according to the findings. This takes on added significance in light of appellant's admission that his experiments with fiberglass were unsuccessful. Secondly, the blocks in the product of the patent are bonded by a spot adhesive spaced inwardly from the edges of the blocks. It is not clear that appellee's bonding system prior to 1964 was different. After September 1964 appellant's practice was to use glue lines extending completely across the face of the blocks. Sisko urged that this was relatively unimportant in any event as the adhesive pulled loose from the blocks when the sheet was curved with the result of matching the method of the Sisko patent.

The record contains considerable evidence showing the need for the product of the patent, and the commercial success of the product. The evidence also discloses that the manufacturer of the accused product sought a sales agreement under the patent in suit and sought also to purchase appellant's business prior to developing "Contourkore." This conduct, of course, buttresses appellant's contention of novelty and utility, and it likewise supports the idea of need for the product.

The Supreme Court had occasion to consider the question of obviousness with respect to the validity of a patent in a recent case. Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545. The court construed the language of 35 U.S.C.A. § 103, as meaning that a patent may not be obtained, although the invention has not been identically disclosed in the prior art, when the differences between the subject matter for which the patent is claimed and the prior art are such that the subject matter as a whole would have been obvious to a person having ordinary skill in the art to which the subject matter pertains. We followed this decision in Up-Right, Inc. v. Safway Products, Inc., 5 Cir., 1966, 364 F.2d 580.³ There we approved a finding of invalidity based on obviousness, and pointed out that patentability depends not only on novelty and utility, but also on nonobviousness.

Thus we come to the question of obviousness or nonobviousness for appellant must first cross that statutory hurdle. Moreover, our path, as was true in Graham v. John Deere Co., is to decide that question, which is a phase of the legal question of validity, on the result of factual inquiries. These inquiries are to be directed to the scope and content of the prior art and practices, the differences between the prior art and practices and the claims at issue, and the level of ordinary skill in the art involved.

We begin with the problem which was to make a construction core in the form of sheets out of balsa blocks...