Skil Corporation v. Cutler-Hammer, Inc.

• Citation: 412 F.2d 821
• Decision Date: 14 July 1969
• Docket Number: No. 17160.,17160.
• Parties: SKIL CORPORATION, Plaintiff-Appellant, v. CUTLER-HAMMER, INC., Defendant-Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

412 F.2d 821 (1969)

SKIL CORPORATION, Plaintiff-Appellant, v. CUTLER-HAMMER, INC., Defendant-Appellee.

No. 17160.

United States Court of Appeals Seventh Circuit.

June 12, 1969.

Rehearing Denied July 14, 1969.

Clarence J. Fleming, Fred S. Lockwood, Thomas A. Reynolds, Jr., Chicago, Ill., for appellant, James L. McManus, Chicago, Ill., of counsel.

Albert H. Pendleton, P. Phillips Connor, Gregory B. Beggs, Chicago, Ill., for appellee.

Before DUFFY, Senior Circuit Judge, FAIRCHILD and CUMMINGS, Circuit Judges.

DUFFY, Senior Circuit Judge.

This is a patent infringement suit involving plaintiff's Gawron Patent No. 3,209,228 (228). This patent relates to an electrical control system for small portable electric tools, such as electric drills.

Gawron, a graduate electrical engineer, spent two years investigating various means for achieving speed control over motors in portable tools. Gawron conceived his invention in April 1962 and in the fall of that year, constructed a tool which embodied a speed control system as shown in the patent.

The Gawron system is comprised of a combination of elements, including a silicon controlled rectifier (SCR) circuit in series with a universal or series motor in a portable electric tool, such as a drill, wherein the speed of the tool motor is controlled by the operator's finger on the tool trigger.

The principal components of the circuit are a silicon controlled rectifier, a capacitor, a diode, a fixed resistor, and a variable resistor. Another important element in the combination is a mechanical connection directly linking the drill trigger to the moveable element of the variable resistor; the tool trigger is also directly connected to a shunt or bypass switch.

Defendant manufactures various electrical switch gear including trigger operated speed control switch units, which are the devices which plaintiff complains infringes its Patent No. 228. Such switch units are designed for inclusion in electrical hand drills made by various drill manufacturing companies including the Singer Company and McGraw-Edison Company. The Singer Company and its customer, Sears, Roebuck & Company (Sears) acknowledged the validity of the Gawron patent by entering a consent decree.

This suit was, at one time, consolidated with 65-C-1925, Skil Corporation v. McGraw-Edison Company and Cutler-Hammer, Inc. However, McGraw-Edison also has entered into a consent decree.

In its answer in the instant case, Cutler-Hammer denied infringement of the Gawron patent although at the trial, defendant admitted copying from a switch unit used by Skil and which Skil claims is covered by the patent in suit. Defendant asked a declaratory judgment that the patent in suit is invalid and not infringed.

On the basis of some exparte patent office proceedings which occurred after the patent in suit was issued, the District Court held that the statutory presumption of validity attending the Gawron patent had been destroyed. The Court then found the patent invalid for obviousness on the prior art which was the same as and cumulative of the prior art which had been considered by the Patent Office.

The application for the Gawron patent was filed September 28, 1962. The examiner considered Gemmill Patent No. 2,609,525 (525) which was called to his attention by Gawron's attorney. The Gemmill patent had been available to the public since 1952 and was issued prior to the development of silicon controlled rectifiers.

The District Court's decision is based upon the Matthews' application which was filed March 26, 1964, which was nearly a year and a half after the Gawron application had been filed.

In an amendment dated June 17, 1965, Matthews, desiring to have the Patent Office declare an interference, submitted claims 9 through 12 which are identical with claims 1 through 4 of plaintiff's Gawron patent. The Office action referred to by the District Court was that the examiner of the Matthews' application who was not the same examiner who considered the Gawron application, rejected claims 9 through 12 as "unpatentable to applicants over Slater in view of Gemmill." Thus, the second examiner made reference to two patents which had been considered by the examiner of the Gawron application. No interference was ever declared, and the Matthews' application was abandoned.

The District Court in its opinion stated — "This Court must conclude, however, that the later examination of the Matthews et al. application involved a more thorough consideration of this prior art than did the examination of the Gawron application. Moreover, the Patent Office reversed its own prior opinion with regard to the patentability of the claims of Gawron by its action with respect to the copied claims. Under these circumstances, the basis for the presumption of validity is lacking." It is our view and we hold that the District Court was in error in this respect.

In the early case of McCormick Harvesting Machine Co. v. C. Aultman & Co., 169 U.S. 606, 18 S.Ct. 443, 42 L.Ed. 875, the United States Supreme Court pointed out that the only authority competent to set a patent aside, or to annul it, or to correct it for any reason, is vested in the courts of the United States. The Court stated at page 611, 18 S.Ct. at 445 — "In the case under consideration the examiner acted upon the application as if it were a new proceeding, * * * but his action in rejecting some of the claims which had been repeated from the original patent did not affect that patent. * * * His opinion thereon was but his personal opinion, and, however persuasive it might be, did not oust the jurisdiction of any court to which the owner might apply for an adjudication of his rights, and as the examiner had no authority to affect the claims of the original patent, no appeal was necessary from his decision. * * * to attempt to cancel a patent upon an application for reissue when the first patent is considered invalid by the examiner would be to deprive the applicant of his property without due process of law, and would be in fact an invasion of the judicial branch of the government by the executive."

The trial judge relied on Minnesota Mining & Mfg. Co. v. Coe, 79 U.S.App. D.C. 186, 145 F.2d 25 (1944), but that case did not involve an issued patent but rather the application of one Jewett who was appealing the refusal of the Patent Office to grant him certain claims. The validity of the Veazy patent was not there involved.

35 U.S.C. § 282 provides that a patent shall be presumed valid and that the burden of establishing invalidity shall rest on the party asserting it. Therefore, the Gawron patent was presumptively valid on September 28, 1965, the date it was issued. This presumption also was in effect on September 9, 1966, the date of the rejection of claims in the Matthews' application.

We know of no authority in the statutes or in court decisions to support the trial court's removal of the presumption of validity of the Gawron patent under the facts presented here. We hold that the presumption of validity of the Gawron patent was not destroyed.

We further hold that the Patent Office did not reverse itself as to the validity of the Gawron patent.

There seems to be little dispute that drills with the Gawron speed controlled system have a decided advantage over prior art drills which had feedback circuits and knob controls. In fact, the trial court recognized "* * * that the Gawron drill has advantages over prior art drills."

The Gawron drill has enjoyed great commercial success. It has been the subject of licenses and consent decrees. Two former defendants in this case are now licensees. For the period to and including the third...