SSP Agr. Equipment, Inc. v. Orchard-Rite Ltd., ORCHARD-RITE

• Decision Date: 12 March 1979
• Docket Number: Nos. 76-3406,76-3389,ORCHARD-RITE,s. 76-3406
• Citation: 592 F.2d 1096,202 USPQ 1
• Parties: , 1979-2 Trade Cases 62,795 SSP AGRICULTURAL EQUIPMENT, INC., a California Corporation, Plaintiff-Appellant, v.LTD., a Washington Corporation, Defendant-Appellee. SSP AGRICULTURAL EQUIPMENT, INC., a California Corporation, Plaintiff-Appellee, v.LTD., a Washington Corporation, Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1096

592 F.2d 1096

202 U.S.P.Q. 1, 1979-2 Trade Cases 62,795

SSP AGRICULTURAL EQUIPMENT, INC., a California Corporation, Plaintiff-Appellant, v. ORCHARD-RITE LTD., a Washington Corporation, Defendant-Appellee.

SSP AGRICULTURAL EQUIPMENT, INC., a California Corporation, Plaintiff-Appellee, v. ORCHARD-RITE LTD., a Washington Corporation, Defendant-Appellant.

Nos. 76-3406, 76-3389.

United States Court of Appeals, Ninth Circuit.

March 12, 1979.

Richard C. Smith (argued), Yakima, Wash., for plaintiff-appellant.

Harlin P. Huebner (argued), of Huebner & Worrel, Los Angeles, Cal., for defendant-appellee.

Appeal from the United States District Court for the Eastern District of Washington.

Before VAN DUSEN, ^* WRIGHT and GOODWIN, Circuit Judges.

VAN DUSEN, Circuit Judge.

The plaintiff, SSP Agricultural Equipment, Inc. (herein SSP), formerly National Frost Protection Company, Inc. (herein National Frost), and the defendant, Orchard-Rite Ltd. (herein Orchard-Rite), manufacture and sell wind machines utilized by farmers to circulate air through orchards and other crops to prevent frost from settling and injuring or destroying the crops. The propeller fan assembly of SSP's wind machine is the subject matter of United States Patent No. 2,985,245, presently owned by SSP. The patent was issued May 23, 1961, to National Frost as assignee of the inventor, Ralph P. Maloof. SSP markets its wind machine under the name, "TROPIC BREEZE," a trademark registered under United States Trademark Registration No. 788,738 issued to National Frost April 27, 1965. SSP filed this action for injunctive relief and damages on April 9, 1974, charging Orchard-Rite with infringement of its patent and trademark and unfair competition.

Orchard-Rite denied SSP's allegations of patent and trademark infringement and, in an amended answer to the complaint, included a counterclaim seeking judgment declaring SSP's patent invalid and unenforceable for lack of infringement, as well as an award for costs and attorney fees. Orchard-Rite attempted to amend its answer a second time, on the eve of the commencement of the trial on the infringement issues, to add a counterclaim for the recovery of costs and attorney fees under the Sherman Act and the doctrine of patent misuse. The district court denied the motion as untimely made.

After the trial on the patent and trademark infringement issues and the filing of findings of fact and conclusions of law, the district court entered a judgment in favor of Orchard-Rite. ¹ The district court concluded that the Maloof propeller fan assembly claimed in SSP's patent lacks invention or is obvious and, thus, invalid and that SSP's registered trademark, "TROPIC BREEZE," was not infringed by Orchard-Rite.

Orchard-Rite filed a post-trial motion for an award of attorney fees under the authority of 35 U.S.C. § 285. The motion was denied.

SSP appeals from the district court's adverse rulings of patent invalidity because of obviousness and patent and trademark noninfringement. Orchard-Rite cross-appeals from the district court's refusal to allow an amendment to the pretrial order and the pleadings to permit a cross-claim against SSP for violation of the Sherman Act, its failure to grant Orchard-Rite's motion for attorney fees under 35 U.S.C. § 285 and its refusal to make findings of fact and conclusions of law as to Orchard-Rite's allegations of patent invalidity under the prior use and sale provisions of 35 U.S.C. § 102(b) and because of the inventor's misrepresentations to the Patent Office.

I. THE MALOOF PATENT

Wind machines used in agriculture consist of two or more blades radiating from and joined to a hub, the hub being mounted on the driving shaft of an engine. The purpose of the Maloof invention was to construct a hub-to-blade structure sufficiently strong and flexible to accommodate fan blades which were longer and more economical to fabricate than the aircraft propeller blades previously commonly used in wind machines. It was contemplated but not stated in the patent, that the long, thin blades of the invention would move a larger mass of air for a greater distance at fewer revolutions of the engine per minute than was possible with the use of aircraft propeller blades.

The problem to which the invention is primarily directed is stated in the patent as follows:

"The geometric arrangement giving the best aerodynamic efficiency is one that becomes well suited to a slender, thin, smooth, moderately twisted metal extrusion, except for the structural properties required of the region where the propeller fan blade joins the hub. In this connecting zone, large moments may appear which produce bending stress that actually exceed the tension stresses caused by centrifugal force. It becomes necessary then to provide a mechanism which would make use of centrifugal force to overcome or relieve the bending moment. The connection between the hub and each blade forms a continuous, elastic, deflectable joint."

The patent claims include the following elements, combined in the manner described: a hub composed of two annular or circular plates; a pair of tangs or arms extending outward from the center of the hub in a direction perpendicular to its axis, 180o from each other, each tang having a thick portion bolted between the annular plates of the hub and a longer, outwardly extending reduced thickness portion (being five to ten times wider than thick) shaped to make a 17o angle with a plane at right angles to the axis of the hub; a pair of long, slender blades made of extruded aluminum of uniform cross section located at the outer ends of the tangs; four splice plates, one placed on either side of the blades and tangs in the area where the blades and tangs meet, each pair of splice plates being spaced somewhat from the hub and bolted or by some means fastened together securing the tangs and blades between them in double shear.

The hub actually used in SSP's and Orchard-Rite's wind machines differs from the one described in the three claims of the patent. The annular plates are discarded, with the result that the thick portion of the tangs forms the hub. Orchard-Rite argued in the district court that its product did not infringe the patent, since even if the Orchard-Rite hub structure is the substantial equivalent of the one claimed in the patent, its particular features were rejected by the patent examiner and disclaimed by Maloof in order to obtain the patent. The district court, however, found that the hub is not a part of the invention claimed in the patent and Orchard-Rite does not press its argument based on file wrapper estoppel on appeal. We, therefore, turn to the question raised by SSP: whether the district court erred in determining that the Maloof patent claims invention in subject matter which would have been obvious to persons of ordinary skill in the art of fabricating wind machines.

II. OBVIOUSNESS

Nonobviousness of the subject matter as defined in 35 U.S.C. § 103 ² is one of three conditions of patentability. Graham v. John Deere Co., 383 U.S. 1, 12, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Penn Intern. Industries v. Pennington Corp., 583 F.2d 1078, 1080 (9th Cir. 1978); Jeddeloh Brothers Sweed Mills, Inc. v. Coe Manufacturing Co., 375 F.2d 85, 87 (9th Cir. 1967). While the ultimate question of patentability is one of law, it is resolved with respect to obviousness on the basis of factual determinations of (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, and (3) the level of ordinary skill in the pertinent art. Graham v. John Deere Co., supra, 383 U.S. at 17, 86 S.Ct. 684; Penn Intern. Industries v. Pennington Corp., supra at 1080-81; Jeddeloh Brothers Sweed Mills, Inc. v. Coe Manufacturing Co., supra at 88.

The district court found that the prior art with respect to the Maloof device, consisting of the six patents and the publication, the Mechanical Engineers' Handbook by L. S. Marks (2d ed. 1925), considered by the examiner during the course of the prosecution of the patent application in the Patent Office, discloses the elements of the Maloof propeller fan assembly and, to the extent they are not disclosed, that the differences are obvious and unpatentable. ³ We agree that the references cited by the patent examiner constitute prior art with respect to the Maloof assembly. All six of the patents claim propeller fan assemblies. Although at least four of them appear not to contemplate the use of blades as long as the length of the blades in SSP's wind machine, 17 feet 4 inches, that difference goes to the question of obviousness. Moreover, the Maloof patent does not specify the size of the blades claimed and characterizes them only as "large," "slender" or "elongated."

We agree also with the district court that the elements of the Maloof invention are anticipated by the prior art or are obvious in the light of it. The use of aluminum blades longer and thinner than those priorly employed is disclosed in the Reed patent for an aeronautical propeller, United States Patent No. 1,463,556. The Reed patent teaches that such blades may be integral with each other or separate and appropriately joined to the hub.

The Place patent, United States Patent No. 2,395,193, discloses the type of splice plate connection joining the blades of a fan to an extension of the hub which Maloof uses and also discloses that the required pitch angle to the blades may be effected commencing at the hub.

The Upson patent, United States Patent No. 2,317,502, discloses the blades in a fan assembly with a hub connection secured by means of pairs of spider arms comparable to the pairs of splice plates of the Maloof patent. The arms are twisted just beyond a hub disc to impart the pitch angle to the blades. The use of a double shear joint is also disclosed in Marks' Mechanical Engineers' Handbook. The Beier United States Patent No. 2,492,029 also discloses the elements...