Sterner Lighting, Inc. v. Allied Electrical Supply, Inc.

• Decision Date: 21 September 1970
• Docket Number: No. 28599.,28599.
• Parties: STERNER LIGHTING, INC., et al., Plaintiffs-Appellees, v. ALLIED ELECTRICAL SUPPLY, INC., et al., Defendant-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

431 F.2d 539 (1970)

STERNER LIGHTING, INC., et al., Plaintiffs-Appellees, v. ALLIED ELECTRICAL SUPPLY, INC., et al., Defendant-Appellants.

No. 28599.

United States Court of Appeals, Fifth Circuit.

August 5, 1970.

Rehearing Denied September 21, 1970.

Harry Sommers, Howard N. Sommers, Sommers & Sommers, Montclair, N. J., Karl Vance Hart, Shutts & Bowen, Miami, Fla., for defendants-appellants.

Aubrey V. Kendall, Miami, Fla., for appellees.

Before JOHN R. BROWN, Chief Judge, GEWIN and THORNBERRY, Circuit Judges.

THORNBERRY, Circuit Judge:

The subject of this patent-infringement suit is lamp-post bases. The trial court held appellees' patent on their lamp-post base valid and found appellants liable for infringement. On this appeal, we agree with the trial court that the patent was valid, but we find the judgment of infringement to be based upon an overly generous reading of the claims, and accordingly we reverse and render judgment for appellants.

Both companies have been in the lamppost base business for a number of years. Before either the patent at suit issued or the allegedly infringing device was marketed, Pfaff & Kendall, manufacturer of the accused device for appellant Allied, manufactured a device called the "Calso base." Although it never achieved a high degree of commercial success, the Calso base embodied a number of advantageous ideas, some of which were old and some new. The essential feature of the base was a hinge attached to its bottom that allowed the entire pole to swing down to the ground for easy installation and maintenance of lamps (see Figure 1). The base itself was a hollow pedestal, terminating at its upper end in a pole. It had a removable plate that allowed access to the transformer and wiring inside. The Calso base was used mainly in the middle and late 1950's, but its bulk and lack of strength caused it to have disadvantageous properties that in turn induced Allied to discontinue merchandising it.

The patented base, which Allied is accused of infringing, is manufactured by Sterner Lighting, Inc., one of the appellees. Sterner filed its application in 1960 and began at that time to merchandise its base, which proved highly successful commercially. This base is stronger and smaller than the Calso device, partly because the electrical components that must go into it had been more carefully developed by 1960 and were themselves smaller. The base is a flat plate attached to the bottom of the pole, hinged at one edge, with a short border hanging down and supported on the edge opposite the hinge by two knobs coming out of the foundation (see Figure 2). The device can be easily operated by one or two men. Its sales rose from approximately $1,000 in 1960 to nearly $2,000,000 in 1967.

About 1964 Pfaff & Kendall and its customers began to feel pressure from the success of the Sterner device. Builders and architects engaged in area lighting projects had begun to specify the Sterner base to an extent that it was cutting into Allied's customers' markets. One of Pfaff & Kendall's sales managers requested that Pfaff & Kendall's engineering department construct a base that would have the advantageous characteristics of the Sterner device. Engineering replied with the suggestion that Pfaff & Kendall use the old Calso base, to which a Pfaff & Kendall marketing manager replied, "This base is a killer. It can get away. That is one reason it is no longer used." Thus there can be no question that it was in response to competition from the Sterner device that Pfaff & Kendall developed the base (sold by it to Allied) that is here accused of infringing the Sterner patent (see Figure 3). Pfaff & Kendall was clearly trying to reproduce the advantageous features of that device. The Allied base shares common characteristics with the Sterner base: It is short and low to the ground, it necessitates placement of the electrical essentials in the pole, and it consists, in part, of a flat plate at the bottom of the pole horizontal to the ground and attached to the hinge. Like the Sterner base, it is light, strong, and easy to operate.

The question of validity of the patent is the first one we must consider, because of the deep public interest in the existence of patent monopolies. See Beckman Instruments, Inc. v. Chemtronics, Inc., 5th Cir. 1970, 428 F.2d 555. Allied argues that it is invalid both because it is obvious and because it is anticipated by the prior art. After consideration of this question, we take up the second issue in the case, which is whether the Allied device infringes the claims of the patent when those claims are properly construed.

I. VALIDITY OF THE PATENT AND CONSTRUCTION OF ITS CLAIMS

A. Anticipation

Appellant Allied first argues that the patent is invalid because it was anticipated by the Calso device. The Calso base and the patented invention of course have some characteristics in common, most notably the hinge, but there are also major elements that make the patented device a different invention from Calso. These differences are the essence of the patent. Sterner's licensor, in describing the patent in the trial court, pointed out the following differences between it and the prior art: (1) The base plate is flat and attached to the bottom of the pole and bolts around its edges are used to keep it down. (2) The ballast (that is, the weighting material, which also happens to be the electrical equipment) is in the pole itself rather than in the base. (3) Ventilation space is provided at the bottom. (4) The sides of the base are covered by a skirt attached to the base plate (5) "Bosses," or knobs, from below, hold up the edge of the base plate that is not supported by the hinge.

In order to show anticipation, Allied's witnesses attempted to show that the Calso device embodied equivalents of all these characteristics. For example, testimony equated the sides of the Calso pyramidal base with the pole on the patented device, in order to show that the ballast in Calso was also in the pole. The trouble with this approach is that the Calso pedestal base is different from a pole in structure: It is bigger, heavier, and not as strong. Similarly, the testimony equated the sides of the Calso pedestal, several feet high, with the skirt surrounding the patented device, which is only a few inches high. These elements serve the same functions in the two devices, but again they are structurally different. The jury found against Allied on the issue of anticipation.

Anticipation is largely a question of fact. See Graham v. John Deere Co., 1965, 383 U.S. 1, 86 S.Ct. 684, 15 L. Ed.2d 545; Swofford v. B & W Inc., 5th Cir. 1968, 395 F.2d 362; American Fidelity & Cas. Co. v. Drexler, 5th Cir. 1955, 220 F.2d 930, 932-933. There are cases in which anticipation depends so heavily upon issues of law that it may be reviewed directly by an appellate court, but this is not such a case. Cf. Beckman Instruments, Inc. v. Chemtronics, Inc., supra. A jury verdict on the factual issue of anticipation will not be overturned unless fair-minded men could not disagree as to a contrary result. We hold that the jury's finding that the patent was not anticipated by the Calso device is not reversible on this appeal.

B. Obviousness

Allied also urges that the patent is invalid because the innovations that make it what it is would be obvious to a person possessing ordinary skill in the art. Obviousness is a difficult, elusive standard to apply. The Supreme Court has recently dealt with the concept in several opinions. In one such case, United States v. Adams, 1965, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572, the Court considered a patent on a special kind of battery. The patent specifically described the components and their relation to each other. The components were all known, but the combination was a specific solution to technical problems that required the exercise of some skill because the components had to be chosen so that they worked together. The Court therefore held the patent valid. By contrast, in Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 1969, 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258, the Court held a patent on a device to lay asphalt pavement invalid. The device was the first successful machine of its kind. But it was merely a combination of known elements that produced no synergistic result, to which the patentee had contributed no novel arrangement. His patent was invalid because it required him to do nothing but adopt known components, and it was not saved by the fact that no one had ever so used them before. See also Graham v. John Deere Co., supra; cf. Beckman Instruments, Inc. v. Chemtronics, Inc., supra. Our question on this appeal is whether the Sterner patent is closer to the Adams or to the Anderson's-Black Rock situation, and it appears from the decisions that the key to this question is whether the patentee has solved non-trivial technical problems by purposefully manipulating variables so as to elicit a synergistic result from his materials.

Allied, the accused infringer, has advanced an appealing argument that the patent is actually obvious. It contends that since the main problem exhibited by the known-art devices was their bulkiness and weight, the solution Sterner came up with — namely, making the base smaller — is obvious. Also, they point out that putting the electrical components in the pole rather than in the base does not solve a very sophisticated technical problem, especially since the electrical components are in the same place they would be in the Calso prior-art base if that base were shaped as the Sterner base is. There is a good deal of force to this argument, and if recognizing these characteristics were all there was to construing the patent, it would not be valid.

In applying the substantive standards of patentability to the invention in this case, however, we must follow established principles of patent construction. A presumption of validity attaches to...