Uniroyal, Inc. v. Rudkin-Wiley Corp., RUDKIN-WILEY
| Decision Date | 13 January 1988 |
| Docket Number | No. 86-1300,RUDKIN-WILEY,86-1300 |
| Citation | 837 F.2d 1044 |
| Parties | UNIROYAL, INC., Plaintiff-Appellee, v.CORPORATION, Defendant-Appellant. PREMIX, INC., Plaintiff-Appellee, v.CORPORATION, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Federal Circuit |
Francis T. Carr, of Kenyon & Kenyon, New York City, argued for defendant-appellant. With him on the brief were Robert D. Fier, Albert J. Breneisen and John D. Vandenberg, of Kenyon & Kenyon, New York City.
William R. Murphy, of Tyler Cooper & Alcorn, New Haven, Conn., and Thomas A. Beck, of Felfe & Lynch, New York City, argued for plaintiffs-appellees.
Before DAVIS, NEWMAN and ARCHER, Circuit Judges.
Rudkin-Wiley Corporation (Rudkin-Wiley) appeals the judgment by the United States District Court for the District of Connecticut holding U.S. Patent 3,241,876 ('876 patent or Saunders' patent) invalid for obviousness under 35 U.S.C. Sec. 103 (1982 and Supp. III 1986) or, if valid, not infringed by Uniroyal, Inc. or its successor in interest, Premix, Inc. (collectively, Uniroyal). We affirm-in-part, vacate-in-part, reverse-in-part and remand.
This case was initiated by Uniroyal in 1975 by the filing of a declaratory judgment action to have the '876 patent declared invalid or, if valid, not infringed by Uniroyal. Premix filed a similar action immediately after its purchase of Uniroyal's deflector business in 1980. Rudkin-Wiley counter-claimed for infringement. The cases were consolidated and proceedings were stayed pending an appeal of a separate action involving the '876 patent. See Saunders v. Air-Flo Co., 646 F.2d 1201, 210 U.S.P.Q. 337 (7th Cir.1981) (). 1 Following a bench trial, judgment was rendered in the present The '876 patent, issued March 11, 1966 to Walter Selden Saunders (Saunders), relates to an air-deflecting device for reducing wind resistance encountered by tractor-trailer combination vehicles. 2 Rudkin-Wiley obtained an exclusive license under the '876 patent from Saunders in 1966. The claimed device is a panel-like deflector 3 mounted on top of the cab of the tractor, which according to the patent specification "produces a relatively wide diffusion of the air ... and causes the same to readhere to the body of the truck [sic, trailer] rearwardly of the front portion thereof in a relatively smooth and even manner...." Rudkin-Wiley's commercial embodiment of the Saunders invention is roughly rectangular and has a smaller cross-sectional area than the cross-sectional area of the front face of the trailer that extends above the tractor cab. When the vehicle is in motion, the effective surface area encountering wind resistance is thus decreased and significant fuel savings are achieved because of the reduced resistance or drag.
case in March, 1986 in favor of Uniroyal, on the basis that the '876 patent is invalid under section 103 or, if valid, was not infringed by the Uniroyal device.
Independent claim 2 of the '876 patent reads as follows: 4
(d) said baffle being positioned a distance from the front of the trailer equal to approximately 0.7 the half width of the trailer.
The accused device of Uniroyal is similar to Rudkin-Wiley's embodiment of Saunders' invention, although it is more rounded on the corners and edges. Uniroyal asserts that its device more closely resembles a fairing and relies to a greater extent on a streamlined, continuous flow around the front surface of the trailer in contrast to the emphasis in the '876 patent on abruptly diverting the airflow about the trailer face.
Rudkin-Wiley's commercial embodiment of the Saunders invention and the Uniroyal device are depicted below:
Beginning in 1953 the University of Maryland conducted an extensive study of the wind resistance of tractor-trailer vehicles to seek methods of reducing drag (Maryland study). This study was sponsored by Trailmobile, Inc., a trailer manufacturer, and the American Trucking Association Foundation, Inc. Under the direction of a professor of aerodynamics, the University's Wind Tunnel Operations Department tested over 7,000 configurations in wind tunnel tests on trailer models. None of the configurations tested was similar to the invention defined by the claims of the Saunders patent. The study concluded that one of the best drag reduction methods was to use a continuous "fairing." This is a deflector attached to the back of the tractor cab roof which extends in a curved or modified "S" configuration to the top leading edge of the trailer where it is also attached (the Maryland fairing). While the Maryland fairing proved in wind tunnel tests to be very effective at reducing the drag from wind resistance, it was recognized to be impractical, if not useless, because the tractor-trailer could not be turned when such a fairing was employed.
The Stamm patent, U.S. Patent No. 2,863,695 issued on December 9, 1958, discloses an attempt to make a practical device which would produce streamlining effects similar to those of the Maryland fairing. The Stamm device, depicted below, consists of two principal parts, one being curved pieces mounted on the top and sides of the tractor cab and the other being conduits mounted on the top and sides of the trailer. The curved pieces are designed to direct air flow smoothly from the cab through the conduits on the trailer. The district court noted that there is "no evidence that the [invention of the] Stamm patent was ever commercially reproduced."
Austrian Patent No. 62,329, issued November 15, 1913 to Constantin, was before the district court but it was not considered by the United States Patent and Trademark Office (PTO) examiner in the prosecution of the '876 patent. Constantin discloses "for vehicles with large carrying capacities" the mounting ahead of the vehicle of a shield having a smaller cross-section than the vehicle. It states:
[I]f one attaches at a suitable distance ahead of the vehicle a shield of suitably shaped cross-section that is smaller than that of the front of the car, the layers of the medium that are deflected by this screen will remove out of the path of the car also other layers that, without the shield, would have struck the vehicle and provided resistance to the motion.
As in the case of Stamm, we have not been directed to, or found in the record, any evidence of commercialization of the Constantin device.
Two patents for bug deflector shields for automobile windshields--Davisson, U.S. Patent No. 2,236,846, and Gracey, U.S. Patent No. 2,148,798--were deemed by the district court to be pertinent to "illustrate a means by which a deflecting shield may be placed," although the court noted there was insufficient evidence to show that these bug-deflecting shields reduced drag.
Several articles and textbooks (see footnote 5, infra ) discussing the aerodynamics of airflow resistance were also cited by the district court. One general aerodynamic principle described in these publications is "shielding" (also referred to as "favorable interference"), i.e., the use of a smaller cross-sectional deflector in front of a larger surface, which effects a reduction of drag.
OPINIONA patent is presumed valid and the burden of establishing invalidity rests on the party asserting such invalidity. 35 U.S.C. Sec. 282 (1982). This presumption may be rebutted only by clear and convincing evidence. American Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1360, 220 U.S.P.Q. 763, 771 (Fed.Cir.), cert. denied, 469 U.S. 821, 105 S.Ct. 95, 83 L.Ed.2d 41, 224 U.S.P.Q. 520 (1984). The burden of proof is not reduced when prior art is presented to the court which was not considered by the PTO. Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549, 220 U.S.P.Q. 193, 199 (Fed.Cir.1983). However, reliance upon such art when that art is more pertinent than the art considered by the PTO may facilitate meeting the burden of proving invalidity. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 U.S.P.Q. 303, 313 (Fed.Cir.1983), cert. denied, 469 U.S. 851, 105 S.Ct. 172, 83 L.Ed.2d 107 (1984).
Obviousness under 35 U.S.C. Sec. 103 is a legal conclusion involving a preliminary determination of four factual inquiries: (1) the scope and content of the prior art; (2) the differences between the claims and the prior art; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, if any, of nonobviousness. Secondary considerations include objective indicia of nonobviousness such as commercial success, long-felt but unsolved need, and failure of others. Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 694, 15 L.Ed.2d 545, 148 U.S.P.Q. 459, 467 (1966); Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1566-68, 1 U.S.P.Q.2d 1593, 1596-97 (Fed.Cir.), cert. denied, --- U.S. ----, 107 S.Ct. 2187, 95 L.Ed.2d 843 (1987).
The factual findings of the district court underlying the obviousness determination will be overturned on appeal only if they are clearly erroneous. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d at 1566, 1 U.S.P.Q. at 1596. The ultimate conclusion on obviousness, however, is a legal conclusion and is reviewed as such. Polaroid Corp. v. Eastman Kodak Co., 789 F.2d 1556,...
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