Vandenberg v. Dairy Equipment Co., a Div. of Dec Intern., Inc.
| Citation | 740 F.2d 1560,224 USPQ 195 |
| Decision Date | 27 July 1984 |
| Docket Number | 83-1420,Nos. 83-1400,s. 83-1400 |
| Parties | Ben W. VANDENBERG, August Vandenberg, and Andrew W. Vandenberg, and Vandenberg, Manufacturing Company, Inc., Appellants/Cross-Appellees, v. DAIRY EQUIPMENT CO., A DIVISION OF DEC INTERNATIONAL, INC., Appellee/Cross-Appellant. Appeal |
| Court | United States Courts of Appeals. United States Court of Appeals for the Federal Circuit |
Morton J. Rosenberg, Columbia, Md., for appellants/cross-appellees.
Paul R. Puerner, Milwaukee, Wis., for appellee/cross-appellant.
Before DAVIS, Circuit Judge, SKELTON, Senior Circuit Judge, and MILLER, Circuit Judge.
This is an appeal under 28 U.S.C. Sec. 1295(a)(1) from a final decision of the United States District Court for the Western District of Wisconsin, declaring United States Patent No. 3,962,575 ('575), owned by appellants/cross-appellees Ben W. Vandenberg, August Vandenberg, and Andrew W. Vandenberg (appellants), invalid for obviousness under 35 U.S.C. Sec. 103. The district court denied the request for attorney's fees of appellee/cross-appellant Dairy Equipment Company (DEC).
We affirm the district court's determination of invalidity insofar as it concerns Claims 1 and 3 of the '575 patent. However, we reverse the decision of the court as to Claim 2, which was not at issue below. We also affirm the denial of DEC's request for attorney's fees.
The '575 patent, issued to appellants on June 8, 1976, involves a radial arm milk hose support used to support the hoses which connect the milk receiving pipe system to the milking apparatus attached to a cow in a dairy operation. The support helps to maintain the proper tension on the hoses. Figures 4 and 5 of the patent are reproduced below with nonessential reference numerals deleted.
The device defined by the claims at issue (1 & 3) is comprised of a plastic ball 16 having a sleeve 28 and a pair of plastic socket members 18 clamped on the ball by an adjustment bolt 20 passing through the socket members. The ball is supported by a bolt passing through the ball and the sleeve, thus securing the ball to a mounting device 60 around a mounting rail 38. A hanger arm 10 is clamped between the ends of the socket members. The device is used by moving the hanger arm to the desired position relative to the cow to be milked. The arm remains in the desired position due to the frictional engagement of the socket members on the ball. The frictional engagement is adjustable by means of the adjustment bolt. 1
The use of support systems increased in the mid-1960's with the advent of the herringbone milking system, in which cows are milked in stalls arranged in a herringbone pattern around a central pit from which the farmer can attach and remove the milking device. In 1967, appellants introduced an improved milk hose support, which will be referred to as PX-15. This device utilized a system of flat metal plates with fiberboard clutchplates to achieve the desired movement. Appellants attempted to patent this system, but because the device had been on the market more than one year before they consulted counsel, they were advised that they could not obtain a patent.
Appellants developed the device which is the subject of this suit in 1974, using molded high-grade nylon in the manufacturing process and a ball and socket joint for rotation instead of flat metal plates. The use of high-grade plastic eliminates the need to lubricate the parts and also provides resistance to the corrosive conditions found in the high humidity environment of a milking parlor. The use of the ball and socket joint allows almost universal movement of the hanger arm.
DEC also manufactured and sold a support system that employed flat metal plates and fiber clutchplates to provide radial motion. During the 1970's, DEC attempted at various times to improve its design. In 1980, an engineering technician at DEC, Jack Johnson, was assigned the specific task of designing a new system. He eventually obtained a copy of one of appellants' patented devices, which he used in designing a milk hose support system for DEC. This system differs from appellants' system only in a few insignificant particulars. Appellants brought suit soon after this device appeared on the market, alleging infringement of their '575 patent. DEC defended by contending that the '575 patent was invalid for obviousness, and the district court agreed.
Appellants contend that the district court erred in holding the '575 patent obvious under 35 U.S.C. Sec. 103. The test for determining obviousness is well known from the case of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, 148 USPQ 459 (1966):
Under Sec. 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved need, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. .
In making its determination a court must view the prior art without reading into that art the patent's teachings, In re Sponnoble, 405 F.2d 578, 585, 160 USPQ 237, 243 (CCPA 1969), and must analyze and consider the references as a whole, In re Shuman, 361 F.2d 1008, 1012, 150 USPQ 54, 57 (CCPA 1966). Furthermore, once a patent has been issued, it is presumed valid, and the burden of persuasion on the issue of obviousness is placed upon the party asserting invalidity. 35 U.S.C. Sec. 282.
Appellants point to certain language in the district court's opinion which they contend demonstrates that the court misapplied the above rules of law. Specifically, the district court stated:
Graham v. John Deere Co., 383 U.S. 1 [86 S.Ct. 684, 15 L.Ed.2d 545] (1966) channels the initial inquiry into the issue of obviousness: courts are to evaluate the scope and content of the prior art, determine what differences there are between the prior art and the claims of the patent at issue, if any, and determine the level of ordinary skill in the relevant art at the time of the invention. Graham provides a mode of analysis that focuses on the essential question but does not answer it. The court is still faced with the task of deciding whether the progression from the known to the unknown was easy and obvious to the ordinary-skilled worker or whether it required "something akin to genius." Vandenburg v. Dairy Equipment Co., No. 82-C-194-C, slip op. 10 (W.D.Wis. Aug. 17, 1983).
Tests which call for an inquiry into the "genius" revealed by a particular device are no longer viable. Graham, 383 U.S. at 15, 86 S.Ct. at 692. 2 However, we do not believe that this unfortunate lapse into a bygone era tainted the court's decision. It is evident from the court's opinion that its analysis was structured according to the requirements of Graham. The necessary factual determinations were made, and against that background the court made its determination of obviousness. We do not believe that the mere reference to "genius" requires reversal of the court's opinion when it is clear that the dictates of Graham were followed.
In any event, obviousness is a question of law based upon findings of fact which are subject to the "clearly erroneous" standard. Fed.R.Civ.P. 52(a); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed.Cir.1983). That the court may have used "flash of genius" language is ultimately of no consequence on this appeal. We are still bound by its factual findings made under the Graham analysis unless clearly erroneous, and we are still free to arrive at our own conclusion on the issue of obviousness based upon those findings, keeping in mind the presumed validity of the patent. To that task we now turn our attention. Gardner v. TEC Systems, 725 F.2d 1338, 220 USPQ 777 (Fed.Cir.1984).
The district court relied upon prior art references different than those relied upon by the Patent Examiner because it found the references it relied upon to be more pertinent. The court relied upon appellants' earlier device, PX-15; Sorenson, U.S. Patent No. 1,036,739; Draeger, U.S. Patent No. 1,978,859; and Melton, U.S. Patent No. 3,342,513. The PX-15 device, as mentioned previously, was a milk hose support system featuring universal adjustment and frictional holding capability through the use of metal plates and clutchplates. Sorenson discloses a hanger for supporting an incandescent lamp, utilizing a universally adjustable ball and socket joint and an adjustment bolt. The Sorenson device is claimed broadly and the patent includes a recitation that it may be used for purposes other than a lamp hanger. Draeger discloses a trailer hitch employing a ball and socket joint in which the fastening bolt passes through the ball itself. Melton discloses a ball and socket joint constructed of high density synthetic resin, eliminating the need for lubrication.
Appellants argue that the art relied upon by the Patent Examiner was more pertinent than that relied upon by the district court, and that some of the art relied upon by the court was nonanalogous. Without taking the time to list the references cited by the Examiner, suffice it to say that we do not find the district court's treatment of the prior art to be in error. The appellants' own prior support system, PX-15, was certainly pertinent and analogous art. There was also expert testimony to the effect that Sorenson was the single most pertinent reference. In addition, all of the ball and socket patents...
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