Wahl v. Rexnord, Inc.

Decision Date16 June 1980
Docket NumberNo. 79-2054,79-2054
Citation624 F.2d 1169,206 USPQ 865
PartiesEugene A. WAHL and Vibra Screw, Incorporated, Appellants, v. REXNORD, INC.
CourtU.S. Court of Appeals — Third Circuit

John W. Logan, Jr. (argued), Thomas M. Ferrill, Jr., Robert P. Seitter, Ferrill & Logan, Fort Washington, Pa., Harold Friedman, Kirsten, Friedman & Cherin, Newark, N. J., for appellants.

Thomas F. McWilliams (argued), McWilliams, Mann & Zummer, Chicago, Ill., for appellee.

Before ALDISERT, WEIS and HIGGINBOTHAM, Circuit Judges.


A. LEON HIGGINBOTHAM, Jr., Circuit Judge.

It is a generally recognized precept in patent law that an inventor can obtain no more than one patent for any original discovery. Many decisions of this and other circuits have analyzed the circumstances in which a patented discovery can be said to copy an earlier patented discovery, and therefore is invalid as a double patent. This case, one of first impression in this court, requires us to analyze double patenting in the unusual circumstance where the two patents are of different types; the first is a design patent covering the "ornamental design for an article of manufacture," while the second is a utility patent covering the mechanical claims of an article of manufacture. Because we conclude that there are remaining issues of material fact on whether the design and utility patent in this case embody the same inventive concept, we will reverse the district court's grant of summary judgment.


The appellants, Vibra Screw, Inc. (Vibra Screw) and Eugene Wahl, have sued the appellee, Rexnord, Inc. (Rexnord), for patent infringement of a utility patent. This appeal concerns the holding by the district court for Rexnord on the ground that the utility patent Rexnord allegedly infringed was invalid because it was a double patent of an earlier issued design patent.

On August 24, 1965 a design patent was issued to Eugene Wahl under United States Patent No. 202,068 ('068 patent). A design patent covers a "new original and ornamental design for an article of manufacture." 1 Wahl's invention concerned the external design of a "storage bin flow promoter," a device used at the base of a storage bin to expedite the flow of material out the bottom of the bin. On July 19, 1966, one year later, Wahl secured a utility patent, United States Patent No. 261,508 ('508 patent). A utility patent covers a "new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof." 2 Wahl's patent covered the internal structure of a "vibratory bin activator," the same type of device that was the subject of his design patent. Generally speaking while the '068 patent covered an external ornamental design of the device, the '508 utility patent covered an internal mechanical structure.

The exclusive United States licensee for both patents was Vibra Screw, of which Wahl served as president. Under an agreement between Wahl and Vibra Screw, Wahl received 21/2% of net sales price of all patented devices sold by Vibra Screw.

On April 30, 1976 Wahl and Vibra Screw filed suit against Rexnord for patent infringement of the '508 utility patent. They claimed, inter alia, that Rexnord was using and selling vibratory bin activators embodying the inventions described and claimed in the utility patent. Rexnord moved for summary judgment on July 8, 1978 on the ground that the '508 utility patent was invalid as a double patent of Wahl's earlier issued '068 design patent. 3 Wahl and Vibra Screw, in turn, moved for summary judgment on the ground that the '508 utility patent was not invalid.

The parties submitted three types of evidence in support of their motions.

The first, and most important, were the patents themselves. The '068 design patent claimed "the ornamental design for a storage bin flow promoter as shown and described" in the three patent diagrams included below. 4


The distinctive features of the '068 design are the plurality of increasingly narrow convex surfaces that are outlined by the full lines in the diagram. It is important to note that the patent diagram can only claim the aesthetic appearance of these dominant lines. The internal broken lines explain the environment in which the patent exists, but are technically not part of its claims. See Transmatic, Inc. v. Gulton Industries, Inc., 601 F.2d 904, 912 (6th Cir. 1979); Application of Blum, 374 F.2d 904, 907 & n. 1 (C.C.P.A.1967). 5 Thus, the outline suggesting an interior of concave surfaces and the mechanical gyrator attached to the baffle in figure two are not specifically claimed by the design patent.

The '508 utility patent claimed a vibratory bin activator which was portrayed in patent diagrams similar to the interior suggested by the '068 patent. These diagrams are as follows: 6




The diagrams accompanying the utilitypatent provide an illustration of the mechanical claims of the mechanical invention and do not constitute the patent claim itself. Anchor Hocking Corp. v. Eyelet Specialty Co., 377 F.Supp. 98, 101 (D.Del.1974). The actual patent is embodied in the word claims included with the diagram. A representative claim in the '508 utility patent states it is an

(a)pparatus for promoting the flow of material from a storage hopper having a discharge opening formed in the bottom thereof, said apparatus comprising,

(a) a material-receiving member having a bottom wall defined by a plurality

of concave surfaces terminating in a central outlet opening,

(b) means vibrationally suspending the material receiving member from the hopper and in spaced position to the hopper wall, and

(c) means for vibrating the material-receiving member.

The second type of evidence the parties submitted was depositions and affidavits by Wahl and other experts on the unique inventive contribution of each patent. Finally, the appellants submitted drawings of hypothetical devices with non-conforming interiors and exteriors which would supposedly infringe one patent and not the other.

On January 25, 1979 the district court granted summary judgment for Rexnord on the ground that the utility patent was invalid because it was a double patent of the design patent. Wahl v. Rexnord, Inc., 481 F.Supp. 573 (1979) (Wahl I). 7 To find double patenting, it reasoned, "the features in which the novel aesthetic effect resides (must be) the identical features which produce the novel function claimed in the utility patent." Id. at 583. In this case, the novel feature of the design patent was its

outside proportions and the exterior configuration thereof, which produce a plurality of convex exterior surfaces for the bottom walls of the storage bin promoter. This novel design feature clearly produces the novel interior configuration which forms surfaces of the dish-shaped sides, resulting in a positive discharge of material through the outlet when the gyrator is operating, while at the same time preventing discharge of material when the gyrator is not operating. Such construction facilitates the movement of material down from the upper regions of the storage bin and alleviates the congestion and packing of material at the bin discharge opening, thereby assuring a positive and uniform flow.

Id. at 583. The court conceded that there were elements of the utility patent not necessarily found or even "necessarily implied" by the design patent, but concluded "(d)ouble patenting in the design-utility situation cannot turn on the niceties of precise ornamentation," but rather "on the presence or absence of design features which produce the novel function claimed in the utility patent." Id. 8

The appellants subsequently moved for reconsideration of the court's decision on the basis of newly submitted evidence of over 50 instances of commercial sales of bin flow promoters with non-conforming interiors and exteriors. On May 25, 1979 the district court denied the motion on the ground that this evidence did not undermine its conclusion that the two patents were "the same." Wahl v. Rexnord, 481 F.Supp. 573, 597 (D.N.J.1979) (Wahl II ).

Wahl and Vibra Screw have appealed from the district court's decision on two grounds. First, while they agree that the district court adopted the appropriate standard for determining double patenting in a design utility context, they argue it interpreted that standard too "liberally." They contend, in effect, that there must be a one-to-one correspondence between all of the features claimed or necessarily implied by each patent in order to establish double patenting. Second, even if the district court interpreted the standard properly, they claim that the facts of this case do not warrant summary judgment. They suggest that the presence of not insignificant commercial sales of devices with nonconforming interiors and exteriors creates a material issue of fact under any interpretation. We will first review the standard the courts have applied in this context and then analyze the district court's interpretation. Finally, we will consider the legal significance of the sale of bin activators with non-conforming interiors and exteriors under this interpretation.


It has long been recognized that an inventor may not secure a second patent on a discovery in which he already has secured a prior patent. This principle derives from the temporal limitation placed on the monopoly granted for a patent. Design and utility patents provide their inventors with a statutory monopoly over their claims for fourteen or seventeen years, respectively. A second patent on a previously patented discovery would impermissibly extend the inventor's monopoly over the discovery beyond these limitations, and...

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