Waldon, Inc. v. Alexander Manufacturing Company

• Decision Date: 25 February 1970
• Docket Number: No. 27711.,27711.
• Citation: 423 F.2d 91
• Parties: WALDON, INC., Plaintiff-Appellant-Cross Appellee, v. ALEXANDER MANUFACTURING COMPANY and Amco International, Defendants-Appellees-Cross Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

423 F.2d 91 (1970)

WALDON, INC., Plaintiff-Appellant-Cross Appellee, v. ALEXANDER MANUFACTURING COMPANY and Amco International, Defendants-Appellees-Cross Appellants.

No. 27711.

United States Court of Appeals, Fifth Circuit.

February 25, 1970.

George W. Rogers, Jr., Vicksburg, Miss., James R. Head, Tulsa, Okl., for plaintiff-appellant-cross appellee.

Frank E. Everett, Jr., Vicksburg, Miss., Lawrence H. Cohn, St. Louis, Mo., for defendants-appellees-cross-appellants; Cohn & Powell, St. Louis, Mo., of counsel.

Before AINSWORTH, DYER and SIMPSON, Circuit Judges.

DYER, Circuit Judge.

Waldon, Inc. brought suit against Alexander Manufacturing Co. alleging infringement of its patent, No. 3,199,236. Alexander denied infringement and counterclaimed that the patent is invalid for obviousness. The District Judge tried the case without a jury and found the patent valid but not infringed. We find the patent invalid and reverse.

The patent pertains to an attachment for farm tractors to convert them to use as earth moving bulldozers. The parties are agreed that the conversion of a farm tractor into a light utility bulldozer is not new to the industry. Only Claim 1 of the patent is in issue on this appeal.¹

In order to be patentable a device must be useful, novel, and non-obvious in light of the prior art. 35 U.S. C.A. §§ 101-103; Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545; Zero Manufacturing Company v. Mississippi Milk Producers Association, 5 Cir. 1966, 358 F.2d 853. The question of non-obviousness under 35 U.S.C.A. § 103 involves factual determinations of what the prior art was; what, if any, improvements the patentee has made over the prior art; and the level of ordinary skill in the art. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 1969, 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 December 8, 1969; Graham v. John Deere Co., supra; Swofford v. B & W, Inc., 5 Cir. 1968, 395 F.2d 362; Up-Right, Inc. v. Safway Products, Inc., 5 Cir. 1966, 364 F.2d 580; Monroe Auto Equipment Company v. Heckethorn Manufacturing & Supply Company, 6 Cir. 1964, 332 F.2d 406, cert. denied, 379 U.S. 888, 85 S.Ct. 160, 13 L.Ed.2d 93. From these factual findings the legal determination of whether the improvement would have been obvious to a person with ordinary skill in the art is made. Ibid.

Despite the fact that "strict observance" of these requisite factual findings is necessary, Anderson's-Black Rock, Inc. v. Pavement Salvage Co., supra, 396 U. S. at p. 62, 90 S.Ct. at p. 308; Graham v. John Deere Co., supra at 18, 86 S.Ct. 684, the District Court in this case made no such findings. Instead, the Court stated in broad, conclusory terms that the statutory presumption of the validity of the patent² had not been rebutted. The District Court opinion cites many areas in which Waldon's patent follows closely the teachings of the prior art. In no place does it specify an area or feature where the patent departs from the prior art. Nevertheless, the Court concluded that: "It may not be said on this record under the facts and circumstances before the Court in this case on a proper application of the rule that patents are presumed valid that this patent No. 3,199,236 is void or should not have been granted." In effect, the Court gave conclusive weight to the statutory presumption of validity without really considering and weighing "the facts and circumstances before the Court." This was error.

We note preliminarily that two prior relevant patents cited to the District Court (Parker, No. 2,742,720 and Shadden, No. 2,732,637) were not considered by the Patent Office when it issued Waldon's patent. Therefore, the presumption of validity is materially weakened, if not destroyed. American Seating Co. v. Southeastern Metals Co., 5 Cir., 1969, 412 F.2d 756; Cornell v. Adams Engineering Company, 5 Cir. 1958, 258 F.2d 874. We need not decide that here, however, because even if the prior art considered by the Patent Office is more pertinent than the Parker and Shadden prior art, the presumption of validity is not conclusive. Zero Manufacturing Company v. Mississippi Milk Producers Association, supra, 358 F.2d at 858-859. We conclude that in this case, "Even assuming a presumption, it would not overcome the obviousness of Claim 1 of the patent in issue here which appears from the sum of the record, and the invalidity which follows therefrom." Sisko v. Southern Resin & Fiberglass Corp., 5 Cir. 1967, 373 F.2d 866, 868 n. 4.³

Of course it is the claim of a patent that measures the invention. E. g., Bros Incorporated v. W. E. Grace Manufacturing Company, 5 Cir. 1965, 351 F.2d 208, 213 and cases there cited. Waldon insists in its briefs and through the testimony of its witnesses at trial that the key to patentability of Claim 1 (which is set out fully in the Appendix to this opinion) is the U-shaped design of the blade frame.⁴

When questions arise as to the scope or interpretation of claims, the Patent Office history is relevant, e. g., Graham v. John Deere Co., supra 383 U.S. at 33, 86 S.Ct. 684; Bros Incorporated v. W. E. Grace Manufacturing Company, supra, 351 F.2d at 213; and in this case it is clear from the file history that the U-shaped design of the blade frame does not meet the Section 103 non-obviousness requirement.

Claim 2 of the original application to the Patent Office stated in part:

2. Apparatus for converting a farm tractor chassis into a bulldozer, said apparatus comprising:

* * * * * *

a bulldozer blade frame consisting of a substantially U-shaped member having a bight portion and two leg portions, said bight portion being pivotally connected to the forward end of said pushing frame, said leg portions extending outwardly and forwardly of said pushing frame;

* * * * * *

It will be noted that the language of the fourth paragraph of Claim 1 in issue here, appearing in the appendix, is substantially the same as the pertinent paragraph of Claim 2 in the original application. This fourth paragraph dealing with the U-shaped design of the blade frame is said by Waldon to be the key to patentability. However, Claim 2 was rejected by the Patent Office because:

The blade frame of Crawford Pat. No. 2,725,650 is regarded as the full mechanical equivalent of the claimed U-shaped frame both as regards position and function. It would not be unobvious to provide for the vertical control of the Crawford blade frame in the manner shown by Cook Pat. No. 2,626,470 at 84, 95 etc. but the resultant structure would be the full equivalent of that claimed.

In response to the rejection of Claim 2 Waldon's attorneys wrote to the Patent Office and set forth at length all the reasons why they thought the U-shaped blade frame in Claim 2 was not anticipated by the prior art and was not the equivalent of it. The Patent Office responded to this by saying:

Claim 2 is rejected as being unpatentable over Crawford in view of Cook et al, each of record, when taken with the teaching in either one of the newly cited McNeel Pat. No. 2,584,485 or Gjesdahl Pat. No. 2,667,708 patents under 35 U.S.C. 103. Each of the McNeel and Gjesdahl patents shows a tractor mounted blade assembly in which the blade frame consists of a substantially U-shaped member having a bight portion and two leg portions with the bight portion pivotally connected to the forward end of the tractor

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