Westwood Chemical, Inc. v. Owens-Corning Fiberglas Corp.

• Decision Date: 24 August 1971
• Docket Number: No. 20845.,20845.
• Citation: 445 F.2d 911
• Parties: WESTWOOD CHEMICAL, INC., Plaintiff-Appellant, v. OWENS-CORNING FIBERGLAS CORPORATION, Defendant-Appellee.
• Court: U.S. Court of Appeals — Sixth Circuit

445 F.2d 911 (1971)

WESTWOOD CHEMICAL, INC., Plaintiff-Appellant, v. OWENS-CORNING FIBERGLAS CORPORATION, Defendant-Appellee.

No. 20845.

United States Court of Appeals, Sixth Circuit.

August 24, 1971.

Paul A. Weick, Akron, Ohio, for plaintiff-appellant; Weick & Genovese, Akron, Ohio, Arland T. Stein, Blenko, Leonard & Buell, Pittsburgh, Pa., C. D. Lambros, Cleveland, Ohio, on brief; T. A. TeGrotenhuis, Cleveland, Ohio, of counsel.

William H. Webb, Pittsburgh, Pa., for defendant-appellee; John M. Webb, Russell, D. Orkin, Pittsburgh, Pa., Warren Daane, Cleveland, Ohio, on brief; Webb, Burden, Robinson & Webb, Pittsburgh, Pa., Baker, Hostetler & Patterson, Cleveland, Ohio, of counsel.

Before EDWARDS, CELEBREZZE and BROOKS, Circuit Judges.

BROOKS, Circuit Judge.

This is an appeal by plaintiff-appellant, Westwood Chemical, Inc., owners of patents Nos. 2,742,378 and 2,481,566 (hereinafter '378 and '566) from a judgment of the District Court holding the patents invalid and finding that defendant-appellee, Owens-Corning Fiberglas Corporation, did not infringe the patents. Westwood Chemical, Inc. v. Owens-Corning Fiberglas Corporation, 317 F.Supp. 201 (N.D.Ohio, 1970). Patent '378 was granted on April 17, 1968, on application No. 302,415 filed August 2, 1952, and was a continuation-in-part of application No. 251,152 filed October 12, 1951, and of application No. 243,737 filed August 25, 1951, and of application No. 585,824 filed March 30, 1945. Patent '566 was granted on July 1, 1958, on application No. 302,415 filed August 2, 1952, and was a continuation-in-part of the same parent applications from which patent '378 originated. It was stipulated that in order for both patents to be valid it was necessary to receive the benefit of the earlier filing date of the parent application No. 585,824 filed March 30, 1945, on a continuation-in-part basis (35 U.S.C. § 120).

The substance of the invention claimed by its inventor, T. A. TeGrotenhuis, relates to treating fillers, pigments and fibers with unsaturated organo-silanes for use in reinforcing polyester resins and the resulting polyester resin bodies.¹ The invention claimed by patent '378 is the use of certain hydrolyzable silane chemicals having vinyl groups as coupling agents to reinforce the polyester resins. Patent '566 makes the claim of using hydrolyzable silane chemicals having alkenyl groups other than vinyl, specifically allyl silanes, as the coupling agent. Generally, the claimed objective of both inventions was to provide a resin, such as plastic or glass fibers, with greater strength and water resistance by treatment with the hydrolyzable silane chemicals.

As a preliminary matter, it is noted that the District Court in its conclusions of law numbered 6, 11, and 18-21, for various reasons, held both patents invalid. When this lawsuit was initiated plaintiff generally alleged infringement of the two patents. In response to a demand by defendant to specify which claims of the patents were allegedly infringed, plaintiff itemized claims 1, 3, 4, 6, 7, 8, 11, 14, 15-19, 21, 23-26 and 28 of patent '378 and claim 8 of patent '566. It was in this posture that the case went to trial. After trial plaintiff, in a post trial brief, attempted to remove from the Court's consideration all the allegedly infringed claims of patent '378 except claims 11, 16 and 25, and the entire patent '566. Plaintiff now contends the District Court overstepped its authority in declaring both patents entirely void without defendant having sought declaratory relief. See Sterling Aluminum Products, Inc. v. Bohn Aluminum & Brass Corporation, 187 F.Supp. 879 (E. D.Mich.1960), aff'd. 298 F.2d 538 (6th Cir. 1962). We agree. The District Court's holding of invalidity should only apply to the patents' claims directly in issue. Bain v. M. A. Hanna Company, 331 F.2d 974 (6th Cir. 1964), cf. Goodwin v. Carloss Company, 116 F.2d 644 (6th Cir. 1941). However, plaintiff further argues that the only claims in issue were those it itemized in its post trial brief. To this we cannot agree. Once the case went to trial and completion on certain specified claims, it was proper for the court to render a judgment as to those claims. Following a trial during which defendant has presented its case as to all claims in issue, plaintiff cannot without court permission, and in an ex parte fashion, be allowed to withdraw certain claims from the court's consideration. Allegheny Steel & Brass Corporation v. Elting, 141 F.2d 148, 149 (7th Cir. 1944); Young v. John McShain, Inc., 130 F.2d 31, 34 (4th Cir. 1942). Accordingly, while plaintiff could not withdraw from consideration by the court the claims in issue at trial, the court's holding must be limited to those specific claims and in so far as the judgment in this case may be construed to apply to those claims not placed in issue, it must be modified.

Because an affirmance of the District Court's holding of invalidity obviates the necessity to review the question of whether or not defendant infringed the patents,² we turn directly to the issue of invalidity. Felburn v. New York Central Railroad Company, 350 F.2d 416, 420 (6th Cir. 1965), National Transformer Corporation v. France Manufacturing Company, 215 F.2d 343 (6th Cir. 1954).

On the issue of the holding of the invalidity of the patents, the District Court made numerous findings of fact and conclusions of law which cumulatively negated practically every statutory requirement for validity of the patents in suit. Thus, the District Court found that the Court of Custom and Patent Appeals' decision in TeGrotenhuis v. Yaeger, 290 F.2d 951, 48 C.C.P.A. 1058 (1961) only resolved an interference issue as to whether TeGrotenhuis' 1945 application made sufficient disclosure of vinyl silanes and it did not, as plaintiff contends, reach or decide the question of whether or not the patent involved in the interference could validly receive the benefit of the earlier filing date of the 1945 application on a continuation-in-part basis. On this point, the District Court concluded that the patents could not receive the benefit of the earlier filing date because they were not properly based on valid continuation-in-part applications. Specifically, the Court held: 1. The 1945 application made no disclosure, implicitly or explicitly, as to glass fiber reinforced polyester resins and, therefore, the subsequent applications (upon which the two patents were based) covering glass fiber polyester resins could not receive the benefit of the 1945 filing date; 2. The 1945 application failed to teach a method for making hydrolyzable vinyl silanes and, therefore, the 1945 application cannot be used as a basis for these claims in the later applications; 3. The 1945 application did not disclose that vinyl silanes are superior coupling agents as compared with other known silanes and that this alleged superiority was the principal claim of patent '378; and 4. Allyl and vinyl silanes are equivalents (both are included in the alkenyl silanes group) and the use of allyl silanes as coupling agents with polyester resins (the claim of patent '566) was disclosed in the pre-1945 art.

The District Court also concluded that TeGrotenhuis had all essential features of his invention taught him through a lecture on the subject by a Dr. Rochow and, thus, there was a lack of required "invention". 35 U.S.C. § 102(f). Furthermore, the District Court found that the subject matter claimed by the TeGrotenhuis invention was known and used by others in this country before TeGrotenhuis invented it, 35 U.S.C. § 102(a), and the invention was made prior to TeGrotenhuis' effective date of conception, 35 U.S.C. § 102(g).³ Lastly, the District Court concluded that the subject matter of TeGrotenhuis' invention was obvious at the time of invention to a person having ordinary skill in the art. 35 U.S.C. § 103.

The law is clear that a patent once issued is presumed valid, 35 U.S.C. § 282, and that a heavy burden of proof rests on the party attempting to prove invalidity. See Ever-Wear, Inc. v. Wieboldt Stores, Inc., 427 F.2d 373 (7th Cir. 1970). However, a patent to be valid must meet all the requisite statutory requirements. See 35 U.S.C. § 101. And an invention which does not combine the three essential elements of novelty, utility and nonobviousness should not be given the privileged monopolistic status of a patent. Monroe Auto Equipment Company v. Heckethorn Manufacturing & Supply Company, 332 F.2d 406, 409-410 (6th Cir. 1964); Zero Manufacturing Company v. Mississippi Milk Producers Association, 358 F.2d 853, 855 (5th Cir. 1966). For the reasons hereafter stated, we affirm the judgment of the District Court as modified on the basis of its holding that the inventions claimed by the patents in issue were obvious to one having ordinary skill in the art. Thus, it is not necessary that we reach or decide the correctness of the District Court's alternative grounds for having held the patents in issue invalid.

This Circuit has approached the question of what constitutes "obviousness" through a three-step test prescribing what portions of the question turn on factual determinations and which are purely legal. The first step is "a determination of what the prior art was; this involves factual questions. Secondly, there is a determination of what, if any, improvement the patentee has made over the prior art; this will usually turn on expert testimony and therefore is a question of fact. The final step is to determine whether the improvement would have been obvious to one skilled in the art. This requires application of a legal criteria and therefore is a question of law, fully reviewable by the appellate court." Monroe Auto Equipment Company v. Heckethorn Manufacturing & Supply Company, supra, 332 F.2d at 411. The Supreme Court has also recognized the factual and legal composition of the question of obviousness. They have stated in Graham v. John Deere Company, 383 U.S. 1,...