Wilden Pump & Engineering Co. v. Pressed & Welded Products Co., 79-4725

CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)
Citation655 F.2d 984,213 USPQ 282
Docket NumberNo. 79-4725,79-4725
PartiesWILDEN PUMP & ENGINEERING CO., a corporation, Plaintiff/Appellee, v. PRESSED & WELDED PRODUCTS CO., a corporation, et al., Defendants/Appellants.
Decision Date08 September 1981

Jerome Falk, Howard, Prim, Rice Nemerovski, Canady & Pollak, A. P. C., San Francisco, Cal., H. Michael Brucker, Oakland, Cal., for defendants/appellants.

James W. Geriak, Lyon & Lyon, Los Angeles, Cal. (argued), for plaintiff-appellee; J. Donald McCarthy, Lyon & Lyon, Los Angeles, Cal., on brief.

Appeal from the United States District Court for the Northern District of California.

Before SKOPIL, SCHROEDER and FARRIS, Circuit Judges.

SCHROEDER, Circuit Judge:

This case involves a device patented by the appellee, Wilden Pump and Engineering Company, and known as the "Wilden Pump." The district court entered judgment against the corporate defendants, Pressed and Welded Products Company and other interrelated corporations, individual officers, and an employee Walcott, finding all liable for increased damages as willful infringers. We affirm the findings of validity and infringement of the patent but reverse the rulings that increased damages should be imposed and that Walcott should be held personally liable for the infringement.

The Wilden pump is an air actuated, diaphragm pump which is manufactured and sold by the appellee. It is typically used in dirty, sticky environments such as mines and oil refineries to pump a wide variety of materials. This litigation centers not upon the entire pump, but upon the pump's actuator valve: a piston device providing the driving force for operation of the pump itself. Because of the adverse conditions under which these types of pumps are employed, stalling of the actuator valve has been a problem. The improvement in question, comprised in claim 13 of the patent, can be simply described as the introduction of an extra burst of pressurized air to either side of the actuator valve piston's shift chambers at a critical point during the piston's back and forth shifting, thus ensuring that the piston will not stall.

Claim 13 describes the path of this pressurized air, from the ports where the air enters to the shift chambers on either side of the piston, as a "passage means sunk in the peripheral face" of the piston. 1 In the specifications and patent drawings, this "passage means" is described and illustrated as a T-slot groove (i. e. a transverse channel with a longitudinal groove) on the outside face of the piston. As actually manufactured by all parties, the "passage means" is achieved by a pinhole opening sunk in the face of the piston itself with an interior longitudinal passageway leading to the shift chamber area.

One of the appellants, Motoramic International, had been a distributor of the pump, but that distributorship agreement was terminated in early 1973. Thereafter, the appellants, by means of reverse engineering, copied the entire pump and began to sell it themselves.

In this litigation claim 13 is the only claim in the patent which the appellee asserts was infringed. The district court determined that claim 13 of the Wilden pump patent had been infringed and also determined that increased damages were in order. This 28 U.S.C. § 1292(a)(4) interlocutory appeal followed.

I. Infringement

Appellants initially assert both that there is no direct infringement of claim 13 and that their pinhole device is not the equivalent of the patented device. The appellants claim that the "passage means" described in claim 13 can only encompass the T-slot configuration illustrated and described by the patent's drawings and specifications. Thus, they claim that the pinhole configuration actually manufactured by the appellee and copied by appellants is neither protected by the patent nor infringed.

Generally, patent claims are construed liberally to uphold a patent's validity in order to secure the inventor's right to protect the substance of his invention. Photo Elecs. Corp. v. England, 581 F.2d 772, 776 (9th Cir. 1978); see also Cool-Fin Elecs. Corp. v. International Elec. Research Corp., 491 F.2d 660, 662 (9th Cir. 1974). To determine whether an accused device infringes a valid patent, the court must look in the first instance to the words of the claim. Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950); Acme Highway Prods. Corp. v. D. S. Brown Co., 473 F.2d 849, 850 (6th Cir.), cert. denied, 414 U.S. 824, 94 S.Ct. 125, 38 L.Ed.2d 57 (1973). The claim, which provides the formal definition of the invention, must point out and particularly claim the subject matter of the invention. See Dvorsky v. United States, 352 F.2d 373, 375 (Ct.Cl.1965), cert. denied, 396 U.S. 970, 90 S.Ct. 456, 24 L.Ed.2d 437 (1969); 35 U.S.C. § 112. After fully reviewing the language of claim 13 and specific attributes of its operation, the district court found that the pinholes sunk in the face of the piston, with their internal passageways, "constitute 'passage means sunk in the peripheral face' of the piston within the meaning of Claim 13." This finding, based on the words of the claim itself, is not clearly erroneous.

The district court further found that the pinhole and internal passageway was the equivalent of the T-slot illustrated and described in the patent's drawings and specifications. Under the doctrine of equivalents, if there is an insubstantial minor variation in a patented item, the patentee is still protected. "(I)f two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape." Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. at 608, 70 S.Ct. at 856. To determine whether the doctrine of equivalents should be applied to protect similar devices, a court must look at the similar device in the context of the patent, the prior art, and the particular circumstances of each case. Additionally, the court must consider whether persons reasonably skilled in the art would have known of the interchangeability of the devices. Id. at 609, 70 S.Ct. at 856-57. See also Bowser, Inc. v. Filters, Inc., 396 F.2d 296 (9th Cir. 1968). The district court fully considered each of these factors in reaching the conclusion that the doctrine of equivalents was applicable. We again discern no error in that conclusion.

II. Validity of the Patent

Aside from the questions of infringement, appellants also challenge claim 13's validity because of obviousness, lack of utility, and failure to disclose the best mode of carrying out the invention.

With respect to obviousness, appellants protest that the device covered by claim 13 of the Wilden patent is very similar to the device in another patent, the 1886 Toole patent, 2 and that claim 13 therefore fails to meet one of the essential conditions of patentability. 35 U.S.C. § 103; 3 Satco, Inc. v. Transequip, Inc., 594 F.2d 1318, 1320 (9th Cir.), cert. denied, 444 U.S. 865, 100 S.Ct. 137, 62 L.Ed.2d 89 (1979). While the issue of obviousness or non-obviousness ultimately involves a legal conclusion, the underlying analysis is essentially one of fact. Stevenson v. Grentec, Inc., 652 F.2d 20, 22 (9th Cir. 1981); Velo-Bind, Inc. v. Minnesota Mining & Mfg. Co., 647 F.2d 965, 971 (9th Cir. 1981); Del Mar Eng'r Laboratories v. Physio-Tronics, Inc., 642 F.2d 1167, 1172-73 (9th Cir. 1981); NDM Corp. v. Hayes Products, Inc., 641 F.2d 1274, 1277-78 (9th Cir. 1981); St. Regis Paper Co. v. Royal Indus., 552 F.2d 309, 311 (9th Cir.), cert. denied, 434 U.S. 996, 98 S.Ct. 633, 54 L.Ed.2d 490 (1977). The obviousness or non-obviousness of the device is to be determined by looking at the scope and content of the prior art, the differences between the prior art and the device claimed, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966). The district court's factual findings regarding the scope and content of the prior art and the differences between the prior art and the claim in this suit indicate that the court considered and answered each of the Graham factual questions. See Velo-Bind, Inc. v. Minnesota Mining & Mfg. Co., 647 F.2d at 971. Those findings of fact are supported by substantial evidence in the record and the district court's conclusion that the device covered by claim 13 was not obvious from the prior art is not erroneous. See id.; see also Saf-Gard Prods., Inc. v. Service Parts, Inc., 532 F.2d 1266, 1272-73 (9th Cir.), cert. denied, 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976).

Appellants also challenge the patent's validity on the ground that the device covered by claim 13 lacks utility. They contend first, that the device doesn't work and, second, that prior art adequately covered this "anti-stall" mechanism and therefore the Wilden patent made no significant contribution to the prior art.

Because the patent laws grant limited monopolies to inventors, a patent may be obtained only for new and useful inventions. 35 U.S.C. § 101. The question of utility is considered a question of fact. Moore v. Shultz, 491 F.2d 294, 300 (10th Cir.), cert. denied, 419 U.S. 930, 95 S.Ct. 203, 42 L.Ed.2d 161 (1974). Generally, "(c)ommercial success is strong evidence of utility and patentability especially in the absence of other competing devices; and where followed by defendants copying the patented device as closely as possible ... is sufficient to establish utility." A. Deller, 1 Deller's Walker on Patents § 87 at 497 (2d ed. 1965). Cf. Saf-Gard Prods., Inc. v. Service Parts, Inc., 532 F.2d 1266, 1272-73 (9th Cir.), cert. denied, 429 U.S. 896, 97 S.Ct. 258, 50 L.Ed.2d 179 (1976). In this case, the district court's examination of the prior art and its recognition of the Wilden pump's great commercial success because...

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