Zegers v. Zegers, Inc., 15444.

• Decision Date: 16 August 1966
• Docket Number: No. 15444.,15444.
• Citation: 365 F.2d 156
• Parties: Edward A. ZEGERS, Plaintiff-Appellee, v. ZEGERS, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

365 F.2d 156 (1966)

Edward A. ZEGERS, Plaintiff-Appellee, v. ZEGERS, INC., Defendant-Appellant.

No. 15444.

United States Court of Appeals Seventh Circuit.

July 11, 1966.

Rehearing Denied August 16, 1966.

Thomas F. McWilliams, Chicago, Ill., for defendant-appellant.

Daniel V. O'Keefe, Matthew C. Thompson, Marzall, Johnston, Cook & Root, Chicago, Ill., for plaintiff-appellee.

Before KNOCH, KILEY, and SWYGERT, Circuit Judges.

SWYGERT, Circuit Judge.

Zegers, Inc., an Illinois corporation, appeals from a judgment of the district court in an action for patent infringement brought by Edward A. Zegers as the owner of United States Letters Patent No. 3,058,176, which issued October 16, 1962 on an application filed April 15, 1959. The district court held claims 1, 3, 4, 5, and 6 valid and infringed by Zegers, Inc. and ordered an injunction and an accounting.¹ The principal questions presented relate to the alleged invalidity for obviousness, under 35 U.S.C. § 103, of two distinct and admittedly novel and useful features of the patent.

In order to place the subject matter of the patent in suit in the proper context, the relationship of the parties and prior patent litigation between them will be discussed briefly. The plaintiff and the defendant are competitors in the sale of combination sash balance and weatherstrip units and clips for mounting such units in window frames. Edward A. Zegers was formerly employed by the defendant, Zegers, Inc., in which his brother Henry was the principal shareholder, but left that employment in 1955 and organized a competing operation.

In 1959 Zegers, Inc. brought suit against Edward A. Zegers, doing busias Precision Weatherstrip Company, for infringement of United States Letters Patent No. 2,869,184 owned by Zegers, Inc. The district court held the patent valid and infringed, and its decision was affirmed on appeal.² Zegers, Inc. v. Zegers, 299 F.2d 769 (7th Cir.), cert. denied, 369 U.S. 889, 82 S.Ct. 1163, 8 L. Ed.2d 289 (1962). In that suit the inventive disclosure of the Zegers, Inc. patent was the concept of releasably or demountably securing combination sash balance and weatherstrip units to a window frame or jamb through the use of flat metal clips with hooked ends, nailed or stapled in place in the jamb, whereby metal weatherstrip could be readily attached to or removed from the window frame by flexing the weatherstrip to engage or disengage the hooked ends of the clip.³ In the window structure claimed, four of these flat, hooked clips were secured to the jamb to receive a pair of the combination sash balance and weatherstrip units. The weatherstrip units themselves were elongated strips of resilient material with track means to guide the sash and with flat, laterally-extending or projecting side edges. The laterally-extending side edges were inserted into or removed from the hooked ends of the clips by the simple expedient of flexing the units on their longitudinal axes to reduce their relative overall width. The clip device of the Zegers, Inc. patent effected great savings to millwork companies in the installation and maintenance of window units.⁴

The patent in suit relates to the same general subject matter as the earlier-litigated Zegers, Inc. patent. Patent No. 3,058,176, however, discloses two features not present in the Zegers, Inc. window structure.⁵ The first feature, disclosed in claims 1, 3, and 4 of the patent, is the concept of using "flanged" weatherstrip units with clips and providing slots in the flanged units to receive the hooked ends of the clips.⁶ Flanged weatherstrip is a commonly used weatherstrip which differs from the weatherstrip used in connection with the clip of the earlier Zegers, Inc. patent only in that it has thin metal extensions (flanges) perpendicular to the jamb-overlying portion which serve as the outer guides in a channel to guide the sash. Ordinarily this type of weatherstrip could not be used with hooked-end clips. As stated by the district court, "The plaintiff's invention consists of slotting the junction of the flange and the jamb-overlying portion so that the hooks of the clip can fit over the metal lying on the jamb, in the same way that they fit over the thin metal edge of the other type of weather-strip."

The second novel feature of the patent in suit, disclosed in claims 5 and 6, is the concept of bending the center portion of the clip to form a channel and adding metal barbs or outwardly-pressed teeth so that the clip may be manually pressed into a slot in the window jamb called a "dado" groove, the teeth engaging the sides of the groove, thereby eliminating the necessity of nailing the clips in place.⁷ A dado groove is a small cut or slot in the center of the jamb running its entire length. Dado grooves have long been provided in window jambs to receive pieces of wood called "parting stops" which, among other things, serve to separate the sashes from each other. While dado grooves are unnecessary with metal weatherstrip, jambs are still generally provided with such grooves and the pressing feature of claims 5 and 6 takes advantage of them.

I. The slotted-flange feature

The novelty and utility of slotted flanged weatherstrip and the infringement of claims 1, 3, and 4, if valid, were conceded by Zegers, Inc. in the district court. The only issue presented was whether providing slots in flanged weatherstrip to receive the hooks of clips secured to window frames would have been obvious to a person having ordinary skill in the art.

Both the hooked-end clips and flanged weatherstrip were old in the art. Flanged weatherstrip had been in use for many years; clips had been in use during the period between their conception and reduction to practice by Zegers, Inc. in early 1957 and Edward A. Zegers' idea of slotting the weatherstrip in January 1959. The evidence showed that Zegers, Inc. sold its flat nail-on clips for use with flangeless weatherstrip simultaneously with various lines of flanged weatherstrip (having the same general uses as flangeless weatherstrip) for approximately two years without discovering a method of using them together. The evidence further showed that on one occasion Zegers, Inc. had unsuccessfully attempted to mount flanged weatherstrip to a clip by using a type of clip which engaged the back of the weatherstrip unit.

On the other hand, testimony was introduced indicating that little or no interest in using flanged weatherstrip with the clip of the Zegers, Inc. patent had ever been expressed. In this connection, the actual conception of the idea of slotting flanged weatherstrip by Edward A. Zegers is illuminating. In January 1959 the plaintiff met at his plant with two customers of considerable experience in the millwork business and showed them a sample of his new press-in clip. The customers at that time were using flanged weatherstrip and had never seen clips for use with any kind of weatherstrip. When the plaintiff finished explaining his new clip to them, the customers remarked that it was a good idea, but that they could not use it because they were using, and preferred, flanged weatherstrip. The plaintiff's almost immediate rejoinder was that flanged weatherstrip could be adapted for use with his clip. He proceeded to prove his point by punching slots in a sample piece of flanged weatherstrip found in the shop and inserting the hooked ends of the clip into the slots

The district court found that the defendant failed to satisfy its burden of presenting "clear and cogent" evidence of obviousness to rebut the presumption of validity of the patent. In addition, the district judge relied upon the fact that "no one had thought to use the clip with flanged weatherstrip until the plaintiff did so." We are of the view that slotting the flanged weatherstrip would have been obvious to anyone with ordinary skill in the art who had occasion to consider the possibility of using flanged weatherstrip with hooked-end clips and that therefore claims 1, 3, and 4 of the patent are invalid.

There is no doubt, as the plaintiff has reminded us, that the fact that the solution to a problem is simple, or appears so, when viewed in retrospect, does not mean the solution was obvious when it was made, and that courts must guard against the exercise of hindsight in assessing the obviousness of a given improvement in the art. AMP Inc. v. Vaco Products Co., 280 F.2d 518 (7th Cir.), cert. denied, 364 U.S. 921, 81 S.Ct. 286, 5 L.Ed.2d 260 (1960); Charles Peckat Mfg. Co. v. Jacobs, 178 F.2d 794 (7th Cir. 1949), cert. denied, 339 U.S. 915, 70 S.Ct. 575, 94 L.Ed. 1340 (1950). But at the same time, the application of section 103 in a manner consistent with rewarding only genuine contributions to the useful knowledge of an art requires that mere adaptions, arrangements, or manipulations be denied the grant of legal monopoly. If what has been created demonstrates no more ingenuity than the work of a mechanic skilled in the art, if the display of inventive capacity "involves only the exercise of the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice," Hollister v. Benedict & Burnham Mfg. Co., 113 U.S. 59, 73, 5 S.Ct. 717, 724, 28 L.Ed. 901 (1885), then the product does not possess that "impalpable something" characterized as invention. Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 151, 71 S.Ct. 127, 95 L.Ed. 162 (1950).

The plaintiff contends that the decision of the district court should be affirmed because the defendant introduced no proof that slotting the flanged weatherstrip was obvious. We think the simple juxtaposition of the prior art clip and flanged weatherstrip which were introduced into evidence disposes of this contention. It was not necessary to introduce evidence from the millwork art or any other art that slotting is a common mechanical means. It is true that the...