Appeal from the District Court of the United States for the Southern District of Indiana, Indianapolis Division; Robert C. Baltzell, Judge.
Before EVANS and SPARKS, Circuit Judges, and BRIGGLE, District Judge.
Plaintiff charged defendants with infringement of its United States Patent No. 1,408,869 to Eden, issued March 7, 1922, upon an application filed August 13, 1917. It was assigned to plaintiff on April 18, 1934. The invention relates more particularly to an adjustably mounted power driven wringer mechanism for use in combination with a washing machine.
In the same complaint plaintiff charged defendants with infringement of United States Patent, No. 1,325,234, to Couch and Wallace, issued December 16, 1919, on an application filed January 21, 1918.This patent was assigned to plaintiff on February 17, 1934, and likewise relates to an adjustably mounted power driven wringer mechanism for use in combination with a washing machine.
In the same complaint plaintiff charged defendants with infringement of United States Re-issue Patent No. 19,217, to plaintiff as assignee. The original patent No. 1,753,964 was issued to Prachar April 8, 1930, on an application filed January 16, 1926. The patent was re-issued June 19, 1934, on an application filed by plaintiff on January 8, 1934.This patent relates to ironing machines.
The defendants, by a joint and several answer, interposed the defenses of laches, invalidity and non-infringement. The court decreed the asserted claims of the Eden patent valid and infringed, and defendants appeal from this ruling. Also, the court awarded no injunctive relief, because the patent had expired on March 7, 1939. There is no appeal from this part of the decree. In the same decree the court held the asserted claims of the Couch and Wallace, and the Pracher patents invalid. From this part of the decree the plaintiff has cross-appealed, and by agreement one record was filed and the cases were consolidated for hearing.
Claims 3, 5, 8, 9, 10 and 11 of the Eden patent are in issue, and claim 8 is typical.*fn1
The Eden patent was in issue in Apex Electrical Mfg. Co. v. Landers, Frary and Clark, D.C., 21 F.Supp. 241. Claims 8, 9, 10 and 11 were relied upon and held valid and infringed. The court further held that the defense of laches and estoppel must fail. A sufficient description of the patent, and the reasons for the rulings are set forth in that opinion, and it is not necessary to repeat them here.
With respect to validity, defendants here contend that the court in the Landers case was confused in the application of the rules of law pertaining to patentable novelty and invention. In this respect they note that the court in the Landers case relied upon its earlier decision of Kulp v. Bridgeport Corp., D.C., 19 F.2d 659, 662, in support of its holding that it is not permissible to combine prior art patents of a foreign art with the washing machine patents so as to bring about the invention in issue. There the court said: " * * * to negative invention in a novel combination, it is necessary to find in the prior art, not merely a construction which might be modified to make the device at bar, but somewhere a suggestion, not only that the modification should be made, but how to make it." This language was quoted in the Landers case, and the court there said: "Defendant admits that nowhere can a suggestion be found that the modification of the patentee should be made. In other words, no one but this inventor had made this combination and the arrangement of his parts. Therefore, inasmuch as I find the combination useful, I hold it to be patentable over the prior art." [21 F.Supp. 244.]
Defendants' contention is that the language in the Landers case contradicts the well-known principle that the exercise of mere mechanical skill in assembling old elements, which produces no new result, is a mere aggregation and does not amount to invention. It must be noted, however, that the court in the Landers case was applying the law to the facts as it had found them to be. These differed materially from those stated in the principle upon which defendants base this contention. That court not only found that plaintiff's combination was novel, but it found that it produced a new result which was useful, and that more than mere mechanical skill was involved. It is obvious that under these facts the statement of the court did no violence to the principle relied upon by the defendants, and we think this contention is without merit.
It is further contended by defendants that the asserted claims of Eden fail to disclose any invention or patentable novelty over the prior art. The Patent Office found to the contrary, and District Judge Thomas of the Second Circuit held likewise as to all claims here involved, except 3 and 5. The defendants, however, urge that he gave no consideration to the prior art in interpreting the claims. This conclusion does nto seem to be well founded, for he specifically stated that no one but Eden had made his combination and his arrangement of the parts prior to Eden's disclosures.
Defendants further urge that much more prior art was cited to Judge Baltzell in this case than was considered by either the Patent Office or Judge Thomas. This may be conceded, but this record discloses that defendants' expert again admitted that none of the cited art solved the problem which Eden solved, or performed the function which Eden performs. In this case defendants rely to a great extent on Lyche, No. 1,209,981; Wappat, No. 1,217,540; and Mammen, No. 1,384,267. These with all the other cited art and testimony were considered by Judge Baltzell, and his conclusions with respect to this contention coincide with those of the Commissioner and Judge Thomas. Of course, our decision should not be, and it is not based alone on this coincidence of opinion. However, the record in this case and the opinion in the Landers case are quite convincing that both cases were well tried and thoroughly considred, and the conclusions reached certainly add considerable support to the presumption of validity which attaches to the patent. Moreover, we have considered all the art that has been cited, and we are convinced that none of it, nor all of it, solved the problem which Eden solved, or performed the function which his device performed. This was the conclusion reached by defendants' expert, and we think the evidence abundantly supports it. That Eden's disclosure was the result of more than mere mechanical skill, and was a patentable invention, we have no doubt, and further discussion, other than what was said in the Landers case, would seem to be unnecessary.
However, it is stated by defendants that the only feature of any of the asserted claims of the Eden patent which affords any basis of novelty is stated in functional language, hence they contend that each claim is invalid for that reason. The precise question with respect to claims 8, 9, 10 and 11 was passed upon adversely to defendants' contention in the Landers case, and we think that claims 3 and 5 are not materially different from the other asserted claims with respect to the question here raised. Indeed, defendants concede that all the claims are mere permutations and variations of language. The rulings of this court in Gilchrist Co. v. KarLac Co., 7 Cir., 29 F.2d 153; and Research and Development Corporation v. Chase, 7 Cir., 88 F.2d 353, hold otherwise, and they are based on Continental Paper Bag Co. v. Eastern Co., 210 U.S. 405, 28 S. Ct. 748, 52 L. Ed. 1122.
Further contention is made with respect to claims 3 and 5*fn2 that they are fully met by the Wappat and Mammen patents, which were not cited by the Patent Office.
This contention relates to the phrase in claim 3, "locking means for holding the aforesaid shiftable means in a predetermined position." Defendants insist that the words "locking means" refer to the small detent 61 on the bottom of the lever 58, while plaintiff urges that that detent is merely to position the lever so that it can not be accidentally displaced. They argue that the claimed "shiftable means for controlling the operation * * * of (the) wringer" is the clutch and its associate parts; that the lever is a shifting means which is used to shift the shiftable means; that it is the spring detent 49 and its associate parts, and not detent 61, which lock the shiftable means. They further argue that detent 61 does not lock anything and is not described as locking anything. On the other hand, the specification describes the spring detent 49 and its associate parts as operating to hold the shiftable means in position, thus preventing the operation of the wringer. Furthermore, the specification discloses that the clutch is the passivemember ...