Before Major, Chief Judge, Sparks, Circuit Judge, and Lindley, district judge.
This appeal is by the defendants from an adverse judgment, entered April 21, 1948, upon Count I of a complaint which charged infringement of certain letters patent owned by the plaintiff. An appeal from a judgment on Count II of the same complaint is disposed of in appeal No. 9642, in an opinion filed simultaneously with that of the instant case. Richmond Screw Anchor Co. v. Umbach, 7 Cir., 173 F.2d 532. As will be noted from that opinion, defendants were authorized by a license to use the patents now found to be infringed, until January 20, 1945, the date of the termination of the license agreement. Therefore, the infringement found covers only the time subsequent to that date.
The patents in suit all relate to tie rods and parts thereon for supporting forms used in constructing concrete walls. They were all issued to Tamis C. Schenk, and on the date of issuance each patent was assigned to plaintiff. The patent number, the date of issuance and the subject matter of each, as alleged in the complaint, are:
1,857,610 5-10-32 "For an invention in a Form Tie"
1,919,751 7-25-33 "For an invention in a Wedge for
2,020,912 11-12-35 "For an invention in a Form Tie"
2,107,130 2-1-38 "For an invention in a Means for
Preventing the Formation of
Continuous Voids in Concrete
2,162,592 6-13-39 "For an invention in a Form Tie"
2,222,339 11-19-40 "For an invention in a Form Tie"
The court below adopted findings of fact verbatim as proposed by the plaintiff and upon such premise concluded that all the six patents in suit were valid and that all were infringed by the defendants except the first and last (as above designated) and that there was no infringement as to them. The issue here arises as the result of the defendant's contention that all the patents in suit are lacking in invention and, therefore, invalid, and that in any event there has been no infringement by the defendants.
Tie rods for supporting forms used in the construction of concrete walls were extremely old in the art. This is shown by scores of prior art patents introduced by the defendants and relied upon as anticipating or showing a lack of invention in the patents in suit. There are many prior art patents which disclose, as do the patents in suit, ties extending through the form walls and the concrete, spacers for holding apart the sides of the form for the concrete, devices for holding the walls on the ties during the pouring of the concrete and means to break off the projecting ends of the ties after the concrete has set. The devices of all the patents in suit relate to ties, spacers and tie-holders, and it is contended by defendants that they utilize these old combinations of elements so as to perform the same old functions and to obtain the same or similar results.
The patents in suit include the following elements: (1) a tie rod or bar adapted to extend through the form for the concrete; (2) spacers on the tie for holding apart the sides of the form; (3) holding devices for securing the sides of the form on the rod, and (4) break-off points on the rod which permit the ends of the rods, projecting from the set concrete, to be broken, cut or twisted off.
Ties of different shapes- round wire and flat bars- were old. Spacers on the tie rod for the concrete form, in a wide diversity of detail, were old. Holders on the ties for the sides of the form in the form of wedges, screws, welded and integral members were old, as well as means for twisting or breaking off the rod in the concrete after the latter had hardened.
As we understand, the patentable status claimed for each of these inventions resides in an improvement represented by a single element claimed in combination with old elements. And by the addition of such element an improvement of patentable status is asserted over anything theretofore disclosed. The defendants contend that the improvement in all the patents is to be found in the prior art and therefore anticipated, and that in any event the disclosures do not represent invention over such art.
As we understand, plaintiff does not dispute but that the elements relied upon as patentable invention are found in the prior art, but its main contention is that the patents in suit are not anticipated because the improvements disclosed in connection with other elements claimed are not all shown in a single prior art patent. It accuses defendants of 'piecemeal anticipation,' that is, by adding separate elements found in various prior art patents so as to produce the combinations claimed.
The court below apparently was impressed by this argument which it incorporated in its findings of fact in substantially the same language as to each of the patents in suit. Typical thereof, the court found as to patent No. 1,857,610:
'Defendants could not name any patent that shows all the structures or operations of the plaintiff patented Form Tie or Snap-Ty- an argumentative acknowledgment that they could not name an anticipation. The Court finds that no patent which defendants name anticipate the disclosures of the patent in the suit and it discloses invention over each and all of the patents cited by the defendants.'
This finding specifically incorporating plaintiff's argument results in an argumentative finding which relegates it to the position where it has little, if any, value in support of the court's conclusion of validity.
Plaintiff cites a number of cases in support of its urgent contention that all the elements of a combination claim or their mechanical equivalents must be found in a single prior art patent before there can be anticipation. Bates v. Coe, 98 U.S. 31, 48, 25 L. Ed. 68; Chicago Lock Co. v. Tratsch, 7 Cir., 72 F.2d 482, 487; Williams Iron Works Co. v. Hughes Tool Co., 10 Cir., 109 F.2d 500, 506. No good purpose could be served in discussing such cases. Certainly it cannot be doubted that the entire prior art may be looked to, and the mere fact that some of the elements of a combination claim are found in one prior art patent and other elements in another does not render such art impotent as a guide for ascertaining novelty. There still remains the all-important question as to whether the combination of such elements amounts to a patentable invention or whether it might reasonably be expected of a mechanic or a ...