The opinion of the court was delivered by: Platt, District Judge.
Plaintiff Albert Wittlin seeks to recover damages from the
defendants, Remco, Inc., a corporation, and Illinois Electric
Company, a sales agency of Remco, Inc. for patent infringement.
Wittlin filed an application for patent of a "liquid flow
indicator" on August 21, 1948. Kenneth R. Newcum, the president
of Remco, Inc., filed a similar application ten days later and
assigned his interest in the patent to the defendant, Remco, Inc.
An interference hearing resulted, and on January 6, 1953 Wittlin
was issued the patent here involved. No. 2,624,308.
The defendant interposed by answer the following defenses: (1)
The invalidity of the Wittlin patent by reason of (a) lack of
invention and (b) fraud in obtaining the patent; (2) the
defendants did not infringe the Wittlin patent.
The defendants also presented a counterclaim alleging in
substance that Wittlin obtained his patent in the interference
hearing in place of the defendant Remco, Inc., as assignee of
Newcum, by the use of false documents and testimony; that as a
result thereof Wittlin should account for damages to the
defendants for the profits obtained from his patent. Wittlin
answered the counterclaim denying the allegations of fraud.
The Wittlin patent is a straight through or free flowing
indicator to be used in a closed fluid system to reveal the fluid
and the condition of the fluid. One example is cited in the
patent using the indicator in a closed or circulating system
carrying a liquid refrigerant. The rapidity of the flow, the
presence of air or solids, and so forth is observed through a
window in the brass cylinder housing a glass tube through which
the fluid flows.
The first proposition presented to this court for determination
is whether the plaintiff has a valid patent. A patent is presumed
to be valid in a proceeding of this kind. Charles Packat Mfg. Co.
v. Jacobs, 7 Cir., 178 F.2d 794; Cover v. Chicago Eye Shield Co.,
7 Cir., 111 F.2d 854; Title 35 U.S.C.A. § 282. The burden of
establishing invalidity is upon the defendants. Harman v. Scott,
D.C., 90 F. Supp. 486, affirmed 6 Cir., 195 F.2d 916; J.D. Wallace
& Co. v. Portable Power Tool Corporation, 7 Cir., 51 F.2d 488;
Title 35 U.S.C.A. § 282. This presumption of validity may be
rebutted by clear proof to the contrary. Nordberg Mfg. Co. v.
Woolery Machine Co., 7 Cir., 79 F.2d 685; Ingersoll Steel & Disc.
Co. v. Budd Wheel Co., 7 Cir., 67 F.2d 753. The presence or
absence of invention necessary to sustain the validity of the
Wittlin patent is a question of fact for this court to determine
in view of these principles. Faulkner v. Gibbs, 9 Cir.,
170 F.2d 34, affirmed 338 U.S. 267, 70 S.Ct. 25, 94 L.Ed. 62; Hall
Laboratories v. Economics Laboratory, 8 Cir., 169 F.2d 65;
Refrigeration Engineering, Inc., v. York Corporation, Inc., 9
Cir., 168 F.2d 896.
Plaintiff at the trial, in his brief and argument, has limited
his claims to numbers 3 and 6 of his patent. Claim 3 is as
"For use in the pipeline of a closed circulatory fluid system
to show the rate of flow and the condition of the fluid, a liquid
indicator designed to be located in said pipeline and having a
straight liquid passage through which all the liquid of the
system passes and which is devoid of turns, constructions and
obstructions offering resistance to the free flow of liquid
through the indicator, said liquid indicator comprising a
windowed tubular housing having a pair of outwardly extended
shoulders each in connection with an outset end portion defining
an enlarged chamber interiorly thereof, a transparent cylinder
coaxially positioned within the tubular housing in spaced
relation thereto and extending at opposite ends into the enlarged
chambers but short of the outer ends thereof forming passages
around the ends of the transparent cylinder in said enlarged
chambers for the passage of fluid under pressure, a pair of heads
interposed in the fluid system in screw threaded connection with
an exterior face of the housing, one at each end thereof, a
sealing gasket interposed between each end face of the housing
and the head proximate thereto adapted, when compressed, to
provide a liquid-tight seal between the housing and each head, a
pair of resilient gaskets surrounding the cylinder, one adjacent
each shoulder of the housing, and a pair of coiled springs one
within each of the two housing chambers surrounding the cylinder
and each spring in engagement at its inner end with one of the
resilient gaskets and at its outer end in engagement with the
proximate head to be thereby maintained under compression
for exerting an axial pressure against the resilient gasket to
displace the same laterally against the cylinder and partially
into the space between the cylinder and the housing to provide a
floating mounting for the cylinder, the liquid passing through
the indicator being free to pass around the cylinder ends to
enter both chambers to exert pressure on the two gaskets to
augment the pressure of the springs thereon." Claim 6 differs in
that it substitutes "a pair of compression members" for the "pair
of coiled springs" mentioned in Claim 3. Plaintiff appears to
stand on the spring type indicator.
The defendants cite as prior art the patents of Robinson
(British 1896),*fn1 and Patterson (United States 1913).*fn2 The
Robinson patent relates to a transparent glass tube in water
gauges for use in steam boilers and other similar vessels where
liquid is contained under pressure. Although Robinson's glass
cylinder is not encased in a tubular housing, there are "caps" at
both ends of the glass gauge. The glass is prevented from
touching the "caps", and tight joints are obtained, by the
following method: a coil spring inside each cap presses upon a
washer which in turn presses on an elastic packing ring made of
indiarubber or its equivalent. This pressure, and the pressure of
the steam and liquid of the system, thus forces each packing
ring, making a tight joint between the caps and the gauge glass,
and elastically holding the gauge glass thereby preventing it
from receiving any shocks or vibrations from the boiler to which
it is attached.
Patterson relates to a vacuum and water connection, providing
for a transparent or glass section, covered by means of tubular
casting open at its sides, called the "protecting glass holder."
Patterson does not use springs, but has compressed washers to
tighten the joint between the glass and its holder. Its outward
appearance is similar to the Wittlin patent.
Plaintiff's claimed invention, in substance, consists of a
floating mounting within a tubular housing for the transparent
cylinder, and a liquid tight seal. Both the seal and the floating
mounting are obtained by a sealing gasket which is forced into
and retained in the narrow space between the cylinder and the
housing by a spring and by the liquid pressure of the system.
It is manifest that when the sealing arrangement of Robinson is
combined with the tubular housing of Patterson every element of
the plaintiff's patent is disclosed.*fn3 The Wittlin patent is
not limited to a closed system using only refrigerant. Robinson
is "* * * for use on steam boilers and other vessels of like
nature wherein liquid is contained under pressure * * *"
Patterson "* * * relates to improved vacuum and water connections
* * *" All three are straight through fluid indicators to be used
for a fluid system under pressure or vacuum. Certainly Robinson
and Patterson are more than analogous in the art to Wittlin.*fn4
However, Wittlin maintains that his indicator is different from
the teachings of Patterson-Robinson in that the spring maintains
pressure on the compressing member or washer, thereby holding the
resilient gasket in place against the cylinder walls and the
glass tube when the system is drained and the pressure is off.
Further, that Robinson, does not do this for the reason that the
washer which is in front of the spring is limited in its movement
forward due to the conical shape of the cylinder wall. An
examination of the Robinson patent does not necessarily indicate
a disadvantage or difference such as Wittlin claims. The
resilient gasket in Robinson, so long as it maintained its
resiliency, would be held in place by the spring when the
pressure was off if the washer in front of the spring was
proportioned so that it would not reach the limit of its forward
movement in the brass housing before it compressed the resilient
gasket. Granting that there is this small change in the walls of
the brass housing of the Wittlin patent so the washer might move
forward, I do not consider it such a difference in the "subject
matter sought to be patented and the prior art * * * that the
subject matter as a whole would [not] have been obvious at the
time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains."*fn5 It is clear
that Wittlin utilizes all the parts, functioning in the same
manner, as taught by Robinson and Patterson. Such a device does
not merit invention. Benjamin Electric Mfg. Co. v. Bright Light
Reflector Co., 7 Cir., 111 F.2d 880, 882; Great Atlantic &
Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71
S.Ct. 127, 95 L.Ed. 162.
It being clear that the Wittlin device is not patentable, its
commercial success is of no weight. Marconi Wireless Telegraph
Co. of America v. United States, 320 U.S. 1, 35, 63 S.Ct. 1393,
87 L.Ed. 1731. It is only in cases of doubtful invention that
commercial success is evidence of patentability. Jungersen v.
Ostby & Barton Co., 335 U.S. 560, 567, 69 S.Ct. 269, 93 L.Ed.
235; Dow Chemical Co. v. Halliburton Oil Well Cementing Co.,
324 U.S. 320, 330, 65 S.Ct. 647, 89 L. Ed. 973.
Since this court has held that the patent is invalid, there is
no need to discuss the fraud issue or infringement. The
counterclaim is also based upon fraud in defeating the defendant,
Remco, Inc., patent at the interference hearing. The Remco patent
is a replica of the Wittlin patent and would be invalid, and
therefore the defendant was not ...