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March 26, 1973


The opinion of the court was delivered by: McMILLEN, District Judge.


The issues in the case have been reduced to Count I for infringement of certain claims of Frenzel Reissue Patent 26,781 and Count II for a declaration of invalidity of Matthews patent 3,389,365. The plaintiff Skil Corporation as owner of the Frenzel reissue patent contends that the defendant Lucerne Products, Inc. infringes Frenzel by manufacturing and selling a switch control device under Sahrbacker patent # 3,603,757 which defendant owns. 35 U.S.C. § 271(a). The defendant contends its devices do not infringe Frenzel and also that Frenzel is invalid because of non-obviousness and anticipation. For reasons to be discussed, we find that the presumption of validity of the Frenzel reissue patent remains intact on its claim 5 only.

Count II is a declaratory judgment action to declare invalid defendant's Matthews et al patent 3,389,365 on the grounds, inter alia, of a commercial sale and a publication more than one year before the filing date of August 23, 1965. A case or controversy exists because plaintiff is manufacturing devices which defendant contends infringe the Matthews patent. We find and conclude that the Matthews patent is invalid because it was dedicated to the public under 35 U.S.C. § 102(b).

Plaintiff alleges that the defendant is infringing the original claims 2, 3 & 5 contained in the Frenzel reissue patent. This invention consists of three primary elements which in combination distinguish it from the prior art. The first element is an adjustable assembly connected to the trigger which allows the range of the trigger's movement to be controlled. This correspondingly controls the speed of the motor. The second element consists of a locking device whereby the trigger can be detained in any adjusted position. The third element is referred to in the claims as "catch means" carried by a lug, enabling the operator to finely adjust the motor's speed after the trigger is locked in an operating position. The patentee refers to this aspect of his invention as the "vernier" effect (see Frenzel patent, col. 4, lines 60-73).

The defendant attacks the Frenzel patent as merely a combination of old elements and therefore not entitled to patentability, citing A & P Tea Co. v. Supermarket Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162 (1950) and Toro Mfg. Corp. v. Jacobsen Mfg. Co., 357 F.2d 901 (7th Cir. 1966). These cases do not hold, however, that a combination of old elements cannot result in an invention, but merely that a combination of old elements must be carefully scrutinized to determine their novelty. The issued patent retains its presumption of validity during this scrutiny.

The old elements in the case at bar are illustrated by Sparklin patent No. 2,525,839 and an Ingersoll-Rand pneumatic impact tool. The Sparklin patent, considered by the Patent Office in its original examination of the Frenzel invention, is similar in two significant ways to Frenzel: the trigger is used to control the speed of the mechanism and can be locked in position. This is what Claims 1 and 2 of Frenzel's patent consist of. Sparklin fails, however, to teach two of the three primary elements of Frenzel: the adjustable assembly and vernier "catch means". Sparklin's invention is incapable of achieving this result, but it does preclude Claims 1 and 2 of Frenzel's patent on the ground of obviousness, if not complete anticipation.

The Ingersoll-Rand pneumatic, variable speed tool is significant in that it teaches a screw adjusting means as part of the trigger control, precluding Claim 3 of Frenzel as obvious. However, Frenzel's adjustable assembly is comprised of more than a simple screw to control the trigger's stroke. In order to carry out his vernier feature, it is essential that the catch means move relative to the trigger. This is accomplished by element 24 of the Frenzel device which carries the catch means and allows it to move relative to the trigger. The Ingersoll-Rand tool does not embody this feature, or the capability for finely adjusting the motor's speed once an operating position has been achieved.

Thus the prior art taught a locking means for a trigger and a means for varying the range of the trigger's stroke. It fails to suggest Frenzel's vernier adjustment and fails to teach the means necessary to implement such an idea. In particular, it is the unique combination of elements 24, 27 and 42 in connection with the trigger which results in the fine adjustment or vernier capability that we find totally lacking in Sparklin and the Ingersoll-Rand tool or any other prior art brought to our attention.

From the Sparklin invention of 1950 to Frenzel, the defendant has failed to show a single piece of prior art that has remotely suggested the vernier feature. We are satisfied, in light of this record, that Claim 5 of the Frenzel device, when taken as a whole, would not have been obvious to a person having ordinary skill in the related art at the time the invention was made. 35 U.S.C. § 103.

The plaintiff has also satisfied this court that the Frenzel patent has met with considerable commercial success. Although commercial success is not in itself a basis for establishing a patent's validity, it is a further indication of the patented feature's nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17, 18, 86 S.Ct. 684, 15 L.Ed. 2d 545 (1950).

Defendant's manufacturing under Sahrbacker patent No. 3,603,757, issued September 7, 1971, constitutes infringement of Frenzel's Claim 5. Frenzel and Sahrbacker use almost identical elements in every material respect. The only significant difference between them is in the type of electrical switches used by each, and concededly they are not part of either invention. Based on the evidence produced at trial and an examination of the two patents, which the parties agree illustrate and describe the devices, this court finds that the Sahrbacker device performs substantially the same function in substantially the same way to obtain the same result as Frenzel's Claim 5 and therefore infringes it. Standard Industries v. Tigrett Industries, 397 U.S. 586, 90 S.Ct. 1310, 25 L.Ed.2d 590 (1970); Graver Tank v. Linde Air Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); King-Seeley Thermos Co. v. Tastee Freez Industries, Inc., 357 F.2d 875 (7th Cir. 1966), cert. den., 385 U.S. 817, 87 S.Ct. 38, 17 L.Ed. 2d 56 (1966).

The second portion of this case, concerning the alleged invalidity of the Matthews patent, is considerably simpler to resolve. Lucerne agreed to develop a switch to operate the variable speed feature of a Skil electric tool. In order to finance this development and obtain its fruits, Skil placed an order with Lucerne for 100,000 switches on March 2, 1964, calling for 25 to 30 samples to be delivered within two weeks.

Matthews, on behalf of Lucerne, developed a switch with a horizontal rheostat and shipped some hand-made examples of it to Skil in the Spring of 1964. They did not ...

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