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).
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
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 also contends that certain employees of the Singer
Co. developed a device anticipatory of Frenzel's in the Spring
of 1965. This became Winchester et al patent No.
3,439,248 filed January 4, 1966, shortly after Frenzel's
original filing. Singer has recently filed interference #
97,893 in the Patent Office claiming prior invention.
35 U.S.C. § 102(g). This court has declined to await the outcome
of the interference proceeding, and defendant has filed
depositions of certain Singer personnel herein. We find that
these depositions do not establish priority of the Singer
device by the weight of the evidence. They show that Singer's
formal testing occurred in December 1965, considerably after
the filing date of Frenzel's original application, and that the
model allegedly constructed and operated by Singer personnel in
the Spring of 1965 was never used to drill any holes, was never
reduced to detailed production drawings or recorded in formal
testing documents, and was inoperable at the time of the
depositions in May 1971. Without purporting to rule on the
merits of Singer's pending interference, since it is not a
party herein, we find and conclude that defendant in the case
at bar has not established that the Winchester invention was
reduced to practice prior to Frenzel's device and therefore
cannot be anticipatory. Cf. Corona Tire Co. v. Dovan Chemical
Corp., 276 U.S. 358, 382-384, 48 S.Ct. 380, 72 L.Ed. 610
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 ...