Glaros v. H.H. Robertson Co.

615 F. Supp. 186, 227 U.S.P.Q. (BNA) 448, 1985 U.S. Dist. LEXIS 18358
CourtDistrict Court, N.D. Illinois
DecidedJune 28, 1985
Docket79 C 1803
StatusPublished
Cited by2 cases

This text of 615 F. Supp. 186 (Glaros v. H.H. Robertson Co.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Glaros v. H.H. Robertson Co., 615 F. Supp. 186, 227 U.S.P.Q. (BNA) 448, 1985 U.S. Dist. LEXIS 18358 (N.D. Ill. 1985).

Opinion

OPINION, ORDER AND DECREE

WILLIAM T. HART, District Judge.

This matter is before the Court after a jury trial for consideration of proposed conclusions by the Court with respect to the issues of obviousness, claim interpretation and prosecution history estoppel and on the motions of the defendants for a judgment *188 notwithstanding the verdict or for a new trial, with respect to which the Court rules as follows.

I. VALIDITY

Plaintiff, Emanuel M. Glaros is the owner of United States. Letters Patent No. 3,535,844 (the “Glaros patent”), issued on October 27, 1970, for an invention entitled “Structural Panels” in the name of Emanuel Michael Glaros, on application No. 744,-901, filed July 15, 1968. Defendant, H.H. Robertson Company (“Robertson”), is a corporation organized and existing under the laws of the State of Pennsylvania. Defendant, Inryco, Inc. (“Inryco”), is a corporation organized and existing under the laws of the State of Delaware.

Claim 2 of the Glaros patent is a dependent claim, incorporating by reference all the provisions of Claim 1. Nonetheless, its patentability must be determined independently of the patentability of Claim 1. Claim 2 of the Glaros patent is presumed to be valid. At trial, the defendants had the burden of proving by clear and convincing evidence that the Glaros invention, as defined by Claim 2, would have been obvious.

The jury’s findings in Interrogatory No. 7, that the differences between the subject matter sought to be patented by Claim 2 of the Glaros patent and the prior art are such 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 the subject matter pertains, are supported by the credible evidence. (The answers to the Interrogatories are attached hereto as Appendix “A”).

The legal conclusion of nonobviousness must be based on factual considerations including: (1) the scope and content of the prior art; (2) the differences between the prior art and the claimed invention; (3) the level of ordinary skill in the pertinent art at the time the invention was made; and (4) whatever objective evidence may be present as indicia of obviousness or nonobviousness. Graham v. John Deere, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

(1) Scope and Content of the Prior Art

In response to Interrogatory No. 1A the jury found that the Kautz panel of Robertson was not a prior invention which was not abandoned or concealed. In response to Interrogatory No. IB the jury found that Disclosure 606 of the Robertson was not a prior invention which was not abandoned or concealed. These findings are supported by the credible evidence to the effect that Robertson abandoned and either concealed or suppressed, as those terms are used in 35 U.S.C. § 102(g), both the Kautz and Disclosure 606 panels.

In response to Interrogatory Nos. 2a.-i., the jury found that the references listed where not more pertinent to Claim 2 of the Glaros patent than the references cited in the Patent and Trademark Office during the prosecution of the Glaros patent application. These findings are supported by credible evidence.

Particular attention was given to the Pimsner Patent No. 3,047,154 in granting summary judgment on Claims 1 and 3 (Memorandum Opinion November 14,1984). However, as noted in footnote 2 of the opinion, the parties did not center on the question of whether a wall panel for an oven can be prior art for structural wall panels. Slip op. at 7, n. 2.

The evidence at trial disclosed that structural panels pose problems of attachment quite unlike those faced by an oven wall. See, e.g., Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1535 (Fed.Cir.1983) (inventor’s acknowledgement of what he considered relevant and nonrelevant prior art as evidence of the scope of the prior art). In addition, the Pimsner panel was not designed to be foamed or made to contain an insulant which adheres securely to the inner surfaces of the skins. There was also credible evidence introduced at trial that the Glaros panel was also designed to avoid delamination of the skins. The preferred embodiment of Claim 2 protrudes the tongue forward of the groove. *189 The tongue is designed to grip the insulant providing a mechanical interlock to prevent removal of the skin from the insulant even if delamination should occur. Pimsner’s single thickness tongue design would not provide a mechanical interlock with insulant. These factors illustrate the different problems faced in the design of oven/refrigerator and exterior wall panels.

The jury was instructed that prior art included only those references “in the same field as the invention” or “in other fields ... if a person of ordinary skill seeking a solution to a problem in one art would seek the solution by referring to that other art” or if “the problem presented and overcome by the invention is the same as that overcome by the prior art.” See Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 620 (Fed.Cir.1985); Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572 (Fed.Cir.1984) (and cases cited therein). Having heard the evidence, the Court concludes that the jury was entirely correct in rejecting Pimsner as pertinent prior art governing Claim 2. There is also credible evidence in the record to support the jury’s findings that prior art references 2b.-i. were each not more pertinent as that word was described in the instructions than the references cited to the Patent and Trademark Office during the prosecution of the Glaros patent application.

Contrary to Inryco’s assertion, the jury’s responses to Interrogatory No. 2 do not display any “lack of comprehension of the issues.” Quaker City Gear Works, Inc. v. Skil Corp., 747 F.2d 1446, 1452 (Fed.Cir. 1984). Rather, they reveal an appreciation of one aspect of the issue (ignored by the defendants in their post-trial papers) which, although not pursued by Glaros to preclude summary judgment as to Claims 1 and 3, was presented to the jury at trial.

(2) Differences Between the Prior Art and the Claimed Invention

In response to Interrogatory Nos. 3A and 3B, the jury responded that the following features of Claim 2 were not found in the prior art:

a double tongue and groove' side edge where the tongue of one panel member is spaced from the groove of the other panel member forming an offset portion a fastening means inserted between the spaced first and second side edges and passing through the offset portion.

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615 F. Supp. 186, 227 U.S.P.Q. (BNA) 448, 1985 U.S. Dist. LEXIS 18358, Counsel Stack Legal Research, https://law.counselstack.com/opinion/glaros-v-hh-robertson-co-ilnd-1985.