Lee Blacksmith, Inc., an Illinois Corporation v. Lindsay Brothers, Inc., a Wisconsin Corporation

605 F.2d 341, 203 U.S.P.Q. (BNA) 211, 1979 U.S. App. LEXIS 12346
CourtCourt of Appeals for the Seventh Circuit
DecidedAugust 21, 1979
Docket79-1038
StatusPublished
Cited by12 cases

This text of 605 F.2d 341 (Lee Blacksmith, Inc., an Illinois Corporation v. Lindsay Brothers, Inc., a Wisconsin Corporation) is published on Counsel Stack Legal Research, covering Court of Appeals for the Seventh Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Lee Blacksmith, Inc., an Illinois Corporation v. Lindsay Brothers, Inc., a Wisconsin Corporation, 605 F.2d 341, 203 U.S.P.Q. (BNA) 211, 1979 U.S. App. LEXIS 12346 (7th Cir. 1979).

Opinions

SWYGERT, Circuit Judge.

This case concerns the validity of U.S. Patent No. 3,991,831 (Foster) covering the invention of a harrow used in cultivating ground for agriculture purposes. Lee Blacksmith, Inc. (“Blacksmith”), the owner of the patent brought this action against Lindsay Brothers, Inc. (“Lindsay”) for inducing infringement. Lindsay counterclaimed alleging invalidity of the patent under 35 U.S.C. § 102(b) (“on sale” bar) and 35 U.S.C. § 103 (obviousness). The district court held the Foster patent valid and found Lindsay liable for infringement. We reverse. Without reaching the section 102(b) issue, we hold the Foster patent invalid for obviousness under section 103.

I

The Foster patent has one claim. The invention described in this claim is the combination of a harrow and a post-plowing cultivating implement, such as a disc harrow (parent implement). The harrow is attached rigidly to the frame of the parent implement by one or more support beams. As illustrated by Diagrams 1 and 2 below, an arm is pivotally connected to and depends on each beam for movement toward and away from the parent implement. An elongated rail is attached to the lower end of the arms and extends laterally therefrom so that it is parallel to the rearmost row of the soil-working parts of the parent implement. A series of spaced, parallel metal rods (teeth), attached to the rail, slant downwardly and toward one end of the rail and form an acute angle with the rail. The teeth are spaced six inches apart and the length of the teeth is such that the lower end of each tooth projects under the upper end of an adjacent tooth. An adjustable spring connected between the frame of the parent implement and the pivotal arms of the harrow urges the teeth into the ground, with the teeth usually being tilted back at an angle of about forty-five degrees.

The alleged unique feature of the Foster patent is the acute angle of the tooth to the rail and the spacing of the teeth so that the lower end of each tooth projects under the upper end of an adjacent tooth. In its findings of fact the district court stated that this construction of a harrow produces a synergistic effect in that “all, or effectively all of the earth traversed by the harrow ... is engaged by a tooth

II

When a patent’s validity is challenged, the patent is presumed to be valid and the burden of establishing invalidity rests on the party asserting it. 35 U.S.C. § 282. The presumption of validity, however, does not exist against prior art which [343]*343was not considered by the Patent Office when the patent was issued. Allen Group v. Nu-Star, Inc., 575 F.2d 146 (7th Cir. 1974) (per curiam). Lindsay produced before the district court two patents not cited: Sigmund U.S. Patent No. 3,574,320 and Hotchkiss Patent No. 3,090,448, and, relying on Allen Group, supra, contended that the presumption of validity should not apply to the patent in suit. But the district court found that the prior art relied upon by Lindsay was the same or no better than that considered by the patent examiner in issuing the patent.1

The district court’s findings will not be set aside unless clearly erroneous.2 The presumption of validity continues when the patent examiner has considered “equivalent references” to the prior art relied upon by the party claiming invalidity. Laser Alignment, Inc. v. Woodruff & Sons, Inc., 491 F.2d 866, 871 (7th Cir. 1974). Thus for the purposes of determining obviousness on this appeal, the Foster patent will be presumed valid.

35 U.S.C. § 103 provides:

A patent may not be obtained . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would 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. Patentability shall not be negatived by the manner in which the invention was made.

In Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the Supreme Court outlined the proper analysis to be followed when obviousness is at issue.

While the ultimate question of patent validity is one of law [citation omitted], the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the pri- or art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved.

Id. at 17, 86 S.Ct. at 694. “[T]he Graham analysis [is] the exclusive means by which to measure nonobviousness under section 103.” Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d 963 (7th Cir. 1979).3

In its findings the district court stated that Lindsay did not offer “evidence of any kind on the level of ordinary skill at any time in any art of farm earth-working equipment.” The district court then concluded that because Lindsay had failed to establish evidence on one of the factual inquiries as required by Graham, the defendant had not overcome the presumption of validity. The district court’s conclusion would be correct if Graham required that in every case the level of skill in the pertinent [344]*344art must be resolved. This reading of Graham is overbroad.

The district court incorrectly relied on Universal Athletic Sales Co. v. American Gym, 546 F.2d 530 (3d Cir. 1976), in reaching its conclusion. In Universal the Third Circuit held that a district court could not invalidate a patent when the record was deficient with respect to evidence on the level of skill. But this rule is not without exception.

The correct rule was formulated by this court in Research Corp. v. Nasco Industries, Inc., 501 F.2d 358 (7th Cir.), cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974). In Research Corp. a patent was held obvious on a motion for summary judgment. No evidence had been heard on the level of skill in the pertinent art. The court stated:

Here there was no factual dispute concerning the state of the prior art, as recorded in the Taylor article.

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605 F.2d 341, 203 U.S.P.Q. (BNA) 211, 1979 U.S. App. LEXIS 12346, Counsel Stack Legal Research, https://law.counselstack.com/opinion/lee-blacksmith-inc-an-illinois-corporation-v-lindsay-brothers-inc-a-ca7-1979.