Monroe Auto Equipment Company v. Superior Industries, Inc.

332 F.2d 473, 141 U.S.P.Q. (BNA) 710, 1964 U.S. App. LEXIS 5300
CourtCourt of Appeals for the Ninth Circuit
DecidedMay 22, 1964
Docket18998_1
StatusPublished
Cited by22 cases

This text of 332 F.2d 473 (Monroe Auto Equipment Company v. Superior Industries, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Monroe Auto Equipment Company v. Superior Industries, Inc., 332 F.2d 473, 141 U.S.P.Q. (BNA) 710, 1964 U.S. App. LEXIS 5300 (9th Cir. 1964).

Opinion

BARNES, Circuit Judge:

This appeal is from a final judgment in. a patent infringement action. 28 U.S.C. § 1338(a) and (b). Jurisdiction here-rests upon 28 U.S.C. § 1291.

Two patents are involved, United States Patent No. 2,896,938 and No. 2,912,235 (hereinafter referred to as the ’938 patent and the ’235 patent, respectively).

Appellant sued for contributory infringement and active inducement to infringe ’938 and Claim 14 of ’235. Appellee denied infringement, and validity of the patents, and counter-complained for unfair competition and harassment. By pre-trial order, only Claims 2, 3 and 4 of ’938 and Claim 14 of 235 were in suit.

After trial, the court below ordered judgment for defendant on the complaint ; declared the patents invalid, and ruled defendant had failed to sustain the counter-claim for unfair competition and attorney’s fees.

*475 A motion for new trial was made by appellant on the ground of newly discovered evidence; and by stipulation, the evidence (a deposition) was admitted in evidence. The motion for new trial was dismissed. After reconsideration, the trial judge reaffirmed his original decision.

The question of infringement was not ruled on below, because of the trial court’s view of invalidity.

I

The patents and claims in suit relate to a simple suspension device, commonly known as a shock absorber. Its uniqueness lies in a sleeve placed within the coiled spring surrounding the shock absorber. 1 Patent ’938 was described by the court below in Finding of Fact 12 as follows:

“12. Patent No. 2,896,938 in suit relates to an auxiliary vehicle suspension device that includes a conventional tubular shock absorber disposed within a coil spring. The shock absorber consists of two parts, one being a body portion 10 and the other a piston and rod. The piston rod telescopes into the body portion when the shock absorber is compressed. The piston rod is connected at its upper portion to a depending dust guard 11 having an outwardly flaring flange 11a at its bottom. The ends of the coil spring are supported with respect to the relatively movable parts of the shock absorber. The specification of this patent recites ‘A sleeve 86 of non-metallic rubber or fiber material fits between the adaptor 80 and the flange 11a of the dust guard 11’. It is the addition of this sleeve 86 to the prior art combination of a tubular shock absorber disposed within a coil spring that provides the basis for the assembly recited in Claims 2, 8 and k of Patent No. 2,896,988.” (Emphasis by appellee.)

The claimed uniqueness in the second patent (Claim 14 of ’235) is the installation of the device above described in a “sea-leg” manner, i. e., at an angle or incline, instead of straight up and down; so as to resist lateral movement or side- *476 sway, and combine a vertical smoothness. 2

The heart of the invention claimed in ’938 is the “non-metallic, tubular spacer sleeve.” Being between the inner hydraulic shock-absorber and the outer concentric coil spring, it is claimed (in Claim 2) that it maintains substantial concentric relationship between the absorber and the coil spring, and resists lateral movement of the coil spring. This sleeve is claimed to prevent noise (if made, for example, with rubber), prevent excessive “buckling” or thrashing of the spring, and prevent wear and tear between the metal of the shock absorber and the metal of the coil spring.

II

The errors of the trial court were alleged to have been:

(1) In holding the prior art was such that the subject matter of Claims 2, 3 and 4 of ’938 was obvious to one having ordinary skill in the automobile vehicle suspension art.

(2) In finding the usual presumption of validity of a patent was dissipated because certain prior art was not considered by the Patent Office in connection with the prosecution of the patent in suit.

(3) In finding the combination of tubular shock absorber, coil spring and rubber sleeve was a mere aggregation of old elements, without change in their function, and hence without invention.

(4) In finding the Knoedler Patent anticipated ’938.

(5) In finding prior use by Knoedler in 1953 of the device.

(6) In finding the Knoedler device was reduced to practice before the filing date of the ’938 patent, i. e., prior to May 6, 1954, and was not “abandoned.”

(7) In holding that the Knoedler literature disbursed in 1953 discloses and completely anticipates the invention claimed in 2, 3 and 4 of '938.

(8) In not finding contributory infringement and actively induced infringement in appellee with respect to '938.

(9) In holding the same obviousness existed as to Claim 14 of ’235 as was found in (1) above as to ’938.

(10) In holding the same regrouping of old elements without change of function with respect to ’235 as was found in (3) above with respect to '938.

(11) In finding the same anticipation by Knoedler with respect to ’235 as was found with respect to ’938 in (4) above.

*477 (12) In finding the same reduction to practice by Knoedler with respect to ’235 as was found with regard to ’938 in (6) above.

(13) In finding the same disclosure and anticipation in the Knoedler literature with respect to ’235 as existed with respect to ’938 in (7) above.

(14) In failure to find the infringement and actively induced infringement with respect to ’235 as was claimed with respect to ’938 in (8) above.

Ill

Appellant seeks to establish these errors: (a) the lack of obviousness (b) by reference to unsolved problems in the art, (e) the commercial success of appellant’s device, (d) the number of licenses appellant has issued, (e) the alleged slavish copying by appellee of the patented device, (f) the simplicity of the device, (g) that the patent office considered “the most pertinent” prior art, (h) that Knoedler’s device had not been reduced to practice, and had been abandoned, (i) that much evidence re use, construction, testing, operation and disclosure of the Knoedler device was confusing and contradictory.

What appellant desires us to do with respect to the obvious lack of invention found in appellant’s device is to substitute our judgment for that of the trial court. This we cannot do if it involves a finding of fact. (Rule 52(a).) But the finding of validity, i. e., whether, or not there is invention, is, of course, a matter of law, not of fact. We think what was said by Judge Pope in his concurring opinion in Bergman v. Aluminum Lock Shingle Corp. of America, 9 Cir.

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Bluebook (online)
332 F.2d 473, 141 U.S.P.Q. (BNA) 710, 1964 U.S. App. LEXIS 5300, Counsel Stack Legal Research, https://law.counselstack.com/opinion/monroe-auto-equipment-company-v-superior-industries-inc-ca9-1964.