Southwest Products Company v. The Heim Universal Corporation
Opinion
J. JOSEPH SMITH, Circuit Judge:
These are two consolidated appeals from summary judgment for defendant in an action for patent infringement and from order denying enlargement of the record on appeal in the United States District Court for the District of Connecticut, M. Joseph Blumenfeld, Judge. We find no error and affirm the judgment and order.
The patents in suit, held invalid for lack of invention under 35 U.S.C. § 103, 1 are Potter method patent U. S. Patent No. 2,724,172 and Potter article patent U. S. Patent No. 2,626,841, for forming a self-aligning bearing. 2 Essentially, the patents portray the formation of a bearing of the rod-end type consisting of a ball member pierced for the rod, the ball member being placed within a race member of metal softer *623 than the ball, large enough freely to receive the ball, the race member then being deformed by pressure using the ball as a die so that the race’s outer edges enfold the ball and keep it confined within the race. The pressure freezes the race upon the ball which is then freed for motion within the race by rolling pressure such as successive blows by an air hammer on a tool applied to the periphery of the race. The patents in suit were held invalid in Aetna Steel Products Corp. v. Southwest Products Co., 282 F.2d 323 (9 Cir.1960), cert. denied, 365 U.S. 845, 81 S.Ct. 804, 5 L.Ed.2d 810 (1961). The file history of the patents is detailed in the Aetna opinion. Defenses of estoppel and laches were pleaded, based on the Aetna case and the delay after Aetna in bringing the action at bar, but the court found it unnecessary to reach these questions, granting summary judgment on the merits. The court did, however, rely heavily on the reasoning of Judge Lindberg writing for the Ninth Circuit in the Aetna case.
Appellant contends that it was error for the court to consider the opinion of the court of appeals in Aetna without amplifying the record on the motion to include the findings of the trial court in the Aetna case.
Whether or not this would ever be required or even proper, plainly it was not necessary here, where the judgment of the district court in Aetna was reversed and the patents held invalid as a matter of law. The order denying post-judgment amplification of the record is therefore affirmed.
Moreover, while Judge Blumenfeld found the Ninth Circuit’s reasoning persuasive, he did consider the question of the validity of the patents independently on the merits on the showing before him and found them invalid for lack of invention over the prior art. In this he was correct. Prior patents, particularly Chambers Patent No. 2,382,773 and Fiegel Patent No. 1,693,748 had similar *624 ball bearing construction, both using the ball as a die and deforming the race as in Potter, although they did not specifically teach the freezing and subsequent freeing. Deforming the outer race on the ball by the use of dies was at least as old as Skillman No. 1,793,874 (1931). The method of freeing by applying rolling pressure is also old. Appellant attempts to distinguish Heim U. S. Patent No. 2,476,728 on this issue because of the so-called “wedges” — the bearing rings 14 and 15 of fig. 4 of Heim — but the method of loosening does not depend on the presence or absence of the wedges. Since each of these steps was old in the art at issue, the bearing art, we agree with the finding that the combination would have been obvious to a mechanic skilled in the art. Appellant’s contentions based on the distortions of the metal in the race member were properly rejected as mere scientific explanation of what occurs when Potter and earlier patents are practiced.
Estoppel was not relied on by the trial court. In fact the defendant in that court apparently conceded that in view of the line of cases stemming from Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L.Ed. 949 (1936) collateral estoppel was not applicable to cases involving patent validity. Since argument in this case, of course, the Triplett rule, based on lack of mutuality has been abandoned in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, et al., 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788, (1971). There is no indication in the record before us that appellant did not have in the Aetna case “a fair opportunity proeedurally, substantively and evidentially to pursue his claim * * Id. p. 333, 91 S.Ct. p. 1445. Reliance on Aetna might therefore well be conclusive here. But we find it unnecessary to base our affirmance on estoppel, since we find no error in the ruling on the merits. The order and judgment appealed from are affirmed.
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443 F.2d 621 (Southwest Products Company v. The Heim Universal Corporation) — published by Counsel Stack Legal Research, free access to 12M+ legal documents.