Lorenz v. General Steel Products Co.
Lorenz v. General Steel Products Co.
Opinion of the Court
The three patents in suit, owned by the ■ original appellant Lorenz,
In addition to a comprehensive pretrial stipulation, the trial before the district court lasted for six days. The ■district court directed the parties to file .simultaneously proposed findings of fact .and conclusions of law. After keeping the case under advisement for three months, the district court adopted the findings of fact and conclusions of law submitted by the appellee,
The district court held the Lorenz pat■ent invalid because based on an inoperative disclosure, and also because of anticipation by Lorenz British Patent No. 724,643.
A prime requisite for patent-ability is that an invention be “useful.”
The district court also held that Claims 1, 10, 11, 14 and 16 of Fletcher lack novelty because disclosed in Figures 7, 8 and 9 of Curtis Patent No. 2,798,584 issued July 9, 1957, and that the elements and functions of Claim 2 of Fletcher are likewise disclosed with the exception of the clause reading: “One of said guiding means including a pair of spaced guiding elements movably connecting spaced points on said seat to said support and adapted to produce a compound rearward movement of the body supporting unit.” The court further held that, at the time the invention was made, the subject matter of all of the pertinent claims would have been obvious to a person having ordinary skill in the art. See 35 U.S.C.A. § 103.
Fletcher achieved ease of operation by providing a substantially flat movement of the center of gravity through the use of two successive centers of rotation. The use of successive centers of rotation to achieve better balance was disclosed by Curtis. Chief Judge Campbell held that, “The embodiments of the chairs shown in the Curtis patent perform the same functions and the same operations, by the same or equivalent means as the chairs disclosed in the Fletcher Patent.” Lorenz v. Berkline Corporation, supra, 215 F.Supp. at 878.
It is not necessary for us to agree in toto, because it seems clear to us that a person with ordinary mechanical skill in the art would have no difficulty in applying the concept disclosed by Curtis to the system of linkages used in Lorenz, especially if Figures 9-11 and 12-14 of Lorenz were carefully studied. In short, the pertinent claims of Fletcher are invalid under 35 U.S.C.A. § 103.
The Schliephacke Patent employs Fletcher’s two centers of rotation to which it adds a simplified linkage system. The district court held that the differences between Claims 1, 2, 6, 7, 8, 9 and 10 of Schliephacke and the disclosure of Figures 7 and 8 of Fletcher would have been obvious to a person having ordinary skill in the art of reclining chairs at the' time the alleged invention was made by Schliephacke. See 35 U.S.C.A. § 103. Chief Judge Campbell reached a like conclusion in Lorenz v. Berkline Corporation, supra, 215 F.Supp. at 881. The' question of whether an improvement requires mere mechanical skill or the exercise of the faculty of invention is one of fact. Thomson Spot Welder Co. v. Ford Motor Co., 1924, 265 U.S. 445, 446, 44 S.Ct. 533, 68 L.Ed. 1098. We cannot set aside the findings of the district court as clearly erroneous.
The district court went further and held that appellee’s 87-TV fixture does not infrige Lorenz, and that its 86-TV fixture does not infringe Fletcher. We-do not reach those issues since we affirm the district court’s holding of invalidity of Lorenz, of Claims 1, 2, 10, 11, 14 and 16 of Fletcher, and of Claims 1, 2, 6, 7, 8, 9 and 10 of Schliephacke. The judgment is affirmed.
. Lorenz owns a total of more than 150 patents relating to reclining chairs. Pending this appeal, Lorenz died and his personal representative has been substituted. See 5th Circuit Rule 19.
. Lorenz, 2,918,113, issued December 22, 1959; Fletcher, 2,940,509, issued June 14, 1960; and Schliephacke, 2,940,510, issued June 14, 1960. Fletcher and Sehliephaeke were employees or associates of Lorenz.
. While this practice is not to be commended, the record in the present case negatives any possible inference that the court failed to understand the case or to perform its functions adequately. See Kinnear-Weed Corporation v. Humble Oil Co., 5 Cir. 1958, 259 F.2d 398, 401; Edward Valves, Inc. v. Cameron Iron Works, Inc., 5 Cir. 1961, 289 F.2d 355, 356; Louis Dreyfus & Cie v. Panama Canal Co., 5 Cir. 1962, 298 F.2d 733, 737, 738; 2B Barron & Holtzoff, Federal Practice & Procedure, Rules Ed., § 1124, p. 494; 6 Moore’s Federal Practice ¶ 52.-06 [3], pp. 2664, 2665.
. Reported as General Steel Products Co. v. Lorenz, S.D.Fla., 1962, 204 F.Supp. 518. There is no appeal from the parts of the judgment dismissing Lorenz’s claims for breach of contract, breach of confidential disclosure, and fraudulent advertising.
. See 35 U.S.C.A. § 102(d). Under the circumstances of this ease, this second ground of invalidity depends on the operativeness vel non of Figures 1 and 2 of the Lorenz patent in suit.
. U.S.Const. Art. 1, Se& 8; 35 U.S.C.A. § 101; 1 Walker on Patents, Deller’s ed., §§ 64-73.
. See Bennett v. Halahan, C.C.P.A.1961, 285 F.2d 807, 811; 1 Walker on Patents, Deller’s ed., § 73, p. 325.
. It may be noted that like findings were made by Chief Judge Campbell of the Northern District of Illinois in Lorenz v. Berkline Corporation, N.D.Ill.1963, 215 F.Supp. 869, 873, 874.
. We make no ruling but we entertain some doubt as to whether those holdings are consistent with the district court’s earlier holding that Lorenz was inoperative and lacking in utility. “Novelty is not negatived by anything beneficially incapable of the function of the subject of the patent, even though apparently similar thereto.” I Walker on Patents, Deller’s ed., § 48, p. 257. See also United Shoe Machinery Corp. v. Mathey, 1 Cir. 1941, 117 F.2d 331, 332.
Reference
- Full Case Name
- Anton LORENZ (First National Bank in Palm Beach, as of the Estate of Anton Lorenz, substituted for Anton Lorenz who died pending this appeal) v. GENERAL STEEL PRODUCTS COMPANY, Inc.
- Cited By
- 14 cases
- Status
- Published