*1
States,
v. United
360 U.S.
Palermo
(1958).
The Act limits the prospective witnesses Government prosecution witnesses. Government Judge, dis- Winter, filed a Circuit is its that co-defendant Buss has stated senting opinion. prospective witness witness remaining against the two will be called Siegel and Arthur Robert co-defendants agree respondent We
Veals.1 the statements
defendants are entitled to Moore, any other co-defendants. 8 J. ¶l6.03[2], 16-24
Federal Practice
(2d 1953); ed. and Rezneck The New Procedure 54
Federal Rules Criminal Accord
Geo.L.J. deny ingly de issue to writ shall
fendants’ access to Robert Buss’ state
ments until he testifies at trial. AG, Plaintiff-Appellee,
BLOHM VOSS & INC., LINES,
PRUDENTIAL-GRACE Defendant-Appellant.
No. 73-1058. Appeals, States Court of
United
Fourth Circuit.
Argued May 8, 1973.
Decided Dec. George
1. The indicates record Beech er, co-defendant, permitted February 17, 1972, join Siegel’s discovery. However, motion for Beecher *2 Pa., brief),
phia, defendant-appel- on for lant. (J. Carr, City I.
Francis New York Boyd, Jr., Boyd Sauerwein, Cookman Decker, Baltimore, Douglas Md., & G. Brace, Gray Kenyon Arthur D. & Kenyon, Reilly, Chapin, Carr & New City, brief), plaintiff-appel- York lee. BRYAN, Judge,
Before Senior Circuit WIDENER, and WINTER and Circuit Judges. WIDENER, Judge: Circuit Appellant Lines, Prudential-Grace presents Inc., the court with three is- sues: court,
I. Whether the district 346 F. Supp. 1116, determining erred in that plaintiff-appellee’s patent is valid as against (1) the defenses of obviousness (2) necessary failure recite structure. II. Whether the district court erred
determining defendant-appellant’s that ship gear infringes appellee’s pat- ent. III. Whether the district court erred
determining plaintiff-appellee is not recovery theory barred from on the patent was misused. patent This case involves field of ship loading unloading apparatus, commonly known and referred to as car go gear. Plaintiff-appellee Blohm & (hereinafter Voss) Voss AG Blohm & shipbuilder. a West German On Febru ary 15, 1966, acquired Blohm & Voss assets, including patent rights, of H. C. Sohn, original assignee Stulcken patent suit, in suit. The United States Letters Patent No. 3,236,390, Spren was issued to H. C. F. gel, Sprengel a German inventor. '390 granted February 22, 1966, was based upon patent application 403,441 No. filed n /onOctober by Sprengel 1964. Such Harkins, Jr., Philadelphia, application John G. was a continuation-in- (Robert Venable, Baetjer part Shelton, Sprengel’s Pa. co-pending A. then United 3rd, Howard, George Harding, & application 361,422 States J. No. Lloyd Follmer, April 24, 361,422 Frank A. R. Ziff and filed 1964. No. was Pepper, Scheetz, Hamilton & Philadel- abandoned when ’390 filed. kingposts is a Located apparatus discloses long pole called of lesser diameter ship of a deck is mounted its bot boom. The boom is attached at loading unloading to facilitate joint2 (foot) to a universal tom end compo many cargo.1 gear has While the deck so nents, basically around *3 assembled only pointed also fore and aft but not structures, and two three main a boom starboard, port and led to or outboard kingposts. kingposts massive are up Movement of the boom and down. sides of vertical affixed to the structures from lead controlled cables which deck, ship's port the and one star king- part upper the the of winches to directly part board from upper across one another. posts the thence to and the clined court’s Those fitting being pivotally upper embodiments of this invention include one larly objects loading boom, block particularly provided than an inverted and aft an aft hatch and vice “For time between scribed which has a be permit position which carries a mounted to simplify so ing upon boom and apparatus. be installed in between block past “It cargo “This invention relates to a in hung for this tion sonnel can difficulty, forward or hatches mounting, “It another which [*] moved in a is an is another upper may not hopefully simplified explanation. the boom in either direction fitting adopted on its to boom fitting boom for a more end of maneuver both forward and aft of the relatively uprights hatches for with two the a object cargo. accomplishment find whether and it relates still an vice [*] carry end with the is, more which mechanically cargo to a having present It pivot pin alongside alternate for short purchase aft swinging through positions to reduce object from forward to aft of the Sprengel’s description versa, forward continuous manner of the relates hatch. to minimum. through-swinging it out on its permit guide pendulum, untrained cargo from side to side of the enlightening [*] boom of the boom is boom ship. turning a to invention upper of the block as a normal mounted within the present pendulum purchase boom is forked at least one swing versa, safely hatch particularly over the sheave boom intended to the time proper. or loading It cargo heads each operating present end which is nautically ship’s loading the and which is more deck relates or be invention to but also to provides above periods than serving maneuver foregoing kind one over purchase boom and un- required to serve forward particu- Specific is over- depend- manner from a swung rather inven- boom, to a boom more from per- the in de- a 2. While this movement end in a same. sphere, rotary tion ments the universal joint occupy around its inventive suspended, Thus led the heads hauling parts purchase passages to boom is purchase fork structure ented pair boom. the ting, slots nally “When the tackle, at or as a normal swings, tively aft within “In through are carried throughout ship. guide aforesaid, top swinging perpendicular hauling parts from the fitting, will in the motion, tackle, of to any very overhung along opposite substantially the a forward led first.' From of plane utilization of or the The combination purchase own in a sheaves block mounted tackle and a lower allow the center of allows part the hauling uprights joint. to and over over the close to intermediately may walls it is not boom is its boom, the boom pendulum adjacent drums of over do longitudinal perpendicular novel uprights and thus fitting part top whole block from there not of of hatch, block rotation and another purchase and between parts fitting led to purchase vertically maneuver.” of hollow the guide a swung the interfere the uprights designed to transmit be a true purchase the deck from its is at all arrangement purchase space two around between which its function thence out movement top the boom’s uprights, fittings guide base of adapted guide present axis to sheaves cargo rotating guide back either block of uprights, hauling in the block if in another theoretically sides to downwardly sheaves on pivot its upper sheaves in blocks two tackle times ori- which the and also are rota- invention which it universal to serve purchase going all with winches. which through through deck of directly sheaves similar bottom of is the move- swing heads hemi- boom parts point forth boom posi- end. are the are the the fit- an fi- a topping activated at the same winches were both (head) These are of the boom. pay cable, time to swing out the boom would in each the boom lifts. The depending either forward or aft disclosed the three embodiments (forward upon way aft) it is that a constructed so ’390 is off is off shoved dead center. Once it suspend This therefrom. cable or cables weight center, it to dead its own multiply causes cable and associated blocks gravitate cables (purchase gear). toward deck power is the crashing prevent the on- down end of the Affixed to the lower By paying to the deck like a felled tree. cargo to lifted is a hook to which proper cable, out the amount of is attached.3 may any tilt forward or aft desired num- devised so that ’390 is degrees. ber of To raise the both accom- tilt forward to winches take in cable. *4 loading unloading modate cargo Once the is attached to the hook hatches, ac- forward and also tilt aft to suspended purchase, from the and raised all commodate the after hatches. At swung hold, from the the boom will be times, including the boom is while port either to or starboard to unload the motion, it is affixed at its foot to cargo. Assuming unloading joint. Activating universal the winches port, portside winch would take leading which control the cables from pay cable and the starboard winch would kingposts top of the boom out cable which would cause boom to controls the movement of the To boom. point port, swinging suspend- thus illustrate, assume the cen- boom is dead cargo ed over the side and above perfectly upright. Activating ter and unloading pier barge.4 winch on the starboard side to take port cable and the winch on previously side The cables referred pay out cable suspend would cause the vertically boom to which top from the kingpost. lean toward the rigged starboard If through the boom are A blocks. components 3. The cargo sketch below gear rigs indicates those common to discussed in this opinion. gear rigged Solid lines show gear to work after swung hatch. Dotted lines show through to work forward hatch. slewing. Sideways of the boom is called movement moves profi- the boom side sophisticated and is a more block through plane aft. commonly its vertical fore what version cient dis- pulley. as a alleged known inventiveness are sus- which the use of blocks closes the method which ’390 rests top of One pended boom. from hatches both forward and after serves block, upper purchase block, called rerigging.6 Assume that to a hatch, from and attached gear up to the forward is set serve fitting is affixed which tilted would which case the boom be top of boom. gear suspended side forward and the suspend from this block cables which top of the boom down block, which down to the other hatch, lead To service the after hatch. block. is called the lower upright boom would raised until to a which is af- is attached hook center) (dead kingposts between the lower block. fixed to the bottom then the after hatch. lowered toward upper pur- which During maneuver, suspends attached to chase (in double right angles to, runs cross embodiment) suspends from longitudinal axis of the boom of the boom side sides of the plane top in a boom near its swing alongside simply would *5 protrudes parallel to deck.5 It the and that the tilted so when boom is fitting slightly The hatch, from the out boom. uppermost part over the after is pin protruding part on of the rests the gear purchase the down would be lowered purchase alongside the that the gear boom so In to the hatch. the double embod- fitting suspend the fitting blocks which from iment, to lower attached both alongside suspend likewise down the purchase uncoupled one side blocks is on configuration stated, Simply is pass oppo- boom. purchases to on allow the to body the not unlike the human with site of the sides boom. purchase gear, the arms considered the mentioned, previously As cables which body joint fitting, the shoulder the and kingposts top run the to from the the the boom. top the of the boom control movement of gear collectively boom. Such is called three ’390 discloses embodi- nothing span gear, by ments, Sprengel, employ two of which the above de- is gear. topping more The nor less than scribed In one of the lifts. embodi- gear gear span ments, suspends two are purchase winches located the from king- ship, of the near each the deck one man one side of the boom —like post. The cables lead from the winches you arm, In another with if will. through up kingposts the the and out gear embodiment, purchase suspends top top then the of the and over to the and both sides of boom accom- king- span from each boom. The cable modates heavier loads. In both embodi- post attached end of the cross is to an gear ments, suspends purchase the like through pin head of extends the which from the attached to pulleys to the There attached boom. are through pin the cross the which extends pin span the of the ends cross called embodiments, top of the In boom. both through run. these cables blocks which purchase fitting, the from which the kingposts top The enter cables the the gear suspends pin pivots guide to on the cross circular runners called letting taking purchase gear swing along- in and out the sheaves.7 The allow required following if some did to al- 5. References here and the method not exist vari- pins swing alongside purchase gear ous near boom low the at or or davit heads in a plane parallel after boom in its transit from forward to to the deck refer to the nor- hatches, operating position. and vice versa. mal rotating readily rerigging apparent A a block 7. is is sheave wheel of at pulley purchase gear line which the reeves. least some of the would be raises and lowers the boom down to hatch. of these cables To service the slewing cables, hatch, swing The boom after would boom as well it. together through upper kingposts lower as in the other purchase moving comprise purchase embodiments. The method of blocks origins purchase is, however, their likewise have different. gear, deck, upper purchase one near lower blocks winches together part closely hauling up kingpost. drawn of the and the haul- each ing part is taken in purchase part so entire tackle length the winch of the led from length open- does ing hauling raise and not exceed the in and out to for top led of the “Y” cable at the boom. block. The lower lower guide pin into The winch on the cross rotates sheaves kingpost through top around the axis of the purchase gear allow up swing through pendulum fit- then down and ting opening upper pur- top lower around boom as the swings through kingposts. boom chase blocks. center, After the dead concept clears in a disclosed his purchase gear may lowered; prac- all which is for third embodiment top once the pre- is over the purposes as the two tical the same hatch, configu- lowered down to the hatch. except viously discussed attempted If the crew at the head the boom. ration opposite to drawing up serve hatch without resem- the third embodiment gear, such giant bles needle with an oversized would strike the boom as the boom eye. eye formed however with swung through. By drawing up the straight lines that it sim- so resembles purchase gear, gear swings through such ple fork or “Y” closes at which almost opening top in the of the boom. remaining open totally instead of *6 (again pin perpendicular like “Y”. A appellant Blohm and Voss sued the longitudinal axis of the boom and the (hereinafter Prudential-Grace Lines deck) plane parallel extends claiming cargo gear Grace), on connecting top of fork ships infringed Sprengel Grace top each ting of A fit- side of the “Y”. infringement Grace denied and claimed pin, of rests this the fork inside patent that the was invalid for failure to just “Y,” like which rests necessary recite a structure and invalid cross head of for obviousness. Grace also claimed in the two other fit- embodiments. This agreements that certain license entered ting pin. freely rotates around the Sus- by into Blohm pat- & Voss rendered the pended from this is the grounds ent unenforceable on of misuse. upper purchase gear, an and a low- we Because conclude that er block. To illustrate the is invalid obviousness, because of we do working of the third of embodiment not reach the other issues. Sprengel ’390, assume that the boom is top patentability forward so that conditions of tilted are forth in set forward the Patent Act three hatch. sections, 101, 35 would be U.S.C. 102 103.9 §§ improvement patent thereof, may useful 8. In the itself this is called the second obtain a patent subject pendulum therefor, embodiment. the double Since the conditions requirements merely duplicate this title.” embodiment, logical more here to take patentability; “§ 102 Conditions nov- for up them first. elty right patent and loss person patentable patent “A shall be “§ 101 Inventions entitled to a un- any new less— invents or discovers “Whoever manufacture, “(a) process, machine, by useful invention was known or used composition any matter, country, patented this or new others or or de-
237 might give etc., express others, the new utilized 101 and 102 be Sections light surrounding express- and useful 103 the circumstances tests.10 Section origin subject test with which we matter es the non-obvious sought patented. In v. to be As indicia of are concerned here. Graham most 1, nonobviousness, obviousness or these Co., 17, Deere 86 S.Ct. John 383 U.S. inquiries may relevancy.” 684, 694, (1965), 15 the Su- L.Ed.2d 545 have preme analyzed carefully con- Court Graham is clear and United history for tent and of the standards 39, Adams, 48, 86 S. States v. U.S. patentability the follow- and enunciated 708, (1965), Ct. 15 L.Ed.2d decided standards for decisions Graham, only day the same not guide cases which must here: us the invention must meet the tests novelty utility, question it must non- the ultimate also be
“While validity law, obvious in A & P Tea accordance with the stand- is one Graham, Corp. Supermarket ards there set In Co. U.S. forth. [340 147, 127, court admonished that non-obvious 71 S.Ct. 95 L.Ed. (1950)], 155, condition, by criteria should be honored “strict ob- the § conditions, (p. 684). 18, which is but of three servance” 86 S.Ct. Such satisfied, each of which must lends strict was reiterated in An- be observance inquir- Co., itself derson’s-Black Rock v. several basic factual Pavement 62, scope ies. Under and con- U.S. 24 L.Ed.2d § prior only tent art are deter- Not must to be criteria mined; strictly observed, by differences we between the are told Supreme art Court should and the claims issue to be “Courts ascertained; ordinary combination and the scrutinize claims level pertinent proportioned with a skill care to the difficul- art resolved. ty Against improbability finding background, this obvious- inven- subject assembly tion an of old A ness nonobviousness of the elements.” secondary Supermarket Corp., matter & P Tea v.Co. determined. Such 147, 152, success, U.S. considerations 71 S.Ct. 95 L.Ed. commercial long 162 (1950). felt Of like needs, but unsolved failure of effect printed abandoned, sup- publication scribed in a another who had not in this or foreign pressed, country, determining or concealed it. In before invention priority applicant patent, thereof of invention there shall be consid- “(b) respective patented ered invention dates *7 was of con- or de- ception printed practice publication in scribed a and reduction in to of the this or foreign country invention, diligence public or in also the reasonable use or on country, year sale in of one was this who first to conceive and last more than one prior practice, prior application to reduce to from a time date of the for patent conception by States, in the the other.” United or “ (c) patentability; invention, he has 'Conditions non- § abandoned the 103. or for “(d) subject patented the invention was obvious matter first or patented patent may though by applicant caused to “A not be obtained the the or legal representatives identically assigns his invention is not disclosed or de- or in a foreign country prior as in 102 scribed set forth section of this subject to the date of the application title, country if difference the for in this on the between application sought patented an matter to be and the filed more than twelve subject filing application are months before art such that the matter States, in the as a whole would have been obvious at the United “(e) person pat- time the invention was made to a invention was described in a granted having ordinary application in the art to which ent by on an skill subject pertains. . another in be- said matter Patentabili- filed the United States ty negatived by by applicant manner fore the invention shall not be thereof patent, which the made.” for the invention was subject “(f) he did himself invent not Co., sought patented, Deere 383 Graham v. John U.S. matter to be See “(g) applicant’s 15 L.Ed.2d 1 at before the invention there- (1965). country of the invention made in this Heyl Patterson, disclosed, hauling court’s statement & blocks to take are up Co., Bearing F.2d v. McDowell mind Inc. cable. 1963): usually (4th “It dif- de- is that well Cir. to serve one hatch was veloped by 1930,11 in a ficult to find true inventiveness least we turn pertinent patent.” combination the more area of two-hatch concept swinging and of basic With these considerations boom and mind, we turn to the in suit. serve fore and aft hatches. Scope and content the Prior Art of Obviously, field of Ashe, 1,257,664 1. William B. No. unloading gear loading is relevant and inquiry, and it would seem apparatus Ashe ’664 relates to an ships’ of to consider area reasonable davit, purpose known as a boat gear generally and how mechanical employment which is to facilitate principles have been utilized force shipboard. small boats carried on When gear. Corp. such v. Mott Cf. Sunflower use, suspended boat is not in Inc., (10th Industries, Cir. ropes supports between two vertical Slicing 1963); A. Deer J. Co. S.U. practical matter, called davits. As a Co., (7th Machine F.2d always nearly boats cradled on board 1927). ship Among when not in use. other ad- booms, blocks, lines vantages, keeps basic idea this the strain off the course, quite A is, of old. and winches blocks and tackle. The davits seamanship perusal and of manuals are located at or near the side age prin- crusty ship texts indicate that suspends and the boat hoisting utilizing ciples They mechani- them. are secured at the base advantage pulleys pivot joint have allowing cal lines and movement early employed ships plane been perpendicular least vertical cen- ship. as the See ter line 1700’s. Steel’s Elements Each davit has Making, Sailing Rigging, protrudes Mast and top. near its fit-A edition, Foyle, ting Ltd. pin, freely the 1794 &W G attached to this rotat- leading Knight’s text, pin, A Sea- around the so London. manship, may swing district which was cited back forth like a man’s court, support court arm if and this also reveals the vertical be considered use, utility, body. suspended advan- mechanical A tage blocks, upright up- supports, lines from this per quite drawing lines is old. A in a Brit- block lead to a down lower block. publication ish Institution The ends of Standards the lifeboat are attached (BS figure depicts 23) suspend- 302: these lower blocks so that it is rig. rig typical ship’s dis- ed from derrick Such davits. When the boat use, closes a boom mounted a universal the davits lean inboard so joint along plane tilts vertical lifeboat Upper boat, To be slewed deck. lower outward. the davits are *8 purchase pointed lower blocks out over the water. As dav- the top swings Top- outboard, the are disclosed. the lifeboat ping are lifts from the mast the between them out over and the water. Specific publications 11. It is axiomatic that the use of booms reference and is made only availability their associated as a means for han indicate the of reference dling heavy weights sails, showing (cargo, age compo- the ammu material the of nition, etc.) oceango patented nents of the encountered on board device far antedates ing ships nearly shipbuild very question, attempt old as ing. accurately origin Vinci, many The da date the of Notebooks of Leonardo of (Edited parts example, p. by MacCurdy, very antiqui- for which be lost in well 1954), calculating ty. a method me describe advantage rigs. chanical for block and tackle Sprengel upper pur- Ashe did During ’390. Because maneuver, course) anticipate Sprengel ’390, lower, the district (and chase block swings alongside pendu- teach- to reason that a court seemed ings davit like virtually swing in- Ashe worthless only were blocks do the lum. Not context of their upper pendulum because disclosure outboard, board and boom. fitting of a davit rather than to the is attached block which clearly me- swings relevant Ashe was for also side of the of the davit teachings and chanical disclosed it The district inboard and outboard. restrietively gave so should not have been the Ashe court discussed Matthews, among weight because, Davis v. F.2d treated. no to it little or (8th 1966); Ramirez things, Cir. davits, at 901 while it felt that other they may loosely (5th 1972); Perez, booms, Cir. are resemble Instruments, Inc. v. Chemtron- primarily Beckman must lowering, and a boom for 1970). (5th Inc., ics, lower, F.2d 1369 To the extent raise and transfer. analysis as- that such was based on the sumption raise, lower that davits do not al, 2,914,193 Kohnenkamp, et No. clearly transfer, and erroneous. raise, lower, transfer Davits and co-patentee Sprengel himself was the boat inboard and outboard. both solu- the first workable of '193. It was definition of dav- district court took its it, serving problem forward tion lowering which mentions hatches with after craft, life from the Patent Office classi- Kohnenkamp commercial success. was a fication definitions. Never mentioned Sprengel '390 with is similar to was the obvious that a boats fact configura- exception of head they taken on board time are each the head of the tion launched at sea. Webster’s New Inter- boom its head resembles boom. Dictionary, Ed., national 2nd defines fact, fork; simple ’193 has “Y” or a crane, davit as form of of metal or “old fork” referred to as the been movable, wood, projecting fixed or over Sprengel’s in ’390 as third embodiment hatchway, the side a vessel pur- set the “new fork.” hoisting boats, anchors, accommodation suspends the arms between chase blocks ladders, Knight’s cargo, etc. Modern pin or connect- is no of the fork. There ing piece Seamanship, gives Ed., 10th a definition except the arms at the fitting spar of davit as a curved metal from which is sus- throat of the “Y” projecting a socket deck and upper purchase pended hanging the side or stern for boat much like functions handling weights. Knight’s Ch. ofVII '390. davits, also illustrates various some guide end at its Each arm has a sheave sockets, which are not inset as Ashe arm runs down cable from each not, and includes on lower- subheads purchase end blocks so that each hoisting lifeboats at sea. Ob- hauling part. purchase is a viously, precisely Ashe ’664 is not swung through, the the boom is When clearly same ’390 but Ashe up closely is drawn (the bearing support discloses a load place upper and lower davit) swings through a vertical together. close- boom then blocks ly swung plane employing pendulum fitting vertical, and to across (from suspended) which pur- opposite direction, and lower pendulum-like
which facilitates a
move-
op-
lowered down the
chase block
then
hoisting gear alongside
ment of posite
boom after the boom
side
*9
support.
opinion
through.
of the district
swings
Despite
the success
gave
shortcomings.
Due to
to what
there
court
insufficient credence
were
height
it did teach and
of the boom
too much credence to the
the head
purchase
point
the differences
Ashe ’664
at which the
between
piece swings
legs
through
through
uprights,
passed
was dif-
cross
it
reading
operate
pendulum.
tricky
the boom like a
A
and thus
to
ficult
to view
good
and more so
discloses
from the
under
conditions
that cables
even
Highly
kingpost
up
night
are taken
out simulta-
in bad
weather.
let
neously
required to com-
to raise and lower
the boom.
were
skilled crewmen
finding
great
plete
Also,
care
court
the district
the maneuver.
taught
Lehmann ’222
ro-
a boom which
to be exercised to insure
had
degree
up
tates on a 180
axis to
was drawn
close
lower
face
through
enough
swing
hatch and
then turn to face the other
the fork
tight
rigging
clearly
hatch was
Lehmann
not so
as to foul the
erroneous.
necessary
'222 instead
a boom which is
not
further
discloses
blocks.
It
exactly
lowered,
rotated,
raised and
to ac-
describe in detail
'193.
It works
except
hatches, precisely
both
for the different boom commodate
'390
like
configuration
resulting
same manner
head
swing
also clear
that Lehmann ’222
discloses
lower
purchase gear
swings
upper,
block above the
than
rather
below
legs
alongside
pendulum-like
boom,
leg,
a
motion.
each
like
again
pendulum,
Spren-
a
precisely like
gel
paper pat-
’390.12 Lehmann ’222 is a
3,042,222 (1962).
3. Lehmann No.
ent;
any
it has never been installed on
Lehmann
’222 recites
ship.
patent,
The issuance
how-
problems
us
encountered
ever,
presumption
creates
ing one boom to
both forward and
serve
workable.
Simmons
A.
Co. v.
Brand-
proposes
after hatches and
disclose
440,
wein
Co.,
(7th
&
250 F.2d
Cir.
accomplish
which can
end with
1957); Application
Reynaud,
51 C.C.
problems.
according
out the
1310,
625,
(1964).
P.A.
'222,
legs through
to Lehmann
has two
alleged unworkability
pat-
And the
of a
hoisting
gear may freely
which the
necessarily preclude
ent does not
its rel-
swung through
when the boom is
ascertaining
scope
evance
hatches
serve the
forward and
A
aft.
content of the
art. Hadfield v.
bearing
piece, perpendicular
load
cross
Ryan Equip. Co.,
(8th
12A. used here and for the of this *11 242
Sparrow ’403, 3, 2, 14, Sprengel cited the district while 15 and 18 ’390. and discussed in the to this court briefs district court found that claims court, apparently pressed infringed below. and 3 was not were not but that claims Why pressed clear, infringed.13 not but and not Blohm were may ignore appeal we a & not relevance as Voss did not cross no-in fringement findings part prior Sparrow art. discloses of claims 2 and serving Therefore, validity a successful means for forward such highly and after claims not at hatches without issue. The claims at is danger operators Sprengel sue skilled needed and and Sparrow claims, however, may which attended old other be rele fork. they purchase vant also discloses which because disclose the various swings alongside concept methods boom which the inventor’s swings through may says vertical, pen- employed. like a be If the inventor dulum. The sleeve at the boom head one embodiment of his em ploys rotary, drawings concept and the em same as another clearly purchase patent, prior claims disclose bodiment of his then art swings alongside similar boom as the either embodiment would swings through kingposts. seem bear issue obviousness.14 Between the Prior Differences outset, At the we note that there are Art and the Claims at Issue Sprengel some differences ’390 between prior reference, just and each art alleges Blohm Voss & there are some differences infringed ships on Grace’s claims (b) holding Claim 13. This resulted from district according gear capa- “The combination to claim 14 in court’s conclusion that the Grace pin sufficiently capacity infringe which said head extends ble of 30 ton did not transversely opposite (1, 2, 3) from two sides of claims and of ’390 which disclosed cargo provide single purchase fitting, said boom to attachment a but that Grace’s 80 points span equal capacity gear infringe tackles at distances ton did the claims of longitudinal boom, Sprengel (14, 18) from the axis of the '390 15 and which dis- points being gear. purchase these each of attachment be- closed the double yond purchase fitting block mounted respective specific on the extension. 14. The claims at issue are as fol- (c) Claim 18’ : lows comprising (1) cargo (a) “The combination a Claim having upper an a end and lower 14 of as follows: Claim ’390 reads end, (2) pin extending transversely comprising (1) cargo a head a “The combination opposite cargo having upper from sides of said an end and a lower boom end, (2) upper (3) extending transversely thereof, pin boom near end a head pair purchase opposite cargo fittings, said block each from sides of fit- ting (3) being pivotally adja- upper thereof, closely near mounted end cargo pair purchase fittings, swing cent each fit- said boom to block from side cargo ting adapted upper and a lower- to side of said to have an boom as a normal purchase purchase substantially with said boom in block and associated upright suspended fitting position, it, fitting being each tackle being pivotally from one so adjacent closely pin mounted mounted on one extension of said head being cargo fitting side to and the other said boom to so mounted on pen- opposite pin, a normal side of said boom as extension of said head ex-, substantially up- fitting including guide and each dulum said boom means fitting being right position, tending, upper so mount- above the end of said boom upright position adapted ed extension of said head on one which is to re- being hauling parts so mounted ceive the the other pin, opposite away head extension of said tackle and direct the same from said including guide (4) pair upper purchase means extend- each upper blocks, suspended end said boom above the each from a adapted upright position fitting, (5) pair pur- re- of lower hauling parts blocks, up- chase per purchase ceive the each from an away tackle, having pad- and direct the same block and each eye depending said boom. therefrom.” Deere, supra, applicable art references Ashe’s sets forth themselves. necessarily standards, anticipation by specific different boat davit respects. Yet, some in both Ashe reference is the rule. bearing support a load Although, may Leh- be said that *12 (call whatever) boom, is it a a davit enough Sparrow mann ’790 and ’403 are so affixed to deck that it the Sprengel different from ex- ’390 to the (through dead cen- tilt back and forth tent the of neither could be claims ter) support both, . In head of the the anticipate Sprengel (at said to de- least always directly the to be matter argue), fendant did not both disclose so raised, transferred, car- lowered or be it quite concepts. relevant go both, fitting or a In a lifeboat. obtaining the the methods of While pro- pivotally a mounted from which pendulum through purchase support trudes from and is mounted the gear rerigging in without Lehmann ’790 longitudinal right angles the axis Sprengel different, in and both, ’390 parallel support plane in a swung for- the when boom is purchase gear both, In sus- deck. the gear swings aft, purchase the ward through alongside fitting swings pends from such pen- like a the boom alongside pendulum support in the fash- positioned at dulum. When the boom is ion. nearly place dead cen- a other than at or very Kohnenkamp successfully ac- ’193 fittings ter, freely the rotatable around commodated forward and after hatches pins protruding from the except and disclosed of ’390 for the all support purchase boom and which configuration fittings head boom gear, precisely same function have pendulum used ’390’s side mounted fitting Sprengel pendulum does the as fittings, major constitutes which difference the two. result between Sprengel fitting Sparrow pendulum ’390 of the side Both ’403 mounted danger swings which requisite disclose alongside was that the problems skill pendulum swinging through like in Koh- swings through kingposts. nenkamp ’193 were solved. ' course, ’390, Sprengel ac- In this is There are differences Leh- complished by pendulum at- pen- Sprengel mann ’222 and side ’390 ’403, pin. Sparrow In tached swing Sprengel mounting. dulum ’390discloses through rerigging is ac- single structure, whereas, Leh- by having rotary complished sleeve legs, mann ’222discloses a boom with two freely near the head the boom which or, plaintiff it, joined calls two booms longitudinal axis of rotates around the top. way, at the Either Lehmann and from which open- discloses boom or booms with an ing suspended by means through between, pur- to al- which enables-the gear swings swings chase as the boom ways remain vertical. say it fore and could One aft. swings opening in the drawn The ultimate conclusion like the new fork of comparisons these will be consid- swings say alongside or one could along ob- ered conclusion of separate pendulum booms fashion like viousness. Sprengel’s side embodiments. Plaintiff, in its zeal to Leh- show that n The Level Ordinary in the Skill anticipate
mann ’222 does not Pertinent Art ’390, fails to take account of Leh- what position mann ’222 specifi disclose. does Its The lower court did not cally seems to ordinary be that Lehmann ’222 must an- resolve level of skill ticipate Sprengel pertinent Supreme ’390 or irrelevant. did the art. Nor Such Graham, Graham v. John law. Court Adams Anderson’s- many strength pre- Rock, supra.15 Nor de-
Black have S.C. of this § Yet, sumption we has been a matter of consider- decided since cisions Graham. by foregoing opinion able comment note discussion the courts. We are of during comparison, has, perhaps first was issued made Supreme to be one time when the Court “observed clear. The matter seems level easily it- lend a notorious difference between does not otherwise applied by specific matter standards the Patent Office articulation. self Graham, supra, necessarily related to and the courts.” also to be seems light U.S., inquiry scope 694. In and content Graham, court, ven- fact that stat- inventor who art. general presumed ed that the strictness the test to know into the art is tures *13 Judge patentability remained invariable prior Rich of references. has art years, Supreme for 20 or 30 picturesquely when he wrote Court stated suggestion may imagined perhaps be that the as that inventor should be permissive prior in its workshop too Patent Office was “with the seated his concept presumed to of invention. he is art references—which hanging him walls around know— patent ” contends that the Grace Winslow, Application 53 . Office, slipped Patent while 1017, 1020 1574, F.2d C.C.P.A. pre Blohm contends that & Voss Regardless hypo- (1966). of what strengthened sumption because is pre- art is thetical man skilled ’222, Patent considered Lehmann Office know, the evidence before sumed Kohnenkamp Lehmann ’790 of or- that the level lower court revealed dinary Spren wrapper for We note that the file high. architecture skill is Naval gel Spar ’390 that Ashe ’664 and shows recognized specialty in the field ais not considered. This row ’403 were experts design engineering. The held, along others, court that has with trial, by gave testi- evidence at the who validity statutory presumption is mony by deposition, were conversant pertinent prior where weakened art is cargo the elements of the various with not considered office. gear patentees in the structures. The Blumcraft v. Citizens and Na Southern patented who two-hatch art Bank, (4th tional 407 F.2d at 561 working gear familiarity with exhibited 1969); Corp. Cir. Johns-Manville Ce components type disclosed in Co., ment Asbestos Products 428 F.2d Kohnenkamp gear, '193, first workable (5th 1970); Cir. see Skirow v. capabilities and the and limitations House, Inc., Roberts Colonial 361 F.2d of na- is clear that the field thereof. (7th 1966); Cir. Sound Scribner v. including design architecture, val States, United cargo gear, specific area of Ct.Cl. think net ef We engineering specialization in fect of all these contentions and authori degree expertise considerable plaintiff ties is came into court uncommon. good patent with and the burden was prove the defendant to as to bad. We are Conclusion Obviousness opinion the defendant met the bur foregoing mind, With the we turn den. question to the ultimate of obviousness. Supreme Court has listed before the court with its as sec- ondary statutory validity. presumption of 35 U. considerations which rele- Technograph ordinary pertinent art, level As this court noted Print skill Circuits, Corp., necessarily ed Ltd. v. Martin-Marietta the court considered it be- (4th 1973), 798, 807, holding F.2d cause of the n. was den., cert. obvious.” 414 U.S. 94 S.Ct. 38 L. (1973) Ed.2d 125 : “Nowhere in Anderson’s-Blaoh Rook did Supreme set out Court what was following dis- colloquy fol- of obviousness the issue vant on for Blohm & and counsel (b) trict court success; (a) lowing: commercial others, Voss: needs; (c) failure long felt commercial was ’390 etc. block, I “Now, the double Kohnenkamp ’193. success, was pre-trial confer- I believe said success, a commercial Sparrow ’403 was discussing ence, what is inven- while extent. although perhaps lesser to a nothing not, more and what tion ships. installed ’790 Lehmann up putting there. two of those than had Kohnenkamp there Prior block was of the second “The addition industry long in the need felt been a simply of Mr. conceived utilizing both serve the load increase he wanted because re- hatches forward and after rigging. required to lift with the that he was successfully Kohnenkamp being ordered. He will that was it is doubtful need. met that While testify required to lift the that when improve was as old fork the need to. engineers load, his heavier he told itself, great the old fork need for as the design single pendulum take could need for was a there image of it. and make a mirror after hatches serve forward it. That’s all there is to Sparrow safety greater lesser skill. *14 single concept, Ias “It has inventive did accomplished and so that result ’403 express your I Honor believe tried to ex- Sprengel a more successful '390 to pre-trial at the conference. The con- tent. cept pendulum of the utilization is by block mounted one end of the boom secondary These considerations swung rotation free as the boom is analysis do in not affect the this case through the from fore to aft vertical requiring an extent us to find nonob or aft to fore. viousness. without Commercial success patentabil invention does not amount to ity. you or of them “Whether have one Co., supra. Thus, A Tea & P we you them, the whether have two of legal question come to the ultimate validity, of (Appendix invention is the same.” is, it is clear that it in the (90a-91a).) analysis, question final of law. Gra Thus, Sprengel inventiveness ’390 Deere, supra; Heyl ham v. John & Pat in does not lie one set of blocks terson, Co., Inc. v. McDowell 317 F.2d or two It would sets. also seem that the (4th 1963); Top 719 Cir. Lemelson v. having inventiveness not lie does per Corp., 845, (2nd 450 F.2d Cir. purchase gear swinging alongside the 1971); Stamicarbon, Cf. N. V. v. Escam boom because one of the embodiments 920, Corp., bia Chemical gear swing through has the (5th 1970). top of the boom. Nor the inven- does specific While the particular type claims tiveness lie in the ting of fit- Sprengel 14, ’390 at issue are 15 and 18 used at the head they infringed because claims, were the suspended. which plaintiff’s is In the. all the embodiments are relevant on the “Sprengel’s in- own words: issue obviousness. This is so employing vention does not reside case because the single fittings inventor has pendulum-block having disclosed a concept inventive specific including three configuration, embodi hollow (Single purchase gear alongside passages through ments. which the cargo hoist- boom; purchase gear, double rope extends, depicted patent in the single side; either so, in suit. If this were not from a structure on surely the boom like in suit would have included at wishbone). a closed The fact that specific least some claims such fit- concept same ting. is disclosed in the But it does not.” And later: purchase gear expressed and double Sprengel in “There no evidence ever Adams, U.S., at desired end. to such claim asserted Rock, brief, p. fittings.” (Appellee’s and Anderson’s-Black
block
U.S.,
acknowledged
60,
as it
oper-
concerns the obviousness and
ability
patent,
issue,
is a factual
II.
committed in the first
instance to the
basically
de-
district
court and reversible
for
boom and
scribes
clear error.
Co.,
Graham v. John Deere
loading
unloading
cargo vessels.
1, 17,
383 U.S.
86 S.Ct.
15 L.Ed.2d
patented
unique
boom is
because
(1966).
clearly
rule,
erroneous
can,
rerigging,
hatches
service
although virtually ignored by
major-
accomplishes
both
and aft of
fore
it.
ity,
applied
special
should be
vigor
First,
two devices.
litigation
highly
because of the
boom is attached to the
deck
technical nature of the facts
in issue.
joint
permits
universal
See Graver Tank Co. v. Linde Air Prod.
swing
port
the starboard
sides
Co.,
605, 610,
339 U.S.
70 S.Ct.
ship,
in an are from a
L.Ed.
position pointing
toward
bow
While 35 U.S.C.
103 states
§
that a
ship
pointing
the aft.
toward
patent may not be obtained “if the dif-
particular aspect
This
is not
subject
ferences
matter
original.
original
The second and
device
*17
sought
patented
prior
be
and the
art
pendulum block,
blocks,
is a
attached
are
subject
such that
matter
as a
hang
top
of the boom from which
whole would have been obvious at
cargo
cargo
pur-
tackle and
boom’s
time
person
the invention was made to a
(the ropes, hooks, etc.,
chase
which are
having ordinary skill in the art
to which
load).
used to
device
lift
Since the
subject
pertains,”
said
matter
John
at
of the
is a
boom
Deere,
17-18,
U.S.
gear hanging
block, the
from it
al-
will
694, prescribed
proper analysis
un-
straight
ways
drop plumb line
follow a
der
103:
§
perpendicular
regard-
deck
position
It
question
less
of the boom.
While the
ultimate
perpetual perpendicular
validity
this effect —the
.,
is one of law .
.
the §
hanging
position
tackle
103 condition
.
.
.
lends itself to
inquiries.
block and tackle
Under
is attached to one
basic
several
factual
by pin
the or both
scope
sides
boom a
content
§
determined;
dif-
runs
and the
In
boom.
to be
prior art are
analogous
boom,
prior
the Lehmann
art and
ferences between
ascertained;
rigid
is attached to the
brace between
to be
at issue
claims
legs
hangs
ordinary
in the
two
of the boom
skill
the level of
hence,
“gallows”
Against
it;
this
nickname.
pertinent art resolved.
import
nonob- Another structural difference
background,
obviousness
by
subject
de-
method
matter is
which the booms are
of such
viousness
secondary
Sprengel
attached to the deck. The
considera-
termined. Such
long
by
pivotal
joint
boom is
success,
felt
attached
as commercial
tions
others,
permits
swing right
needs,
failure of
left
unsolved
give light
and fore and
might
aft. The Lehmann
boom is
etc.,
utilized
be
rotary
surrounding
platform
connected to a
the or-
and the
circumstances
platform
sought
permit
igin
subject
rotates to
matter
the boom to
right
swing
degree
or left in an
patented.
As indicia
obvious-
arc.
be
swing
nonobviousness,
inquir- The fore and aft
these
the Lehmann
ness
accomplished
boom
relevancy.
(Emphasis
by
is not
rotation of
have
ies
platform.
added).
The district court found that the Leh-
Adams, 383
States v.
U.S.
See United
39,
mann
Sprengel
device did not render the
(1966);
708,
boom, always
re-
Another more
down
and
gardless
position
tant
indication was the financial
boom.
Sprengel
admittedly
does
commercial
success which
But
Lehmann boom
virtually superseded
Sprengel’s
pendulum
employ
It
received.
novel
prior
shipbuilding.
on
I
all
booms
new
therefore
this effect.
achieve
Deere; Adams; Reynolds,
nothing
167 F.2d at
Lehmann boom
can find
Although
suggest
Sprengel
alone
83.
commercial success
the structure of
obviousness,
my
does not resolve the issue of
conclusion other-
boom. To state
proper
wise,
is nevertheless
consider
it.
I
that can be
think that
most
Compton
Products,
Inc.,
capable
concept of
a boom
Metal
F.
said
recog-
(4
1971),
being swung
denied,
and
was
2d 38
cert.
406 U.
fore
aft
Lehmann,
attempted
L.Ed.2d 667
nized and
S.
Finally,
although
sought
obviousness
to accom-
mechanical means
predominantly by
plish
purpose
determined
examin
were different
prior patents
Sprengel
what
the claims
unworkable.
and moreover were
taught
paper,
proper
on
it is
to consider
Coupled with
and con-
the structural
prior pat
whether
claims made
ceptual
between Lehmann
differences
operational
ents
ever
were
to dis
Sprengel,
my
suf-
which
mind are
inoperable
Adams,
count
ones.
ficient alone to
that
the dis-
demonstrate
51-52,
708; Reynolds,
U.S.
86 S.Ct.
finding
trict court’s
of non-obviousness
’222,
prin
an academic exercise. therefore myself merely by saying that I
content them, I find no
have considered them, so that I cannot concur
merit judgment majority even on grounds.
different BOARD,
CIVIL AERONAUTICS Plaintiff-Appellant, al., TRAVEL et
AEROMATIC CORP. Defendants-Appellees.
No. Docket 73-1059. Appeals,
United States Court Circuit.
Second
Submitted Nov. 1973.
Decided Dec. 1973.
As Amended Feb.
Mulligan, Judge, Circuit dissented opinion.
and filed