*2 apparatus claims the method “clamping means to a claims Fig. imparting” such twist. (shown F.Supp. at 318 pair of clamps each depicted toothed saw impart opposing of which “teeth” a twist to the arms Ralph Hammar, Pa., George Erie, E. which the Bullwinkel, plaintiff-ap- Chicago, 111.,for appears in the clamp. another held pellant. opinion. Mr. testimony quoted in the 111., Kulie, Chicago, Keith J. for defend- design that “personally Heibel did ant-appellee. agree with the saw tooth.” an obvious PELL, Cir- tooth saw Before FAIRCHILD imparting GORDON, clamping Judges, means cuit District mind, Judge.1 his had twist Mr. applica- Judge Myron plaintiff, on the predecessor District L. Gordon of Heibel, assignor, sitting No- D. District of Wisconsin Jerome Eastern tion of designation. 4, 1953. vember Technological 2,766,510, Apparatus Inc. v. Die Prod. 2. No. “Method and 3. Erie Making Condensers,” issued October Metal Prod. Craft Corporation, (N.D.Ill., to Erie Resistor leaving design of the saw tooth an- could be located on the side the [inter- other was immaterial, and clamping that these mediate] members . paratus theory fail nearest the condensers which case the that “he subject did not himself invent force would be sought patented.” opposite direction, e., i. the arm 4 would and the arm Validity: Anticipation 5 would be lift- II. at Radio ed, thereby depressing *3 (318 the F.Supp. 942). free end into Ceramics tighter engagement with the electrode The district court found that certain lifting 2 and tighter the free end 7 into testimony opinion summarized in the engagement with the electrode 3.” sufficiently process establish the capacitors of manufacture of at Radio In language just view of the clear twisting “Applying Ceramics included a to, referred torque the pro- a fact that is force leads in the direction duced in each arm of the lead when the gripping pairs crease the force of the twisting applied force is between the intervening free ends the leads on the clamp bridge intermediate the end of witnesses, discs.” Since of the two lead, the twisting but not when the force Wilbur, Frazier and described a reverse applied between the intermediate twisting bending process in order to clamp and the free ends of the lead does gripping a tension force in the create support the limitation found the disc, leads before insertion of the the district court. We think the court er- clearly think, is not erroneous. We roneously reasoned that what Heibel however, testimony concerning that this a twisting described as a one could be tensioning process upon bears the conclu- only when it as one resultant sion with to obviousness. torque lead, in each arm of the notwith- standing Heibel’s clear statement in the (318 Validity: III. F. Obviousness that meant it to he include 943-951). Supp. a force which arm and one lifted applied the other when the Scope 1. The Content the Prior clamp intermediate ends. Scope adequately Art. and content are heading set forth under this as and also episodes history of the plaintiff admissions of the next under the prosecution Riley of the heading (318 943-947). F.Supp. patents, court, described the district 2. The Between the Prior Differences not, significant opinion, are in our with (318 Art and in Issue. F. Claims interpreting so as to the claims 947-950). Supp. do have We areas subject to this limitation. Cancella- disagreement district court original 5, quoted page tion of 948, claim heading. page 948, under At the dis this asserting estop plaintiff application trict court concluded that its claims free of limita- twisting force is within claims (with respect portion tion of the suit when it occurs between lead at which applied). force is to be clamping means intermediate the shaped lead and the end of U just limitation must lead, and not when it occurs between “key also from the list of be deleted clamp and free ends prior differences” art between the finding nothing of the lead. given by issue, the claims (all language of the set opinion, F.Supp. our at 318 forth, which either significant is the implies states or such limitation. hairpin lead, while its intermediate specifications clearly indicate the con portion position by trary, they held in the carrier “The since as follows: recite means, clamping [imparting clamping strips members in such twist] or other 102(f). 4. 35 U.S.C. § Ordinary direction as increases the 3. The Level Skill between the free ends of lead. Pertinent Art. search this branch inquiry 103 is under Some forms of hypothetical having “person ordinary produce gripping order force on skill in the art to which said disc when between the free ends inserted pertains.” Where number art, prior of the lead were known people joined organiza- in commercial e., p. Ehrhardt, i. or arch bend production tions devoted to commercial sprung lead wires item, example capacitors an Herrick, p. twisting done here, which we are concerned there judge ac- at Radio Ceramics. Had usually specialization effort, often at testimony Buckley Erbe, cepted more than one level. Skill which virtually they an twist described production for a worker although very anticipation, near manager different from that of a *4 accepting But free ends of the lead. designs enterprise small methods as who testimony employees and of Frazier production well as directs conducts Wilbur, they producing a ordinary of a business affairs. skill though identical, by kindred, a technically specialist trained whose whole 945, 6, process. p. patent, The Kraft job design products is is to methods a similar for described again purpose of this different. The though purpose, in a different similar standard to aid in the statute doubtless a different material. device and with discriminating in between substantial closing clamp a on the intermediate of improvements, novations routine portion after insertion of ordinary resulting inevitably almost from pro- itself two free ends disc between the determining competitive efforts. increasing grip- slight twist, duces ease, ordinary particular level of in skill by ping the free disc exerted on the appropriate to ask first whether it ends of lead. people body any of there is substantial regular agree effort the district who devote substantial We do alleged solving process particularly problem de of court that so, original and, portion to determine claim invention solves if scribed in the of ordinary people opinion, of skill 5, in the level italicized the district specifica group.5 (and page in in described 948 Fig. 6, p. in illustrated tions and define court did not The district suit. protected by claims in production ordinary level skill estopped original claim Cancellation August to capacitors in of ceramic disc claiming process plaintiff was 1952, October, time the invention any equivalent method described is the not direct made. Counsel process, how in in the claims ever, inquiry. The record shows effort at this arms of involves relatively new capacitors were disc clamp is the intermediate lead before closed, having begun in product, manufacture gripping power increase in Radio Ceramics late 1940’s. the middle or lead occurs the free ends between manufacturing enterprise, small awas clamp We see is closed. when the relevancy beginning in 1949. period them for operation defendant’s Buckley, an figures principal were Mr. machines. Corporation, 401 Grout, g., Applications Motors F.2d v. General Howe 5. E. Cir., 1968), 1967) problem den. cert. (C.C.P.A., : 78 919, solution; 22 L.Ed.2d solver, Gass user of the U.S. not the skill Co., Montgomery level ‘‘[T]he & 452: Ward bodies, designing Cir., 1967) automobile of ordi the field of : ‘'The level engineers including hinges, nary appears that of was be that in the field skill specialized training, long mechanically substantial men inclined ; design experience skill.” auto accessories.” engineer, Erbe, presump- electrical and Mr. issuance of the creates a engineer. guard mechanical tion against deciding its favor.6 We are to onbe many Plaintiff has been business any patent would have been obvious years, manufacturing and was disc solely because it has become obvious capacitors in 1952 and later. Mr. Heibel hindsight. Although do, should, engineer, an electrical first em- was carefully consider the conclusion reached ployed by plaintiff development as a court, the district the ultimate issue engineer engineer and was chief of obviousness under 1952. Mr. Coda is an electrical in engineer, by performing after it has been refined employed by plaintiff in first required by steps Graham v. John engineering 1942 and was on staff Deere Co.7 is one of law.8 Mr. a mechanical Christenson is engineer. employed plaintiff He was Exercising caution, required all charge drafting put in design just stated, the conclusion which engineering products. August satisfies our minds is that large enough staff was so that Christen- person October, of ordi when the reported who was son to a Mr. Stone nary skill referred to confront above him and Heibel. problem of the ends of ed with the leads, Christenson, Stone, and another were having described, strips held in the by plaintiff possibly named gripping power insufficient to hold disc developing responsible for ones who were during place soldering, capacitors in gave equipment Mr. Heibel after apply a twist have been obvious *5 directions in 1952. ing direction force to each lead such Sprague gripping power of of and its the Wisconsin as to increase the predecessors hairpin have leads free ends. capacitors
and since 1952. assembled disc Sprague, Rubinstein, president one of Infringement. Mr. IV. predecessor in of of the founders its valid, were If the claims engineer. July 1952 he is an electrical designed agreeing great difficulty have production by hairpin lead defendant was that the Sprague. infringement. contributory guilty of judgment, from the It is our best Wyr-Former produces Defendant’s record, of were a number that there by tape, side fastened leads organiza- people in commercial several strip. side, a card board Defendant’s to solving to who their efforts tions devoted discs ceramic Disc-Loder inserts problem with which the strips. bro- on such Defendant’s leads patent persons had bachelor’s deals. Such “for the machines chure advertises fast, two degrees mechanical in electrical or capacitor manufactur- economical practical experience of engineering, and Wyr-Former, ing.” the With years. skill several The level shape “any that announces brochure the in- pertinent at the time the art uniformly capacitor made can be leads technical made reflects such vention was training are au- per Leads min. at a of 100 rate experience. and formed, x tomatically taped to a Vie" %" pretensioned, chipboard and Subject x Matter 4. the Whether 22%" ready insertion.” With for disc been would then have Obvious as Whole Disc-Loder, says: “Ceramic it Having Ordinary the Skill to the Person in- and positioned vacuum discs are office course the the Of Art. chipboard leads serted into entire the must have decided obvious, seconds.” have been matter would not 2% Technograph v. Methode Printed Circuits 8. 35 U.S.C. Electrical, 356 F.2d 15 L.Ed.2d Cir., 1966). (1966). Wyr- by tensioner is sufficient defendant’s the may produced on be Leads deformation accomplish permanent tension the without Former ais desired, part each arm lead, if tension the degree in kind. and not is used. tensioner as the wire known the describes operating manual “Language patentee’s will as follows: meaning the tensioner given function if it can intended the 9 “Claims context.” ascertained from the right on the mounted end “At the light the be construed are to the wire track the chain front of specifications.”10 It seems clear put a purpose Its tensioner. (assuming specifications here right left lead slight lead bend horizontal) meant lead is be- tension put additional will which forcing by “applying force” purpose of the wires for tween up- tight other and the one arm downward holding inserted ceramic an place ward, being held in the same both prevent ceramic from enough speci- clamp. The intermediate has been losing before its explains fication that when soldered.” end near the force is viewed horizontal and lead If the lead, free of which the arm the end side, arm of the from the and the the disc is to be is above lifted free the other over crossed end which depressed. other arm clamp and the be bent downward end would acts as fulcrum upward. are be- bends other arm thereby depressed end of the former is by the portion of lead held tween As latter raised. free end chipboard free ends. tape and already stated, also ex- brief, correctly plaintiff’s stated plain that when tensioner, engaged by an “While lead, applied near ends the free grip developed remains which creased the arm free end of is above which be- leave tensioner after the leads other the disc is to be be- stressed cause the leads yond been have arm lifted. does Defendant’s tensioner the leads so that their elastic limit *6 exactly (except that that discs have in stress which continues have built yet inserted). been grip.” provide the increased claims, 6, method con- The differ- The court found two district template that the discs are to inserted ences, significant, between considered ends free before the Wyr- operation performed clamped fastened are and the claims Former strip and before the force bending force first was that applied. inserts Defendant’s Disc-Loder applied the free ends near the discs after tensioner on defend- bridge shaped and not near the U end. Wyr-Former ant’s has increased out, already pointed the claims are ends. force between the free application not limited to of the significant If this difference force of the lead. near end negative infringement of the method claims, appear such does not The second de- difference was that apparatus 4. claims 1 and fendant’s tensioners “bend rather than view, twist the leads.” In our Y. Our Jurisdiction to Review the hairpin lead of the arms of the Validity Appeal. Issue on this necessarily application results from the judgment of the to in the de- district claims. fact that the termined that the claims in suit Patents, Mining Mfg. 9. Deller’s Walker ed. § 2d 10. Minnesota v. Tech Co. p. 76; Pitner, Tape Corp., 55, at Dennis nical 142, (7th Cir., 1939), Cir., cert. den. 308 U.S. L.Ed. 507. infringed repudiation properly of the and dismissed rive at valid but not non-infringe- appealed. Defend- court’s Plaintiff the action. argued appeal, here ment. has ant validity determination and remand I reverse therefore would erroneous. accounting. for an the case approval of dis our Either in of no
trict determination court’s fringement our determination contrary invalid, claims are court would
conclusion of the
result in affirmance of dismissal de have decided that action. We erroneous, non-infringement
cision of al., Plaintiffs- properly William DASHO et consider could therefore Appellants, validity issue, in decision since
validity also result affirmance dismissal. SUSQUEHANNA CORPORATION al., Defendants-Appellees. et considering But whether even without infringement No. 18572. is cor- the decision of rect, to, perhaps we would be Appeals, United States Court obliged to, validity is- even consider Circuit. Seventh public importance sue because Jan. 1972. thereof.11 Rehearing Denied Feb. judgment appealed from modi- Certiorari Denied June fied so as declare See 92 S.Ct. invalid, and, modified, suit as so affirmed. Judge
PELL, (dissenting). Circuit complete myself
I to be in find unable
agreement the district court either with majority panel this court’s de- thorough spite ventilation respec-
facts in their and law contained opinions.
tive I therefore dissent. validity, the result On (318 Judge *7 Marovitz
reached me, seq.) as I 940 et strikes trace
analytical pursued, pathway he
eminently approve and correct. I
adopt part court’s
opinion.
However, majority opinion seems to refocillate the me infringement
pellant’s
claim and
ar-
Cosco,
v.
Hamilton
Sinclair & Carroll Co.
Interchemical
Corp.,
(7th Cir., 1967),
Corporation
M.O.S.
v.
; Maytag
(1945)
Company
Co.,
I.