Appeal from the United States District Court for the Western District of Pennsylvania. District of Columbia Civil No. 72-558.
Seitz, Chief Judge, Aldisert, and Garth, Circuit Judges.
Allegheny Drop Forge Company brought an action against Portec, Inc.*fn1 to declare invalid United States Patent Nos. 3,100,080 (Railway Rail Joint) and 3,139,364 (Method of Making Railway Track) held by Portec as licensee from Rene A. Fiechter, the patentee. Both patents involve the joining of railroad rails by use of epoxy resins. Allegheny moved for summary judgment on several grounds, arguing primarily that, given the state of the pre-existing art, the patents were invalid as "obvious" under 35 U.S.C. § 103.
In granting Allegheny's motion for summary judgment, the district court reviewed several pre-existing United States and foreign patents, including a West German patent (No. 1,705,115), all of which involved the joining of metals and rails by use of epoxy resins.*fn2 The district court analyzed both the Fiechter and the West German patents, the latter of which had predated the Fiechter patents by eight to nine years, but had not been considered by the United States Patent Office during the proceedings which led to the issuance of the Fiechter patents.*fn3
On analysis, the district court found the Fiechter (Portec) patents and the West German patent to be essentially identical and accordingly held the Fiechter patents invalid. The district court's reasoning is reflected in the following portions of its opinion:
Having thus delineated the scope of Fiechter's claimed inventions, we turn to examination of the prior art to ascertain whether they are "new" or whether they merely represent ordinary mechanical developments which would be "obvious" to an artisan of ordinary skill in the pertinent art. We bear in mind that "in legal contemplation, one of ordinary skill in the art is chargeable with comprehensive knowledge of it." Contl. Can Co. v. Crown Cork & Seal Co., 415 F.2d 601, 603 (C.A. 3, 1969).
Can it be established by plaintiff, from the evidence of record in the case at bar, that the patents relied on by defendant teach "nothing of significance that has not already been disclosed"? 415 F.2d at 602. Can it be shown that Fiechter's "advance over the prior art, if any, required only the exercise of the skill of the art"? Detrola Corp. v. Hazeltine Corp., 313 U.S. 259, 269, 85 L. Ed. 1319, 61 S. Ct. 948 (1941). Our analysis discloses that these questions must be answered in the affirmative.
West German Gebrauchsmuster*fn9 No. 1,705,115, applied for on December 12, 1954, by the German Railroad System (Deutsche Bundesbahn), issued July 28, 1955, expiring January 1, 1961 (Ex. 4) makes the following claim:
"Electrically insulating fastening of railroad rails to the railroad ties as well as electrically insulating connection of the railroad rails with each other, identified in this respect, that the rails (1) or the thereto fastened underlying plates (2) are firmly glued together by means of a known adhesive for metal (5) with the ties (3), especially steel and concrete ties, as well as the rails directly with each other or also additionally with strengthening fish-plates (4) lying along both rail-ends." (Footnote omitted)
The description of the advantages of this German invention emphasizes the reduction of maintenance costs, due to the absence of bolt-holes which would weaken the strength of the rails. Electrical insulation (necessary in connection with signals) is also emphasized. But defendant's patents likewise cover insulated joints. The insulation is afforded by the insulating properties of the adhesive itself. Defendant's method also permits non-insulated joints, when desired, by assuring metallic contact between the rails, rather than complete separation by adhesive material. This difference is not material, as the conductive properties of steel have been long known.
It is very clear that this invention and defendant's are essentially identical. Defendant's is stated in more verbose language, partly in response to criticisms from patent office examiners, but in substance both have the same features: fastening of rails together, or of rails with tie plates, or fish-plates, by means of glue.
This German patent was not considered by the United States Patent Office during proceedings which led to issuance of defendant's patents. Fiechter knew of the German patent no later than July 21, 1960 (Ex. 34). Whether Fiechter was or was not under any duty to bring this prior art to the attention of the United States his patents involved in the case at bar is immaterial in the present connection. But it is clear that the German invention of 1954 antedates Fiechter's claim of conception in July, 1955 . . . .
Likewise the Neuweiler Swiss patent No. 236,552 of June 16, 1945, (Ex. 6) covers fastening rails to ties by means of adhesive. It does not cover joining the rails to each other by adhesive. The same inventor's Swiss patent No. 247,641 of ...