SHEMITZ v. DEERE CO., INC., 623 F.2d 1180 (7th Cir. 1980)
SYLVAN R. SHEMITZ, PLAINTIFF-APPELLANT, v. DEERE COMPANY, INC.,DEFENDANT-APPELLEE.
No. 79-1792.United States Court of Appeals, Seventh Circuit.Argued January 7, 1980.
Decided May 28, 1980.Page 1181
Anthony P. Delio, II, New Haven, Conn., for plaintiff-appellant.
George T. Mobille, Washington, D.C., for defendant-appellee.
Appeal from the United States District Court for Central District of Illinois.
Before SWYGERT, SPRECHER and BAUER, Circuit Judges.
PER CURIAM.
[1] This appeal is taken by the plaintiff from an order of the district court concluding the invalidity of the patent allegedly infringed and granting the defendant's motion for summary judgment. Measured against the criteria set forth in Graham v.John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the district court determined that the patent in issue was invalid for obviousness under 35 U.S.C. § 103.
[2] Having examined the record, addressed the briefs, and heard oral argument on behalf of the parties, we agree with the district court that the plaintiff has failed to establish a genuine issue of material fact as is required to defeat a motion for summary judgment under F.R.Civ.P. 56(c). Accordingly, for the reasons given in Judge Morgan's Memorandum of Decision, which we adopt as our own and append hereto, the summary judgment for the defendant is affirmed.
[3] AFFIRMED.Page 1182
APPENDIX
UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF ILLINOIS
SYLVAN R. SHEMITZ, )
)
Plaintiff, )
)
v. ) No. 78-4032
)
DEERE COMPANY, INC., )
)
Defendant. )
MEMORANDUM OF DECISION AND JUDGMENT
On May 31, 1979, at hearing thereon, the court announced
allowance of defendant's motion for summary judgment herein and
promised a memorandum of its reasons therefor. This is that
memorandum.
The following facts are not disputed. Plaintiff, Sylvan R.
Shemitz (hereafter Shemitz), is a citizen of Connecticut, and
since 1963 has been in the business of rendering lighting,
design, and consultation services. Defendant, Deere Company,
Inc. (hereafter Deere), is a Delaware corporation having its
principal place of business in Moline, Illinois. Jurisdiction by
the court over both of the named parties and over the subject
matter of the patent infringement complaint and counterclaim for
declaratory relief is uncontested.
This action was instituted by a complaint filed by Shemitz on
July 13, 1978, charging Deere with infringement of his United
States Patent No. 3,389,246, granted June 18, 1968, on an
application, Serial No. 521,068, filed January 17, 1966. Said
patent is hereafter referred to as the Shemitz patent. The basis
for the charge of infringement is that Deere purchased certain
illuminated wall partition dividers alleged to infringe the
Shemitz patent and is using same in its corporate headquarters.
Although the said patent contains three claims, the charge of
infringement is only to claims 2 and 3 thereof.
Deere answered and counterclaimed, seeking a declaratory
judgment that the Shemitz patent is invalid and not infringed by
Deere. Shemitz filed his reply to said counterclaim, denying the
allegations thereof. Deere contends, inter alia, that Shemitz
patent claims 2 and 3 are invalid, pursuant to 35 U.S.C. § 103,
because the differences between the claimed subject matter and
the prior are are such that the subject matter as a whole would
have been obvious at the time the alleged invention was made to a
person having ordinary skill in the art to which such subject
matter pertains. The alleged invention was made in 1965, i. e.,
it was conceived in April, 1965, and was reduced to practice in
September, 1965. The art involved is room and desk top
illumination in relation to room dividing.
The claimed subject matter essentially pertains to a room
divider partition that divides a room into work areas while at
the same time providing direct illumination over a desk or the
like positioned adjacent thereto, as well as indirect
illumination of the remaining room area by means of a light
fixture mounted in a frame overhanging a portion of said
partition and of a height lower than normal standing eye height
but higher than normal seated eye height of an adult person. A
reflector is included in the light fixture to assist in directing
the light emanating therefrom.[fn1]
Page 1183
The prior art relied upon by Deere to demonstrate obviousness
constitutes admissions by Shemitz; a carrel-divider construction
publicly used at the Reed College Library, Portland, Oregon, as
early as October 10, 1963; and United States Patent No. 1,457,061
granted May 29, 1923, to E. F. Guth.
Shemitz admitted during his examination on deposition by
defendant's counsel that he did not consider himself to be the
first person to have devised a room divider providing direct
illumination overhanging a desk while simultaneously providing
light that contributes to the indirect illumination of the
remainder of the room; nor does Shemitz consider himself the
first person to devise a height for the illuminator in such
divider that is lower than the normal standing eye height of an
adult person positioned adjacent the divider and higher than the
normal seated eye height of an adult person positioned at the
desk. If this does not constitute admission that the essential
features of the claimed invention were well known in the prior
art, the Reed College Library construction appears to this court
to demonstrate the obviousness of the claimed invention. It is
clear that such construction constitutes a carrel-divider with
built-in direct/indirect overhanging fluorescent fixtures open at
the top and bottom so as to provide direct local task lighting on
the associated desk top area as well as simultaneous indirect
general illumination of the remaining room area. Furthermore, the
carrel-dividers are of a height such that they are lower than
standing eye height but higher than the seated eye height of an
adult person using the desk. The Reed College Library lighted
dividers, in use since 1963, were not considered by the Patent
Office during the prosecution of the Shemitz patent.
The aforesaid Guth patent No. 1,457,061 discloses a lighting
fixture attached to a counter providing general illumination of
the room in which it is located, as well as illumination of the
counter. As stated in the patent, this is accomplished by up-down
lighting as in Shemitz, wherein the upwardly directed lighting
affords the general room illumination and the downwardly directed
light provides localized illumination of the adjacent counter
area. Guth is of further significance in providing that the
lighting fixture includes adjustable reflectors on both sides of
the light, which is an incidental feature of the Shemitz patent
claims in issue. The Guth patent was not cited during the
prosecution history of the Shemitz patent application.
Such prior art, individually or in combination, demonstrates
that the differences, if any, between the claimed subject matter
of Shemitz patent claims 2 and 3 and the prior art are such that
the claimed subject matter as a whole was obvious in 1965, at the
time the alleged invention was made, to a person having ordinary
skill in the art to which said subject matter pertains. Mr.
Shemitz, himself, specified that the art to which his claimed
subject matter pertains can be described as "illuminated office
furniture and partition systems," and also asserted that the
level of ordinary skill in the art at the time of his alleged
invention was "knowledge of a table or desk lamp and knowledge of
wall, valance, or ceiling lighting." This may be slightly
restricted, but seems sufficient to render the claimed invention
in claims 2 and 3 invalid, as obvious under 35 U.S.C. § 103.
This court therefore concluded that it had jurisdiction over
both the named parties and over the subject matter of the
complaint and counterclaim. Rule 56(c),
Page 1184
F.R.Civ.P., provides in pertinent part that a motion for summary
judgment should be rendered "forthwith if the pleadings,
depositions, answers to interrogatories, and admissions on file
together with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the moving party
is entitled to a judgment as a matter of law." Rule 56 applies to
patent cases and is used where, as here, the structure and mode
of operation of the invention described and claimed in the patent
may be readily comprehended by the court without need for
technical explanation by expert witnesses and in such
circumstances; if said invention is found invalid because of the
prior art, then summary judgment is proper. Research Corporation
v. Nasco Industries, Inc., 501 F.2d 358, 361-362 (7th Cir. 1974),
cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974).
Validity of patent claims is not immune from disposition on
motion for summary judgment even though, in addition to prior art
patents, deposition testimony and affidavits are involved, if no
genuine issue of material fact is present. A R Inc. v.
Electro-Voice, Incorporated, 311 F.2d 508, 511 (7th Cir. 1962).
35 U.S.C. § 282 provides that an issued patent shall be
presumed valid. However, where, as here, the anticipating prior
art was not before the Patent Examiner, there is no longer such a
presumption. Rockwell v. Midland-Ross Corp., 438 F.2d 645, 650
(7th Cir. 1971). 35 U.S.C. § 103 provides that "A patent may not
be obtained though the invention is not identically disclosed or
described as set forth in section 102 of this title, if the
differences between the subject matter sought to be patented and
the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter
pertains." Obviousness must be evaluated under the standards
adopted by the United States Supreme Court in Graham v. John
Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545
(1966), requiring an evaluation of the scope and content of the
prior art at the time of the invention, the differences, if any,
between the prior art and the claims at issue, and the level of
ordinary skill in the art. Centsable Products, Inc. v.
Lemelson, 591 F.2d 400, 402 (7th Cir. 1979); Research
Corporation v. Nasco Industries, supra at 361.
Measured against those criteria, the subject matter of the
claims at issue was clearly obvious at the time the invention was
made, to a person having ordinary skill in the art to which said
subject matter pertains, so that summary judgment by reason of
the provisions of 35 U.S.C. § 103 is appropriate. Centsable
Products, Inc. v. Lemelson, supra; Research Corporation v. Nasco
Industries, Inc., supra at 360-362; A R Inc. v. Electro-Voice,
Inc., supra at 511-512; Davison Chemical Corp. v. Joliet
Chemicals, 179 F.2d 793, 794-795 (7th Cir. 1950), cert.
denied, 340 U.S. 816, 71 S.Ct. 45, 95 L.Ed. 599 (1950); and
Hancock Laboratories, Inc. v. American Hospital Supply Corp.,
199 USPQ 279, 283-284 (N.D.Ill. 1978).
Invalid patent claims cannot be infringed, and therefore the
counterclaim for declaratory judgment, that Shemitz patent claims
2 and 3 are invalid and not infringed, must be granted in all
respects, with a recovery of costs against the plaintiff. The law
is with the defendant and against plaintiff on the complaint and
answer, as well as on the counterclaim and reply to said
counterclaim.
Accordingly, IT IS ORDERED that claims 2 and 3 of the Shemitz
patent are invalid and not infringed, judgment is entered in
favor of defendant and against plaintiff on the complaint, answer
and counterclaim, with costs against the plaintiff.
Robert D. Morgan
United States District Judge
Entered: June 6, 1979
Nunc Pro Tunc May 31, 1979
[fn1] Claims 2 and 3 of the Shemitz patent read as follows:
"2 A room divider partition for dividing a room having a floor into work areas, at the same time providing direct illumination over a desk or the like positioned adjacent thereto and simultaneously providing light for indirectly illuminating the remainder of the room, the room divider having a divider partition panel means, a frame extending and supported along substantially the entire length of the divider partition panel means, said frame overhanging a portion of the divider partition panel means, the frame open on the bottom and top thereof, and illuminating means positioned and supported in said frame, a member selected from the class consisting of deflector and reflector means supported by said frame, the height of the frame from the floor on which the partition is positioned such that it is lower than the normal standing eye-height but higher than the normal seated eye-height of an adult person.
"3 A room divider partition for dividing a room having a floor into work areas, at the same time providing direct illumination over a desk or the like positioned adjacent thereto and simultaneously providing light for indirectly illuminating the remainder of the room, the room divider having a divider partition panel means, a frame extending and supported along substantially the entire length of the divider partition panel means, said frame overhanging a portion of the divider partition panel means, the frame open on the bottom and top thereof, illuminating means positioned and supported in said frame, and a member selected from the class consisting of a reflector and a baffle supported by said frame, the height of said frame is between about 4.5 feet to 5.6 feet above the floor on which the partition is positioned."Page 1185