## Facts

- Bendix (successor to Besly-Welles) and Sellew sued Balax and its president, John M. Van Vleet, alleging infringement of patents covering “fluteless swaging taps” and related methods, plus trade secret misappropriation.
- A fluteless swaging tap forms internal threads by displacing metal rather than cutting it; the reissue patent described a lobed thread design with relieved areas so only lobes contact the work.
- Two patents remained central on appeal: Reissue Patent Re. 24,572 (tool) and U.S. Patent No. 3,050,755 (method performed when using the tool as prescribed).
- Balax asserted invalidity based on prior art, emphasizing a German Gebrauchsmuster (utility model) that disclosed a thread-pressing tap via claim language, drawings, and specification.
- The district court held Re. 24,572 valid and infringed; held the ’755 method patent infringed but invalid due to the patentee’s own prior public use; dismissed the trade secret claim; dismissed Van Vleet individually; denied treble damages and attorney’s fees; and dismissed Balax’s Sherman Act counterclaim.
- Both sides appealed: Balax challenged the reissue patent rulings and antitrust dismissal; Bendix challenged the ’755 invalidity holding and the adverse rulings on trade secrets, Van Vleet’s dismissal, and enhanced remedies.

## Issues

1. Whether Reissue Patent Re. 24,572 was invalid as anticipated or obvious in light of prior art, including the German Gebrauchsmuster, and whether Balax infringed if the patent was valid.
2. Whether a German Gebrauchsmuster may be used as prior art based on its full technical disclosure (including drawings and specification) rather than only literal claim wording.
3. Whether U.S. Patent No. 3,050,755 was invalid due to the patentee’s own prior public use more than one year before filing.
4. Whether dismissal of the trade secret misappropriation claim and dismissal of Van Vleet as an individual defendant were erroneous.
5. Whether dismissal of Balax’s antitrust counterclaim based on Bendix’s patent enforcement conduct was proper.
6. Whether either party was entitled to attorney’s fees or treble/enhanced damages.

## Decision

- Affirmed that a German Gebrauchsmuster may serve as prior art and that its disclosure is assessed by considering its specification and drawings, not merely the literal claim wording.
- Affirmed that Reissue Patent Re. 24,572 was valid despite the prior art and affirmed the finding that Balax infringed.
- Affirmed that the ’755 method patent was invalid due to the patentee’s own prior public use, notwithstanding infringement.
- Affirmed dismissal of the trade secret claim and affirmed dismissal of Van Vleet as an individual defendant.
- Vacated the judgment dismissing Balax’s antitrust counterclaim and remanded for further proceedings.
- Left intact the district court’s denial of attorney’s fees and treble/enhanced damages, except to the extent antitrust remedies could be reconsidered on remand.

## Legal Principles

- Foreign patent-like rights may qualify as prior art in U.S. patent litigation; the relevant inquiry is the technical teaching disclosed, which may include specifications and drawings.
- Anticipation and obviousness analyses focus on what the prior art discloses as a whole, not a hyper-literal limitation to isolated claim phrasing.
- A patentee’s own public use more than one year before filing can bar patentability; a finding of infringement does not salvage an invalid patent.
- Patent-based antitrust counterclaims require analysis of whether enforcement or related conduct extends beyond lawful exclusionary scope; dismissal is improper where governing antitrust principles have not been adequately applied.
- Trade secret and individual-liability determinations are fact-dependent and will be affirmed absent reversible error.

## Conclusion

The Seventh Circuit upheld the reissue swaging-tap patent as valid and infringed while affirming invalidity of the method patent for prior public use, approved broader use of a German Gebrauchsmuster’s full disclosure in prior-art analysis, and remanded the antitrust counterclaim for further consideration while otherwise affirming the district court’s dismissals and remedial rulings.


Bendix Corp. v. Balax, Inc., 421 F.2d 809 (7th Cir. 1970)