Jeoffroy Mfg., Inc. et al. v. Graham et al, 206 F.2d 772 (5th Cir. 1953)

This appeal is from a judgment holding valid and infringed Claims 1, 2, 4, 5, 6, 7 and 8 of Letters Patent No. 2,493,811, issued to William T. Graham on January 10, 1950, for a "Vibrating Plow and Mounting Therefor".¹  Graham is the owner and Graham-Hoeme Plow Co., Inc. the licensee of the patent.

The principal issues involved are validity and infringement of the Graham patent, though appellants, as manufacturers of the accused device, incidentally raise questions as to the capacity or interest of the corporate appellee, Graham-Hoeme Plow Co., Inc. to bring the suit and the lack of willfulness in infringement, in the event appellee should prevail on the latter issue. On the initial question of validity, the specific defenses urged are that the Graham Patent is invalid because (1) it is anticipated by the prior art; (2) it discloses no patentable novelty or invention; and (3) assuming that invention does exist therein, William T. Graham was not the original inventor thereof, but copied the idea and structure from certain parties at Valley City, North Dakota, thereafter claiming them as his own; and (4) the claims of the patent are vague and indefinite and much broader than the specifications and any invention thereby disclosed.

The patent in suit embraces a spring clamp mechanism which permits resilient mounting of the shank of a ground working tool to the lower flange of the H-beam of a plow frame. The plow upon which the patented spring clamp is used includes a number of laterally spaced ground working tools which break the soil in such manner as to conserve moisture and minimize soil erosion. The spring clamp mechanism peculiarly adapts the plow for use in the rocky territory of North and South Dakota, Montana, Wyoming and other nearby states. In those areas, when the point of the ground tool strikes a rock beneath the surface, the spring mechanism permits the tool to rise up and over the obstruction, after which it forces the tool back into plowing position.

The patented device may be more particularly described as exhibiting a bracket, secured to the lower flange of the H-beam of a plow frame, with a fulcrum plate pivoted to the bracket and the forward end of the ground tool shank resiliently and frictionally held between. The front end of the shank has an opening through which a rod or bolt extends, and a coil spring around the rod is seated on the upper part of the bracket and held in place by a washer and nut. When a rearward and upward force is exerted on the ground working tool during operation, the forward end of the tool shank moves downward against the tension of the coil spring and rocks, or pivots, with the fulcrum plate of the clamp mechanism so as to enable the tool to pass over an obstruction, as well as to add further resiliency to the natural resiliency of the shank.² 

Since about 1937 both parties to this controversy or their predecessors have manufactured and sold a basic type chisel plow of "H" or "I" beam frame construction with curved spring steel shanks attached to the frame by various clamping means. When the old type Graham plow was used in the rocky northern and north-western states, rocks buried in the soil had caused extensive breakage and bending of parts and the need for some effective spring trip mechanism to remedy this difficulty for each shank of the plow became apparent.³  The patentee, Graham, first conceived the idea of providing the shanks of his plows with some type of spring mounting about 1940, though, as the District Court found, he did not mature his final conception or make any models of such a device until early 1946, when the need for such became urgent. Shortly afterwards he began commercial development of the spring clamp mechanism disclosed by the patent, and by early 1947 had furnished the Graham-Hoeme dealers and customers such devices for use on their plows.

In the spring of 1946, when difficulty was experienced with the old type Graham chisel plow near Valley City, North Dakota, certain local farmers constructed a device of their own to remedy the problem, a model of which is before the Court bearing the designation, "Valley City Device".⁴  Three witnesses testified that this device was made about March 20th or 21st, 1946, while another witness stated it was built on March 26, 1946. The District Court credited the testimony as to the latter date, and further found that the patentee, Graham knew the general description of the Valley City device in the latter part of March, 1946, at about the time his employee, Shelton, was instructed to make a drawing of his own spring clamp device, which antedates in structure the device of the patent in suit.⁵  However, the Court held that the Valley City device did not contribute anything material to the conception of the Graham patent, and therefore did not constitute anticipation thereof. The Court concluded that patentable novelty and invention existed in the "double fulcrum and other novel parts of the fulcrum assembly disclosed in the Graham patent",⁶  and that appellants failed to show "any prior public use or anticipation of the invention in the said patent."

Appellants attack the Court's conclusion that the Valley City device did not anticipate the Graham patent as clearly erroneous, insisting that no inventive skill is disclosed in the Graham device and that, being merely a mechanical refinement or manufacturer's modification of the original Valley City structure, it cannot constitute invention. Though appellees contend that the evidence does not support appellants' contention and the Court's finding that Graham was acquainted with the structural details of the Valley City device when he conceived the idea of the Graham patent, they argue that, in any event, the Court was clearly correct in holding that it did not contribute anything material to the conception of the structure embodied in Graham.

Appellants' expert witness, Fishleigh, admitted in his testimony and appellants concede in brief that the claims of the Graham patent may not be read literally on the Valley City device, and that the Graham structure exhibits differences in structure over that device and the prior art.⁷  It further appears that the Valley City device was simply a crude, handmade tool which did not perform satisfactorily in operation and was never manufactured commercially, whereas the Graham spring clamp has effectively resolved the problems encountered and has been commercially successful. We think the proof on this issue amply supports the District Court's finding that the Valley City device does not anticipate the combination of the Graham patent. See Minerals Separation, Ltd. v. Hyde, 242 U.S. 261, 270, 37 S. Ct. 82, 61 L. Ed. 286; Carson v. American Smelting & Refining Co., 9 Cir., 11 F.2d 765, 770-772; Morrill v. Automatic Industries, D.C.W.D. Mo., 93 F. Supp. 697, 703-704. The development of that device by local farmers is, therefore, insufficient to negative the invention existent in the Graham patent, or to reveal that no more than routine mechanical skill was involved in its conception. Cf. Graham and Graham-Hoeme Plow Co., Inc. v. Jeoffroy Mfg., Inc., 5 Cir., 206 F.2d 769, decided this date.

Alternatively, appellants insist that, even though the Valley City device may not anticipate the Graham structure and its conception by local farmers not be conclusive as to mere mechanical skill rather than patentable novelty being involved, each of the elements of Graham were clearly present in the prior art, "though not in the particular form, shape, position or arrangement as disclosed in Graham". As in the companion appeal, supra, in which the parties are reversed, the argument is advanced that the usual presumption of validity accompanying the issuance of the patent is largely disspelled because "the prior art considered by the Patent Office was virtually nil and certainly was not the most pertinent prior art." See Jacuzzi Bros. v. Berkeley Pump Co., 9 Cir., 191 F.2d 632, 634. Appellants here refer to a number of prior patents in the agricultural implement art not considered by the Patent Office, which they allege either anticipate the Graham structure, or reveal its conception as embodying only the routine skill of an ordinary workman, rather than invention. Among the prior art patents cited are Dunbar, No. 211,003, Carter, No. 231,268, Moore, No. 503,288, Lamprell & Cook, No. 1,141,804, Bobeldyk, No. 2,424,014, and the Australian patent to Traeger, No. 111,910. While a careful review of these prior patents does reveal that some of the elements present in the Graham structure, such as ground working tools with a vibrating or trembling operation and spring release devices to permit clearing of obstructions, were known to the prior art; we do not think they reveal, either singly or in the aggregate, substantially the same combination, structure, and mode of operation exhibited by the Graham patent in such manner as to constitute anticipation thereof.

Appellants rely upon the rule that in a combination patent it is not necessary that all of the elements be found in a single prior art structure in order to constitute anticipation, provided each of the elements is clearly disclosed thereby. See Lyman Gun Sight Corp. v. Redfield Gunsight Corp., 10 Cir., 87 F.2d 26, 28; Electric Vacuum Cleaner Co. v. P. A. Geier Co., 6 Cir., 118 F.2d 221. Insisting that each of the elements present in Graham was already old, and that no new function or relationship arises in combination, they contend that, "by standards appropriate for a combination patent these claims are invalid." Great A & P Tea Co. v. Supermarket Equipment Corporation, 340 U.S. 147, 148, 71 S. Ct. 127, 128, 95 L. Ed. 162; Ritchie v. Lewis-Browning Mfg. Co., 5 Cir., 196 F.2d 434, 437.

Though we are constrained to agree with appellants and the District Court that the Supreme Court in the A & P Tea Co. case, supra, has enunciated a more strict test of invention than existed theretofore, we think the fact that some of the elements in Graham were admittedly known to the prior art still would not preclude its validity, or negative any invention therein, so long as the Graham combination produces a new and useful result in a substantially different way. See E-I-M Co., Inc. v. Philadelphia Gear Works, Inc., 5 Cir., 205 F.2d 28; Robertson Rock Bit Co. v. Hughes Tool Co., 5 Cir., 176 F.2d 783, 790-791. We think the basic fallacy of appellants' position as to the lack of invention in Graham lies in their attempt to show anticipation by separating the entire combination into its component elements and, in the light of hindsight, to expose them piecemeal as already known to the agricultural art. This form of attack on the validity of a patent received early disapproval by the Supreme Court in Parks v. Booth, 102 U.S. 96, 104, 26 L. Ed. 54;⁸  see also Williams Iron Works Co. v. Hughes Tool Co., 10 Cir., 109 F.2d 500, 506. We think appellants fail to give due consideration to the fact that the District Court not only found novelty in certain structural features of the Graham device, but further found that the combination itself produced a new and useful result which amounted to invention. Without detailing its structural features at great length, it seems to us that, from the evidence and the various exhibits, the District Court was justified in its findings of novelty in the Graham fulcrum assembly and its unique method of operation [see Footnote (6), supra]. Independently of those findings, we think the evidence fairly establishes that the patentee, Graham, was the first to perfect the idea of resilient and frictional engagement of the shank of a ground working tool between a fixed part and a movable part, or between the bracket on the H-Beam and the fulcrum plate pivotally mounted on the bracket. His production of an efficient mounting for a ground working tool shank that would permit it to rock or vibrate, and yet obviate the necessity of it being hinged directly on a fixed member, as in the Valley City device and the prior art, was novel both in method of operation and result accomplished, and, we think, entitled him to a valid patent on the combination claimed. The Graham patent may not here be invalidated under the tests for invention laid down in the A & P Tea Co. case, supra, since that case involved only uniting old elements "with no change in their respective functions," whereas the patent here involved combines both old and new elements to produce a new result. See 340 U.S. 147, 151, 152, 71 S. Ct. 127, 130.

The further contentions that the Graham patent was void because of "vague and indefinite specifications and claims", and because "the claims are much broader than the specifications and any invention disclosed thereby", are without merit, for appellants' expert, Fishleigh, admitted that anyone skilled in the art could construct an operative device in accordance with the teachings of the patent claims, and a review of them convinces us that they are no broader than reasonably necessary to support the combination claimed.

Irrespective of the validity of the Graham patent, appellants attack the District Court's finding of infringement by asserting that the Graham combination, as a mere secondary or improvement patent in a crowded field, is entitled to protection only within the narrowest limits; that such patent having been issued to cover the combination only and not the component elements thereof, the absence of an element or its mechanical equivalent in the accused Jeoffroy structure is sufficient to avoid infringement. See Stewart-Warner Corp. v. Lone Star Gas Co., 5 Cir., 195 F.2d 645, 649. They insist that the expert testimony, as well as the physical exhibits and drawings, reveal that at least one or more of the elements in each claim of Graham is not literally present in the Jeoffroy device, and that their own structure, though capable of functioning in a pumping manner under some conditions, does not pump constantly under normal conditions in accordance with the claims and teachings of Graham. However, there is testimony by the patentee, Graham, and appellees' expert, F. C. Fenton, that each and every element of Claims 1, 2, 4, 5, 6, 7 and 8 of the Graham patent with minor structural variations or the substitution of mechanical equivalents, is exemplified in the Jeoffroy Structure. Moreover, the District Court, prior to its finding of infringement, had the benefit of a demonstration or view of both devices in actual simultaneous operation, and concluded therefrom that the Jeoffroy device did exhibit a similar vibrating or pumping action to that of Graham, though the Court took into consideration appellants' complaint that the test was not conducted under the most favorable circumstances.⁹  The Jeoffroy structure admittedly reveals two coil springs, whereas the claims of the Graham patent and the device itself exhibit only one, but this alteration does not avoid infringement. See Royal Typewriter Co. v. Remington Rand, 2 Cir., 168 F.2d 691-692; Skelton v. Baldwin Tool Works, 4 Cir., 58 F.2d 221, 227. The Jeoffroy device further reveals a different shank arrangement and different shaped fulcrum plate, but the forward end of the shank is still held between the fixed portion of the clamp and the fulcrum plate in a substantially similar manner to that revealed in Graham, and we do not think these structural variations are sufficient to avoid infringement. Hunt v. Armour & Co., 7 Cir., 185 F.2d 722, 728.

While it is true, as appellees frankly concede, that Jeoffroy does not exhibit the Graham opening in the shank with the spring rods extending there-through, it does provide the T-head on the fulcrum plate and exhibit the recesses and nibs in those working parts which, in substance, constitute the substantial counterpart of these omitted elements. And though no longitudinal movement is intentionally designed into the shank of Jeoffroy, the District Court found, and the device itself reveals, that some longitudinal movement, as in Graham, is inevitable because of "necessary manufacturing tolerances and operational wear in the nib and socket fittings of the shank, fulcrum member and bracket", though it further appears that such longitudinal movement is not an essential operative feature of the device. In any event, the claims of Graham measure the invention and Claims 5 and 6 do not specify any longitudinal movement. Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419, 28 S. Ct. 748, 52 L. Ed. 1122. We conclude that such alterations in the form of mechanically equivalent elements do not avoid infringement where, as here, the accused device exhibits the essential elements of the patent claims, for "`if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form or shape.'" Graver Tank & Manufacturing Company, Inc., v. Linde Air Products Company, 339 U.S. 605, 608, 70 S. Ct. 854, 856, 94 L. Ed. 1097; Chicago Pneumatic Tool Co. v. Hughes Tool Co., 10 Cir., 97 F.2d 945, 947; Hunt v. Armour & Co., 7 Cir., 185 F.2d 722, 728; Royal Typewriter Co. v. Remington Rand, 2 Cir., 168 F.2d 691, 692. Furthermore, in view of the District Court's findings being based on a demonstration of the Graham and Jeoffroy devices in actual operation, we cannot say that his finding of infringement is clearly erroneous. Graver Tank & Mfg. Co., Inc., v. Linde Air Products Co., supra, 339 U.S. at pages 609-610, 70 S. Ct. 854; see also Hazeltine Research v. Admiral Corp., 7 Cir., 183 F.2d 953, 954. As Judge Lindley, speaking for the Seventh Circuit, in the recent case of Porter-Cable Machine Co. v. Knives & Saws, Inc., 204 F.2d 21, 23-24, has appropriately stated:

"The court heard expert witnesses, viewed demonstrations and concluded that this element was new in Heckroth's combination; that he achieved valuable advantages over the prior art, resulting in invention, and that defendant infringes. In view of this state of the record, of course, we can not set aside the finding of validity unless it is clearly erroneous, Graver Tank Co. v. Linde Air Products Co., 336 U.S. 271, 275, 69 S. Ct. 535, 93 L. Ed. 672, or unless we can say, as a matter of law, that, on the admitted facts, the standard of patentable invention required by the statute of the United States has not been met. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 153, 71 S. Ct. 127, 95 L. Ed. 162. In view of the state of the record and the opportunity of the District Court to view demonstrations, which we do not have, we think our decisions in General Time Corp. v. Hansen Mfg. Co., 7 Cir., 199 F.2d 259 and Sales Affiliates v. National Mineral Co., 7 Cir., 172 F.2d 608, are inapplicable here."

See also Standard Computing Scale Co. v. Detroit Automatic Scale Co., 6 Cir., 265 F. 281.

Finally, while we entertain no doubt that the corporate appellee, as the exclusive manufacturer and distributor of the Graham patented structure, has such an interest as would justify awarding it relief,¹⁰  we think it inappropriate and premature for this Court now to consider or pass upon the District Court's finding that the infringement was willful and deliberate, and whether such finding justified or required an award of increased damages and attorney's fees under 35 U.S.C.A. § 70 [1952 Revision, 35 U.S.C.A. §§ 283-286, 290]. Those questions should properly await final judgment. Patterson-Ballagh Corp. v. Moss, 9 Cir., 201 F.2d 403, 408.

The judgment is, therefore, modified so as to eliminate that part decreeing that the infringement had been willful and deliberate and, as so modified, it is affirmed.

Modified and affirmed.