300 F.2d 467 (9th Cir. 1961), 16410, Pursche v. Atlas Scraper & Engineering Co.

Docket Nº:16410, 16411.
Citation:300 F.2d 467, 132 U.S.P.Q. 104
Party Name:Harry A. PURSCHE, Appellant, v. ATLAS SCRAPER AND ENGINEERING CO., a Corporation, Appellee. ATLAS SCRAPER AND ENGINEERING CO., a Corporation, Appellant, v. Harry A. PURSCHE, Appellee.
Case Date:December 12, 1961
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 467

300 F.2d 467 (9th Cir. 1961)

132 U.S.P.Q. 104

Harry A. PURSCHE, Appellant,



ATLAS SCRAPER AND ENGINEERING CO., a Corporation, Appellant,


Harry A. PURSCHE, Appellee.

Nos. 16410, 16411.

United States Court of Appeals, Ninth Circuit.

December 12, 1961

Rehearing Denied April 3, 1962.

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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Lyon & Lyon by Lewis E. Lyon and John B. Young, Los Angeles, Cal., for Pursche.

R. Welton Whann, Robert M. McManigal, Los Angeles, Cal., and James M. Naylor, San Francisco, Cal., for Atlas Scraper & Engineering Co.

Before BARNES, JERTBERG and KOELSCH, Circuit Judges.

KOELSCH, Circuit Judge.

Harry A. Pursche filed a complaint in the district court charging Atlas Scraper and Engineering Co. with infringement of several patents and with unfair competition. He sought an injunction and damages. Atlas answered, denying generally these charges and affirmatively alleged the usual defenses. In addition, Atlas commenced a separate suit seeking a declaratory judgment of noninfringement and invalidity of those patents. The two actions were consolidated and tried to the court sitting without a jury. By a single judgment covering both actions the district court decided the issues for the most part in Pursche's favor. It granted Pursche an injunction and ordered an accounting. 1 The suits are here on Atlas' appeal and Pursche's cross-appeal from the judgment.

Pursche's patents relate to a farm implement known as a 'two-way' plow. The specifications of one of the patents states:

'Two-way plows have been found to be superior to the conventional one-way plow in maintaining a level field so that hills and gullies

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are avoided and the irrigation of the field is facilitated. One gang of plows is employed while the device is pulled across the field in one direction and when the device is returned parallel to the furrow just completed the other gang of plows is used and accordingly no gully is formed. The usual leveling operations subsequent to plowings are thereby eliminated.'

Pursche was not the first to conceive a two-way plow. It was a type of plow known to the art as early as the latter half of the nineteenth century and its many advantages have caused it to be subject of considerable attention on the part of inventors, manufacturers and those engaged in farming. As might be expected, many such plows differing in construction and manner of operation have been designed and built. Some of them have been the subject of letters patent, others have not, but in any event the idea is old and the field is crowded.

Pursche's patents are for improvements. Five of those patents are involved in this litigation, their numbers being respectively: 2,625,090; 2,625,091; 2,625,089; 2,633,786; and 2,659,284. For convenience, each patent will be referred to in the remainder of this opinion by the last three of its numbers. 2

090 discloses the basic Pursche invention. Its principal feature, according to the finding of the district court, consists in the combination of 'frame, a longitudinal beam fixed on the frame and extended rearwardly, a plow (share) carrier mounted to turn on the longitudinal beam and provided with right and left-hand plows, and a power developing hydraulic cylinder assembly on the frame acting through a power transmitting connection to revolve the plow carrier in either direction * * *.' The 090 plow is supported by a wheel at either side and is pulled behind a tractor.

091 is essentially similar to the plow of the 090 patent except for the plow tongue. Both plows possess swinging tongues, but because of differences in construction and location the tongue of the 091 plow reduces the stress that is transmitted to the frame when the plow is towed.

089 also represents a modification of the 090 plow. The change consists principally in the location of the apparatus that serves to raise and lower the frame of the plow in relation to its side supporting wheels.

284 possesses no side supporting wheels and consists of the 090 plow converted for mounting directly upon a tractor.

786 is likewise a tractor mounted plow especially adapted for use on a Ford-Ferguson tractor; this plow is attached to the draft links and control arms with which that tractor is equipped.

Atlas is a long-time manufacturer of farm implements. Prior to 1948 Atlas had never made two-way plows but on April 3rd of that year it secured a license from Pursche, pursuant to a royalty agreement, to use the several inventions described and claimed in his patents and shortly afterwards commenced to manufacture and sell plows embodying those inventions. Atlas terminated the royalty agreement in 1952, but nevertheless continued to make and sell two-way plows hereafter referred to as the B-1, B-5 and 'new-style' Atlas plows. The B-1 'new-style' plows, like the plows of the 090, 091 and 089 patents, are tractor drawn and have frames supported by side wheels; the B-5 plow, like the 786 and 284 plow, lacks side wheels and is mounted directly upon the tractor.

The district court, in its judgment, held:

(A) All of the claims of the several patents in suit valid except claim 1 of the 090 which was held invalid.

(B) The Atlas B-5 plow infringed(a) claims 3, 10, 12, 18 and 25 to 27, both inclusive, of the 090 patent; (b) claims 1 to 9 inclusive, and 12 to 15 inclusive,

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of the 786 patent; and (c) claims 3, 8, 10 and 15 of the 284 patent.

(C) The Atlas B-1 plow infringed (a) claims 12 through 16 both inclusive, of the 089 patent; (b) claims 2 through 27 both inclusive, of the 090 patent; and (c) claims 6 to 9 inclusive, and 14, 15 and 22 of the 091 patent.

(D) The Atlas 'new style' plow did not infringe any of the claims of 090 (this being the only patent which Pursche asserted was infringed by the 'new style' plow).

(E) That Pursche have judgment for unfair competition.

(F) That neither party have its costs.

The issues tendered by the appeal of each of the respective parties will be treated in the following order:

I. The validity of the five Pursche patents:

a. 090

b. 786 and 284

c. 091 and 089

II. The infringment of the Pursche patents by the Atlas plows:

a. The B-5 and B-1 plows

b. The 'new-style' plows

III. Unfair competition:

a. Jurisdiction of the district court

b. Sufficiency of the evidence

IV. Miscellaneous matters:

a. Joinder of parties

b. Inequitable conduct

c. Rulings on evidence

d. Costs

I. 'On the major issue of validity we shall first inquire whether the conception for which the patent(s) were granted involves invention. Because of the lack of a definite rule, questions of this kind are often perplexing. It is a trite saying that invention defies definition. Yet, through long use, the word has acquired certain characteristics which at least give direction to its meaning. Invention is a concept; a thing evolved from the mind. It is not a revelation of something which exists and was unknown, but is the creation of something which did not exist before, possessing the elements of novelty and utility in kind and measure different from and greater than what the art might expect from its skilled workers.' Pyrene Mfg. Co. v. Boyce, et al., 292 F. 480, 481, cert. den. 263 U.S. 723, 44 S.Ct. 231, 68 L.Ed. 525 (1923).

a. The 090 Patent. The conclusion of the district court that the plow disclosed by the 090 patent was a patentable invention rested upon the factual conclusion that the elements of the plow share carrier rotating device 'performs an additional and different function in combination than they perform out of combination.' The court particularly found that the component parts collectively 'provide a close coupling relationship between the frame, plow carrier and hydraulic cylinder assembly which enables the operator to turn the carrier independently of forward motion and independently of the raising and lowering action and provides quick entry and exit with relation to the land with the result that the space required at the headlands for turn-around is substantially decreased with relation to prior art devices.' 3

Atlas argues that the 090 patent was anticipated by other patents, principally those of Lindeman, Pridgen and Dexheimer. In the Lindeman patent 2,543,786, the lifting and rotating of the plow share carrier are accomplished by the same device and both operations occur simultaneously when the carrier is raised

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to a substantial height. Thus when the shares are disengaged from the ground, for example to avoid some obstruction in the path of the plow, the carrier revolves, bringing the opposite gang of shares into operation; in order to continue the same furrow it is then necessary for the operator to raise and lower the carrier a second time. In the Pridgen patent 2,227,366 the raising and turning operations are likewise combined. Although in the Dexheimer patent 2,609,740 the turning of the carrier may be accomplished separate from its raising, the means to accomplish this rotation differ significantly from those employed in the 090 plow in that the Dexheimer apparatus consists of a lever arrangement, 'partly automatic' which requires manual manipulation, while the hydraulic cylinder assembly that serves as the means to rotate the Pursche invention is fully automatic. In the Capon patent 2,426,548, although the lifting and the turning of the carrier may be separately achieved, the latter operation cannot be carried out unless the plow is pulled forward for a distance, and our examination of the record...

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