LAITRAM CORPORATION v. Deepsouth Packing Co.
| Decision Date | 07 April 1969 |
| Docket Number | Civ. A. No. 67-861. |
| Citation | 301 F. Supp. 1037 |
| Parties | The LAITRAM CORPORATION, Plaintiff, v. DEEPSOUTH PACKING CO., Inc., Defendant. |
| Court | U.S. District Court — Eastern District of Louisiana |
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Lewis H. Eslinger, Guy W. Shoup, New York City, Louis B. Claverie, New Orleans, La., for plaintiff.
Harold J. Birch, Washington, D. C., Emmett Pugh, New Orleans, La., for defendant.
Brevity may be wit's soul but it is no part of patent litigation. This case is proof enough. It involves two patents for use in deveining shrimp. Disregarding scriptural advice,1 and assisted no doubt by the ease with which dictating machines, electric typewriters, and electrostatic reproduction processes produce paper work in volume, counsel have favored the court with a total of over 500 pages of briefs and memoranda. They have submitted pre-trial memoranda, trial briefs, post trial briefs, reply memoranda, second reply memoranda and even a reply to a memorandum in opposition to a "Memorandum In Reply To Defendant's Memorandum In Opposition to Post-Argument Memorandum of Plaintiff." In doing so, they have not overlooked any issue that might conceivably be drawn into an infringement suit or its defense. Doubtless they have been stimulated by pedagogic duty in their attempts to educate a court unlettered in patent law. But the educational process has been difficult for the student as well as lengthy for the tutor, and it remains to be seen whether the lesson has been well learned.2
Shrimp, whether boiled, broiled, barbecued or fried, are a gustatory delight, but they did not evolve to satisfy man's palate. Like other crustaceans, they wear their skeletons outside their bodies in order to shield their savory pink and white flesh against predators, including man. They also carry their intestines, commonly called veins, in bags (or sand bags) that run the length of their bodies. For shrimp to be edible, it is necessary to remove their shells. In addition, if the vein is removed, shrimp become more pleasing to the fastidious as well as more palatable. Until recent years, these peeling and deveining operations had always been performed by hand or with simple tools.
The Lapeyres, Fernand and James, who are assignors of the plaintiff, set out to solve the peeling problem. They succeeded in doing so, but the Skrmettas, father Paul and son Raphael, a family engaged in the shrimp business, developed a competing device. In a lengthy infringement suit, whose story has been told elsewhere,3 the patent problems relating to the shrimp peeler were disposed of.
The machine that peeled the shrimp, however, left their veins intact. As labor costs increased, it became economically desirable to find both a less expensive way to devein large shrimp and a way to devein the medium sized shrimp that were then being processed without deveining. The Lapeyres, therefore, decided to invent a machine that would do this.
After years of effort, study, and experimentation, they finally solved part of the problem with a device remarkably simple in operation. The invention was based on their discovery of facts that, once learned, appear obvious. These facts, and their relationship to deveining shrimp, however, had eluded all others. They consisted of nothing more than the observations that, (a) since the body of a shrimp is curved and cylindrical in shape and the heavier mass is on the outside of the curve, the center of gravity on its body is nearer the outside curve than the inside, and it, therefore, will tend to slide down an inclined surface on its side, with its outer body curve forward and downward; (b) if the shrimp slides against a sharp cutting surface with the outer curve hitting the surface first, the cutting surface will open the sand bag by the force of gravity alone, and this will in turn expose the vein; (c) if the sand bag is cut, and the vein is partially exposed, it can be drawn from the shrimp without the necessity of cutting the shrimp the entire length of the bag; and (d) so long as the cut exposes the vein, it is not necessary that the cut be centered directly on the shrimp's body.
Having learned this, the Lapeyres patented a device that was illustrated in the patent drawings as follows:
The embodiment of this patent, as it is marketed by plaintiff, looks like this:
The Skrmettas in turn devised and patented a machine utilizing the knowledge about shrimp learned by the Lapeyres. Unlike the Lapeyres' device, however, it operates with a trough that is rocked to and fro. The patent drawings illustrate the machine this way:
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And the machine that defendant is marketing looks like this:
Plaintiff contends defendant is infringing its patent both literally and under the doctrine of equivalents. Defendant denies infringement in all respects, and in addition asserts that the claims of plaintiff's slitter patent ('218) are invalid if given the breadth necessary to embrace defendant's slitter, either as anticipated by or obvious in the light of the prior art, or on grounds of indefiniteness and undue breadth. Responding to plaintiff's invocation of the doctrine of equivalents, defendant claims that there is no infringement under the doctrine of equivalents, and that, alternatively, if the doctrine does apply, the corresponding theory of file wrapper estoppel forecloses plaintiff from asserting it. Finally, defendant contends that even if plaintiff's '218 patent is both valid and infringed, it is unenforceable against defendant because of laches and estoppel.
Although the Lapeyres' machine successfully slit shrimp, it did not succeed fully in deveining them. So they developed and patented another device to complete the process. This machine is basically a rotating drum. Its surface consists of a metal skin with punctured lips. The lips hook the veins that have been exposed by the slitting process and draw them from the shrimp. The following drawings from the 2,825,927 patent demonstrate the operation:
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The manufactured machine looks like this:
Exterior
Interior The perforated material that is used for the drum is not patented. Indeed, the Lapeyres ordered it from a commercial firm's catalogue.
The Skrmettas needed a deveiner too. So they developed a conveyor belt type deveiner using a similar perforated material. At the time of trial, a patent application, serial no. 561,534, was pending before the Patent Office. On December 10, 1968, patent no. 3,414,934 was granted to Raphael Q. Skrmetta and Cecil B. Skrmetta for their deveiner.
Defendant's manufactured deveiner looks like this:
Exterior
Interior Plaintiff contends defendant's deveiner infringes its '927 patent. Defendant on the other hand, urges that the asserted claims of the deveiner patent are invalid as overbroad, indefinite, described in functional language, anticipated by the prior art, and obvious. And, if the patent is valid, defendant claims it has not been infringed. Finally, defendant contends that even if the '927 patent is both valid and infringed, it is unenforceable against defendant because of laches and estoppel.
The findings of fact reached after study of the evidence embodied in over 1800 pages of record and in approximately 525 exhibits are set forth separately. The conclusions of law that are to be applied to them are set forth below.
VALIDITY OF THE PLAINTIFF'S SLITTER PATENT ('218)
An issued patent is presumed valid. Hunt Tool Co. v. Lawrence, 5 Cir., 1957, 242 F.2d 347, 351. "An alleged infringer who assails the validity of a patent bears a heavy burden of persuasion and fails unless his evidence has more than a dubious preponderance." Great Lakes Carbon Corporation v. Continental Oil Company, W.D.La.1963, 219 F.Supp. 468, 481, affd. 5 Cir., 1965, 345 F.2d 175; Radio Corporation of America v. Radio Engineering Laboratories, 1934, 293 U.S. 1, 8, 55 S.Ct. 928, 79 L.Ed. 163.
As set forth in the findings of fact, plaintiff's discoveries were profound. The patent they developed based on these discoveries was a pioneer one. When observed in operation, the slitter covered by the '218 patent works so easily and the principles on which it is based are so apparent that they prompt the commonplace observation, "why didn't someone think about that before?" But as the Supreme Court pointed out in Goodyear Tire and Rubber Co. v. Ray-O-Vac Co., 1944, 321 U.S. 275, 279, 64 S.Ct. 593, 594, 88 L.Ed. 721: "Viewed after the event, the means plaintiff adopted seem simple and such as should have been obvious to those who worked in the field, but this is not enough to negative invention." Not only did no one develop such a machine before; many had tried without success.4 As the findings of fact point out, there was a clear need for the slitter and it was immediately recognized as a solution by the industry.5
It is true that the principles on which the slitter operates were not new, for the Lapeyres neither invented gravity, nor discovered the lubricating quality of water; they did not design the biological qualities of shrimp nor originate the cutting force of knives. But although their invention incorporated known forces as well as newly discovered properties, the state of the prior art was clearly not "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 * * *." 35 U.S.C. § 103.6
The Lapeyre slitter was indeed a "new and useful * * * machine * * *."7 and added "a new and valuable article to the world's utilities * *." Diamond Rubber Co. of New York v. Consolidated Rubber Tire Co., 1911, 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527. "While a scientific truth or the mathematical expression of it, is not patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be,"8 and the Lapeyres invented such a...
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Deepsouth Packing Co v. Laitram Corporation 8212 315
...the patentee's protection.' 443 F.2d, at 939. I share the Fifth Circuit's concern and I therefore dissent. 1 Laitram Corp. v. Deepsouth Packing Co., 301 F.Supp. 1037, 1040 (1969). 2 This patent expired shortly before argument in this court and is therefore not relevant to Laitram's claim fo......
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...854, 94 L.Ed. 1097 (1950); Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517 (7th Cir., 1971); Laitram Corp. v. Deepsouth Packing Co., 301 F.Supp. 1037 (E.D.La., 1969). The range of equivalents depends on the extent and nature of the invention. If the invention is broad or primary......
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