341 F.2d 1009 (5th Cir. 1965), 20907, Mannix Co. v. Healey

Docket Nº:20907.
Citation:341 F.2d 1009, 144 U.S.P.Q. 611
Party Name:MANNIX COMPANY, Limited, Appellant, v. M. A. HEALEY, Individually, and M. A. Healey, doing business as Better Welding Company, Appellee.
Case Date:March 03, 1965
Court:United States Courts of Appeals, Court of Appeals for the Fifth Circuit
 
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Page 1009

341 F.2d 1009 (5th Cir. 1965)

144 U.S.P.Q. 611

MANNIX COMPANY, Limited, Appellant,

v.

M. A. HEALEY, Individually, and M. A. Healey, doing business as Better Welding Company, Appellee.

No. 20907.

United States Court of Appeals, Fifth Circuit.

March 3, 1965

Page 1010

Howard E. Moore, Dallas, Tex., Heard L. Floore, Fort Worth, Tex., for appellee.

Before BROWN and WISDOM, Circuit Judges, and ESTES, District Judge.

ESTES, District Judge.

Appellant, Mannix Company Limited (Mannix), a Canadian Corporation, Calgary, Alberta, is here appealing from the dismissal of its action against appellee, M. A. Healey, individually and doing business as Better Welding Company, Fort Worth, Texas (Healey), for an injunction and damages for alleged infringement of Claims 1, 2, 10 and 11 of the J. C. Stein-Louis B. Franco Patent No. 2,921,390 (Stein-Franco Patent) and Claim 1 of the J. W. Christoff Patent No. 2,961,972 (Christoff Patent).

This suit was instituted on November 30, 1960, one day after the Christoff Patent was issued.

Appellee's defense to Mannix's amended complaint was that the claims of both patents were invalid and not infringed. After an extended trial before the district court, with voluminous exhibits, the trial judge found that the four litigated claims of the Stein-Franco Patent were invalid and not infringed and that the sole claim (Claim 1) of the Christoff Patent was valid but not infringed. The trial court entered judgment that plaintiff Mannix recover nothing and dismissed the complaint.

We agree with the trial court's holding that the Stein-Franco Patent is invalid. We also hold that the Christoff Patent is invalid and, therefore, the judgment of the trial court dismissing the complaint should be affirmed.

We are dealing with improvement patents in the 'undertrack art'-- ground working equipment for railroad road bed maintenance-- encompassing both undertrack (ballast) plows and sleds. An undertrack plow is a device for skeletonizing or reconditioning existing track road bed by removing fouled (compacted) ballast therefrom. The undertrack plow is inserted between the road bed and the ties, to which the track rails are affixed, and is secured by cables to and towed by a locomotive. The plow raises the ties from the road bed ahead of it, supports these ties and track rails as it passes underneath, separates and displaces the fouled ballast from the road bed to the side of the track by the ends of the ties, and finally allows the ties and track rails to resettle onto the road bed behind it. An undertrack sled is similar in design and operation to the plow, with the plow's scraping blades replaced by ballast levelling blades in the sled. Sleds are used to raise and support the track and distribute original ballast in laying new track or renewal ballast following skeletonizing with a plow.

The 'undertrack art' dates back at least to 1903 and embraces numerous patents, 1 publications and prior use devices. The devices here in suit have their beginnings in the device conceived by A. W. Banton, Sr. and his sons, A. W., Jr. and Paul, around 1947. Prior to filing a patent application on September 17, 1949, 2 A. W. Banton, Sr., who was an experienced service engineer for manufacturers of railroad equipment contacted the Chief Engineer of the Santa Fe Railway (Blair), exhibited to him a model of the Banton device and photographs thereof, and discussed the possibility

Page 1011

of developing an undertrack plow. Blair referred Banton to John R. Rushmer, Chief Roadway Engineer for Santa Fe, who became interested in the device and thereafter was instrumental in a reduction to practice in this country of the first undertrack plow. Banton sold Santa Fe a license with the understanding that the benefits of any improvements as a result of Santa Fe's making and using the plow would inure to him. Santa Fe first constructed and tested a plow in early 1950. A second plow-- with modifications dictated by experience with the test plow--was built in late 1950 and this plow has been publicly and extensively used on the Santa Fe system since 1951.

In early 1952, Louis B. Franco, Manager of the Railroad Division of Mannix, a contracting firm, sought information from Rushmer about Santa Fe's plow and discussed the feasibility of using a similar device in Mannix's construction of a new railroad in Labrador. Rushmer prepared and furnished Franco drawings of an undertrack sled. About the same time an article was published in Modern Railroads magazine regarding Santa Fe's successful use of its plow. On September 22, 1952, Franco witnessed Santa Fe's plow in operation at Winslow, Arizona and took photographs and motion pictures thereof, which he exhibited to railroads in Canada. Four days later (September 26, 1952) Franco first tested the sled that Mannix built from Rushmer's plans. Banton also had a plow constructed which was tested on the Santa Fe system under Rushmer's supervision in April and May, 1953.

As late as April, 1954, Franco was receiving information from Rushmer concerning Santa Fe's further development and refinement of its plow; and on June 23, 1954, Franco first applied for his patent in Canada. The potential of this undertrack equipment stimulated great interest in the railroad industry. The publicity attending Santa Fe's plow engendered widespread inquiry. Santa Fe freely exhibited the construction and operation of its plow to interested concerns, and called attention to the Banton Patent from which it stemmed.

Appellee Healey, engaged in the railroad maintenance and repair business, was approached by T. & N.O. and Missouri-Pacific railroads to build undertrack plows for them. As a result, Healey entered a licensing agreement with Banton on April 15, 1960, obtained from Santa Fe the latest drawings and specifications for its plow, and made therefrom and sold the two undertrack plows which are the devices accused of infringement.

In determining the question of the validity of the two patents in suit, two Supreme Court opinions establish guidelines applicable here. Sears, Roebuck & Co. v. Stiffel Co. (1964), 376 U.S. 225, 229-230, 84 S.Ct. 784, 787-788, 11 L.Ed.2d 661, states:

'The grant of a patent is the grant of a statutory monopoly * * * meant to encourage invention by rewarding the inventor with the right * * * to exclude others from the use of his invention. * * * But in rewarding useful invention, the 'rights and welfare of the community must be fairly dealt with and effectually guarded.'...

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