Mannix Company v. Healey

• Citation: 341 F.2d 1009
• Decision Date: 03 March 1965
• Docket Number: No. 20907.,20907.
• Parties: MANNIX COMPANY, Limited, Appellant, v. M. A. HEALEY, Individually, and M. A. Healey, doing business as Better Welding Company, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals (5th Circuit)

341 F.2d 1009 (1965)

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.

Davidson C. Miller, Washington, D. C., Charles L. Stephens, J. A. Gooch, Cantey, Hanger, Gooch, Cravens & Scarborough, Fort Worth, Tex., George N. Robillard, Washington, D. C., for appellant.

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 leveling 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 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.\' Kendall v. Winsor, 21 How. 322, 329 16 L.Ed. 165 (1859). To that end the prerequisites to obtaining a patent are strictly observed. * * * (A) genuine `invention\' or `discovery\' must be demonstrated `lest in the constant demand for new appliances the heavy hand of tribute be laid on each slight technological advance in an art.\' Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 92 62 S.Ct. 37, 86 L.Ed. 58 (1941) * * *."

Atlantic Works v. Brady (1883), 107 U.S. 192, 200, 2 S.Ct. 225, 231, 27 L.Ed. 438, cited in Stiffel Co., supra, adds:

"* * * It was never the object of (the patent) laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufacturers. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the art. * * *"

THE STEIN-FRANCO PATENT³

The Stein-Franco Patent and the Mannix device embody:

(a) a flat elongated perforated metal sheet,⁴ with the perforations situated above the spaces between each adjacent pair of blades;

(b) a pair of tie engaging and supporting raised strips (runners) on top of the sheet and extending from front to rear; and

(c) a plurality of blade members (at least three) projecting downwardly therefrom and disposed in a "V" pattern one behind the other from front to rear. The record shows beyond any doubt, and the trial court found, that these elements⁵ singly and in combination are anticipated by the prior art.

Mannix contends that the novelties in the improvement combination claims of the Stein-Franco Patent are the additional specifications therein for:

(1) "a keel extending generally parallel to said strips and projecting below the bottom edges of said blade members"; and

(2)"the most rearwardly disposed blade member projects downwardly beyond the bottom edge of the most forwardly disposed blade member."

The declared purpose of the "keel" and "deeper rear blade" was for inherent directional control and stability of the plow as it was towed under the track.⁶

The trial court made the following findings of fact, supported by ample evidence: with respect to the "keel",

"A keel extending parallel to said (raised) strips and projecting below the bottom edges of said blade members\' is disclosed in the Wild and Williams Patents, and in the Banton prior use device. In view of the Wild and Williams disclosure of such keel member, it would be obvious to a person hav(ing) ordinary skill in the art, and would not constitute invention, to incorporate such expedient in the prior use Santa Fe plow, or in the devices shown in the prior art * * *";

and with respect to the "deeper rear blade",

"This element is disclosed in the prior use Santa Fe and Banton plows, and in the Clemons, Thurston, Snyder and Fogelberg Patents. The Clemons, Thurston and Snyder Patents show a rear blade projecting downwardly, or adapted to project downwardly, below the

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