375 F.2d 432 (9th Cir. 1967), 20599, Hensley Equipment Co. v. Esco Corp.

Docket Nº:20599.
Citation:375 F.2d 432, 152 U.S.P.Q. 781
Case Date:March 03, 1967
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 432

375 F.2d 432 (9th Cir. 1967)

152 U.S.P.Q. 781




No. 20599.

United States Court of Appeals, Ninth Circuit.

March 3, 1967

Page 433

Edward J. Ruff, David Van Hoesen, Thelen, Marrin, Johnson & Bridges, San Francisco, Cal., Jerome F. Fallon, Dawson, Tilton, Fallon, Lungmus & Alexander, Chicago, Ill., for appellee.

Before HAMLEY and ELY, Circuit Judges, and MATHES, District Judge.

HAMLEY, Circuit Judge.

Esco Corporation (Esco), owner of Baer Patent No. 2,483,032 (Baer), brought this patent infringement suit against Hensley Equipment Company, Inc. (Hensley), manufacturer and seller of the accused apparatus. This Baer patent is a combination patent describing a mechanical device known in the heavy construction industry as a two-part excavating tooth.

Esco alleged that Hensley had infringed claims 5, 8 and 9 of Baer. Claim 5 describes the overall combination of the two parts of an excavating tooth. One part is an 'adapter,' which is secured to the lip of a piece of excavating equipment. The other part is a replaceable 'wear point' which fits on the adapter and provides the actual cutting edge of the overall tooth. Claims 8 and 9 pertain only to the replaceable wear point. In addition to denying infringement, Hensley defended on the grounds that claims 5, 8 and 9 of Baer are invalid and that, by reason of misuse, Esco is estopped from claiming infringement.

The trial court found and concluded that claim 5 of Baer was not infringed. Therefore, without determining the validity of claim 5, the court denied Esco any relief as to that claim. The trial court further found and concluded that claims 8 and 9 of Baer are valid, there was no misuse thereof, and Hensley infringed those claims. A judgment to this effect was entered, enjoining Hensley's further infringement of claims 8 and 9, and referring the matter of damages to a special master. The trial court's extensive memorandum opinion and order is reported sub nom., Esco Corporation v. Hensley Equipment Company, Inc., 265 F.Supp. 863.

Hensley appeals, arguing that the trial court erred both as to the validity and infringement of claims 8 and 9 of Baer. 1 We will first deal with the question of the validity of claim 8.

The validity of a patent is dependent upon whether the described apparatus meets three explicit statutory conditions, namely: novelty and utility as defined in 35 U.S.C. §§ 101, 102 (1964), and nonobviousness, as defined in 35 U.S.C. § 103 (1964). See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 12, 86 S.Ct. 684, 15 L.Ed.2d 545. The trial court found and concluded that claims 8 and 9 of the Baer patent meet all three of these tests. Hensley contends that the trial court erred in concluding that these claims are novel and nonobvious.

Claim 8 Describes a combination of twelve mechanical elements, each old in the art. 2 In determining whether this

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combination is novel and nonobvious, the parties and the trial court limited themselves, primarily, to a consideration of three basic features of claim 8, involving five elements. These are: (1) tongues which, Esco contends and the trial court held, must extend rearwardly from the wear point, designed to fit into recesses in the Baer adapter (elements 11 and 12 of claim 8); (2) a spike portion 'of relatively heavy section' which, Esco asserts and the trial court held, refers to the upper portion of the wear point, such portion being heavy as compared to the side and bottom walls of the wear point (element 5 of claim 8); and (3) spacing between parts of the wear point and the adapter (elements 9 and 10 of claim 8).

Before the novelty and nonobviousness of the combination of these three features of claim 8 can be considered, it is necessary to resolve two questions raised concerning the construction of claim 8 as it relates to these features.

Hensley argues that Esco has itself construed the reference to tongues in elements 11 and 12 of claim 8 as not limited to tongues extending rearwardly from the wear point, but as also including tongues extending forwardly from the adapter, designed to fit recesses in the wear point. In support of this view, Hensley points out that Esco manufactured and sold wear points, bearing the Baer patent number, which were equipped with recesses in the wear point to receive tongues extending from a cooperating adapter.

Elements 11 and 12 of claim 8 explicitly provide that the tongues are to be on the wear point. They are also so shown in the patent drawings, and are so described in the patent specifications. Esco justifies the Baer patent marking on its manufactured wear points equipped with recesses as being in accordance with claim 5 of that patent. That claim does not expressly refer to tongues, but does call for 'additional means stabilizing the tooth point relative to the adapter in the direction laterally to the nose.' We think that forwardly extending tongues on a Baer adapter would be consistent...

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