Wahl v. Carrier Manufacturing Co.

• Decision Date: 20 March 1972
• Docket Number: No. 18324.,18324.
• Citation: 452 F.2d 96
• Parties: Eugene A. WAHL and Vibra Screw Feeders, Inc., Plaintiffs-Appellants, v. CARRIER MANUFACTURING CO., Inc., Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

452 F.2d 96 (1971)

Eugene A. WAHL and Vibra Screw Feeders, Inc., Plaintiffs-Appellants, v. CARRIER MANUFACTURING CO., Inc., Defendant-Appellee.

No. 18324.

United States Court of Appeals, Seventh Circuit.

August 30, 1971.

Rehearing Denied November 2, 1971.

Certiorari Denied March 20, 1972.

Richard C. O'Connor, New Albany, Ind., Stanton T. Lawrence, Jr., New York City, Orbison Rudy & O'Connor, New Albany, Ind., for plaintiffs-appellants; Pennie, Edmonds, Morton, Taylor & Adams, Charles J. Brown, Charles E. McKenney, New York City, of counsel.

Thomas F. McWilliams, Mann, Brown, McWilliams & Bradway, Chicago, Ill., for defendant-appellee.

Before MAJOR, Senior Circuit Judge, and FAIRCHILD and PELL, Circuit Judges.

Certiorari Denied March 20, 1972. See 92 S.Ct. 1255.

MAJOR, Senior Circuit Judge.

This is an appeal from a judgment entered November 13, 1969, by Judge William E. Steckler, holding all four claims of United States Patent No. 3,173,583, entitled "Bin Activator," invalid, and dismissing plaintiffs' charge of infringement. Eugene A. Wahl (Wahl) is the owner of the patent and Vibra Screw Feeders, Inc. (Vibra Screw) is his exclusive licensee. The latter is a New Jersey corporation, and defendant Carrier Manufacturing Co., Inc. (now by change of name, Carman Industries, Inc.) is a Kentucky corporation having its principal place of business at Jeffersonville, Indiana.

After disposal of numerous discovery proceedings, the case came on for trial before the court without a jury on November 6, 1967, and continued on November 7, 8, 9, 10, 11, 13 and 14. On the last date and at the conclusion of defendant's presentation, the case, on plaintiffs' request, was continued to August 19, 1968, on which date plaintiffs introduced testimony purportedly for the purpose of rebutting the case made by defendant. As might be expected after a trial of such length, the record is voluminous. (The transcript covers some 1300 pages, and the appendix filed in this court more than 600 pages.) In addition, many physical exhibits were introduced, including the patent in suit, numerous prior art patents and many drawings, diagrams, pictures, etc., all explained by expert witnesses as an aid to the court in its evaluation of the contentions advanced by the parties.

The prior art relied upon by defendant to anticipate and invalidate the patent in suit was (1) the Heavy Duty Feeder made and sold by plaintiffs for several years prior to the Wahl application filing date; (2) the Vibra-Portioner¹ which was at one time made and sold by defendant, and (3) the Musschoot Patent No. 3,083,811. The court found that the patent in suit was anticipated by each of these prior art citations, none of which was cited in the Patent Office and all of which were found to be more pertinent than that which was cited.

The court also found that the subject matter sought to be patented by Wahl, in view of the prior art, would have been obvious at the time the invention was made, to a person having ordinary skill in the art to which the subject matter pertains, and was, therefore, invalid under Title 35 U.S.C.A. Sec. 103.

The court in its findings 6, 7 and 8 describes the nature of the Wahl invention and sets forth the claims involved. Inasmuch as there is no dispute as to the propriety of these findings, we adopt them:

"6. The specification of the Wahl patent in suit generally describes the apparatus set forth therein as follows:

`This invention relates to apparatus for use in conjunction with a storage bin, or hopper, and more particularly to activator apparatus adapted for attachment to a storage bin to promote the flow of material therefrom.\' (PXX-1, Col. 1, lines 6-10).

Also it is stated:

`An object of this invention is the provision of improved apparatus for use with a storage bin, or hopper, to promote a positive discharge of the contained material through the hopper discharge opening.\' (PX-1, Col. 1, lines 43 to 46).

In the patent it is also stated:

`An object of this invention is the provision of apparatus for promoting the flow of material from a storage hopper having a discharge opening at the lower end thereof, which apparatus comprises a material-receiving member having sloping walls terminating in a material-dispensing opening, means vibratorily suspending the material-receiving member in alignment with the hopper discharge opening, means for vibrating the material-receiving member in a plane predominantly normal to the axis thereof, and means for imparting such vibrations to the contained material in the region of the hopper discharge opening.\' PX-1, Col. 1, lines 54 to 65).

"7. The Court finds that the application for the Wahl patent in suit was filed on May 9, 1962, and is a continuation-in-part of an earlier application filed April 4, 1962 which was abandoned. The original application contained only sheet 1 of the patent drawings, and, in general, the specification was directed to the structure shown in Figure 1 of the drawings. The continuation-in-part application added sheet 2 of the drawings, and added to the specification a description of the device shown in Figure 4 of the drawings. The structure shown generally in the Wahl patent comprises a supply hopper terminating in an opening at the bottom thereof and, attached by resilient supporting means to the hopper, there is a cross member which carries a motor or vibrating member to vibrate this cross member. Attached to the cross member is a material-receiving means which is vibrated with the cross member and which material-receiving means is positioned below the supply hopper. In both forms of the bin activator of the Wahl patent, that of Figure 1 and Figure 4, there is included as attached to the material-receiving means, a material-agitating means which is vibrated with the material-receiving means. In Figure 1, the material-agitating means comprises upstanding rods entering into the supply hopper, and these upstanding rods are attached to the material-receiving means and vibrated therewith. In Figure 4, there is a different form of material-agitating means which comprises an upstanding rod secured to a bracket which is carried by the material-receiving means, and this upstanding rod adjustably supports a baffle which is positioned within the material-agitating means and at the outlet opening of the hopper. As stated in the specification, the material-receiving means supporting the material-agitating means being resiliently supported from the hopper is vibrated by a motor, and upon vibration of the material-receiving means and the material-agitating means, the bulk material in the hopper is induced to flow therefrom.

"8. Plaintiff charges infringement of claims 1, 2, 3, and 4 of the patent in suit. Claims 2, 3 and 4 are dependent from claim 1. Claim 1 is as follows:

`1. Apparatus for promoting the flow of material from a vertically-disposed storage bin having a discharge opening at the bottom, which apparatus comprises,

(a) a generally-conical, material-receiving member having an inlet opening corresponding substantially to that of the bin discharge opening and a truncated apex forming an outlet opening,

(b) means vibrationally supporting the conical member in a vertical position with the wall portion forming the inlet opening spaced from the bin wall,

(c) material-agitating means spaced from the inner wall of the conical member and rigidly secured thereto, said agitating means being disposed within said conical member and extending substantially to the said inlet opening thereof, and

(d) means vigorously vibrating the conical member.\'

"Claim 2 calls for the invention of claim 1, but further defines the means for vibrating the conical member as a gyrator comprising an eccentrically-mounted weight rotatable by an electric motor. Claim 3 calls for the invention of claim 2, but defines the material-agitating means as a baffle member disposed in the region of the bin discharge opening. Claim 4 calls for the invention as recited in claim 2, and defines the material-agitating means as an inverted conical baffle member disposed in the region of the bin discharge opening, and further describes the vibration as in a plane normal to the axis of the conical member."

Plaintiffs on brief state the contested issues as follows:

"I. Was it reversible error for the District Court to adopt the overly simplistic definition of the Wahl invention urged by defendant on the validity issue, and then predicate its finding of anticipation (by three separate items of prior art) and obviousness on that definition rather than on a fair reading of the Wahl claims in context?

"II. Was it reversible error for the District Court to adopt the unduly limited definition of the Wahl invention urged by defendant on the infringement issue, involving dimensional limitations nowhere mentioned in the Wahl patent, and then predicate its finding of non-infringement (as to some but not all of defendant\'s devices) on that definition rather than on a fair reading of the Wahl claims in context?"

It appears to us that issue I is stated in a rather novel manner. However stated, we think the ultimate issue is whether the court's findings of fact are clearly erroneous. Rule 52(a) of the Federal Rules of Civil Procedure provides in part:

"Findings of Fact shall not be set aside unless clearly erroneous, and due regard shall be given to the opportunity of the trial court to judge of the credibility of the witnesses."

The two principal witnesses were Wahl, the patentee, who testified at length in explaining his patent and his invention, or what he thought he had invented, and Don A. Fischer, an expert witness for defendant. We think it fair to state that a reading of the testimony of these two witnesses reveals that Wahl had much practical experience in the manufacture and development of apparatus designed to facilitate the withdrawal of material from storage bins. It is conceded, however, that he was not an expert...