513 F.2d 932 (6th Cir. 1975), 74-2157, Campbell v. Spectrum Automation Co.
|Citation:||513 F.2d 932|
|Party Name:||185 U.S.P.Q. 718 Milford A. CAMPBELL, Plaintiff-Counter-Defendant Appellant, v. SPECTRUM AUTOMATION COMPANY, Defendant-Counter-Plaintiff Appellee.|
|Case Date:||April 17, 1975|
|Court:||United States Courts of Appeals, Court of Appeals for the Sixth Circuit|
Charles W. Chandler, Livonia, Mich., for plaintiff-counter-defendant appellant.
Robert G. Mentag, Donnelly, Mentag & Harrington, Detroit, Mich., for defendant-counter-plaintiff appellee.
Before PHILLIPS, Chief Judge, and WEICK and MILLER, Circuit Judges.
PHILLIPS, Chief Judge.
Milford A. Campbell, the patentee of United States patent No. 3,002,600, brought this action against Spectrum Automation (Spectrum) for infringement. Spectrum counterclaimed, contending that the patent was invalid and that it therefore could not be infringed. District Judge Cornelia G. Kennedy held the patent to be invalid on a number of grounds. We affirm on one of these grounds that Campbell was not the inventor of the patent in suit.
The patent discloses an article that is used in material handling as a flexible feed track. Briefly described, wire is wound in closely adjacent loops around a square or rectangular mandrel and then coated with a flexible covering such as polyvinyl chloride. It is necessary to machine a groove through the length of this assembly to remove the article from the mandrel. Besides serving the purpose of releasing the assembly from the mandrel, the groove provides a useful access to the interior of the feed track. The resulting product, known as "Open-Flex," consists of individual metal segments bound together by the flexible coating. This invention is described in claim 3 as follows:
A flexible feed track for delivering articles by gravity along an irregular path comprising a plurality of hollow formed, segmental frame members disposed side by side along the length of said track and joined together by a bonded flexible coating, said frame members and said coating defining a way for articles to be delivered by said track, each of said frame members having spring-like characteristics so as to alter the cross-section defined thereby when a force is applied thereto and return to its original shape when the force is removed so as to cooperate with the inherent flexibility of said coating to permit said track to be formed torsionally and arcuately as required to conduct said articles along a desired path of travel.
The two principals in this action, Richard Zimmerman and Campbell, both possess a high degree of technical expertise in this area. Zimmerman, who is now president of Spectrum, originally worked for Campbell and Campbell Machines Company during the period when Open-Flex was conceived. Later he formed his own company, Spectrum, and began to produce the product "Maxi-Flex,"
which Campbell contends infringes the patent in suit.
The only issue which we reach on this appeal concerns the identity of the true inventor of the flexible feed track. In the counterclaim for declaratory judgment of invalidity Zimmerman alleged that he, not Campbell, was the true inventor of Open-Flex. If this is true, the patent would be invalid under the provisions of 35 U.S.C. § 102(f), which states that a "person shall be entitled to a patent unless . . . he did not himself invent the subject matter sought to be patented, . . .."
The testimony in the District Court concerning inventorship is summarized in the following paragraphs. In early 1958 Campbell Machines Company received a purchase order for a number of storage feeders. Zimmerman was given the job of preparing the manufacturing information for the feeders and releasing the designs to the production shop. Although most of the feeder components were standard and had been produced previously, the lack of working space in the plant where the feeders were to be installed necessitated a new style of feed track.
Open-Flex was designed to fill this need. There is conflicting testimony as to the source of this idea and its reduction to practice. Campbell testified that confronted with this problem, he conceived the invention of Open-Flex just as it was later manufactured and patented, and that he gave full directions to Zimmerman as to how to manufacture it. These directions, he said, included the slot and were complete in all respects. Judge Kennedy found this testimony not to be credible and expressly stated that: "The Court does not believe Mr. Campbell's testimony."
Zimmerman's testimony included an express denial that he had ever been given such directions by Campbell. Zimmerman testified that he discussed with his father, who was an experienced and skilled tool and die maker, the problem of providing a flexible feed track to carry out the feeding function. Although the younger Zimmerman was also a tool and die maker, he did not know at that time that a spring could be wound in a rectangular shape. In the discussion with his father, Zimmerman reviewed hoses and tubes which use a spring wire spirally-wound body covered with a flexible coating, such as a vacuum hose. While with a previous employer Zimmerman had seen spirally-wound feed track or feed chutes. These were sometimes wrapped with electrical tape. Zimmerman's father was wearing a spring tension belt buckle at that time with a rectangular cross-section. From this belt buckle Zimmerman conceived the idea of a spirally-wound, rectangularly-shaped feed track, a flexible feed track with a rectangular cross-section. Zimmerman's father helped Zimmerman wind such a track which Zimmerman then showed to Campbell.
Judge Kennedy made a finding of fact that Zimmerman's testimony was a true statement of the events described, saying "The Court believes the testimony of Mr. Zimmerman."
The winding of the coil is only part of the invention. After the coil is wound it must be removed from the mandrel. Zimmerman's version, which also was corroborated by a coworker, was that "the slot was incorporated into the manufacturing process because of the inability to get the wound wire spring off the square mandrel." Judge Kennedy accepted this version and discredited Campbell's testimony that "the slot was a part of his original invention as he conceived it."
When the slot is created, the coherent spring is severed into as many segments as there are loops. To keep these from falling apart the flexible coating is applied prior to the slotting operation. Judge Kennedy credited the testimony that this process was conceived by Zimmerman, rather than by any action on the part of Campbell.
Neither party had strong supporting evidence to corroborate his oral testimony. Neither Campbell nor Zimmerman had notes, journals or other records of
their work. The corroboration which did exist supported Zimmerman. He produced a photograph of his father, taken at about the time of the invention, which showed his father standing in front of a lathe, wearing the rectangular shaped, spiral wound belt buckle. This belt buckle was introduced into the record as an exhibit, was a part of the evidence considered by Judge Kennedy, and has been examined by this court.
Zimmerman's testimony concerning this belt buckle was as follows:
Q Now, what instructions if any did Mr. Campbell give you to make the first model?
Q How and when did you get the concept of making a spiral wound spring feed tube with coating?
A I conceived the basic idea at the home of my parents' while discussing the problem of flexible feed track with my father.
Q I refer you to Exhibit 44 and ask you if you can tell the Court what that exhibit is and what it shows.
A This is a picture of my father. It shows him standing in the living room of the cottage of my mother-in-law and father-in-law and he's standing by a model of a galleon which I built and presented to them for use in the cottage.
Q Now, I show you Exhibit 45 and ask you what relation if any does that exhibit have with the making of the first open-flex model?
A This particular exhibit is a belt my father was wearing...
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