Bradley v. Great Atlantic & Pacific Tea Co.

• Decision Date: 30 April 1948
• Docket Number: No. 5430.,5430.
• Citation: 78 F. Supp. 388
• Parties: BRADLEY et al. v. GREAT ATLANTIC & PACIFIC TEA CO.
• Court: U.S. District Court — Western District of Michigan

78 F. Supp. 388

BRADLEY et al. v. GREAT ATLANTIC & PACIFIC TEA CO.

No. 5430.

District Court, E. D. Michigan, S. D.

April 30, 1948.

Beaman & Patch, of Jackson, Mich., for plaintiffs.

Munn, Liddy & Glaccum, of New York City (E. J. Balluff, of Detroit, Mich., of counsel), for defendant.

PICARD, District Judge.

The main issue in this case is whether the Patent Office should have granted letters on the device involved, since it has been stipulated that if plaintiff has a patentable invention defendant has infringed on claims 4, 5 and 6.

There is in fact but one plaintiff, Weingarten, assignee of Turnham's patent No. 2,242,408, who operates a chain of grocery stores in the state of Texas and was a pioneer in what we know today as the self-serve store—forerunner of the super-market.

History of the development of this species of business enterprise is desirable. One Saunders, back in 1917, started the first Piggly Wiggly, a self-serve grocery in which the customer went around the store selecting what he wanted, put it into a cart or basket and proceeded to a counter where the cashier checked the goods, collecting money for the purchases. Plaintiff was an early disciple and the idea of having the customer's help made a favorable impression with many in the business. Among its most desirable features was that it produced a situation where the patron did the work of lifting his own groceries, light and heavy, from the moment of purchase to his departure.

Up to 1937 customers checking out of a self-serve grocery were routed through an aisle on one side of which was an L. shaped counter with the cashier and cash register placed at the turn in the elbow of the L. The customer was obliged to take his purchases out of the cart or basket in front of the cashier, have them checked over, pay, place them back in some kind of a receptacle, perhaps a paper bag, and depart. The next person in line had to wait while the unloading, checking and reloading process was taken care of and in the late twenties and thirties this situation had begun to menace development of self-serve grocery stores — a hurdle then being jumped only by installation of additional checking out counters with the attendant lessening of floor space and increase in personnel.

It is plaintiff's claim that from the inauguration of self-serves the moment two customers stood in line ready to check out there was need for some method of minimizing the second person's wait. But whether this was true or not, surely by 1937 there was an overwhelming demand for some system that would make it unnecessary for customers to stand in line at the checking out station for long periods; and there was need for alleviation of discomforts and annoyances — including the mixing of merchandise — as one patron followed closely upon the heels of another in an impatient desire to be on his way home. Of course it can be easily accepted that the merchant who got his customers out as soon as they were ready to get out would have an added attraction why he should be patronized. And it was most important to the grocer that his facilities make possible a large volume because of the small margin of profit on which he must rely.

Naturally plaintiff was more aware of this draw-back than defendant which was just beginning to install the self-serve type of store. So various ideas to meet the difficulty were advanced, none of which solved the problem, until in 1937 Turnham, one of Weingarten's employees and through whom plaintiff claims, conceived the idea of extending the counter beyond the L. Here he placed a three sided pusher or tray which used the top of the counter for a bottom and was prevented from slipping off by guide rails on each side. The sides of the bottomless tray extended above the guide rails permitting the cashier to "pull" the groceries up before her, then push the tray or pusher back on the counter so the next customer could be arranging his groceries within the tray while the person in front was checking out. This is the device upon which plaintiff's assignor received a patent. Later a handle was added to the side of the pusher nearest the checker to eliminate excessive physical effort and still later a weight was attached to the tray so that it was automatically pulled back into position for the next customer. These two improvements were not in the design of the patent as submitted but the part describing the method of utilization in the original does state that the pusher "frame may be grasped directly" (Patent, Page 2, Col. 1, line 35) to draw the groceries in front of the cashier.

Defendant contends that the Turnham method of speeding up "checking out" was the natural growth of the system; that there had been no real need for such acceleration before 1937; that similar devices had been used before; and that all skilled in the art saw the solution when the need actually became apparent as evidenced by the fact that practically all self-serve grocery stores put them in at the same time although their owners had never heard of or seen the Turnham combination.

We do not believe the facts justify defendant's position: First — hindsight is usually better than foresight. Invention is perplexing to one having need for its development only because he wonders why he or somebody else didn't think of it before. And second — today we are far removed from the delay or time consumed when it was necessary to telegraph information from one part of the country to the other by Indian runners, drums or smokesignals. With our modern method of relaying news it certainly wouldn't have taken very long before the novelty and efficiency of the Turnham pusher spread like wildfire throughout the trade. Add to this the fact that self-serve stores were springing up all over the country and the evidence shows conclusively that many, including defendant's representatives, were familiar with what was going on in the Weingarten stores. In fact, there is substantial evidence that such information was carried by means of photographs, magazine articles, talks and even by a cash register salesman.

So we need no stretch of reasoning to conclude that practically from the date of its entrance into the self-serve grocery field word had reached defendant that the Weingarten chain had in operation the then best answer to the "waiting in line" problem. Defendant makes no pretense of having worked out the system itself. It insists that the pusher system was a natural development; that like "Topsy" it just grew. But defendant and others had experimented or then began experimenting on their own and one ingenious device was a large wheel-shaped receptacle, divided into two parts, laid flat near the cashier, making it possible to check out one customer on one side of the wheel while another was unloading groceries on the other side in preparation for checking. Then there was the endless belt conveyor, the counter cart, and the use of two pieces of wood by the cashier to separate one customer's groceries from the customer's following. None was entirely satisfactory and today, practically every chain self-serve store organization in the country uses the device first installed in plaintiff's stores. It must be admitted, then, that Turnham made a valuable contribution to the efficiency of the self-serve store type of merchandising.

Conclusions of Law.

The case law dealing with patents has laid down certain cardinal principles recognized by those who have specialized in this practice.

First, a patent, having been granted by the Patent Office, carries a presumption that it is valid and the burden of proof to upset that presumption rests upon the person advocating invalidity. And it is not a presumption that may be destroyed easily, as for example by such evidence recognized as sufficient in a civil case. In fact, the courts have consistently held that the presumption of validity is so great that it may be removed only by evidence that rises to the dignity of "perhaps beyond a reasonable doubt." Here the stipulation admitting infringement by defendant of claims 4, 5 and 6 is in the record, so we are not concerned with that question, but if defendant is unsuccessful in overcoming the presumption of validity, plaintiff must prevail. That is defendant's burden in the case at bar. The rule of our own circuit is found in W-R Co. v. Sova, 6 Cir., 106 F.2d 478, 481, cert. denied 309 U.S. 663, 60 S.Ct. 591, 84 L.Ed. 1011 where the court said:

"The presumptive validity of a patent is so weighty that the defense of invention by another must be established by the clearest proof, perhaps beyond a reasonable doubt and a fortiori the same rule applies to the defense of prior public use or sale by the inventor."

Also see Walker on Patents, Sec. 116, (Deller Ed.) Sec. 63 page 300 and decisions cited; Mumm v. Decker & Sons, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed. 983; Westinghouse Co. v. Formica Co., 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316; Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 6 Cir., 106 F.2d 554; Allison Coupon Co. v. Bank of Commerce & Savings, 72 App.D.C. 82, 111 F.2d 664; Dodge v. Post, C.C., 76 F. 807; Motor Improvements v. General Motors Corporation, 6 Cir., 49 F.2d 543.

What then are the earmarks of an invention?

To begin with the device must present novel features, which may be as stated in National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co., 8 Cir., 106 F. 693, 706:

"* * * a new combination of old elements, whereby a new and useful result is produced, or an old result is attained in a more facile, economical, and efficient way, * * *"

The bottomless tray is not novel, as note, for example, the well known pool rack. Neither is a checking-out counter nor the use of guide rails. These have been seen in self-serve restaurants for years. However, the extension to the checking-out counter was apparently something new, as it automatically placed the register farther up on the checking-out aisle,...