Federal Sign & Signal Corp. v. Bangor Punta Op., Inc.
| Decision Date | 26 March 1973 |
| Docket Number | No. 70 Civ. 2971.,70 Civ. 2971. |
| Citation | 357 F. Supp. 1222 |
| Parties | FEDERAL SIGN AND SIGNAL CORPORATION, Plaintiff, v. BANGOR PUNTA OPERATIONS, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Curtis, Morris & Safford, New York City, and Gary, Juettner, Pigott & Culliwan, Chicago, Ill., by William C. Conner, New York City, and Charles F. Pigott, Jr., Chicago, Ill., for plaintiff.
Wyatt, Gerber & Shoup, New York City, and Patrick J. Walsh, Greenwich, Conn. by Douglas W. Wyatt, Eliot S. Gerber, and Albert C. Johnston, New York City, for defendant.
This action for patent infringement, with counterclaims for antitrust violations and unfair competition, was commenced in July of 1970. Thereafter, the case was tried before the undersigned, sitting without a jury, over a period of nine days in late April and early May, 1972. After a careful review of the entire record—including the more than 1300 pages of trial transcript, the voluminous documentary evidence and the briefs submitted by the parties—and the relevant law, I have made the following findings of fact, and drawn the following conclusions of law.
Plaintiff is a corporation organized under the laws of the State of Delaware, with its principal place of business in Chicago, Illinois. Defendant is a New York corporation, with its principal place of business in Greenwich, Connecticut; it manufactures the allegedly infringing product, an electronic speed computer called the "TDS". Plaintiff is the owner by assignment of the two patents which form the basis of this suit. The earlier of the two is U. S. Patent No. 3,182,331, issued May 4, 1965 to Arthur N. Marshall, for a "Method of Speed Indication" (hereinafter the "Marshall method patent"); the second is U. S. Patent No. 3,530,382, issued September 22, 1970 to John W. Liston, Gordon E. Gee, and William K. Oliver, for a "System for Speed Indication Utilizing Digital Distance and Digital Time Measuring Apparatus" (hereinafter the "Liston patent"). As perhaps suggested by the titles of the two patents, the Liston patent is an electronic digital device designed to practice the methods included in the Marshall method patent for measuring and recording the speed of one moving vehicle from a second vehicle.
More specifically, the nine claims to invention contained in the Marshall method patent and set out in the appendix1 describe various methods of "determining and identifying the speed of a checked vehicle from a checking vehicle wherein said checking vehicle has a distance measuring unit which can measure and identify a selected distance traveled by said checking vehicle and a time measuring unit which can measure time and a directly readable speed measuring means which can combine said selected distance and time to identify the speed of said checked vehicle. . . ." Marshall method patent at p. 11. The specifications and drawings of the patent disclose an electro-mechanical computer whereby the methods can be reduced to practical application; although the patent itself is not limited to any particular device, but refers to the methods generally, it is clear that the only means of practicing the methods at the time the patent was granted was via this electro-mechanical computer. Indeed, this particular device is the subject of U. S. Patent No. 3,276,029, issued September 27, 1966 to Arthur Marshall for an "Apparatus for Speed Indication" (hereinafter "Marshall apparatus patent"). Originally, both methods and apparatus claims were included in the same application, but the Patent Office on December 16, 1963 required restriction of the application for purposes of examination, and Marshall chose to prosecute the methods claims first. The Marshall apparatus patent is not at issue in this suit, since the Liston patent represents a substantial improvement in function and performance of the methods, and replaced the more primitive mechanical computer shortly after its development for commercial production.
Although the Marshall apparatus patent is not an issue in this suit, it would be helpful in understanding the application of the Marshall methods and Liston refinements to describe it here. Put briefly, the apparatus is designed to fit compactly into a police car or other "checking vehicle". A rigid base plate serves as mounting for all of the moving component parts. The device has two lead screws, set perpendicular to each other in overlying planes: the "distance" lead screw is driven by a flexible shaft which is connected to the automobile transmission in which the device is mounted; the "time" lead screw is driven by an accurate constant speed electric motor. A solenoid clutch provides the means for engaging the flexible shaft and distance lead screw; this clutch in turn is controlled by a manually operable "distance" switch. The electric motor is similarly controlled by a manually operable "time" switch, which is placed next to the distance switch. Each of the two lead screws are connected to internally threaded nuts, which in turn are connected to a single movable carriage plate. When the distance lead screw is engaged, it drives the threaded nut, which consequently causes the carriage plate to move in one direction in proportion to the distance traveled by the vehicle; when the time lead screw is engaged, it drives its connecting nut, thereby causing the carriage plate to move in a direction at right angles to the movement caused by the distance lead screw when operated alone, and proportional to the time elapsed. Operated together, or consecutively without resetting to zero, the lead screws cause the carriage to move to a position dependent upon the ratio of time to distance (i. e., speed). An indicator rod and an indicator scale graduated in miles per hour and attached to the carriage provide a directly readable indication of the speed of the target vehicle. Means are also provided for resetting the apparatus to "zero" after a reading has been taken.
As the second introductory paragraph of the Marshall method patent asserts, "the invention is intended to be used with the vehicles of law enforcement officers, enabling them to quickly and accurately check the vehicle speeds of potential violators of highway speed laws including the speed laws of urban localities and highway or turnpike speed laws." The various claims of the patent describe methods of using the specified apparatus for determining the speed of one car from another moving vehicle, whereby the time switch of the apparatus is closed when the checked target or vehicle passes a first reference point and stopped after the vehicle passes a second selected reference point; the distance switch is closed when the checking or police vehicle passes the first reference point, and stopped when it passes the second reference point. The resultant speed indication reports the average speed of the checked vehicle between the two points selected.
It should be noted that the apparatus in effect measures the distance traveled by the target vehicle and the time in which it takes to travel the distance, and combines the two to yield the resultant average speed. The distance measurement can be made either before, during, or after the time measurement, and the speed of the target vehicle need bear no relation to the average speed of the police car between the two selected reference points. The checking vehicle can proceed either over a path "substantially equivalent" to that traveled by the target vehicle (claim 1), or over an "equal path" (claim 2). Claims 3 and 4 refer to methods for recording the speed of the target vehicle when measured in the manner described in claims 1 and 2, respectively. Claim 5 describes a method of determining the speed of a checked vehicle where the distance measurement is taken first, so that the checking vehicle remains stationary while timing the checked vehicle. Claim 6 describes a method of speed determination whereby the distance measurement step occurs after the starting of the time measurement. Claim 7 describes a speed determination method whereby both time and distance measurement steps are commenced simultaneously; claim 8 describes another method of simultaneously commencing time and distance measurement as the checking vehicle passes the target vehicle. Claim 9 describes a method whereby the speed of a checked vehicle is determined as it travels toward the checking vehicle.
Plaintiff also complains that 19 claims of the Liston patent2 are infringed; all of these are directed to various combinations of circuits and circuit elements of an electronic computer, which is designed to be mounted in one vehicle for determining the speed of another vehicle as described in the Marshall method patent. For present purposes, the Liston patent is sufficiently described in the abstract to the patent:
"An improved speed measuring and indicating apparatus which can be mounted in a first vehicle and operated therefrom to determine the speed of a second vehicle, the apparatus including first means coupled to the driving mechanism of the first vehicle for generating a number of electrical pulses proportional to the distance traveled by the first vehicle, second means for generating a number of electrical pulses proportional to the time required for the second vehicle to travel the same distance, and means for dividing the distance pulses by the time pulses to indicate the average speed of the vehicle over the foregoing distance, the apparatus also including readout means for indicating such speed and time and distance switches for manual actuation by an operator."
Plaintiff is also the owner by assignment of the registered trademark "BASCAR", an acronym for Visual Average Speed Computer And Recorder. The trademark was registered by Arthur Marshall in 1966 and orginally applied by him to his electro-mechanical apparatus. Plaintiff currently utilizes the trademark to designate its...
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