LODGE & SHIPLEY COMPANY v. Holstein and Kappert

• Decision Date: 14 October 1970
• Docket Number: Civ. A. No. 67-H-869.
• Citation: LODGE & SHIPLEY COMPANY v. Holstein and Kappert, 322 F. Supp. 1039, 167 USPQ 625 (S.D. Tex. 1970)
• Court: U.S. District Court — Southern District of Texas
• Parties: The LODGE & SHIPLEY COMPANY, Plaintiff, v. HOLSTEIN AND KAPPERT G.m.b.H. and Wolfgang Backhaus, Defendants.

322 F. Supp. 1039

167 USPQ 625

The LODGE & SHIPLEY COMPANY, Plaintiff, v. HOLSTEIN AND KAPPERT G.m.b.H. and Wolfgang Backhaus, Defendants.

Civ. A. No. 67-H-869.

United States District Court, S. D. Texas, Houston Division.

October 14, 1970.

COPYRIGHT MATERIAL OMITTED

Tom Arnold, Arnold, White & Durkee, Houston, Tex., William G. Konold, Wood, Herron & Evans, Cincinnati, Ohio, for plaintiff.

B. R. Pravel, Pravel, Wilson & Matthews, Houston, Tex., Michael J. Striker, New York City, for defendants.

HANNAY, District Judge.

FINDINGS OF FACT

A. FINDINGS RE MEIERJOHAN PATENT NO. 2,695,190

1. This is a suit for alleged infringement of claim 12 of U. S. Patent No. 2,695,190 entitled, "Article Transferring Apparatus", which was issued to Ernest Meierjohan on November 23, 1954, and which was assigned to Plaintiff, The Lodge & Shipley Company, prior to the filing of the Complaint in this cause. This suit is also for the alleged infringement of claim 8 of U. S. Patent No. 2,873,996 entitled, "Lifting Cup For Article Transferring Apparatus", which was filed by Charles J. McHugh and issued to his assignee, The Lodge & Shipley Company, plaintiff herein, on February 17, 1959.

2. The article transferring apparatus of the Meierjohan Patent No. 2,695,190 is an apparatus for lifting a plurality of bottles or other articles from a case or box to a conveyor or other location. As disclosed in the Meierjohan patent, the apparatus has a plurality of article-engaging members or gripping heads, mounted on a movable manifold frame for picking up a plurality of bottles or other articles. Each article engaging member or gripping head is formed with a single rubber tube or liner (Figs. 7 and 8) that is mounted in a rigid cylindrical shell so that air pressure inflates the rubber tube to cause it to squeeze around the upper end of the bottle to grip the bottle for lifting it. Each article-engaging member or gripping head is flexibly supported on a flexible hose so that the gripping head can shift freely from side to side, tilt and move upwardly as it moves into position for engaging or gripping the bottle. These movements are shown in Figs. 3, 4 and 5 of the Meierjohan patent.

3. In U. S. Patent No. 2,308,209, entitled, "Article Transferring Apparatus" issued to Charles Schmutzer on January 12, 1943, the basic concept of mounting a plurality of article engaging members on a frame for lifting or picking up bottles from a case or box was disclosed. The article engaging members were made with an inflatable cup inside of a rigid cylindrical shell (Fig. 3), almost identical to the article engaging members of the Meierjohan patent, the only difference being that the Meierjohan patent disclosed a single wall for the inflatable liner whereas the Schmutzer patent disclosed a double wall for the inflatable liner.

4. In U. S. Patent No. 1,943,483 entitled, "Ware Transferring Apparatus", issued to W. J. Miller on January 16, 1934, the combination of a flexible hose and an article engaging member for lifting or picking up articles, such as cups, bowls, etc., was disclosed. In Fig. 8 of the Miller patent, the combination of a flexible hose for suspending an article engaging member adapted to grip internally of the article was disclosed, and in Fig. 9a, an article engaging member was disclosed having an air inflatable double wall liner inside a rigid cylindrical shell for gripping externally of the article, using air pressure, as a modified form of Fig. 8. Although the Miller patent was primarily concerned with handling pottery ware, he stated that his mechanism could be applied "to perform any function of which it is capable", and in this connection, claim 12 of Meierjohan is for "article" transferring which encompasses any articles such as the pottery ware of the Miller patent. With the gripping head of Fig. 9a of Miller suspended from a flexible hose as in Fig. 8 of that patent, the Miller apparatus would inherently perform all of the functions of the Meierjohan apparatus, since both have the same combination of a flexible hose suspending a gripping head. Furthermore, the Miller patent specifically discloses that certain forms of his gripping devices have lateral play and swinging movement to facilitate centering the gripping head with respect to the article to be picked up by the gripping head, indicating that Miller recognized the need for compensating for axial misalignment of his gripping heads and articles to be picked up.

5. The teaching of compensating for axial misalignment between bottles and gripping heads was explicitly explained for picking up bottles in U. S. Patent No. 2,335,613 entitled, "Multistation Transfer Equipment", issued to Emery Sayen on November 30, 1943. In the Sayen patent, a rigid tube is shown (Figs. 14 and 17) as pivotally mounted to pivot the gripping head for compensating for misalignment of the gripping head with the bottle to be picked up. In Sayen, the bottles moved upwardly to the gripping heads, which is the same relative movement as the gripping heads moving downwardly to the bottles. The rigid tube of Sayen is disclosed as rocking to compensate for axial misalignment of the gripping heads and the bottles.

6. German Patent No. 836,162, published August 20, 1951 and issued to Willem A. Tellier also disclosed the idea of using a flexible hose to suspend a gripping head for picking up eggs. The flexible hose was deliberately made of rubber so that it would flex or bend to compensate for misalignment of the eggs. Although the German Patent No. 836,162 was primarily concerned with vertical misalignment of the eggs, the flexible hose of the patent would necessarily allow the gripping head to shift freely from side to side, tilt and move upwardly when engaging an article, whether an egg or a bottle. The prior art before Meierjohan thus establishes conclusively that those skilled in this art who considered the problem of the misalignment of a gripping head and an article to be picked up, whether it was an egg as in German Patent No. 836,162, pottery ware as in Miller Patent No. 1,943,483, or bottles as in Sayen Patent No. 2,335,613, used either a flexible hose with a gripping head (Miller and German patent) or a pivoted rigid tube (Sayen), to compensate for misalignment or to provide centering, establishing that the structure and function of claim 12 of Meierjohan was old and was clearly obvious to those having ordinary skill in the art before Meierjohan entered the field. Furthermore, Meierjohan himself, a completely unskilled man in the art of picking up botttles, when he first decided to build an apparatus for lifting bottles, just picked up a flexible tube and made an inflatable cup without any hesitation or problems. There is absolutely no evidence of a long standing problem in this case, and further, there is no evidence of anyone in the art having difficulties or problems in designing apparatus to compensate for misalignment of gripping heads and articles to be picked up.

7. At the time Meierjohan entered the field, he thought he was the first to compensate for axial misalignment of a gripping head and an article to be picked up (See Meierjohan patent, column 3, lines 10-15), but this was not true because devices for lifting bottles out of cases to a conveyor or other location were old and in wide commercial use, examples of which were apparatus sold by the Meyer Company and the Barry Wehmiller Company, and they had the ability to "hunt" or center their gripping devices over bottles that were off-center or mis-aligned by as much as three-eighths ( 3/8 ) of an inch. The "Climax" device (Defendants' Exhibit 1) in its commercial form is almost a carbon copy of McHugh Patent No. 2,873,996, and such device had commercial success. There is evidence that the Plaintiff's Climax device replaced some of the prior art devices in one plant in Massachusetts, and there was testimony that this was because Plaintiff's commercial device could pick up almost all, some "99.97%" of misaligned bottles, but such commercial success was accomplished with a device made like the McHugh Patent No. 2,873,996, not the Meierjohan Patent No. 2,695,190. In fact, there is no evidence of any commercial success of the Plaintiff's devices until 1959 (Plaintiff's Exhibit 17) and that was after Plaintiff had adopted the construction of the McHugh patent which was filed in 1956 and issued in 1959, as testified to by the vice-president of Plaintiff.

8. The devices (PX-38; PX-39) of Defendant, Holstein & Kappert, charged to infringe claim 12 of Meierjohan are a part of equipment for packing bottles into cases or boxes, which apparatus is known commercially as a "packer", one of which was delivered to Joseph Schlitz Brewing Co. in Milwaukee, Wisconsin.

9. I find that claim 12 of the Meierjohan patent must be construed as limited to the combination of a gripping head having a single thickness inflatable cup and a flexible hose suspending the gripping head. Claim 12 specifically recites the "distensible annulus" as being in "close proximity" to the inner surface of the cylindrical wall portion, which limits the claim to the single thickness cup. Claim 12 defines the "means for suspending" the article-engaging member in terms of a "whereby" clause beginning at column 5, line 20 of the Meierjohan Patent No. 2,695,190, which "whereby" clause is purely functional and at the point of alleged novelty over the prior art, and as such, such language may be ignored, but even if the "whereby" clause is considered as a meaningful part of claim 12, such functional language is clearly directed to the movements shown in Figs. 3, 4 and 5 of Meierjohan. This was the representation made by the attorney for Meierjohan when he submitted patent claim 12 to the Patent Office (see pages 48, 49 of file wrapper of Meierjohan Patent No. 2,695,190—Defendant's Exhibit 3), and such functions of Figs. 3, 4 and 5 can only be accomplished with a flexible hose, because it is...