Sears, Roebuck & Co. v. Jones, 6716.

• Decision Date: 12 September 1962
• Docket Number: No. 6716.,6716.
• Citation: 308 F.2d 705
• Parties: SEARS, ROEBUCK & CO., a New York corporation; and Parker Manufacturing Company, a Massachusetts corporation, Appellants, v. Harold T. JONES and The Petersen Manufacturing Company, Inc., a Nebraska corporation, Appellees.
• Court: U.S. Court of Appeals — Tenth Circuit

308 F.2d 705 (1962)

SEARS, ROEBUCK & CO., a New York corporation; and Parker Manufacturing Company, a Massachusetts corporation, Appellants, v. Harold T. JONES and The Petersen Manufacturing Company, Inc., a Nebraska corporation, Appellees.

No. 6716.

United States Court of Appeals Tenth Circuit.

September 12, 1962.

Philip H. Sheridan, Denver, Colo., and Cedric W. Porter, Boston, Mass., for appellants.

Jerome R. Strickland, Edwin L. Spangler, Jr., Denver, Colo., Herbert J. Jacobi and Samuel L. Davidson, Washington, D. C., for appellees.

Before MURRAH, Chief Judge, and BREITENSTEIN and HILL, Circuit Judges.

MURRAH, Chief Judge.

This is an appeal from a judgment holding appellees' patent for "Locking Wrench and Pliers" valid and infringed and enjoining the future sale of appellants' accused device. Jones is the owner of the patent in suit, and Petersen Manufacturing Company, Inc. is his exclusive licensee. Sears, Roebuck & Co. markets the accused device, manufactured by Parker Manufacturing Company.

Appellants first assert noninfringement, then invalidity. But, we follow what has been said to be the better practice, and first consider the issue of the validity of the patent. Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 65 S.Ct. 1143, 89 L.Ed. 1644; and see: Blish, Mize and Silliman Hardware Co. v. Time Saver Tools, Inc. (10 C.A.), 236 F.2d 913.

The patent in suit (Jones' #2,514,130) relates to a plier-type toggle wrench¹ having a quick and easily operated release lever positioned between the handles of the wrench and adapted to pry the wrench open. The release mechanism, which constitutes the improvement embodied in the patent, is described in Jones' specifications as comprising a lever pivotally mounted on the movable handle, within the channel formed by the sides of such handle, the forward end or toe of which, when the lever is moved toward the fixed handle, comes against the lug on the bifurcated toggle link and thus moves the center pivot point across the "dead center line." Jones also describes a heel portion on his lever, so that when the release lever is moved away from the fixed handle it rocks on its heel and the toe portion cams against the lug on the toggle link, again causing the center pivot point to cross the "dead center line," thus breaking the toggle. Hence, as specifically described and exemplified in its preferred form in the specifications, Jones' lever pivots on the movable handle and cams against the toggle link to break the toggle and open the jaws of the wrench.

The trial court found, and the evidence confirms, that Jones was the first in the art to disclose a release lever of any kind between the handles of a plier-type toggle wrench which cooperated with the movable handle and toggle link to pry open the jaws of the wrench. And an examination of the prior art discloses no patents previous to Jones' first filing date teaching the Jones method of release, i. e., the cooperation of a lever with the handle and toggle link to pry open the jaws of a toggle wrench. In this regard, the trial court found that the Jones patent disclosed a pioneer invention and that its claims were entitled to an interpretation with a full range of equivalency. The court noted, however, that even if the invention be not pioneer, it is at least entitled to the doctrine of equivalents to some substantial extent, by reason of its important contribution to the art.² And we are convinced from an examination of the findings of the trial court and their record support that the patent in suit is neither void by reason of anticipation by prior art nor by obviousness.

In typically esoteric phraseology, the claims of the patent held to be infringed (Claims 1, 4 and 5) describe, in essence, the following improvements.

Claim 1: A release lever pivotally attached to the movable handle which cams against the toggle link in its closed position to open the toggle — thus opening the jaws of the wrench.

Claim 4: A release lever pivotally attached to the movable handle which cams against either the toggle link or the fixed handle to open the wrench.

Claim 5: A release lever pivotally attached to either the movable handle, the fixed handle, or the toggle link and which, by camming means, opens the jaws of the wrench when rocked about its pivot.

It is conceded that Claims 1 and 4 do not read directly upon appellants' accused device, which adapts to a toggle wrench a release lever pivotally attached to the toggle link and which, by camming action against the movable handle, breaks the "toggle" and opens the wrench. The trial court found, however, that the application of the release lever utilized by the accused device employed a mere reversal of the parts demonstrated in the patent in suit. Indeed, as the trial court observed, the only substantial distinction is that in one the lever pivots on the movable handle and cams against the toggle link and in the other it pivots on the toggle link and cams against the movable handle. We agree with the finding of the trial court, supporting his conclusion of infringement as to Claims 1 and 4, that "defendants' device produces the same result in substantially the same way and by substantially the same means * * *" as that described in the patent in suit. See: Johns-Manville Corp. v. National Tank Seal Co. (10 C.A.), 49 F.2d 142, 146; and Sanitary Refrigerator Co. v. Winters et al., 280 U.S. 30, 42, 50 S. Ct. 9, 74 L.Ed. 147.

Appellants contend, however, that the form of release employed by their wrench was not precisely disclosed by the Jones specifications and that the equivalency afforded the Jones invention by the trial court served to void that patent for indefiniteness. Jones' specifications,...