GALION IRON WORKS & M. CO. v. BUFFALO-SPRINGFIELD R. CO.

• Decision Date: 30 October 1952
• Docket Number: Civ. No. 1338.
• Citation: 108 F. Supp. 811
• Parties: GALION IRON WORKS & MFG. CO. v. BUFFALO-SPRINGFIELD ROLLER CO.
• Court: U.S. District Court — Southern District of Ohio

108 F. Supp. 811

GALION IRON WORKS & MFG. CO. v. BUFFALO-SPRINGFIELD ROLLER CO.

Civ. No. 1338.

United States District Court S. D. Ohio, W. D.

October 30, 1952.

Harker H. Hittson, Columbus, Ohio, (Lawrence B. Biebel of Marechal, Biebel, French & Bugg, Dayton, Ohio, of counsel), for plaintiff.

Clarence B. Des Jardins, Howard T. Keiser, of Des Jardins, Robinson & Keiser, Cincinnati, Ohio (Arthur E. Dowell, Jr., and Arthur E. Dowell, III, Washington, D. C., of counsel), for defendant.

NEVIN, Chief Judge.

This is a suit under the patent laws of the United States. Plaintiff and defendant are competitors. Both are Ohio corporations.

The suit was instituted by the filing on July 26, 1950, of a complaint in which plaintiff, The Galion Iron Works and Manufacturing Company, of Galion, Ohio, charged the defendant, The Buffalo-Springfield Roller Company, of Springfield, Ohio, with infringement of Keeler patent No. 2,197,395, of which plaintiff is the owner.

In its complaint, plaintiff also prayed for a Declaratory Judgment that Greiner patents Nos. 2,359,519 and 2,442,563 owned by defendant, are invalid and that plaintiff, in any devices manufactured by it, had not infringed them.

Defendant answered the complaint on September 29, 1950, denying infringement of Keeler patent No. 2,197,395 and denying the allegations of invalidity and non-infringement of Greiner patents Nos. 2,359,519 and 2,442,563, and attached to the answer four counterclaims. The first counterclaim alleged infringement by plaintiff of Greiner patent No. 2,359,519. The second counterclaim alleged infringement by plaintiff of Greiner patent No. 2,442,563. The third counterclaim alleged infringement by plaintiff of the U. S. design patent No. Des. 138,539, owned by defendant, and the fourth counterclaim prayed a declaratory judgment of invalidity and non-infringement of the Keeler patent No. 2,197,395. Issue was joined by plaintiff's reply to the counterclaims, filed on October 18, 1950.

I.

The patents in suit.

From the foregoing it will be observed that in the pleadings four United States Letters Patent originally were involved in this suit. The number of those Letters Patent respectively; the party to whom issued or assigned; their date of issue; their application date and what the patent states each patent is "for" are as follows:

Patent No. 2,197,395 to Raymond W. Keeler, Galion, Ohio, assignor to The Galion Iron Works and Manufacturing Company, a corporation of Ohio, issued on April 16, 1940, on application dated January 21, 1937, for "Trench Roller".

Patent No. 2,359,519 to Carl F. Greiner, Springfield, Ohio, assignor to the The Buffalo-Springfield Roller Co., Springfield, Ohio, a corporation of Ohio, issued on October 3, 1944, on application dated November 23, 1942, "being, (as stated in the patent) a continuation-in-part of my (Greiner's) co-pending application filed November 7, 1940" which "has since become abandoned". (File Wrapper Ex. P. 24 and Ex. D. 76 herein) for a "Road Roller".

Patent No. 2,442,563 to Carl F. Greiner, assignor to defendant herein, issued on June 1, 1948 on application dated September 27, 1946 for "Road Roller Frame Means for protecting Motors and Radiators from Dust", and Design patent No. Des. 138, 539 to John F. Harrison and Carl F. Greiner, Springfield, Ohio, assignors to defendant herein, issued August 15, 1944 on application dated May 1, 1944 for an "ornamental design for a road roller".

II.

Greiner Patent No. 2,442,563.

Upon its own motion defendant agreed at the start of the trial that an order could be entered finding Greiner Patent No. 2,442,563 invalid and granting plaintiff's prayer for a declaratory judgment of invalidity and non-infringement by it with respect to this patent.

As to this the record (PP 2-65 shows as follows:

"Mr. Des Jardins: (of Counsel for Defendant) May it please the Court, I have a statement I would like to make that relates to this case. * * * Among the patents that were declared upon in this suit is a patent No. 2,442,563 of Carl F. Greiner dated June 1, 1948, which was granted on an application filed September 27, 1946. In the course of our preparation for this trial, * * * I found there were several machines embodying the invention of this patent that had been sold by the Buffalo-Springfield Roller Company more than a year prior to the filing date of the application for patent. Of course, under the law that renders the patent invalid. * * * I, therefore, formally admit on the record that * * * the defendant consents to the entry of a judgment finding that patent (No. 2,442,563) invalid * * *. And we consent further to the entry of a judgment dismissing our counterclaim, that is, the second counterclaim attached to the Answer. * * * Now, as far as the matter of costs and reasonable attorney fees are concerned, that I understand is a matter that rests in the discretion of your Honor. * * *

"Mr. Hittson: (of Counsel for Plaintiff) * * * That apparently disposes of that patent (No. 2,442,563) insofar as this litigation is concerned. * * * I would like to make one comment * * * that the question of costs and attorney fees in connection with this patent which has been withdrawn be reserved until later.

"The Court: We will take that up at a later time, if that is satisfactory.

"Mr. Hittson: Very well. * * *

"The Court: Now all that is said in that (second) counter-claim, (and the reply thereto) as I understand, the Court needs consider no further.

"Mr. Des Jardins: You are right.

"The Court: Regarding costs and things of that kind, * * * we can take that up later.

"Mr. Des Jardins: I think so, yes."

This leaves, then, the other three patents heretofore referred to, presently before the Court for its consideration and determination.

III.

Keeler Patent No. 2,197,395 (Ex. P69)

Contentions of the respective parties and the law applicable thereto.

In its Findings of Fact and Conclusions of Law hereinafter set forth and here made an integral part of this Decision, the Court will deal in some detail with the claims in issue of the patents in suit; the defenses thereto, including the prior art, as fully as deemed necessary, and other pertinent data. To discuss them now would be a mere duplication. It will content itself for present purposes merely in stating the contentions of the parties themselves and the applicable law, as the Court understands it, for, as stated by the Court in Penmac Corp. v. Esterbrook Steel Pen Mfg. Co., D.C., 27 F.Supp. 86, at page 87: "it is now (1939) a work of supererogation to write a considered and detailed opinion on the facts in what used to be an equity cause and is now called a non-jury cause, for the place of the opinion must now be taken by formal findings of fact and conclusions of law, separately stated and numbered".

As to the validity of the claims in issue of Keeler patent in suit No. 2,197,395.

Plaintiff contends that this "is a pioneer patent"; that "in the field of trench rollers, there is nothing like it in the prior art"; that the Trench Roller of the Keeler patent "is the very first instrumentality ever built, which was a unitary roller designed to do the job for which it was built". That in order to solve the problem many ideas were tried out as for example the use of "agricultural tractors" the primary purpose of which was to draw plows or other agricultural implements and thus to be substituted for horses, and that such instrumentalities could not possibly be integrated into a machine specifically developed to meet the requirements of a trench roller.

Defendant pleads a number of reasons why in its opinion the Keeler patent-in-suit is invalid; those chiefly stressed and relied upon, however, are as follows:

(a) That the claims in issue are combination claims which purport to cover a particular combination of old elements; that there is no novelty in the combination of elements claimed; that the Keeler patent in suit cannot be distinguished from the prior art and that it is anticipated by and lacking in invention over the prior art (b) because Keeler was not the original and first inventor of the subject matter and (c) because plaintiff is barred by laches from enforcing this patent against this defendant.

In response to some of the foregoing assertions by defendant, plaintiff in its brief (P 26) says "Plaintiff does not contend that the individual elements of the Keeler patent are, per se, new. Plaintiff does contend, however, that the record shows conclusively that Keeler was the first to devise the trench roller as a unitary instrumentality designed to do a particular job."

It seems unnecessary to cite or quote, to any extent, the law as found in the decisions, applicable to the above contentions of the parties. The legal principles involved are as well known to counsel as to the Court. Among them are the following:

1. It has been so many times held that the presumption is that a patent is valid and that the burden rests on the assailant of the patent to prove its invalidity, as to have become almost axiomatic. Forestek Plating & Mfg. Co. v. Knapp-Monarch Co., 6 Cir., 106 F.2d 554; Harman v. Scott, D. C., 90 F.Supp. 486.

2. The fact (assuming it to be a fact) that the claims in issue "are combination claims" as asserted by defendant, does not, of itself, render the patent invalid. Defendant recognizes this to be true by stating in its brief (P 32) that "These claims cannot be valid unless the combination covered by them is a new one". This is in keeping with the rule universally laid down by the courts. In Gillman v. Stern, 2 Cir., 114 F.2d 28, at Page 30, the Court (by Judge Learned Hand) say: "If, however, an old article must be physically changed, even slightly, to fit the new use, it becomes itself a new `machine' or `manufacture,' and the statute is satisfied". See also Lakewood Engineering Co. v. Walker, 6 Cir., 23 F.2d 623, and Trabon Engineering Corporation v. Dirkes, 6 Cir., 136 F.2d 24.

3. Defendant bases...