Kearney & Trecker Corporation v. Giddings & Lewis, Inc., No. 66-C-360

CourtUnited States District Courts. 7th Circuit. United States District Court of Eastern District of Wisconsin
Writing for the CourtMYRON L. GORDON
Citation306 F. Supp. 189
PartiesKEARNEY & TRECKER CORPORATION, Plaintiff, v. GIDDINGS & LEWIS, INC., Defendant.
Docket NumberNo. 66-C-360,67-C-113.
Decision Date13 November 1969

306 F. Supp. 189

KEARNEY & TRECKER CORPORATION, Plaintiff,
v.
GIDDINGS & LEWIS, INC., Defendant.

Nos. 66-C-360, 67-C-113.

United States District Court E. D. Wisconsin.

November 13, 1969.


306 F. Supp. 190

Quarles, Herriott, Clemons, Teschner & Noelke, by Lester S. Clemons, Adrian L. Bateman, Jr., and Thomas W. Ehrmann, Milwaukee Wis., Haight, Hofeldt & Davis, by Edward A. Haight, Chicago, Ill., for plaintiff.

Foley, Sammond & Lardner, by Marvin E. Klitsner, Milwaukee, Wis., Wolfe, Hubbard, Voit & Osann, by Richard R. Wolfe, Edward W. Osann, Jr., Homer J. Schneider, Chicago, Ill., of counsel, for defendant.

OPINION

MYRON L. GORDON, District Judge.

These are consolidated actions. A patent infringement on the part of Giddings & Lewis, Inc. is charged by Kearney & Trecker Corporation. The latter is the owner of Brainard et al. patent Re.-Re. 25,737. Kearney & Trecker seeks injunctive relief and damages for the claimed infringement.

Giddings & Lewis asks for a declaratory judgment asserting that the aforesaid patent is invalid and not infringed; it also has advanced a number of affirmative defenses to bar the enforcement of the patent.

In a comprehensive pretrial report, the parties have stipulated to a large number (135) of uncontested factual matters. They have agreed that for purposes of this consolidated trial Kearney & Trecker Corporation is to be denominated the "plaintiff", and Giddings & Lewis referred to as the "defendant".

The patent in suit (Re.-Re. 25,737) is the second reissue of an earlier patent (3,052,011) which was issued on September 4, 1962. The first reissue (Re. 25,583) was on May 26, 1964, and the re-reissue (Re.-Re. 25,737) was on March 2, 1965.

In the present action, the plaintiff relies on claims 15, 19 and 20 of its patent. The defendant has manufactured certain machines which the plaintiff contends infringe its patent. The following three machines made by the defendant are said to infringe the patent with particular reference to claim 15: NumeriCenter 10V, 15V, and 15V floor type. The plaintiff also charges that the defendant's machine NumeriCenter 25H infringes with reference to claims 19 and 20.

I. VALIDITY

Without reference to the allegations as to fraud in the procurement of the patent (which will be discussed later in this opinion), the court will first consider the question of the validity of the patent in suit.

The Brainard patent relates to a machine tool with an automatic tool changing device, the function of which is to select a given tool from a storage bin,

306 F. Supp. 191
remove it from said bin, transfer it to the machine tool's operating station, remove the previously used tool from the operating station and deliver it to the storage bin. This entire operation is performed automatically, utilizing directions contained on a prepared tape. The directions contained on the tape are executed through an electronic control system and without the intervention of a machine operator

The plaintiff asserts that there is a major contribution to the machine tool art that is contained in the patent in suit in that it utilizes a two-handed tool changer. Under this technique, the device delivers one tool to the spindle, which presents it to the operating station, while simultaneously restoring a removed tool to the place of storage. The use of the two-handed changing device is said to increase the speed of the operation, and the plaintiff urges that there is invention in such technique.

The defendant contends that the plaintiff's patent is invalid in light of the prior art, 35 U.S.C. § 103, and that it lacks novelty under 35 U.S.C. § 102. Applying the test found in Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), the defendant seeks a ruling that the plaintiff's patent wants validity by reason of obviousness.

In Cloud v. Standard Packaging Corp., 376 F.2d 384 (7th Cir. 1967), the court discussed the analytical steps which must be taken to determine the question of validity under § 103. In resolving the question of obviousness, the court is to examine the scope and content of the prior art, the differences between the prior art and the claims in issue, and, finally, the level of ordinary skill in the pertinent art. Some recent decisions which have examined this test are Skil Corporation v. Cutler-Hammer, Inc., 412 F.2d 821 (7th Cir. 1969); Appleton Electric Co. v. Efengee Electrical Supply Co., 412 F.2d 579 (7th Cir. 1969); Paper Converting Machine Co. v. FMC Corporation, 409 F.2d 344 (7th Cir. 1969); Leach v. Rockwood & Co., 404 F.2d 652 (7th Cir. 1968).

The principal prior art which was considered by the patent office before its allowance of the original Brainard patent is the Morgan patent, No. 2,901,927. While the Morgan patent provided for automatic tool changing, I believe that there are significant distinctions between the Morgan disclosure and claims 15, 19 and 20 of the Brainard patent. For example, contrary to claim 19 of the Brainard patent, the Morgan patent did not have "a tool change arm rotably carried by said frame and operable when rotated to replace a tool in said tool securing means with the selected tool from said storage means." Distinctions between Morgan and Brainard were recognized by both the plaintiff's expert, Dr. Harrington, and the defendant's expert, Dr. Bollinger.

Although the patent office had before it the Morgan patent, the defendant urges that it failed to consider all the relevant prior art. Paragraph 107 of the revised pretrial report recites a number of prior art references asserted by the defendant. Particular reliance is made upon Conradson (2,323,010), Hautau (2,919,010), and the Martonair Machinery article. Failure of the patent office to have considered such prior art is stressed by the defendant to support its contention that the statutory presumption of the validity of a patent is inapplicable.

The statutory presumption of validity under 35 U.S.C. § 282 "is only overcome by clear and cogent evidence of invalidity." Ortman v. Maass, 391 F.2d 677, 681 (7th Cir. 1968). In the recent case of Deep Welding, Inc. v. Sciaky Bros., Inc., 417 F.2d 1227 (7th Cir. August 13, 1969), Judge Kerner pointed out that

"* * * The presumption of validity is largely, if not wholly, dissipated when pertinent prior art is shown not to have been considered during the processing of the patent application."
306 F. Supp. 192

The Conradson patent discloses a lathe with a tool carrier from which an operator can visually select and manually withdraw for use and manually return various tools. The Conradson structure shows no "selection means" as called for in claims 19 and 20 and in my opinion differs from the novelty found in the Brainard patent under claims 15, 19 and 20.

The Hautau patent relates to a machine tool which has a "tool securing and operating means". The Hautau patent shows a device in which arms pivot about a common center, exchanging work pieces sequentially. It does not, however, provide selection means for tools. It is my conclusion that the disclosure in the Hautau invention is not identical with claims 15, 19 and 20 of Brainard.

In the Martonair Machinery article, there is disclosure of a lathe having means to alternate between two tools; one slides into working position on one side and is removed on the other side. The Martonair device does not have "a control system operably connected", nor does it provide "a plurality of tools removably carried by said tool storage magazine". In my opinion, the alternating two-tool structure of Martonair did not anticipate Brainard, nor did the patent office's failure to consider it impinge on the presumption of the validity of Brainard.

I find that the Brainard invention meets the novelty test of § 102, as well as the nonobviousness test of § 103. The references relied upon by the defendant do not anticipate the patent under § 102, nor do they negate patentability under § 103.

With regard to the "ordinary skill in the art", the defendant urges that the Brainard patent is invalid, notwithstanding any novelty it may possess, because the novel departures do not meet the nonobviousness test with respect to the body of prior art as a whole. The record in this case persuades me that the combinations of claims 15, 19 and 20 would not have been obvious to one of ordinary skill in the art. Mr. Sedgwick testified that the control system was an obvious control expedient. From this, the defendant urges that element f of claim 15 was obvious to one of ordinary skill in the art. Mr. Sedgwick also opined that there would be no great difficulty in adapting the Hautau transfer arm for tool transfers.

I was not impressed with the correctness of Mr Sedgwick's views and do not regard them as persuasive proof that the combination of claims 15, 19 and 20 were obvious to a person of ordinary skill in the art. Like Mr. Sedgwick, Mr. Hautau is an inventor. Notwithstanding the latter's extensive experience in the design of automatic machines, the prior art did not make obvious to Mr. Hautau the structure of the claims in suit.

In 1956, Ford Motor Company solicited builders of machine tools to submit proposals on a numerically controlled machine tool with automatic tool changing. It would appear that the combination of claims 15, 19 and 20 as found in the Brainard patent were not sufficiently obvious to evoke an effective response to the Ford invitation to the trade. Thus, although there was a need and a demand for an efficient automatic tool changing machine tool, and although the industry was familiar with the Morgan machine, it was not until the Brainard patent that the combination of elements contained therein was put together and recognized by the trade.

The commercial success of the Milwaukee-Matic II machine tool has been stipulated to by the parties; this tends to support the view that this patent achieved the result of commercial success in part by reason of its novelty....

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6 practice notes
  • Bendix Corporation v. Balax, Inc., No. 71-1483.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (7th Circuit)
    • January 6, 1973
    ...the same district judge held that Lear was not to be retroactively applied. Kearney & Trecker Corp. v. Giddings & Lewis, Inc., 306 F. Supp. 189, 201 (E.D.Wis.1969). We reversed on other grounds, finding that a fraud had been committed on the patent office, that Walker Process Equipm......
  • Kearney & Trecker Corp. v. Cincinnati Milacron, Inc., Civ. A. No. 6019
    • United States
    • United States District Courts. 6th Circuit. United States District Courts. 6th Circuit. Southern District of Ohio
    • October 17, 1975
    ...Brainard patent valid, infringed, and, most importantly, enforceable. Kearney & Trecker Corporation v. Giddings & Lewis, Inc., 306 F. Supp. 189 (E.D.Wis.1969). The case before this Court (except the issue of damages) came on for trial in 1970 after five years of exhaustive discovery......
  • Kearney & Trecker Corp. v. Giddings & Lewis, Inc., No. 18354.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (7th Circuit)
    • April 17, 1972
    ...related to the two reissues of Brainard, as well as the acquisition and reissue of the important Morgan patent.4 The district court, 306 F.Supp. 189, held that Brainard's reissue claims 15, 19 and 20 were valid and infringed. These claims were substantially identical with claims in the orig......
  • Beall v. KEARNEY & TRECKER CORPORATION, Civ. No. 70-1303.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • September 27, 1972
    ...which was recently decided by the Court of Appeals for the Seventh Circuit. Kearney & Trecker Corp. v. Giddings & Lewis, Inc., 306 F.Supp. 189 (E.D.Wis.1969), rev'd, 452 350 F. Supp. 980 F.2d 579 (7th Cir. 1971), cert. denied, 405 U.S. 1066, 92 S.Ct. 1500, 31 L.Ed.2d 796 (1972). By ......
  • Request a trial to view additional results
6 cases
  • Bendix Corporation v. Balax, Inc., No. 71-1483.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (7th Circuit)
    • January 6, 1973
    ...opinion, the same district judge held that Lear was not to be retroactively applied. Kearney & Trecker Corp. v. Giddings & Lewis, Inc., 306 F. Supp. 189, 201 (E.D.Wis.1969). We reversed on other grounds, finding that a fraud had been committed on the patent office, that Walker Process Equip......
  • Kearney & Trecker Corp. v. Cincinnati Milacron, Inc., Civ. A. No. 6019
    • United States
    • United States District Courts. 6th Circuit. United States District Courts. 6th Circuit. Southern District of Ohio
    • October 17, 1975
    ...found the Brainard patent valid, infringed, and, most importantly, enforceable. Kearney & Trecker Corporation v. Giddings & Lewis, Inc., 306 F. Supp. 189 (E.D.Wis.1969). The case before this Court (except the issue of damages) came on for trial in 1970 after five years of exhaustive discove......
  • Kearney & Trecker Corp. v. Giddings & Lewis, Inc., No. 18354.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (7th Circuit)
    • April 17, 1972
    ...related to the two reissues of Brainard, as well as the acquisition and reissue of the important Morgan patent.4 The district court, 306 F.Supp. 189, held that Brainard's reissue claims 15, 19 and 20 were valid and infringed. These claims were substantially identical with claims in the orig......
  • Beall v. KEARNEY & TRECKER CORPORATION, Civ. No. 70-1303.
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • September 27, 1972
    ...suit which was recently decided by the Court of Appeals for the Seventh Circuit. Kearney & Trecker Corp. v. Giddings & Lewis, Inc., 306 F.Supp. 189 (E.D.Wis.1969), rev'd, 452 350 F. Supp. 980 F.2d 579 (7th Cir. 1971), cert. denied, 405 U.S. 1066, 92 S.Ct. 1500, 31 L.Ed.2d 796 (1972). By ele......
  • Request a trial to view additional results

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