Blohm & Voss AG v. Prudential-Grace Lines, Inc.
| Citation | 346 F. Supp. 1116 |
| Decision Date | 20 June 1972 |
| Docket Number | Civ. A. No. 17959. |
| Parties | BLOHM & VOSS AG, Plaintiff, v. PRUDENTIAL-GRACE LINES, INC., Defendant. |
| Court | U.S. District Court — District of Maryland |
J. Cookman Boyd, Jr., and Sauerwein, Boyd & Decker, Baltimore, Md., Francis T. Carr, Douglas G. Brace, C. Stephen Barrett, III, and Kenyon & Kenyon, Reilly, Carr & Chapin, New York City, for plaintiff.
Robert A. Shelton, Baltimore, Md., George J. Harding, 3rd, George A. Smith, and Frank A. Follmer, Philadelphia, Pa., for defendant.
This is an action for patent infringement brought by plaintiff Blohm & Voss AG, a German company having its principal place of business and shipyard at Hamburg-Steinwerder, West Germany. Plaintiff designs and constructs ships and equipment for ships at its yard.
The defendant, Prudential-Grace Lines, Inc. (Grace)2 is a corporation of Delaware having its principal place of business in New York, N. Y. It operates a shipping fleet, including six ships known as the Santa Lucia class which periodically load and discharge cargo at the Port of Baltimore.
Plaintiff asserts that the heavy lift cargo gear installed on such ships infringes its patent in suit.
Sun Shipbuilding & Dry Dock Company of Chester, Pennsylvania (Sun), constructed the Santa Lucia class of ships and the heavy lift cargo gear installed on them. Sun is obligated to defend, indemnify, and hold Grace harmless on account of any charge of infringement by such cargo gear, including the expenses of litigation, and is paying for the services of defendant's counsel.
The action for infringement is based upon 35 U.S.C. sections 271 and 281. The jurisdiction of this Court is grounded on 28 U.S.C. section 1338(a). Venue is grounded on 28 U.S.C. section 1400(b). Jurisdiction in respect of defendant's counterclaim for a declaration of invalidity of the patent in suit is grounded on 28 U.S.C. sections 2201 and 2202 as well as 28 U.S.C. section 1338(a).
The patent in suit is U. S. Letters Patent No. 3,236,390 ('390) granted February 22, 1966, based upon patent application Serial No. 403,441 filed October 2, 1964 by H. F. J. Sprengel (Sprengel). Such patent application was a continuation-in-part of Sprengel's then co-pending U. S. patent application Serial No. 361,422 filed April 21, 1964, now abandoned.
The patent relates to ship's loading apparatus broadly referred to as cargo gear. The patent discloses gear comprising a long boom, pivotally mounted on the deck on the centerline of the ship, having boom head fitting(s) carried by the upper (or outer) end of the boom. The upper cargo3 blocks are carried by such fittings.
The gear may be constructed in two variations—one using a single upper cargo block mounted on the fitting to swing in pendulum movement along one side of the boom, and a double pendulum variation having two upper cargo blocks located on opposite sides of the boom, pendulumly mounted on the fittings.
The patent is entitled to the April 17, 1964 filing date of German patent application St 21,981 in respect of the double pendulum type of the heavy lift cargo gear. The patent is entitled to the October 12, 1963 filing date of German application St 21,185 in respect of the single pendulum type of gear.
The above mentioned United States patent applications were assigned, and the patent was originally granted, to H. C. Stulcken4 Sohn, also a company of Germany. In early 1966, plaintiff acquired the business and assets of Stulcken, including the then-pending application S.N. 403,441, upon which the patent in suit was about to be granted. Plaintiff's ownership of the patent has been recorded in the Patent Office. There is no controversy regarding ownership of the patent.
Plaintiff contends that claims 1-3, 14, 15 and 18 of the patent are infringed by the heavy lift cargo gear installed and used on the Santa Lucia class of ships.
To the extent that defendant contends that there is no literal infringement of such claims by its cargo gear, plaintiff contends that the structure of such gear achieves the same result in the same way by the same means as the patented invention, and that any structural differences are obvious mechanical equivalents.
Plaintiff contends that the invention has been a commercial success based upon its technological merits. The gear is capable of handling exceptionally heavy loads, up to 250-300 tons. Two hatches (fore and aft) can be served by the gear alternately without dis-mantling or rerigging the gear. By virtue of mounting the upper cargo block(s) to swing in pendulum fashion on one side of the upper end of the boom, in the case of the single pendulum, or on opposite sides in the case of the double pendulum, the movement of the boom from one hatch to another is simplified, thereby saving time and permitting the use of less skilled workmen. In the double pendulum construction, as is here in suit, two upper cargo blocks are mounted on fittings on opposite sides of the boom head. This additionally and optionally permits using only one upper cargo block to handle light loads (not exceeding 50% of normal capacity) at twice the normal lifting speed, although this is not disclosed in the specification nor claimed in the patent in suit.
Plaintiff contends that Sun is a real party in interest.
Defendant contends that the claims of patent '390 in suit are invalid on the following grounds:
1. The differences between the claimed subject matter and the prior art are such that the claimed subject matter as a whole would have been obvious at the time the alleged inventions were made to a person having ordinary skill in the art to which said subject matter pertains (35 U.S.C. section 103).
2. The claims in suit are invalid because the specification of the patent in suit does not contain a written description of the alleged invention, and of the manner of making and using it in the full, clear, concise and exact terms required by 35 U.S.C. section 112.
3. The claims in suit are invalid because they fail to particularly point out and distinctly claim the subject matter of the alleged invention (35 U.S.C. section 112); the claims call for structures incapable of performing their purported functions and call for inoperative structures.
Defendant contends that none of the patent claims in suit is infringed because each of said claims contains claimed structure which is not found in any of defendant's devices which are alleged to infringe.
Defendant contends that plaintiff knew that the claims in suit were too limited to cover the rigging configuration of defendant's allegedly infringing devices long prior to the allowance of the patent in suit, but failed to seek claims broad enough to read on said rigging configuration and only sought limited claims to implement its efforts to obtain the patent in suit and, therefore, is not entitled to any equitable assistance in construing the claims in suit to read on the allegedly infringing devices and is estopped from asserting said claims against said devices.
Defendant contends that plaintiff has misused its United States patent in suit by means of the license agreement with its exclusive United States licensee, MacGregor-Comarain Co., Inc. ("MacGregor"), both viewed alone, and as a part of a worldwide scheme by plaintiff to divide and allocate markets and suppress competition through similar licensing arrangements, all in violation of the anti-trust laws of the United States, in that plaintiff has:
1. Used the patent in suit to require MacGregor to pay royalties on various STULCKEN MASTS which are unpatentable in this country.
2. Used the patent in suit to tie in procurement of services and goods from plaintiff outside the scope of the patent monopoly.
3. Used the patent in suit to impose improper restrictions on the activity of MacGregor outside the scope of patent monopoly.
4. Used the patent in suit to improperly control unpatented products.
5. Imposed territorial and customer restrictions on MacGregor pursuant to a scheme, furthered by the MacGregor license and its other licenses worldwide, to divide and allocate markets for all two-hatch cargo boom equipment, patented and unpatented, and to monopolize the world market for such gear.
6. Bound MacGregor not to question the validity of plaintiff's patents.
Plaintiff sought an adjudication that the patent is infringed, and an injunction permanently enjoining defendant from further infringement, by either the use of the heavy lift cargo booms installed on the Santa Lucia class of ships and/or future installations, and damages for past infringement. The amount of damages is not liquidated. Plaintiff has, however, agreed that the dismantling of Grace's ships would impose an inequitable hardship, and if it is successful in this case will be content with money damages for past infringement, and an injunction only against new infringing installations.
Defendant seeks an adjudication that the patent in suit is not infringed and is invalid and void. Defendant further seeks a decree that the patent is unenforceable because of plaintiff's alleged acts of misuse and violations of the Federal antitrust laws and that plaintiff is estopped from asserting the patent against the defendant.
Both parties seek an assessment of costs and an award of reasonable attorneys fees.
United States Code, Article 35, Section 282. "Presumption of Validity"
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