Julien v. Gomez & Andre Tractor Repairs, Inc., Civ. A. No. 76-260.

Citation438 F. Supp. 763
Decision Date19 September 1977
Docket NumberCiv. A. No. 76-260.
PartiesLeonard J. JULIEN v. GOMEZ & ANDRE TRACTOR REPAIRS, INC.
CourtUnited States District Courts. 5th Circuit. Middle District of Louisiana

William J. Jefferson, Jefferson & Bryan, New Orleans, La., for plaintiff.

Malcolm J. Dugas, Jr., Steven M. Joffrion, Joffrion & Dugas, Donaldsonville, La., for defendant; A. Robert Theibault, Wilkinson, Mawhinney & Theibault, Arlington, Va., of counsel.

E. GORDON WEST, District Judge:

Plaintiff, Leonard J. Julien, brings this action for patent infringement requesting preliminary and permanent injunctive relief, treble damages, costs, and attorneys' fees. It is alleged in the complaint that plaintiff is the owner of U.S. Letters Patent Number 3,286,858, which was issued on November 22, 1966 on Julien's invention, a mechanical sugar cane planter. Plaintiff complains that defendant has been manufacturing and marketing a planter which is substantially identical to the patented invention as to means, operation and result, and on this basis requested a temporary restraining order, which, after conference with counsel, was denied. Thereafter, defendant Gomez & Andre Tractor Repairs, Inc. (Gomez), moved for summary judgment in its behalf. This too was denied. After the filing of a multitude of exhibits and after the submission of a joint stipulation by counsel, this Court with consent of counsel ordered the case submitted on the record on the question of the propriety of the issuance of a preliminary injunction.

THE JULIEN PATENT
"1. Cane planting machinery for cooperation with an open-topped vehicle, said machinery comprising a portably mounted main frame, means for connecting said main frame to said vehicle in a position in which at least one end of said sub-frame is suspended over said vehicle and is constrained to travel therewith, means for raising and lowering said sub-frame relative to said main frame, at least one flexible endless carrier means mounted on said sub-frame to travel in a predetermined path relative thereto, means for driving said endless carrier means, grab means carried by and spaced longitudinally along said endless carrier means, said grab means being adapted to open and close in a direction transverse to said pre-determined path, means biasing said grab means to its closed position, expander means on said sub-frame positioned to temporarily open said grab means at a cane pick-up point near one end of said sub-frame and at a cane release point near the other end of said sub-frame, and (sic) upwardly open trough means positioned beneath said release point to receive cane released by said grab means and guided into a pre-determined position relative to the path of travel of said vehicle."

In practice, the Julien planter consists of a cane cart in which seed sugar cane are laid horizontally. Above the cart, a sub-frame carries an endless chain on two sprockets, which chain in turn holds a number of the grab means mentioned in claim 1 of the patent. These grabs open and close in much the same way as a large pair of pliers, but the inner surfaces of the jaws are equipped with teeth so as to ensure that cane does not fall out of the grab. These grabs are carried on the chain in closed position until a grab approaches the sprocket toward the forward end of the cane cart. At that time its jaws are spread apart by an expander. As the grab travels around the sprocket, the spring which holds it in a closed position is allowed to contract, and the jaws of the grab snap shut. At this point, the subframe, which may be raised and lowered from the operator's seat, should be in a position relative to the cane in the cart such that the grab closes on a stalk of cane. Thereafter, the grab, holding a stalk, is carried to the rear sprocket where the grab is opened again in the same manner, releasing the stalk, which falls into a trough appended to the rear of the cart. This trough directs the cane into the furrow. The grabs are positioned along the chain so that no stalk will be gripped by more than one grab at the same time. The typical planter carries several sets of sprockets above the cart, each with its own chain set with grabs, alternately spaced for a continuous feeding effect. Plaintiff contends, and the evidence shows, that this device is a substantial advance in the art of cane planting, which in the past was carried out by hand. This invention makes possible the planting of 8 to 12 acres per 8 hour day using 2 men, whereas formerly 6 men would be needed to plant 4 to 5 acres in the same period.

THE ACCUSED DEVICE

It has been stipulated by the parties that defendant's planter is the same as plaintiff's in every material respect with one exception: Where plaintiff's machine employs a grab device which opens and closes to pick up the cane and deliver it to the trough, defendant's accused structure utilizes a flat piece of metal with three prongs, which functions as a rake, pulling the cane to the trough instead of carrying it. This piece, a flat metal plate, has no moving parts, and the expander used in the Julien planter is omitted from the device. The sole issue in this case is, therefore, whether defendant's structure avoids infringement by virtue of its use of this rake plate as opposed to plaintiff's grab.

ON THE QUESTION OF INFRINGEMENT

In an action for a preliminary injunction by a patentee, the plaintiff must show beyond question that the patent sued upon is valid, that he holds title to the patent, and that there is a substantial likelihood that he will prevail on the merits. McMaster v. Daugherty Mfg. Co., 219 F. 219 (3rd Cir., 1914). Although a patent, once issued, is presumed to be valid, 35 U.S.C.A. § 282, it has been held that "the presumption of validity is too slim a reed to support a preliminary injunction in a patent case." Mayview Corp. v. Rodstein, 480 F.2d 714 (9th Cir., 1973). Plaintiff, however, has submitted exhibits which tend to show substantial public approval and acceptance of his invention, and defendant has introduced nothing in derogation thereof. The burden of proving the invalidity of a patent lies on him who asserts it, 35 U.S.C.A. § 282, and it must be proved by clear and convincing evidence. Hayes Spray Gun Co. v. E. C. Brown Co., 291 F.2d 319 (9th Cir., 1961). Additionally, in Rosenberg v. Groov-Pin Corp., 81 F.2d 46 (2d Cir., 1936), it was suggested that proof of public and industrial acquiescence in the patent might in and of itself be tantamount to an adjudication of its validity. See also Eli Lilly v. Generix Drug Sales, Inc., 460 F.2d 1096 (5th Cir., 1972). Plaintiff has shown by exhibits filed in the record that for nearly ten years his planter has enjoyed acclaim in the industry. There is no evidence to the contrary in this record, and since plaintiff's title to the patent has been stipulated to by the parties, we find that the Julien patent is valid. Accordingly, we turn our attention to the issue of infringement.

The instant case is typical of many patent disputes in that the issue is easy to identify but sometimes difficult to resolve. The issue for decision here is simply, "Is the substitution of defendant's rake plate for plaintiff's grab means and expander on an otherwise identical machine sufficient for defendant to overcome plaintiff's charge of patent infringement?" Plaintiff argues that while no case of literal infringement is made out, the doctrine of equivalents operates in his favor. Defendant contends that to apply the doctrine in this case would amount to overstretching the claims of Julien's patent — that those claims cannot in any way be read to provide for or anticipate the use of the rake plate. Defendant urges further that even under the doctrine no equivalency exists since plaintiff's patent is not a pioneer patent and must therefore be confined to a narrow range of equivalents.

A patentee may invoke the doctrine of equivalents if the accused device performs substantially the same function in substantially the same way to obtain the same result. If these requirements are satisfied, the two devices are the same, even though they differ in name, form, or shape. "What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case ... (Equivalence) does not require complete identity for every purpose and in every respect. In determining equivalents, things equal to the same thing may not be equal to each other, and by the same token, things for most purposes different may sometimes be equivalents." Graver Tank & Mfg. Co., Inc. v. Linde Air Prods. Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950); Reese v. Elkhart Welding & Boiler Works, Inc., 447 F.2d 517 (7th Cir., 1971); Laitram Corp. v. Deepsouth Packing Co., 301 F.Supp. 1037 (E.D.La., 1969). The range of equivalents depends on the extent and nature of the invention. If the invention is broad or primary in character, the range of equivalents will be correspondingly broad. Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121 (1894). It follows, then, that all inventions which employ substantially the same means as a pioneer invention to achieve the same result are infringers, even though the subsequent...

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