DEERE & COMPANY v. Sperry Rand Corporation

• Decision Date: 07 December 1970
• Docket Number: Civ. No. F-306.
• Citation: 322 F. Supp. 397
• Court: U.S. District Court — Eastern District of California
• Parties: DEERE & COMPANY, Plaintiff, v. SPERRY RAND CORPORATION, Defendant.

322 F. Supp. 397

DEERE & COMPANY, Plaintiff, v. SPERRY RAND CORPORATION, Defendant.

Civ. No. F-306.

United States District Court, E. D. California.

December 7, 1970.

Stammer, McKnight, Barnum, Bailey & Barnett, by Galen McKnight, Fresno, Cal., McDougall, Hersh & Scott, by Dugald S. McDougall and Theodore R. Scott, Chicago, Ill., for plaintiff.

Wild, Christensen, Carter & Blank, by Robert G. Carter, Fresno, Cal., Wolfe, Hubbard, Leydig, Voit & Osann, by John P. Bundock, Todd S. Parkhurst and Phillip H. Mayer, Chicago, Ill., for defendant.

MEMORANDUM AND ORDER

CROCKER, District Judge.

This is an action for a declaratory judgment under 28 U.S.C. § 2201 by which plaintiff asks that certain of defendant's patents be declared invalid and not infringed by plaintiff. These patents are Glass, No. 3,325,981, McCarty, No. 3,375,643, Glass, No. 3.383,844, and Glass, No. 3,386,233. Plaintiff also asks that this court hold that defendant is estopped to assert infringement of the Glass patent Nos. 3,383,844 and 3,386,233. Defendant counterclaims for an injunction against infringement of certain claims of the above designated patents by plaintiff. The case was tried before this court without a jury.

At trial defendant offered evidence of infringement on the following ten claims. Claims 13, 16 and 20 of the McCarty patent No. 3,375,643 (hereinafter referred to as the '643 patent); claim 6 of the Glass patent No. 3,325,981 (hereinafter referred to as the '981 patent); claim 8 of the Glass patent No. 3,383,844 (hereinafter referred to as the '844 patent); and claims 1 and 5 of the Glass patent No. 3,386,233 (hereinafter referred to as the '233 patent). Since all of the claims of the subject patents are invalid as a result of the evidence presented at trial by plaintiff, the question of infringement is not reached.

Plaintiff and defendant's New Holland Division are companies competing with each other as well as several other large companies in the manufacture of agricultural equipment. Both parties have marketed hay harvesting machines in direct competition with each other. The plaintiff's machines are marketed under the designations Model 480 and 483 and the New Holland machine under the name "Haybine." The descriptive name commonly used in reference to both companies' machines is "mower-conditioner." They are designed to cut a hay crop such as alfalfa, to condition the crop material by passing it between two rolls so as to crack the stems of each plant, and to discharge the conditioned crop material in a windrow or a swath for drying in one continuous operation. The machines have been well received in the market.

The burden of proof in a declaratory judgment action involving patent infringement is on the defendant owner of the patents at issue. He has the burden of proving validity and infringement just as if he were the plaintiff suing for infringement of those patents. 6A Moore's Federal Practice § 57.312, p. 3158; Philip A. Hunt Co. v. Mallickrodt Chemical Works, 72 F.Supp. 865 (E.D.N.Y.1947); Purer & Company v. Aktiebolaget Addo, 410 F.2d 871 (9th Cir.1969).

Normally, however, there is a statutory presumption of validity of the patents in suit. 35 U.S.C.A. § 282; Stevenson v. Diebold, Incorporated, 422 F.2d 1228 (9th Cir.1970). A judicially imposed limitation on this presumption exists where pertinent prior art was not considered by the Patent Office in granting the patent. In this situation the presumption is at least weakened if not overcome. Aerotec Industries of Calif. v. Pacific Scientific Company, 381 F.2d 795, 803 (9th Cir.1967); Ellicott Mach. Corp. v. United States & American M. & M. Co., 405 F.2d 1385, 1392, 186 Ct.Cl. 655 (1969).

Plaintiff Deere & Company challenges the validity of the patents in suit on grounds of anticipation by prior art not before the Patent Office, prior public use, prior public sale, and lack of invention.

The McCarty Patent No. 3,375,643

Since the '643 patent constitutes the primary patent in suit, it is considered first. This patent has twenty-seven claims covering a mower-conditioner substantially identical to the New Holland Haybine machine. With respect to the invalidity of the '643 patent, plaintiff relies primarily on the existence of one prior art machine which, it is agreed, was not considered by the Patent Office. The machine is the Crose hay harvester (hereinafter referred to as the Crose machine).

Uncontradicted evidence produced at trial, including one actual Crose machine, indicated that six Crose machines were manufactured and sold in 1956 and one in 1958 by the H. L. Crose Company of Tulare, California. The '643 patent was filed in 1964. While information as to the subsequent use of some of the Crose machines is lacking, the machine produced at trial was operated for a period of several years by its owner. He made his living during those years mowing and conditioning hay for growers using the Crose machine.

It is agreed that the ultimate object of the use of conditioning rolls in the two machines is somewhat different. The rolls of the Crose machine are designed to wring moisture out of the plants. On the other hand, the rolls disclosed in the '643 patent are designed to crack the stems of the plants passing between them so that water can escape more readily during the drying period. It is also designed to avoid damaging the leaves of the plants since moisture is dispersed through the pores of the leaves. Yet, this functional distinction is not of patentable significance since many prior art devices have employed this technique of conditioning.

It is conceded by defendant that the elements claimed in this patent are old. It is contended, however, that they form a new patentable combination by virtue of their unique mode of operation. It is assumed that the Patent Office considered the combination to be new when compared with the prior art before it. Therefore, the issue is whether or not the Crose machine anticipates the allegedly new combination appearing in the claims of the '643 patent.

The asserted patentable distinctions between the device of the '643 patent and the Crose machine are relatively few. The '643 device is a pull-type machine (specifically covered in claims 19, 20, 21 and 22), but the Crose machine is self-propelled. The '643 machine has an aggressive upper roll (specifically covered by claims 5, 15, 16, 17, 18, 19, 20, 21, 22, 25 and 26), but the Crose machine does not. The '643 machine has a reel with cam actuated tines (specifically covered by claims 6, 7, 8, 9, 10 and 16), but the tines of the Crose machine are not cam actuated. The speed of the rolls is faster than that of the reel in the '643 device (specifically covered in claims 1, 2, 3, 4, 5, 14, 15, 16, 17, 18, 19, 20, 23, 24, 25 and 26), but this is true of the R.P.M. speed of the Crose machine. The upper roll of the '643 device is positioned slightly ahead of the lower roll (specifically covered by claims 2, 4, 10, 18 and 26), but this is not true of the Crose machine.

Defendant argues that the new and surprising result achieved by this new combination is that the machine clogs or plugs with crop material much less frequently than heretofore has been the case with mower-conditioners and that it is able to handle more types of hay crops. Defendant asserts that their machine accelerates the crop material as it passes through the machine thereby attenuating the material so as to provide more uniform conditioning without plugging of the device. Defendant says that this accounts for the economic success of the Haybine machine as opposed to the Crose machine.

However, nowhere, either in the claims or the specification of the '643 patent, is this new result or mode of operation involving acceleration and attenuation mentioned. Consequently, this argument cannot be relied upon to validate the patent. Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 550, 58 S.Ct. 662, 82 L.Ed. 1008 (1938); Graham v. John Deere Co., 383 U.S. 1, 25, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The only language which arguably could support the validity of some of the claims of the patent is that appearing in claim 14, among others, and seeming to be the essence of the invention as patented. Claim 14 at line 61 states: * * * "and means rotating said rolls faster than said reel to strip crop material from said tine members." The specification and several of the other claims state that this stripping action permits uniform conditioning of the crop material without clogging of the machine.

Assuming that the '643 device does so operate, the Crose machine anticipates the '643 device and any perfection of technique over the Crose machine is accomplished by means which would have been obvious to a person skilled in the art. It does not constitute patentable invention. 35 U.S.C. §§ 102, 103.

Both parties to this suit agree that the Crose machine is the most important prior art discovered and that it was not considered by the Patent Office in granting the '643 patent. The Crose machine affords a raking reel, cutter bar, guide ramp, conditioning rolls, and the other key elements of the '643 device mounted in the frame in substantially the same operational relationship. This prior art machine clearly anticipates this basic combination. 35 U.S.C. § 102. Proof of the fact that it operates successfully as a mower-conditioner appears in the uncontradicted testimony that it was used in a business relationship for a number of years.

The only distinctions relied upon by defendant are those already recited which admittedly...