Blohm & Voss AG v. Prudential-Grace Lines, Inc.

• Decision Date: 06 December 1973
• Docket Number: No. 73-1058.,73-1058.
• Citation: 489 F.2d 231
• Parties: BLOHM & VOSS AG, Plaintiff-Appellee, v. PRUDENTIAL-GRACE LINES, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Fourth Circuit

489 F.2d 231 (1973)

BLOHM & VOSS AG, Plaintiff-Appellee, v. PRUDENTIAL-GRACE LINES, INC., Defendant-Appellant.

No. 73-1058.

United States Court of Appeals, Fourth Circuit.

Argued May 8, 1973.

Decided December 6, 1973.

John G. Harkins, Jr., Philadelphia, Pa. (Robert A. Shelton, Venable, Baetjer & Howard, George J. Harding, 3rd, Frank A. Follmer, Lloyd R. Ziff and Pepper, Hamilton & Scheetz, Philadelphia, Pa., on brief), for defendant-appellant.

Francis I. Carr, New York City (J. Cookman Boyd, Jr., Sauerwein, Boyd & Decker, Baltimore, Md., Douglas G. Brace, Arthur D. Gray and Kenyon & Kenyon, Reilly, Carr & Chapin, New York City, on brief), for plaintiff-appellee.

Before BRYAN, Senior Circuit Judge, and WINTER and WIDENER, Circuit Judges.

WIDENER, Circuit Judge:

Appellant Prudential-Grace Lines, Inc., presents the court with three issues:

I. Whether the district court, 346 F. Supp. 1116, erred in determining that plaintiff-appellee's patent is valid as against the defenses of (1) obviousness and (2) failure to recite a necessary structure.

II. Whether the district court erred in determining that defendant-appellant's ship cargo gear infringes appellee's patent.

III. Whether the district court erred in determining that plaintiff-appellee is not barred from recovery on the theory that the patent was misused.

This patent case involves the field of ship loading and unloading apparatus, commonly known and referred to as cargo gear. Plaintiff-appellee Blohm & Voss AG (hereinafter Blohm & Voss) is a West German shipbuilder. On February 15, 1966, Blohm & Voss acquired the assets, including patent rights, of H. C. Stulcken Sohn, the original assignee of the patent in suit. The patent in suit, United States Letters Patent No. 3,236,390, was issued to H. F. C. Sprengel, a German inventor. Sprengel '390 was granted February 22, 1966, based upon patent application No. 403,441 filed by Sprengel on October 2, 1964. Such patent application was a continuation-in-part of Sprengel's then co-pending United States patent application No. 361,422 filed April 24, 1964. No. 361,422 was abandoned when Sprengel '390 was filed.

Sprengel '390 discloses apparatus which is mounted on the deck of a ship to facilitate loading and unloading of cargo.¹ While the gear has many components, it is basically assembled around three main structures, a boom and two kingposts. The kingposts are massive vertical structures affixed to the sides of the ship's deck, one port and one starboard directly across from one another. Located in between the kingposts is a long pole of lesser diameter called the boom. The boom is attached at its bottom end (foot) to a universal joint² on the ship's deck so that it may be pointed not only fore and aft but also outboard to port or starboard, and led up and down. Movement of the boom is controlled by cables which lead from winches to the upper part of the kingposts and thence to the upper part (head) of the boom. These are topping lifts. The top of the boom in each of the three embodiments disclosed by Sprengel '390 is constructed so that a cable or cables suspend therefrom. This cable and associated blocks to multiply power is the purchase (purchase gear). Affixed to the lower end of the purchase is a hook to which the cargo to be lifted is attached.³

Sprengel '390 is devised so that the single boom may tilt forward to accommodate loading and unloading of the forward hatches, and also tilt aft to accommodate the after hatches. At all times, including while the boom is in motion, it is affixed at its foot to the universal joint. Activating the winches which control the cables leading from the kingposts to the top of the boom controls the movement of the boom. To illustrate, assume the boom is dead center and perfectly upright. Activating the winch on the starboard side to take in cable and the winch on the port side to pay out cable would cause the boom to lean toward the starboard kingpost. If both winches were activated at the same time to pay out cable, the boom would swing either forward or aft depending upon which way (forward or aft) it is shoved off dead center. Once it is off dead center, its own weight causes it to gravitate toward the deck and the cables prevent the boom from crashing down onto the deck like a felled tree. By paying out the proper amount of cable, the boom may tilt forward or aft any desired number of degrees. To raise the boom, both winches take in cable.

Once the cargo is attached to the hook suspended from the purchase, and raised from the hold, the boom will be swung either to port or starboard to unload the cargo. Assuming the unloading is to port, the portside winch would take in cable and the starboard winch would pay out cable which would cause the boom to point to port, thus swinging the suspended cargo over the ship's side and above the unloading pier or barge.⁴

The cables previously referred to which suspend vertically from the top of the boom are rigged through blocks. A block is a more sophisticated and proficient version of what is commonly known as a pulley. Sprengel '390 discloses the use of blocks which are suspended from the top of the boom. One block, called the upper purchase block, is suspended from and attached to a fitting which fitting is affixed to one side of the top of the boom. The cables which suspend from this block lead down to the other block, which is called the lower purchase block. The cargo is attached to a hook which is affixed to the bottom of the lower block. The fitting from which the upper purchase block suspends is attached to a cross pin which runs at right angles to the longitudinal axis of the boom and through the boom near its top in a plane parallel to the deck.⁵ It protrudes slightly out from the boom. The fitting rests on the protruding part of the pin alongside the boom so that the purchase blocks which suspend from the fitting likewise suspend down alongside the boom. Simply stated, configuration is not unlike the human body with the arms considered the purchase gear, the shoulder joint the fitting, and the body the boom.

Sprengel '390 discloses three embodiments, two of which employ the above described gear. In one of the embodiments, the purchase gear suspends from only one side of the boom—like a man with one arm, if you will. In another embodiment, purchase gear suspends from both sides of the boom and accommodates heavier loads. In both embodiments, the purchase gear suspends like a pendulum from the fitting attached to the cross pin which extends through the top of the boom. In both embodiments, the fitting from which the purchase gear suspends pivots on the cross pin to allow the purchase gear to swing along-side the boom as the boom moves through its vertical plane fore and aft.

The alleged inventiveness of Sprengel '390 rests in the method by which it serves both forward and after hatches without rerigging.⁶ Assume that the gear is set up to serve the forward hatch, in which case the boom would be tilted forward and the purchase gear suspended from the top of the boom down to the hatch. To service the after hatch, the boom would be raised until it is upright between the kingposts (dead center) and then lowered toward the after hatch. During this maneuver, the purchase gear (in the single gear and the double gear embodiment) which suspends from the side or sides of the top of the boom would simply swing alongside the boom and when the boom is tilted so that its uppermost part is over the after hatch, the purchase gear would be lowered down to the hatch. In the double gear embodiment, a fitting attached to both lower purchase blocks is uncoupled on one side to allow the purchases to pass on opposite sides of the boom.

As previously mentioned, cables which run from the top of the kingposts to the top of the boom control movement of the boom. Such gear is collectively called span gear, by Sprengel, but is nothing more nor less than topping lifts. The two span gear winches are located on the deck of the ship, one near each kingpost. The cables lead from the winches up through the kingposts and out the top and then over to the top of the boom. The span cable from each kingpost is attached to an end of the cross pin which extends through the head of the boom. There are pulleys attached to the ends of the cross pin called span blocks through which these cables run. The cables enter the top of the kingposts on circular runners called guide sheaves.⁷ The taking in and letting out of these cables raises and lowers the boom as well as slewing it. The cables, which together with the upper and lower purchase blocks comprise the purchase gear, likewise have their origins at winches on the ship's deck, one near each kingpost. The hauling part of the purchase tackle is that part which is led from a purchase block to the winch for hauling it in and out to raise and lower the lower block. The cable is led by guide sheaves from the winch into and up through the top of the kingpost and then down through the pendulum fitting and around the upper and lower purchase blocks.

Sprengel disclosed his concept in a third embodiment which is for all practical purposes the same as the two previously discussed except for the configuration at the head of the boom. The boom in the third⁸ embodiment resembles a giant needle with an oversized eye. The eye is formed however with straight lines so that it resembles a simple fork or "Y" which almost closes at the top instead of remaining totally open like a "Y". A pin (again perpendicular to the longitudinal axis of the boom and in a plane parallel to the deck) extends through the top of the fork connecting each side of the top of the "Y". A fitting rests on this pin, inside the fork of the "Y," just like the fitting which rests on the cross pin at the head of the boom in the two other embodiments. This fitting rotates freely around the pin. Suspended from this fitting is the purchase gear, an upper...