Warner & Swasey Company v. UNIVERSAL MARION CORPORATION

• Decision Date: 18 September 1964
• Docket Number: Civ. A. No. 7805.
• Citation: 237 F. Supp. 719
• Parties: The WARNER & SWASEY COMPANY, a corporation, Ray Ferwerda, Sophia Louise Ferwerda, individually and as Guardian for Frederick Martin Ferwerda, Alice Rose Olsen, Sophia Louise Rebell, Raymond Koop Ferwerda, Frederick Martin Ferwerda, by his Guardian Sophia Louise Ferwerda, Plaintiffs, v. UNIVERSAL MARION CORPORATION, Defendant.
• Court: U.S. District Court — District of Colorado

237 F. Supp. 719

The WARNER & SWASEY COMPANY, a corporation, Ray Ferwerda, Sophia Louise Ferwerda, individually and as Guardian for Frederick Martin Ferwerda, Alice Rose Olsen, Sophia Louise Rebell, Raymond Koop Ferwerda, Frederick Martin Ferwerda, by his Guardian Sophia Louise Ferwerda, Plaintiffs, v. UNIVERSAL MARION CORPORATION, Defendant.

Civ. A. No. 7805.

United States District Court D. Colorado.

September 18, 1964.

COPYRIGHT MATERIAL OMITTED

Williams, David, Hoffmann & Yount, J. Herman Yount, Jr., and James T. Hoffmann, Cleveland, Ohio, and Thomas Von Pechy, Cleveland, Ohio, for plaintiff Warner & Swasey Co.; Meyer, Baldwin, Doran & Egan, George S. Baldwin, Cleveland, Ohio, for plaintiffs Ray Ferwerda, Sophia Louise Ferwerda, Alice Rose Olsen, Sophia Louise Rebell, Raymond Koop Ferwerda, Frederick Martin Ferwerda, and Davis, Graham & Stubbs, Robert H. Harry, Denver Colo., for plaintiffs.

Grant, Shafroth, Toll & McHendrie, Douglas McHendrie, Denver, Colo., and Pennie, Edmonds, Morton, Taylor & Adams, Robert McKay, New York City, for defendants.

ARRAJ, Chief Judge.

This is an action brought by the patentees¹ and the exclusive licensee of Patent No. 2,541,045 for infringement thereof. Plaintiff Warner Swasey is an Ohio Corporation, with its principal place of business in Cleveland, Ohio, engaged in the business, among other things, of manufacturing and selling certain earth moving equipment. As exclusive licensee under the patent in suit, it is the manufacturer of "Gradall" machines. Defendant Universal Marion Corporation is a Florida Corporation which has its executive offices at Jacksonville, Florida, and factories at St. Louis, Missouri and Marion, Ohio,² and makes and sells various types of earth moving equipment. Among its products is the "Grademaster" machine which is accused of infringement in this action.

At issue are claims 2, 6, 7, 8, 9 and 16 of the patent. Plaintiffs have alleged that these claims³ are being infringed by defendant's Grademaster machine; defendant has alleged that the claims are invalid for a number of reasons, and further, that if the claims are valid, they are not infringed by the Grademaster. These six claims are, therefore, at issue both as to validity and infringement.

The patent in suit involves a material moving apparatus, which, as described in the patent, "* * * is in the nature of a universal earth-working machine adapted in a single unit to perform functions usually carried out by specialized types of apparatus, such as graders, bulldozers, slopers, motor patrols, ditchers and the like." It is said to be "* * * of particular utility for earth-working operations or for handling bulk materials, such as sand, gravel, coal, snow, ashes, chemicals, minerals and other similar materials."

The machine employs a telescoping boom for supporting and operating an implement, such as a bucket. The telescoping feature enables the tool to be extended and retracted towards and away from the material to be worked upon. The boom may be oscillated about its axis so as to tilt the tool for working at various angles. The boom as a whole may be raised or lowered, and it may also be rotated by rotating the platform on which it is mounted. Means are also provided to give the tool what is called "wrist action", a movement roughly akin to raising and lowering one's hand while bending at the wrist. All of these movements are accomplished by hydraulic means. The machine is thus capable of five distinct movements, which enable it to accomplish the various purposes for which it was constructed.

The law by which this case is to be decided is well settled. There is no real dispute between the parties about it. As is usual with a patent case, the controversy arises out of the facts and the conclusions to be drawn therefrom. Following what has been said to be "the better practice," Sears, Roebuck & Co. v. Jones, 308 F.2d 705, 706 (10th Cir. 1962), we first consider the issue of the validity of the patent.

I. Validity of the Patent

Defendant asserts that all of the claims at issue are invalid under 35 U.S.C. § 102(a), (b), (e) and (g) and for failure to meet the requirements of 35 U.S.C. § 103 and § 112.⁴ Briefly put, defendant's assertions go to public use of the invention for more than a year prior to application for patent, the machine represents only an aggregation of old elements disclosed in prior art, and the invention is not described with sufficient specificity and particularity.

A. Public Use

The issue relating to public use is simply stated:

Was the invention in "public use * * * more than one year prior to the date of the application for patent in the United States"? 35 U.S.C. § 102(b). If it was, as the defendant contends, the Ferwerdas were not entitled to the patent.

The bulk of the evidence pertinent to this question is found in the response of plaintiff Ray Ferwerda to defendant's requests for admissions, his answers to interrogatories, and his live testimony at trial. The live testimony was either cumulative or complementary to the admissions and answers to interrogatories, and the Court finds no conflict in the testimony presented. The issue between the parties is the conclusion to be drawn from these facts.

Much of the testimony on this point concerned the technical details of the early Ferwerda machines that were built and tested prior to the time application was made for patent. Though it has been carefully reviewed by the Court, there is no reason to recite it here. In our view, the issue may be resolved on the basis of the testimony as it relates to the dates and duration of the early use, the degree of success and difficulties accompanying this use, and the necessity of testing a machine of the nature involved here.

In the fall of 1942, the Ferwerdas, who were at that time the sole owners of the Maple Heights Construction Company, built a machine, which appears to have been a prototype of the device⁵ patented. Later that year, this machine, which the Ferwerdas called a sloper, was tested for approximately one hour under the control of the Ferwerdas on a grading project on Ohio Route 306 on which the Maple Heights Construction Company had a subcontract. The machine proved unsatisfactory, and the Ferwerdas took it back to the shop for additional work. After removing a ten foot telescopic boom section, they again tested it on the same grading project for about one hour or one hour and a half. The machine's performance was still considered unsatisfactory, so the Ferwerdas again withdrew it from the project and did some more work on it.

At this time, they cut off the channel booms and put on a three point suspension, or triangular, boom. This machine was tried out on a Maple Heights Construction Company project at the Ravenna Arsenal in Ravenna, Ohio in the spring of 1943. The exact time that the machine was first used on this project is not clear from the evidence. However, it probably was in mid-March when the frost let up, since it was not powerful enough to work unless substantially all of the frost was out of the ground. In all, the machine was used over about a six-week period in Ravenna, during which time more innovations were made. For example, a brace was added to make the structure more solid and the lifting cylinder was repositioned to reduce its height.

The machine's performance on the Ravenna project was considered partially satisfactory by the brothers, though it was not operative about 25 percent of the time. The Ferwerdas, however, did not consider the design ready for final adoption. Consequently, they re-engineered it, a task which took about six months on paper. Production drawings were made of this model, which they considered to be completely redesigned and not similar to the former machines, and it was the design for which a patent was applied on May 15, 1944.

It is clear from the evidence that a machine constructed by the Ferwerdas was put in use more than a year prior to the time application was made for a patent. The question to be resolved is whether this use was a "public use" within the meaning of 35 U.S.C. § 102(b). In our view, it is resolved by the authorities which deal with testing and experimental use.

It is well settled that not all use is public use, especially when the use is experimental in nature. The law is well set out by Judge Bratton in Merrill v. Builders Ornamental Iron Co., 197 F. 2d 16, at pp. 18-19 (10th Cir. 1952).

"But an inventor's use of his device or apparatus for experimental purposes is not public use within the intent and meaning of the statute. A use necessarily open to public view is not a public use in the sense of the statute, if it is made in good faith solely for the purpose of testing the qualities or operation of the invention. * * * The determinative factor is whether the use is made in good faith for purposes of experiment in testing the qualities and operation of the device or apparatus. citing cases * * * And use by an inventor in good faith for the purpose of testing his apparatus or device for experimental purposes is not public use within the scope of the statute, even though incidental to such use he derives some financial return. Good faith use of an invention for such purpose is not changed in character merely by the receipt of incidental profit or gain."

The purpose of the rule appears to be to insure that the invention will be put into the public domain as soon as possible and to prevent the inventor from extending the number of assured profit years beyond that provided by the statute. See Ushakoff v. United States, 327 F.2d 669, 672 (Ct.Cl.1964). After full consideration of the evidence, the Court is of the opinion that the use here falls within the rule of the Merrill case and does not contravene the purpose of the statute.

The use of the machine in late 1942 was minimal. It was used on one occasion for about an hour, and, after important modifications had been made, on...