BULLARD COMPANY v. General Electric Company

• Decision Date: 18 September 1964
• Docket Number: Civ. A. No. 68.
• Citation: 234 F. Supp. 995
• Court: U.S. District Court — Western District of Virginia
• Parties: The BULLARD COMPANY, Plaintiff, v. GENERAL ELECTRIC COMPANY, Defendant.

234 F. Supp. 995

The BULLARD COMPANY, Plaintiff, v. GENERAL ELECTRIC COMPANY, Defendant.

Civ. A. No. 68.

United States District Court W. D. Virginia, Charlottesville Division.

September 18, 1964.

George E. Faithful, Davis, Hoxie, Faithfull & Hapgood, New York City, Paul M. Geist, Bridgeport, Conn., Robert E. Taylor, Taylor, Camblos & Michie, Charlottesville, Va., for plaintiff, The Bullard Company.

Laurence B. Dodds, Little Neck, N. Y., Leonard G. Muse, Woods, Rogers, Muse & Walker, Roanoke, Va., L. B. Birdzell, Jr., and Melvin M. Goldenberg, New York City, for defendant, General Electric Company.

DALTON, Chief Judge.

The strength of these United States is closely aligned to the fact that we are a nation of mechanical "know-how". This is the principal reason that our country is the most powerful in the world and is the only nation that is free and has the power to remain free.

Automation is the keystone of our national defense strength and is the key factor in our having more gadgets and more conveniences for a higher standard of living than all the rest of earth's nations combined. Machine tools geared to automation, which are the implements of mass production, keep our country ahead in the progress of civilization.

It is a controversy relative to the art of automatic controls to machine tools over which this litigation has arisen. The Bullard Company in 1960 complained in this Court that General Electric Company had infringed two patents of Bullard, namely, Patent No. 2,352,183 issued June 27, 1944 (hereinafter referred to as Patent '183), and Patent No. 2,575,792 issued under date of November 20,1951 (hereinafter referred to as Patent '792). The plaintiff asks for an injunction against defendant and an award of damages, costs and attorneys' fees.

General Electric's defenses are:

(1) Invalidity of plaintiff's patents because of prior patents, lack of any patentable invention, and because the subject matter of the patents was in public use and on sale in this country more than one year before Bullard's applications for patents, and that Patent '792 is inoperative;

(2) the defense of "File Wrapper Estoppel";

(3) that Bullard is barred by laches and equitable estoppel; and

(4) that even if the Bullard patents are valid, General Electric has not infringed those patents.

During the argument on objections to the report of the Special Master, General Electric's counsel, without waiving any of its defenses, narrowed the discussion to: (1) Non-infringement, i. e., General Electric's devices are different in principle, and (2) laches and equitable estoppel.

Further, General Electric seeks a declaratory judgment holding Bullard's patents invalid and non-infringed by General Electric.

The Bullard patents relate to devices for the regulation of machine tool operation. The function of the machine tool mechanism is to carry out the directions or commands given it either by hand or by electronic control devices.

Whether the functioning of the machine be controlled by hand or by electronic means, the results are substantially the same. There is an honest difference of opinion between manufacturers as to the most effective and efficient method of operation.

The Special Master, James H. Michael, Jr., Esq., to whom this lengthy patent case was referred, has been very helpful to the Court in sifting and correlating the evidence and law applicable to the issues in this case. However, the Court is conscious of its ultimate judicial responsibility to decide the issues presented, and with that thought in mind, the Court sat with the Master throughout the proceedings in this case. Neither the Master nor the Court indicated to the other his thinking on the issues as the trial progressed. Further, the Court had the benefit of a demonstration hearing on December 13, 1963, after the Master's report.

The Special Master has found (M.R. 59) that the function of the date feedback arrangements in all these devices is the same, namely, to provide a system by which the movement of the work piece from point to point feeds information back to the control mechanism, which information is used to control the further activities of the machine. It is on this basis he has found equivalency, placing considerable reliance on the language of Mr. Justice Jackson in the case of Graver Tank & Mfg. Co. v. Linde Air Products, 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950) (M.R. 66). Our thinking is that Mr. Justice Jackson, after observing that "The essence of the doctrine of equivalents is that one may not practice a fraud on a patent", was using the word "function" in the sense of action or "doing" and not in the sense of its end objective. For instance, the modern jet airplane motor has substantially superceded the piston motor for airplanes, because each "functions" in a different manner (a greater speed being obtained by the jet motor), but each has the same end objective of propelling the aircraft through the air. It could not rightfully be said that the jet motor is the equivalent of the piston motor, and yet we would have to so conclude if we applied the end result idea of the use of the term "function" in discussing equivalency.

While the Court agrees with much of the Special Master's report, the Court is in disagreement on the basic issue in this case, namely, the issue arising out of the Doctrine of Equivalents.

It is tacitly admitted on all sides that the accused device does not infringe the literal terms of the claims of Patent '183 and Patent '792. Is there any basis for a finding of infringement under the Doctrine of Equivalents? Let us first look at the statutes. In accordance with the power granted by the United States Constitution, the 82nd Congress enacted Public Law 593, generally referred to as the Patents Act of 1952. Section 154 of Title 35 of the United States Code provides that:

"Every patent shall contain a short title of the invention and a grant to the patentee, his heirs or assigns, for the term of seventeen years, of the right to exclude others from making, using or selling the invention throughout the United States, referring to the specifications for the particulars thereof. A copy of the specification and drawings shall be annexed to the patent and be a part thereof." (Emphasis added)

With respect to the specifications, section 112 of Title 35 of the United States Code provides:

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

"The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

"An element in a claim for a combination may be expressed as a means or a step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." (Emphasis added)

Thus, the Patents Act of 1952 gives to the patentee only the right "to exclude others from making, using, or selling the invention" set forth in the specifications, which specifications must be in "full, clear, concise, and exact terms" and must conclude with one or more claims "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." Section 271(a) of Title 35 of the United States Code provides that "whether without authority makes, uses or sells any ...