CMI Corp. v. Metropolitan Enterprises, Inc.
| Decision Date | 07 June 1976 |
| Docket Number | No. 74-1448,74-1448 |
| Citation | 534 F.2d 874 |
| Parties | CMI CORPORATION, Plaintiff-Appellee, v. METROPOLITAN ENTERPRISES, INC., Defendant-Appellant. |
| Court | U.S. Court of Appeals — Tenth Circuit |
Carter H. Kokjer, Atty., Kansas City, Mo. (Joseph B. Bowman of Lowe, Kokjer, Kircher, Wharton & Bowman, Kansas City, Mo. and Edward H. Moler of Barefoot, Moler & Claro, Oklahoma City, Okl., on the brief), for defendant-appellant.
Jerry J. Dunlap, Atty., Oklahoma City, Okl. (Bill D. McCarthy of Dunlap & Codding, Oklahoma City, Okl., on the brief), for plaintiff-appellee.
Before SETH, HOLLOWAY and BARRETT, Circuit Judges.
Plaintiff-appellee CMI Corp., assignee of Patent No. 3,438,520 (the Williams patent), brought suit against defendant-appellant Metropolitan Enterprises, Inc., claiming infringement of its Williams patent and seeking damages and injunctive relief. The patent in suit discloses a process for loading granular material varying in particle size into bins in the form of "slugs" so that segregation of larger particles from the smaller ones can be avoided.
Plaintiff is engaged in the manufacture and sale of hotmix asphalt plants and storage equipment for use in such plants, employing the Williams process. Defendant is not a manufacturer or seller of such equipment, but operates a hotmix asphalt storage system manufactured and sold to it by Standard Havens System, Inc., which uses Patent No. 3,777,909 (the Rheinfrank patent). In the operation of both plaintiff's equipment and Standard's system, used by defendant, trucks are loaded with hotmix asphalt from the bins filled by the processes to be discussed. Standard openly defended and controlled the lawsuit against its customer, the defendant Metropolitan, and was determined by the trial court to be the real party in interest and bound by the judgment.
The case was tried to the court. Defendant denied infringement and alleged invalidity of plaintiff's Williams patent. Generally, the trial court found (1) that the Williams patent is valid; (2) that defendant's equipment uses a process of collecting and intermittently discharging "slugs" of hotmix; (3) that similar terms used in Standard's advertising represented the process as being the same as plaintiff's method of discharging "slugs" into bins, so that defendant is estopped to deny its use of such a method of collection and discharge of "slugs"; and (4) that each of the four claims of the Williams patent is infringed by the equipment used by defendant. On appeal defendant challenges all of these findings and conclusions, and others. We sustain the ruling that the Williams patent is valid, but conclude that it is not infringed.
The nature of the patent in suit and the allegedly
infringing device and thetrial court's findings
Plaintiff's Williams patent is entitled "Slug Filling of Bins." As noted, its object is to overcome problems of segregation encountered in the loading of solid material varying in particle size into storage bins. 1 In the past a common technique used in loading such material was to allow it to flow into the center of a bin in a continuous stream. The problem with this method is that the material tends to build up in the shape of a cone with the result that the larger particles tend to roll toward the outside while finer particles tend to stay in the middle (see Figure 1 of the Williams drawing in the appendix to this opinion). In four claims, 2 the Williams patent discloses a process by which the material is first formed into "slugs" (18 and 18a) which are then dropped one by one into the center of the bin. As each "slug" is dropped, a portion of the material already in the bin is spread out by the impact, thus preventing the formation of a cone shape.
By this method the bin is allowed to fill with a body of uniform mix having a flat or nearly flat top surface (19 and 19a), and segregation is avoided. The disclosure points out that the "slug" arrives at the level of the material in the bin with a considerable amount of kinetic energy. This results in a shock to the pile of material whose flat top causes the energy to activate a sheer plane in the mass of material, causing the material to move en masse toward the outside. The contents move uniformly, duplicating the mixture put in the bin (R. 2E-3E). Thus segregation is avoided.
The "Surg-Stor" storage system manufactured by Standard and sold to defendant also involves intermittent feeding of asphalt into bins. Standard manufactures its system pursuant to Patent No. 3,777,909 (the Rheinfrank patent) entitled "Apparatus for Loading Hotmix in a Surge Bin." The primary object of this patent is described in the summary of the invention as follows:
The primary object of this invention is to provide a method and apparatus to substantially reduce segregation of the aggregates when hotmix is discharged into a surge bin. To accomplish this, hotmix is continuously fed to the upper end of the bin but is intermittently interrupted from free fall toward the bottom of the bin in pulses. Therefore, most simply stated, this invention transforms the normally continuous loading operation into a pulse-type operation which prevents segregation of the aggregates within the surge bin. (R. 8E; 3, col. 1, lines 58-67) (emphasis added).
The main element of Standard's Rheinfrank patent is a conically bottomed hopper (10) which is concentrically mounted on top of a storage bin (11) (see the Rheinfrank drawing in the appendix to this opinion). The hopper is identified by Standard with the tradename "Glasgow Batcher." The cylindrical portion of the batcher (25) is six feet in diameter, the cone angle of the conical portion below (26) is 55o from the horizontal, and the opening of the bottom of the batcher is two feet in diameter.
Asphalt is carried in small amounts by a conveyor from ground level up to the batcher where it accumulates in 5000 pound batches (R. 168). The material is then released into the bin "en masse". The bottom opening of the batcher is controlled by clamshell gates (34) which are designed to be opened and closed in response to the operation of air cylinders (39). Approximately one second is required to open the gates, and they remain open for four seconds while the batcher empties. 4
The equipment manufactured by plaintiff to carry out its patented process, i. e., the "Slug Filling of Bins," is very similar to that manufactured by Standard. Plaintiff also employs a conically bottomed hopper, which it terms a "slug feeder," concentrically mounted on top of a storage bin. The diameter of the cylindrical portion is six feet; the cone angle is 55o from the horizontal; the opening at the bottom is 21/2 feet diameter; and the capacity is approximately 5500 pounds. Clam-shell gates remain open five seconds while the "slug feeder" empties. 5
Essentially the trial court found or concluded, inter alia, that (1) the prior art patent of Plumb relied on by defendant (discussed in detail, infra ), which was not cited by the Patent Office, is no more pertinent than the prior art that was before the Patent Office; (2) the patent in suit was not anticipated by prior art or obvious; (3) because of representations made by Standard in its advertising, in effect describing a method of solving the problem of segregation nearly identical to that disclosed in the patent in suit (the dropping of "slugs"), defendant is estopped to deny that mix is dropped in "slugs" into its bin; (4) the equipment used by defendant does collect hotmix asphalt successively in "slugs," which, when dropped into the bin, build up a body of mix "having an upper surface sufficiently flat to prevent rock rolling and segregation;" and (5) the method employed in defendant's hotmix asphalt storage system infringes each of the claims of the Williams patent.
As stated, we sustain the trial court's holding that the patent in suit is valid, but are unable to agree that it is infringed by defendant's apparatus and method. Following the practice which has been indicated as preferable, we will turn first to questions concerning the validity of plaintiff's patent, and then to the issue of infringement. See Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 89 L.Ed. 1644, 1646; Blish, Mize and Silliman Hdwe. Co. v. Time Saver Tools, Inc., 236 F.2d 913 (10th Cir.), cert. denied, 352 U.S. 1004, 77 S.Ct. 565, 1 L.Ed.2d 549.
Validity of the Williams patent
In attacking the validity of the Williams patent defendant essentially says that the technique of intermittent feeding of asphalt hotmix to inhibit segregation was known prior to application for the Williams patent; that the concept appears in the Plumb patent (see appendix drawing) which, when combined with other prior art, made the process of Williams obvious; that failure of the Patent Office to consider Plumb destroys the presumption of validity; and that the finding that Plumb is no more pertinent than prior art considered is clearly in error. Since the process of Williams was both anticipated by other patents and obvious, defendant says it was not patentable under the statutory standards. 35 U.S.C.A. §§ 102 and 103 (Appellant's Brief, 21-25).
The record shows these facts concerning the prior art and issuance of the patent in suit. During prosecution of the application for the Williams patent all the original claims were rejected as being met by four references of prior art cited by the patent Examiner. 6 Williams then made certain amendments, not important here, and renewed his application emphasizing that the "slugs" in his process were unitary bodies dropped one by one to create a flat or nearly flat surface, and that his process was thus distinguishable from the structure and arrangements found in such patents as Brewer and others. When the amended claims were also...
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