Davis Harvester Co. v. Long Manufacturing Co.

• Decision Date: 07 April 1966
• Docket Number: Civ. No. 607.
• Citation: 149 USPQ 420,252 F. Supp. 989
• Court: U.S. District Court — Eastern District of North Carolina
• Parties: DAVIS HARVESTER COMPANY, Inc., Plaintiff, v. LONG MANUFACTURING COMPANY, Defendant.

252 F. Supp. 989

149 USPQ 420

DAVIS HARVESTER COMPANY, Inc., Plaintiff, v. LONG MANUFACTURING COMPANY, Defendant.

Civ. No. 607.

United States District Court E. D. North Carolina, New Bern Division.

April 7, 1966.

COPYRIGHT MATERIAL OMITTED

William D. Hall, of Hall, Pollock & Vande Sande, Washington, D. C., Laurence A. Stith, of Stith, McCotter & Sugg, New Bern, N. C., for plaintiff.

Henry C. Bourne, of Bourne & Bourne, Tarboro, N. C., A. Yates Dowell, A. Yates Dowell, Jr., Washington, D. C., for defendant.

LARKINS, District Judge:

SUMMARY

This Patent case is before the Court for trial without a jury whereby plaintiff corporation charges defendant corporation, Long Manufacturing Company, with infringements of its patents. Claims of direct infringements are said to arise out of the manufacture and subsequent sale of the Long "Silent Flame" tobacco harvesters by the defendant, Long Manufacturing Company. W. E. Davis, Alton Scott, O. W. Scott, the firm of Moore and Hall, patent attorneys, are officers and stockholders in plaintiff corporation. W. R. Long is an officer and stockholder in defendant corporation.

Plaintiff also charges defendant with inducing and contributing to infringement of its patents by supplying of repair parts for the Long "Silent Flame" tobacco harvesting machines produced and sold in the past, and for inducing J. I. Case Company to infringe the patents of plaintiff here in suit.

Plaintiff demands injunctive relief; and accounting for profits and damages, together with the costs of this action; and attorneys' fees.

Plaintiff's patents in suit are Patents No. 2,715,968 and 2,786,585. Defendant Long's patent in suit is Patent No. 2,704,158. All three patents are applicable to tobacco harvesters.

Defendant has, by Answer, denied the substance of the Complaint; asserted both Davis patents to be invalid and not infringed; and that plaintiff lacked title. Defendant Long, by means of further answer and first counterclaim, prayed for a declaratory judgment upon the validity of all the patents in suit; asserted the affirmative defense of estoppel; and insists that any claims of plaintiff against the defendant are unenforceable. A second counterclaim avers that title in the two patents of plaintiff should be in the defendant as a result of Davis's employment by Long during critical periods of time in question.

Defendant has also asserted a third counterclaim charging plaintiff with infringement of defendant's Patent No. 2,704,158.

Plaintiff has replied to the counterclaims by denying the substance of the first counterclaim. Plaintiff alleges lack of jursidiction in the Court over the second, and that it is also barred by the statute of limitations. As to the second counterclaim, plaintiff further contends that it has title by adverse possession and that defendant is estopped to assert title.

Plaintiff denied the essential allegations of the third counterclaim, which has since been dismissed by the Court with an award of attorneys' fees to the plaintiff.

Based upon the pleadings in this action, jurisdiction of the basic claims asserted by the parties in their Complaint and Answer is founded under Title 28 U.S.C.A. §§ 1338 and 1400. The essential contentions asserted in the first counterclaim find jurisdictional support in Title 28 U.S.C.A. §§ 2201 and 1338. Jurisdiction over the claims asserted in the second counterclaim is founded upon this Court's jurisdiction over the claims asserted in plaintiff's Complaint. Jurisdiction of the third counterclaim was founded under Title 28 U.S.C.A. §§ 1338 and 1400, and it has been dismissed.

Three actions have been filed in this Court. The first being Civil No. 477, New Bern Division — brought by William E. Davis, Nelson Moore and William D. Hall against the Johnson-Sherman Company, a partnership, and the individual members thereof, who sell and distribute farm machinery, including tobacco harvesters. That action was filed on March 6, 1958.

The second action — Civil No. 572, New Bern Division — by the same parties was against the J. I. Case Company, a manufacturer of farm machinery, with its main facilities located in Racine, Wisconsin. J. I. Case Company was licensed by defendant, Long Manufacturing Company, to manufacture and market tobacco harvesters. Johnson-Sherman Company distributed and sold the tobacco harvester made and sold by J. I. Case Company. This second action was filed on April 10, 1963.

The third action — Civil No. 607, New Bern Division — was brought by Davis Harvester Company, Inc., against Long Manufacturing Company on May 1, 1964. It charged defendant, Long Manufacturing Company, with direct and indirect infringement of the two Davis patents, as well as claiming defendant, Long Manufacturing Company, induced the infringements.

The Court consolidated all three actions for purposes of discovery, pre-trial and trial. In all the actions, the plaintiffs have prayed for injunctive relief, as well as for an accounting and monetary damages for the alleged infringements. Plaintiffs have also prayed for the recovery of the costs of the actions, together with reasonable attorneys' fees.

It is appropriate to note that upon receiving the consent of the Court, an agreement of settlement has been reached between plaintiffs and the defendants in Cases No. 477 and 572. For that reason, those two cases and the defendants involved therein are dismissed from further consideration by the Court as parties to the actions.

Before the Court at this time are the questions raised by corporate plaintiff's Complaint in Case No. 607, and in the Answer and counterclaims of defendant Long Manufacturing Company.

In this respect the Court must determine whether corporate plaintiff is entitled to its prayer for injunctive relief, damages for infringement, together with costs and attorneys' fees if they be justified. In order to make this determination it is also necessary to consider defendant's first counterclaim in which a declaratory judgment is sought concerning the status of corporate plaintiff's patents. Thus, the Court is compelled to answer the questions of the status of the three patents in suit, their validity, and their relationship to the tobacco harvester in question.

Depending on the outcome of these threshold questions of the status of the three patents in suit are the numerous other issues which will be considered as the necessity arises. It is to be noted that the question of damages, if any, has been reserved for a later determination, no evidence related thereto having been presented because the court elected to separate the trial of that issue from the rest of the case.

FINDINGS OF FACT

The first patent in suit, Davis Patent No. 2,715,968, was filed on May 18, 1953. The inventors are listed as William E. Davis, Alton Scott and Oliver W. Scott. The patent attorney was Norman S. Blodgett. The device entitled a "tobacco harvester" was patented on August 23, 1955. There are a total of twenty-three (23) claims attached to the patent as finally allowed.

There is a second Davis patent in suit, Patent No. 2,786,585, which was filed on July 8, 1954, and allowed on March 16, 1957. There are a total of ten (10) claims attached to this patent as finally allowed.

The last patent in suit is Long Patent No. 2,704,158. This patent was filed on July 28, 1954, and allowed on March 15, 1955. A total of eight (8) claims are attached to this patent as finally allowed.

The basic machine described in all three patents is a tobacco harvester. This involves a self-propelled, three-wheeled or tricycle machine. It passes through a tobacco field, the wheels going between the rows. Suspended near the ground are primer seats in which a man sits and primes, or picks, the ripe leaves of tobacco from the stalks of tobacco as he passes between the rows of plants while the entire machine advances through the field. The primer seat is located directly forward of each rear wheel. As a handful of the ripe leaves are picked, they must be transported from the primer, in his seat close to the ground, upward to an overhead platform mounted on the machine. The leaves are there placed on sticks and stored on the platform until such time as they are taken to a tobacco barn for removal and curing.

Both parties do not necessarily claim original concept in the fact that their patents describe a self-propelled machine with its wheels passing between the crop rows, and that there is involved an overhead platform upon which personnel can work and crops can be handled and stored. The crux of the contest centers around the method of getting the ripe leaves from the primer, or picker, up to the overhead platform. This, in turn, involves the inventiveness of the "rollerclip".

The record discloses the following sequence of events in relation to the actual processes of invention and patenting.

W. E. Davis testified that as a boy he worked in tobacco and with various types of farm machinery. He further testified that upon his return to farming, after working with the United States Navy and with private industry during World War II (Tr. 595-597), he developed a form of harvester (Tr. 597). This machine demonstrated "that a man could prime tobacco from a sitting position while traveling at a slow forward speed." (Tr. 597).

During the early post-war years, Davis made an employment connection with a small tobacco-curing device manufacturing firm in Goldsboro, North Carolina. This firm was owned by Alton Scott and O. W. Scott.

While in the employ of the Scotts at their plant, W. E. Davis and the Scotts went about constructing a tobacco harvester during the spring and summer of 1947. In the late summer of 1947, the machine was put in the field for operational testing.

The harvester was described by Davis in his deposition of July 1963, as follows:

"A. The frame, all of it, o. k. It is a tricycle affair — and to eliminate any confusion — it is a tricycle affair. It had four wheels,

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