Deere & Co. v. International Harvester Co.
| Decision Date | 02 November 1981 |
| Docket Number | No. 80-2208,80-2208 |
| Citation | 658 F.2d 1137,211 U.S.P.Q. 11 |
| Parties | DEERE & COMPANY, Plaintiff-Appellee, v. INTERNATIONAL HARVESTER COMPANY, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Seventh Circuit |
Howard W. Clement, Chicago, Ill., for defendant-appellant.
Virgil Bozeman, John V. Patton, Bozeman, Neighbour, Patton & Noe, Moline, Ill., Robert H. Fraser, Louis A. Mok, Fraser and Bogucki, Los Angeles, H. Vincent Harsha, Raymond L. Hollister, Moline, Ill., Dugald S. McDougall, McDougall, Hersh & Scott, Chicago, Ill., for plaintiff-appellee.
Before SPRECHER and WOOD, Circuit Judges, and CAMPBELL *, Senior District Judge.
This suit for patent infringement was instituted by Deere & Company (Deere) in April, 1976, as a result of the commercial introduction by International Harvester Company (IH) of its IH 800 series corn head. Deere alleged that IH infringed its Patent No. 3,589,110 (110 Patent) issued on June 29, 1971 to Dale Schreiner and Joseph J. Shindelar and assigned to Deere. 1 The 110 Patent is embodied in the Deere 40 series corn head and concerns the mounting and provision of power to devices used in harvesting corn.
International Harvester counterclaimed that the 110 Patent was invalid and a four day bench trial followed. On October 19, 1978 the district court entered judgment for Deere, 2 finding claims 1-3 and 6-9 of the 110 Patent valid and infringed. 3 Accordingly, IH was ordered to cease its production of the IH 800 and to pay treble damages and attorney's fees to Deere.
On appeal, this court reversed the judgment of the district court 4 on the basis that the trial court had not applied the requisite standards for the determination of obviousness set forth in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The district court was admonished to "articulate more adequately its rationale ..." for its finding that the prior art relied on by IH was the equivalent of, or no better than, the prior art references that were before the patent office. This case was remanded with instructions to make detailed findings of the following:
1. The state of the prior art with references to each of the several old elements that were combined to constitute the invention claimed in the Deere patent.
2. With respect to each of those elements, a comparison of the "equivalent" prior art cited to the Examiner with prior art not cited.
3. The level of skill in the art.
4. The reasons why the evidence shows the patented combination of the above elements would not have been obvious to one skilled in the art.
Prior to this order of the court of appeals, International Harvester commenced a suit asking for a declaratory judgment that a new corn head it planned to market commercially, the CX-41, did not infringe the 110 Patent. The district court held that there was no infringement, 478 F.Supp. 411, but on appeal, this court vacated the order of the district court for lack of subject matter jurisdiction. 623 F.2d 1207. Upon remand in this case (but before the court of appeals decision in the declaratory judgment action), IH sought to reopen the trial proceedings to admit new evidence, primarily comprised of testimony given during the declaratory judgment trial. Petitioned by IH to require the trial court to do so, the court of appeals simply noted that on remand "nothing ... prohibits the district court from hearing new evidence if it is so inclined." The district court did not allow new evidence, but issued "Supplemental Findings and Orders" to more fully explain its original conclusions. 496 F.Supp. 397.
We are now called upon to assess the correctness of those findings of fact and conclusions of law. More specifically, IH contends that the court misinterpreted the applicable law in holding the 110 Patent infringed. In addition, IH argues that a holding of infringement would require that the patent be found invalid. In arguing for invalidity, IH insists that the district court erred in not reopening the trial for new evidence after remand. Finally, IH challenges the conclusion that it wilfully and wantonly infringed the 110 Patent and consequently seeks the elimination of the award of treble damages, attorney's fees and costs.
The patent at issue involves a device commonly attached to a combine for use in harvesting corn. In order to facilitate picking corn, a number of units called corn heads are attached to a supporting structure at intervals which correspond to the spacing of the rows of corn. The invention of the 110 Patent has to do with the mounting of the units onto the supporting structure and the provision of power to the units.
The harvester units project forward from the combine and consist of gathering chains which guide the corn stalks into a passage between the deck plates. There, the ears are snapped off and moved by gathering chains into a trough and then into the combine for husking and shelling. The stalks are pulled down through the plates and out, remaining in the field.
The 110 Patent calls for each harvesting unit to be mounted on its own enclosed gear housing. The gear train within the housing is the only mechanism used to drive the harvesting unit. The gear housings are mounted on a support beam and held by a mechanism that opens so that the housings may be repositioned along the beam if necessary to adjust the spacing. One drive shaft runs through all gear housings and provides power to them from the combine. That drive shaft is circumscribed by one main gear in each housing that is connected to the shaft by a clutch.
Deere's embodiment of the patent, the Deere 40 corn head, shows a drive shaft made in one piece. Thus, after releasing the holding mechanism, the space between row units may be adjusted by sliding the gear housing along the support beam, the drive shaft remaining intact and passing through it as the housing is moved. International Harvester's 800 series also shows a single drive shaft which spans the length of the harvester, but is segmented and rejoined by couplers so that when adjustment of spacing is necessary and the gear housings are moved along the beam, pieces corresponding to the new space between the housings must be inserted in place of the previously used segments. In all other respects, the IH 800 corn head functions the same way as the Deere 40.
At trial, Deere contended that International Harvester's IH 800 corn head infringed all claims of the 110 Patent. International Harvester defended this charge by showing that on advice of counsel and specifically to avoid infringement, IH adopted the segmented drive shaft that had been used on previous models. Arguing that this difference was sufficient to avoid infringement, IH maintained that the "invention" of the patent is in its "self-contained adjustability" and that since the IH 800 cannot be adjusted without the use of additional parts, it does not infringe.
The difficulty the district court found with this argument is that the claims specified by the patent (and at issue here) do not speak of "self-contained adjustability." 5 In finding claims 1-3 and 6-9 infringed, the court explained that they contain no limitation of the shaft to a unitary whole. Further, the district court rejected the notion that the patent examiner's characterization of claims 1-18 in a communication to Deere requires such a limitation to be read into all claims. The communication grouped together the first eighteen claims as "drawn to a plural unit corn harvesting device, wherein the spacing between units may be varied, while maintaining the drive therefor...." The district court dismissed the description as at best the preferred embodiment described in the specifications and also pointed out that the examiner did not require the limitation of the claims to the characterization.
On appeal, IH again poses this argument and adds a number of others in an effort to convince us to reverse the district court decision on infringement. Before we address them, it is important to note that our standard of review on the question of infringement is limited to a determination of whether or not the findings of the district court are clearly erroneous. Fed.R.Civ.P. 52(a); Minnesota Mining and Manufacturing Co. v. Permacel-LePages, Inc., 334 F.2d 820, 822 (7th Cir. 1964). "If they find support in the evidence we are bound thereby and there remains but the question of whether the court applied the correct legal criteria in reaching the ultimate conclusion it did." Wahl v. Carrier Manufacturing Co., 358 F.2d 1, 3 (7th Cir. 1966).
On this point, IH argues that this case falls within the scope of Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), where the Supreme Court said that in rare instances where the trial court "wholly failed to grasp the technical subject matter and issues ..." the judgment will be open to question. Id. at 333, 91 S.Ct. at 1445. Our review of the record and examination of the findings of the court below indicates that this is not such a case. In our review, then, we follow the dictates of Graver Tank & Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950), and defer to the trial court's more immediate and complete evaluation of the evidence so long as it is adequately supported by the record and not clearly erroneous. 6 Id. at 611-12, 70 S.Ct. at 857-858.
International Harvester's first argument, which it contends was misunderstood by the trial court, is that since the claims call for both a drive shaft and moveable gear housings, they cannot be read as allowing for the addition of parts. Instead, IH insists, the gear housing required by the 110 Patent must be able to move with the drive shaft in place. Appellant complains that the...
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