Ezee Stone Cutter Mfg. Co. v. Southwest Indus. Prod.

• Citation: 262 F.2d 183
• Decision Date: 21 January 1959
• Docket Number: No. 15991,15992.,15991
• Parties: EZEE STONE CUTTER MANUFACTURING COMPANY, a corporation, and Bo Gann and James Willis, Appellants, v. SOUTHWEST INDUSTRIAL PRODUCTS, Inc., Appellee. SOUTHWEST INDUSTRIAL PRODUCTS, Inc., Appellant, v. EZEE STONE CUTTER MANUFACTURING COMPANY, a corporation, et al., Appellees.
• Court: U.S. Court of Appeals — Eighth Circuit

262 F.2d 183 (1958)

EZEE STONE CUTTER MANUFACTURING COMPANY, a corporation, and Bo Gann and James Willis, Appellants, v. SOUTHWEST INDUSTRIAL PRODUCTS, Inc., Appellee.

SOUTHWEST INDUSTRIAL PRODUCTS, Inc., Appellant, v. EZEE STONE CUTTER MANUFACTURING COMPANY, a corporation, et al., Appellees.

Nos. 15991, 15992.

United States Court of Appeals Eighth Circuit.

December 24, 1958.

Rehearing Denied January 21, 1959.

LeRoy Powers, Oklahoma City, Okl., and Claude A. Fishburn, Kansas City, Mo. (P. H. Hardin, Hardin, Barton, Hardin & Garner, Fort Smith, Ark., and Delmer L. Stagner, Oklahoma City, Okl., were with them on the brief), for Southwest Industrial Products, Inc.

A. Yates Dowell, Jr., Washington, D. C. (A. Yates Dowell, Washington, D. C., and Jack Rose, Fort Smith, Ark., were with him on the brief), for Ezee Stone Cutter Manufacturing Co. and others.

Before GARDNER, Chief Judge, and VOGEL and MATTHES, Circuit Judges.

VOGEL, Circuit Judge.

These are cross appeals arising under the patent laws of the United States.

Southwest Industrial Products, Inc., hereinafter referred to as plaintiff, is the appellee in appeal No. 15,991 and the appellant in appeal No. 15,992. Ezee Stone Cutter Manufacturing Company, et al., hereinafter referred to as defendants, are appellants in appeal No. 15,991 and appellees in appeal No. 15,992.

In the trial court plaintiff charged infringement of its Stone Cutter Patent No. 2,762,359 and its Trailer Patent No. 2,762,631 issued to one G. B. Entz, who originally instituted this suit and has since assigned all his right, title and interest arising under these patents to plaintiff. Plaintiff also charged defendants with unfair competition in allegedly simulating plaintiff's trade name "Entz" alone and in an oval emblem by the use of "Ezee" as defendants' trade name in an oval emblem. Plaintiff further charged that defendant Willis kept for defendants' use a customer list which was compiled while in the employ of Entz.

In 1949 or 1950, G. B. Entz (plaintiff's assignor) constructed his first machine for the purpose of cutting building stone. It consisted of two opposing jaws, each having a continuous blade brought together by hydraulic hand jacks in such a manner as to cut or break the stone. After considerable but not too satisfactory use, Entz devised an equalizing blade consisting of many individual chisels which would follow the contour of the stone, which the continuous blade would not. Working with the Crowl Machine & Heat Treating Plant of Oklahoma City, Entz completed and successfully tested such a machine in September, 1950. In 1951 eight such machines were manufactured and sold to the public and during 1952 and 1953 they were sold at a rate of two per month.

In July or August, 1951, Entz, assisted by one T. E. Mosley, designed and constructed a trailer with an off-set axle to transport the stone cutting machine. The trailer is a 4-wheel device on which the wheels may be raised or lowered hydraulically so that a machine mounted thereon can be lowered to the ground for operation and raised for transportation to another location. After the design of the first trailer in 1951 practically all of Entz's stone cutters were mounted on trailers before being sold to the public. For a more detailed and technical description of the trailer, see the trial court's Finding No. 8 at page 211 of 157 F.Supp.

Up until the fall of 1953 Entz had made only minor changes in the stone cutter, but at that time, as found by the trial court, several improvements were added. 157 F.Supp. at page 210:

"(1) pivoting of the wedges to their shanks (prior to this the wedges had been bolted in, and trouble was experienced with bolts breaking and in turn causing the stone to be broken or cut incorrectly); (2) providing a gable on one side of the head of the knives or chisels to provide a continuous cutting edge (prior to this there was a gap between each set of two chisels, and these gaps tended to cause some breakage of the stone and to prevent a perfectly straight break); (3) a hydraulically operated gauge was added to determine the widths of the cut of the stone, and said gauge was designed to operate automatically (before this the gauge did not work automatically but was controlled by the operator of the machine); (4) some change was made in the washing system relating to the shanks of the lower chisels (the evidence was not clear as to the exact nature of this change, and apparently it was a minor one)."

Entz's stone cutting machine with these improvements was first publicly displayed in Washington, D. C., in January, 1954.

On November 9, 1954, Entz applied for a patent on his stone cutter. Except for the four improvements stated above this machine was the same as he was selling prior to November 9, 1953. The application was twice denied. Upon requested reconsideration, however, it was on September 11, 1956, granted as patent No. 2,762,359.

As to Entz's trailer, apparently the only improvement of possible consequence was made in the early part of 1953 when there was a change in the location and hook-up of the link mechanism.

On November 2, 1953, Entz applied for a patent on his trailer, which was the same as the original in all respects except for the above-mentioned location of the link mechanism hook-up. This application also was twice denied but upon further reconsideration approved on September 11, 1956, as patent No. 2,762,631.

From 1950 until November, 1956, Entz was continuously engaged in the business of developing, manufacturing and marketing stone cutting machines. He used the name "Entz" on all his stone cutters, and a great majority of the stone cutting machines now in use in the United States are Entz machines. After spending substantial sums of money in advertising, the stone cutter had become a commercial success and the name "Entz" has acquired a secondary meaning in the stone industry.

In the summer of 1955 defendant Willis went to work for Entz in the Oklahoma City plant. During his employment Willis became familiar with the Entz stone cutter and took measurements of various parts of these machines. At the same time he, Willis, obtained and compiled a list of prospective buyers of stone cutters. While in Entz's employ Willis discussed with other employees the possibility of leaving Entz and going into a competing business.

After leaving the employment of Entz in March of 1956, Willis and defendant Gann offered to purchase the business from Entz. They did not succeed in doing so. Subsequently Willis and Gann formed a partnership, employed a former employee of Entz, who built them a stone cutting machine which they sold for $1,500.00. On September 17, 1956, the defendants formed the Ezee Stone Cutter Manufacturing Company and thereafter built another machine. The two machines built by defendants are in all substantial respects the same as the Entz machine. The first machine which defendants manufactured, bearing an emblem very closely resembling the Entz emblem used on Entz stone cutters and advertising material, was sold before September 11, 1956. The second machine has not been sold. The defendant corporation has also used the emblem, similar to Entz's, on one of its trucks. Many of the parts used by defendants in the manufacture of their two machines were purchased from Crowl and were parts that Crowl had actually manufactured for Entz.

The case was tried to the court without a jury. In an able and comprehensive opinion, published in 157 F.Supp. 208, the court found that claims 10 and 11, relating to chisels with gable-like projections (improvement No. 2 set forth, supra), and claim 12, relating to the improvement of pivoting the wedges to their shanks (set forth as improvement No. 1, supra), were valid inventions and had been infringed by the defendants; that the evidence was insufficient to show damages sustained by plaintiff as a result of the infringement; that the trailer patent was invalid; that the defendants had been guilty of unfair competition and should be enjoined from using similar labels on their products; and, finally, that the defendants should furnish plaintiff a copy of the list of prospective customers compiled by Willis during his employment with Entz. From this judgment, Southwest Industrial Products, plaintiff, appeals the court's holding of invalidity as to the trailer patent. All other holdings referred to above are appealed by the defendants. Additional holdings of the District Court are not the subject of appeal and are, of course, not discussed herein.

We consider first No. 15,992 wherein the trial court held that the trailer patent No. 2,762,631 was invalid because it had been in public use and on sale for more than a year prior to November 2, 1953, the date of the filing of the application for patent. On appeal here it is contended by the plaintiff that the use of the trailer, as originally designed, more than a year prior to the filing of the patent application was necessary testing and experimentation, was not for an unreasonable period of time and did not constitute a public use within the meaning of 35 U.S.C.A. § 102(b). It is further contended on appeal that the change in the "hook-up and location" of the linkage of the trailer constituted a new combination of old elements whereby a new and useful result was produced or an old result was obtained in a more facile, economical and efficient way and therefore an invention and entitled to be protected by a patent. The record discloses that a very substantial number of trailers was manufactured and sold to the public more than a year prior to the filing of the application for patent; that no change was made in the trailer within one year prior to the application for patent excepting only the location and hook-up of the link mechanism. The determination by the trial court that such improvement (157 F.Supp. at page 214)

"* * * involved nothing more than mechanical skill, and since the

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