FMC Corp. v. Manitowoc Co., Inc.

• Decision Date: 30 January 1987
• Docket Number: No. 80 C 4742,81 C 2422.,80 C 4742
• Citation: 654 F. Supp. 915
• Parties: FMC CORPORATION, Plaintiff, v. The MANITOWOC COMPANY, INC., Defendant. The MANITOWOC COMPANY, INC., Plaintiff, v. FMC CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

654 F. Supp. 915

FMC CORPORATION, Plaintiff, v. The MANITOWOC COMPANY, INC., Defendant.

The MANITOWOC COMPANY, INC., Plaintiff, v. FMC CORPORATION, Defendant.

Nos. 80 C 4742, 81 C 2422.

United States District Court, N.D. Illinois, E.D.

January 30, 1987.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Raymond P. Niro, Timothy J. Haller, Niro, Scavone, Haller & Niro, Ltd., Bruce S. Sperling, Paul E. Slater, Sperling, Slater & Spitz, P.C., Chicago, Ill., for FMC.

Phillip H. Mayer, Berton Scott Sheppard, Leydig, Voit & Mayer, Ltd., C. Lee Cook, Richard S. Rhodes, Chadwell & Kayser, Chicago, Ill., for Manitowoc.

FINDINGS OF FACT, CONCLUSIONS OF LAW AND JUDGMENT

WILLIAM T. HART, District Judge.

I. Introduction

FMC Corporation ("FMC") seeks a declaratory judgment of patent invalidity and non-infringement, and damages for violation of antitrust laws and for common law unfair competition. The Manitowoc Company, Inc. ("Manitowoc") claims damages for patent infringement. Jurisdiction exists under 28 U.S.C. § 1338(a), 28 U.S.C. §§ 1332 and 1338(b), 15 U.S.C. § 15 and 28 U.S.C. § 1337.

Manitowoc owns United States Patent No. 3,485,383 ("'383 patent"), entitled "Auxiliary Support For Cranes," which issued in the name of Daniel E. Beduhn on December 23, 1969. The patent expired December 23, 1986. The application was filed on February 9, 1968. FMC contends that the '383 patent was invalid and not infringed. Claims for declaratory relief with respect to two other Manitowoc patents (U.S. Patents Nos. 2,878,944 and 3,949,881) were dismissed on the basis of Manitowoc's representation that FMC did not infringe either of the patents, and hence, no justiciable controversy existed.

FMC alleges that by enforcing an invalid patent Manitowoc prevented it from early entry into the heavy lift crane market. It contends that Manitowoc fraudulently withheld important information from the Patent Office during the procurement of the '383 patent that would have prevented the patent's issuance, and further that Manitowoc has maintained and enforced the '383 patent with knowledge of its invalidity. FMC claims that Manitowoc unlawfully restrained trade and commerce in, attempted to monopolize and monopolized, the market for heavy lift cranes that employ or are compatible with the ring and lift attachment covered by the '383 patent.

Manitowoc has previously asserted the '383 patent in litigation with American Hoist & Derrick Company. American Hoist & Derrick Company v. The Manitowoc Company, 448 F.Supp. 1372 (E.D. Wisc.1978), aff'd, 603 F.2d 629 (7th Cir. 1979). In that litigation, an accused American Hoist crane was found not to infringe claim 1 of the Manitowoc '383 patent. No decision was reached on the validity or enforceability of the patent or specifically with respect to claims 5 and 6 which Manitowoc says were infringed by FMC.¹ Fraud and on sale issues were also tried but not decided. Much evidence discovered initially in the American Hoist case has been offered in this case.

The products at issue in the litigation are FMC's LS-718 and LS-918 cranes and heavy lift attachments (LS-718HLA and 918HLA), which have been charged with infringement of the '383 patent. The Manitowoc 4000W, 4100 and 4600 cranes and ring attachments are covered by the '383 patent.

The inventor, Daniel E. Beduhn, died before trial. Beduhn's deposition testimony is part of the record.

II.

FINDINGS OF FACT

(1) Heavy Lift Cable Crawler Cranes

A cable crawler crane of the type described in the '383 patent includes a lower works with crawlers to move the crane on the ground and an upper works that rotates on the lower works. The upper works includes a house enclosing the engine, cable storage drums, winches and operating controls, a load handling boom capable of up-down and angular movement from which the load is suspended, a mast and rigging (sometimes called the gantry) interconnecting the boom and the balancing counterweight on the rear of the upper works. All of the crane structure behind the fulcrum point, at which the crane would tip over, also supplies counterbalancing counterweight. The lower works includes the crawlers and wheels making the crane mobile. A crawler crane can pick up a load and move it before placing the load. The crane's tipping fulcrum point is that point just beneath the machine structure closest to the load that is touching the ground.

A crane is said to pick or lift a load. Swing is rotating movement of the crane upper works on the lower works about a vertical axis. A turntable interconnects the upper and lower works. A crane's working radius is measured by how far the lifted load is horizontally spaced from the vertical axis of the turntable.

Crane design deals with problems of stability and strength. A crane is rated in terms of how much it can lift at a given radius. The shorter the radius, the heavier the load capability. Load times radius equals an overturning moment that must be balanced by a counterweight moment in order to provide stability. At certain radii — the extremes of closest and furthest out — the capacity of a crane is limited by the strength of certain members or components. Load ratings are set so as to insure that loads remain less than that which would cause tipping or structural damage. At middle radii, the capacity of a crane is stability limited. Its rating is determined so that a load will not cause the crane to start tipping over.

The stability limit of a crawler crane is usually rated as 75% of the load moment that causes the rear of the crane—that portion furthest from the load—to begin lifting. Truck mounted cranes ordinarily have mechanical extensions ("outriggers") to provide extended or substitute fulcrum points. Such cranes are regarded as having lift capacity of 85% of tipping load. This standard was also used to determine the load capacity of the '383 patent attachment.

Cranes have "rated load capacities" that are determined both by calculation and experimentation. Load capacities are stated as maximum loads that can be handled on a given boom and a given angle. Stability and strength design problems become more complex as the size and weight of loads being moved increases.

Various methods have been used to increase the lifting capacity of cranes. An increase in the overall size and weight of a crane is one such method, but this method places limitations on crane maneuverability and may require lengthy periods of disassembly for transportation.

Another method is to add counterweight at the rear of the crane employing the teeter-totter principle of balancing a heavier load on one side of the fulcrum point with an additional weight on the opposite side. This method has its limitations also. The additional counterweight can produce increased compression and tension. The mounting of counterweight on the rear of the crane also increases forces on the crane deck or turntable mechanism that permits the upper works to rotate on the lower works. Also, too great an increase in the counterweight can cause the machine to tip backwards when little or no load is carried by the boom. The patent in suit overcomes these problems.

(2) The '383 Patent

The '383 patent discloses a load handling assembly utilizing a modified Manitowoc 4000 crane with a ring support system. The trade name of the attachment is "The Ringer." The use of the system allows the lifting capacity of a given size of crane to be increased from two to four times. A crane having a normal rating of 150 tons modified in accordance with the invention of the patent can lift loads of 300 tons. (Later models are capable of increased tons of lift capacity.) When the crane is loaded the movable auxiliary counterweight is raised off of the annular support in a way that acts to offset a portion of the load being hoisted. The support ring can be secured to the crane and the crane rigging can be adapted without major structural changes to the crane.

The lift attachment design is shown in figures of the '383 patent which are attached to this opinion as Appendix No. 1. (The patent elements are referred to in this opinion by the parenthetical numbers that appear in the patent figures and specifications.)

The load handling assembly consists of a basic cable 4000W crawler lift crane in combination with a surrounding support ring (16, Figure 2) that carries an auxiliary counterweight (122). The auxiliary counterweight is directly supported through rollers on the circular support ring. The rollers (126) permit the auxiliary counterweight to rotate by moving across the upper surface of the ring. The auxiliary counterweight is positioned on the ring adjacent to a main counterweight (50) that is carried on the rear of the crawler crane. The auxiliary counterweight is vertically and horizontally slidable relative to the main crane counterweight (Figure 4), the latter being entirely supported by the basic crawler crane. A boom (14) and mast (70) are supported at a common point on the support ring in front of the crane pivot point (42) at a point diametrically opposite from the auxiliary counterweight and main counterweight. The boom and mast are connected to the upper rotating portion of the crane through an intermediate carrier (40). The effect of supporting the boom on the ring is to extend the fulcrum. The axis of tipping is disposed further forward and the center of gravity of the system opposed to the load (including the main counterweight, auxiliary counterweight, and body of the crane) is further from the tipping axis. The auxiliary counterweight is supported independently of the main counterweight, can travel over the center of the support ring surface and lift off (Figure 3) of the support ring when a load of sufficient weight is hoisted. The weight that is lifted on one side of the pivot point where the boom and mast are connected is balanced by the counterweight on the other side of the pivot point.

The ring is connected (Figure 5)...