Galland-Henning Mfg. Co. v. Dempster Brothers, Inc.

• Decision Date: 22 January 1970
• Docket Number: Civ. A. No. 5735.
• Court: U.S. District Court — Eastern District of Tennessee
• Parties: GALLAND-HENNING MANUFACTURING COMPANY and Chattanooga Welding & Machine Company, Inc. v. DEMPSTER BROTHERS, INC.

315 F. Supp. 68

GALLAND-HENNING MANUFACTURING COMPANY and Chattanooga Welding & Machine Company, Inc. v. DEMPSTER BROTHERS, INC.

Civ. A. No. 5735.

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

January 22, 1970.

COPYRIGHT MATERIAL OMITTED

Edward Taylor Newton, Newton, Hopkins, Jones & Ormsby, Atlanta, Ga., Fred H. Cagle, Jr., Frantz, McConnell & Seymour, Knoxville, Tenn., Wright & Wright, Milwaukee, Wis., for plaintiffs.

Charles D. Snepp, Knoxville, Tenn., J. Preston Swecker, Burns, Doane, Benedict, Swecker & Mathis, Washington, D. C., for defendant.

OPINION

FRANK W. WILSON, Chief Judge.

This lawsuit arises under the patent laws of the United States. The lawsuit began as an action for infringement of a patent involving a scrap metal baling press. The defendant denies infringement and contends that the patent sued upon is invalid.

Stating the contentions of the parties more fully, the plaintiffs contend that upon August 15, 1961, United States Letters Patent No. 2,995,999 was issued to the plaintiff, Chattanooga Welding & Machine Company, Inc., as assignee for Mark L. Holt, the inventor, for an invention in a scrap metal baling press. On January 17, 1966, the plaintiff, Chattanooga Welding & Machine Company, Inc., granted an exclusive license to the plaintiff, Galland-Henning Manufacturing Company, for the manufacture and sale of the baling press. The plaintiffs contend that Dempster Brothers, Inc., which is also in the business of manufacturing scrap metal baling presses, has built and sold baling presses which infringed the plaintiffs' patent. The plaintiffs, asserting that they are the owner of a lawful and valid patent infringed by the defendant, seek damages of the defendant as provided by law.

The defendant, Dempster Brothers, Inc., denies any infringement of the patent sued upon, contends that the plaintiffs are guilty of laches and bad faith in bringing the action for infringement, and further contends that the plaintiffs' Patent No. 2,995,999 is invalid. The defendant's invalidity contention is based upon the following assertions: (1) that the invention had been disclosed in printed publications more than one year prior to the plaintiff's application for a patent; (2) that baling presses involving the claims of the plaintiffs' patent were exhibited for sale or sold or were in use for more than one year prior to the date of the patent application; (3) that the claims of the plaintiffs' patent were obvious in the light of the prior art as it existed at the time of the plaintiff's patent application, including prior patents and including prior scrap metal baling presses, as manufactured both by the plaintiff, Chattanooga Welding & Machine Company, Inc., and by the defendant, Dempster Brothers, Inc.; (4) that the claims of the patent are too indefinite and vague, and fail to adequately disclose the subject matter claimed, thereby rendering the patent invalid under §§ 101 and 112 of Title 35 U.S.C.; and (5) that fraud was practiced in procuring the patent in that false representations were made to the Patent Office with regard to the inventor and with regard to the prior use and disclosure of matters claimed in the patent. The defendant accordingly seeks by counterclaim to have the plaintiffs' patent declared invalid and further seeks to recover costs and reasonable attorney fees from the plaintiffs.

In response to the counterclaim the plaintiffs deny any laches or bad faith in bringing this action, deny each contention of the defendant in regard to the invalidity of the patent, assert that the patent is valid and is being infringed by the defendant, and deny that the defendant is entitled to recover costs or attorney fees from the plaintiffs.

In the interest of a more orderly and manageable proceeding, the validity and infringement issues were severed for purposes of trial from the damage issues and the case was tried before the Court sitting without a jury upon these issues. The case has now been submitted for decision of the Court upon the validity and infringement issues on the record made upon the trial, the oral argument of counsel, and the written briefs filed herein. This opinion constitutes the findings of fact and conclusions of law of the Court.

The following matters appear undisputed in the record in this case. Chattanooga Welding & Machine Company, Inc., is a Tennessee corporation with its principal place of business located in Chattanooga, Tennessee. Among other activities, it formerly engaged in the manufacture and sale of scrap metal baling presses. It was so engaged in the manufacture and sale of scrap metal baling presses in 1956 and had been so engaged for a number of years prior thereto. On October 25, 1956, Mark L. Holt, who has since died but who was then an owner and principal officer in Chattanooga Welding & Machine Company, Inc., filed an application with the United States Patent Office for a patent in regard to certain features in a scrap metal baling press. This application eventually matured into a patent designated as #2,934,002, and hereinafter referred to as the "002 patent" (Exhibit P-1). The 002 patent issued as of April 26, 1960. Although the 002 patent is not the patent here in suit, there is a close relationship between it and the patent sued upon, as will hereinafter appear. On March 5, 1958, Mr. Holt filed application for another patent in regard to a scrap metal baling press, designating this application as a "continuation-in-part" of his previous application, which was then still pending in the Patent Office. It was this latter application, filed March 5, 1958, which eventually matured into Patent #2,995,999 (Exhibit P-2). For the sake of clarity and brevity this patent will hereinafter be referred to as the "999 patent." The 999 patent issued as of August 15, 1961. These patents, 002 and 999, were each assigned by Holt at the time of their issuance to Chattanooga Welding & Machine Company, Inc. On January 17, 1966, Chattanooga Welding & Machine Company, Inc., granted an exclusive license to Galland-Henning Manufacturing Company of Milwaukee, Wisconsin, to manufacture and sell scrap metal baling presses incorporating the teaching of both Patents 002 and 999 (Exhibit P-3).

The defendant, Dempster Brothers, Inc., is a Tennessee corporation with its principal place of business in Knoxville, Tennessee. Dempster Brothers, Inc., manufactures and sells machinery and heavy equipment of various kinds, and for a number of years has been a competitor of the plaintiffs in the manufacture and sale of scrap metal baling presses. On August 24, 1966, the plaintiffs filed this lawsuit against Dempster Brothers, Inc., for alleged infringement of the 999 patent. The contentions of the parties and the relevant developments in the lawsuit to this time have previously been set forth in this opinion.

At this point it would lend clarity to the Court's opinion to discuss in a general way the subject matter of the two patents here involved. The recovery and reuse of scrap metal has been a very sizable business for many years. Of considerable importance to the business are hydraulic presses capable of economically reducing scrap to manageable size and shape for shipping and handling. Such presses for baling scrap metal have been on the market for a number of years, substantially predating the patents here involved. Certain features of these presses appear to have become well standardized in the trade at a time likewise substantially predating the patents here involved. These included a heavily reinforced rectangular compression chamber into which scrap is loaded. The chamber is then closed and a hydraulic ram operating longitudinally through the chamber compresses the scrap to a predetermined dimension. A second hydraulic ram operating in a transverse manner across the face of the platen of the longitudinal ram then compresses the metal into a bale of the dimensions desired. Also well known in the trade and used upon presses manufactured by both Chattanooga Welding & Machine Company, Inc., and Dempster Brothers, Inc., prior to the time of the patents we are here concerned with was a hopper mounted on one side of the compression chamber into which a roughly measured amount of loose scrap was initially loaded and then, by hydraulic rotation of the hopper, the scrap was dumped into the compression chamber. A further common feature of baling presses at that time was a hydraulically operated compression or tamping door mounted on the compression chamber on the side opposite to the loading hopper. The function of the tamping door was to compress scrap into the compression chamber so that the compression chamber might be closed for the baling process.

The 002 patent purports to cover certain improvements in the design and operation of the loading hopper and the compression or tamping door and in the mechanism for ejecting bales from the compression chamber following formation of the bale. The bale ejecting mechanism is not in any way involved here and need not be further referred to. As regards the design and operation of the tamping door and loading hopper, the 002 patent makes claim to the inventive use of a curved loading hopper ("curved skip pan" as it is often referred to in the evidence), so designed and mounted that when it is in a dumping position it fits the arc and dimensions of the tamping door. The operation described in the 002 patent is for the loading hopper to close to the dumping position, then for the tamping door to pass through the arc and chamber thus formed by the hopper and force all metal from the hopper into the compression chamber. The 002 patent also claimed an invention in providing hydraulically operated locking bolts to lock the tamping door in position once it had closed with the compression chamber, thus permitting the tamping door to perform the dual function of compressing scrap into the compression chamber and forming the top of the...