Graham v. JOHN DEERE COMPANY OF KANSAS CITY
| Decision Date | 18 March 1963 |
| Docket Number | No. 12538-2.,12538-2. |
| Citation | 216 F. Supp. 272 |
| Parties | William T. GRAHAM and Graham Plow, Inc., Plaintiffs, v. JOHN DEERE COMPANY OF KANSAS CITY, a corporation, and Deere & Company, a corporation, Defendants. |
| Court | U.S. District Court — Western District of Missouri |
Fishburn & Gold, Kansas City, Mo., for plaintiffs.
Scofield, Kokjer, Scofield & Lowe, Kansas City, Mo., Gibson, Ochsner, Harlan, Kinney & Morris, Amarillo, Tex., for defendants.
On February 8, 1963, this Court entered its Memorandum Opinion, Findings of Fact, and Conclusions of Law in this cause. At that time the parties were granted ten days in which to suggest any proposed changes or modifications in the said opinion and findings. The suggested changes and modifications were duly filed by both parties, and duly considered by the Court, and certain changes and modifications were considered necessary by the Court. Therefore, the Memorandum Opinion, Findings of Fact, and Conclusions of Law entered herein on February 8, 1963, are hereby set aside and the following Amended Memorandum Opinion, Findings of Fact, and Conclusions of Law are entered in their place:
This is an action for infringement of United States Letters Patent Number 2,627,798, which was issued to plaintiff William T. Graham on February 10, 1953. The patent was issued for a "Clamp for Vibrating Shank Plows," and will hereinafter be referred to as the "798" patent. Plaintiffs seek a permanent injunction, an accounting, and damages. Defendants contend that the 798 patent was void or invalid because of lack of novelty or invention, because of anticipation, because of a prior use more than one year prior to the date of the application for such patent, and further because the subject matter of the patent would have been obvious to a person of ordinary skill in the art due to the status of the prior art. Defendants also assert the claim of "file wrapper estoppel," that is, that because of certain proceedings in the Patent Office during the processing of the 798 patent, plaintiffs are estopped to assert infringement by defendants. Defendants also contend that, if the patent is valid, it has not been infringed and defendants have filed a counterclaim seeking a declaratory judgment to the effect that the 798 patent is void and invalid.
Defendants rely on the prior patents and devices as showing the state of the prior art as follows:
United States Patents
Patent Date of Issue Patentee
211,003 Dec. 17, 1878 Dunbar
231,268 Aug. 17, 1880 Carter
284,278 Sept. 4, 1883 Cobb
287,965 Nov. 6, 1883 Rix
417,775 Dec. 24, 1889 Drader, et al
503,288 Aug. 15, 1893 Moore
1,141,804 June 1, 1915 Lamprell, et al
1,805,599 May 19, 1931 Roberts
1,982,862 Dec. 4, 1934 Erdman
2,029,249 Jan. 28, 1936 Noell, et al
2,493,811 Jan. 10, 1950 Graham (Plaintiff)
Foreign Patents
Australian
1,056 Mar. 19, 1926 Prior
111,910 Nov. 8, 1940 Traeger
Danish
57,391 Mar. 18, 1940 Petersen
Prior Devices
1. A spring clamp devised, manufactured and marketed by Jeoffroy Mfg., Inc., Amarillo, Texas, as early as January 1948, such clamp being known as the Jeoffroy SC-580 spring clamp.
2. A spring clamp devised, manufactured and sold by Glencoe Manufacturing Co., Glencoe, Minnesota, said clamp having been made and tested as early as August 1949, offered for sale as early as March 1950, and actually sold and delivered as early as May 1950.
United States Letters Patent Number 2,493,811 was issued to plaintiff Graham for a previous similar device, and this patent will be referred to frequently in this opinion, although it is not directly in issue here. It will be referred to simply as the "811" Patent.
The 798 Patent has been the subject of litigation on several previous occasions. In Jeoffroy Mfg. Co., Inc. v. Graham, 219 F.2d 511, the 798 Patent was held valid and infringed by the United States Court of Appeals for the 5th Circuit, reversing the decision of the trial court that the patent was invalid. In Jeoffroy Mfg. Co., Inc. v. Graham, 256 F.2d 360, the 5th Circuit again held the 798 Patent infringed, affirming the findings of the trial court. And in Graham v. Cockshutt Farm Equipment, Inc., 256 F.2d 358, the 5th Circuit again found the 798 Patent valid, but not infringed, affirming the findings of the trial court.
It appears by stipulation that all of the prior patents and prior devices cited and relied upon by the defendants in the case at bar, except the Rix Patent Number 287,965, the Roberts Patent Number 1,805,599, and the Glencoe clamp device, were before the District Court and the Appellate Court in the first Jeoffroy case and all the prior art relied upon by defendants in the case at bar was before the District and Appellate Courts in the Cockshutt case.
The record shows that, of the prior patents and devices cited and relied upon by defendants in the case at bar, only the following patents were of record in the Patent Office proceedings on the 798 Patent:
United States Patents
417,775 Dec. 24, 1889 Drader, et al
2,014,451 Sept. 17, 1935 Pfeifer
2,493,811 Jan. 10, 1950 Graham
Danish Patent
57,391 Mar. 18, 1940 Petersen
Australian Patent
111,910 Nov. 8, 1940 Traeger
None of the other patents relied on by defendants are of record in the Patent Office file with reference to the 798 Patent, nor are any prior devices on record in the Patent Office file. It should be noted that the United States Pfeifer patent, although of record in the Patent Office file, has not been cited by defendants in this case.
The Patent Office file wrapper in the 798 Patent discloses that Graham originally submitted his application with twelve claims. These claims were all rejected by the Patent Office, partially on the grounds that some of the claims failed to patentably distinguish from the 811 Patent, and partially on the grounds of lack of invention. Claims 13 and 14, which eventually issued as claims 1 and 2 of the 798 Patent, were then submitted by Graham to be substituted for the original twelve claims. These two claims, as finally issued, are as follows:
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