Greening Nursery Co. v. J and R Tool and Manufacturing Co.

• Decision Date: 31 March 1966
• Docket Number: Civ. No. 5-1395.
• Citation: 252 F. Supp. 117
• Parties: The GREENING NURSERY COMPANY, Plaintiff, v. J AND R TOOL AND MANUFACTURING COMPANY, Defendant.
• Court: U.S. District Court — Southern District of Iowa

252 F. Supp. 117

The GREENING NURSERY COMPANY, Plaintiff, v. J AND R TOOL AND MANUFACTURING COMPANY, Defendant.

Civ. No. 5-1395.

United States District Court S. D. Iowa, Central Division.

March 31, 1966.

Wendell B. Gibson, Des Moines, Iowa, for plaintiff.

Rudolph L. Lowell, Des Moines, Iowa, for defendant.

HANSON, District Judge.

This is an action brought by plaintiff, The Greening Nursery Company of Monroe, Michigan, against defendant, J and R Tool and Manufacturing Company of Des Moines, Iowa, for infringement of United States Patent No. 2,847,808 which had its inception by application filed in the United States Patent Office on September 6, 1956, and conclusion by allowance to the plaintiff on August 19, 1958. The machine has been entitled a "Tree Wrapping Machine." Plaintiff charges that the machine sold by the defendant patented September 26, 1961, bearing No. 3,001,345, which was filed on June 17, 1959, called "Bush Packing Machine" infringes the plaintiff's machine and, accordingly, plaintiff prays for an injunction against further infringement of the patent and an accounting for profits and damages.

Only claims 1¹, 2², 5³, 6⁴, and 7⁵ of the plaintiff's patent are in suit.

The defendant has denied that it infringes the plaintiff's patent and has filed a counterclaim by declaratory judgment asking that the court hold the plaintiff's patent known as the 808 patent in suit invalid and/or so limited that defendant does not infringe any of the claims thereof.

Thus it must be clearly seen that the normal problems of patent cases involving infringement and denials of infringement and pleadings by counterclaim of invalidity are before the court.

The record by way of stipulation and pretrial order clearly establishes the jurisdiction of the court over the parties and the cause of action. It is further clear that there is no question of ownership of the patents involved.

It appears without question that the defendant began selling its machines which are here charged to infringe on or about June of 1961. All machines involved herein as they relate to the parties plaintiff and defendant are claimed to be designed so as to rapidly and properly package the roots of bushes, shrubs, or trees in bags. This packaging is said to prevent the roots from drying and dying until they can be properly used by the consumer. In both the machines certain types of packing material such as shingle tow, peat moss, excelsior, and saw dust are used in the bag. It is the intention to keep the roots moist and free from air. The machines are meant to provide a good horticultural package properly packed with roots and packing material. In both of these machines a bag is supported so as to receive the root end of the plant or tree and the packing materials which are pushed from the forming mechanism by a pusher element. It is obvious that both of the parties involved in this cause are in substance using a U-shaped form of pusher. This is said to be necessary to eliminate damage to the plant or tree being packaged.

Insofar as these machines are concerned, the greatest point of dispute centers around the plaintiff calling its package forming devices "troughlike means" and as stated by the defendant himself: "The propriety of the terms `trough' and `cover' as applied to defendant's machine is an issue in this suit." It particularly appears to the court that it is perhaps the main issue.

Plaintiff's exhibit 1 dated as of August 19, 1958, describing patent No. 2,847,808 (showing inventor to be J. W. Romine) in the first and second paragraphs thereof states as follows, to-wit:

"This invention relates to an improved tree bagging apparatus and more particularly to improved apparatus to facilitate the bagging of tree roots together with material to preserve the roots for shipment and storage.

One object of the instant invention is to improve tree root bagging apparatus. Another object is to provide improved apparatus for packing preservative material around the roots of trees and for automatically inserting the roots together with the preservative material into a bag or wrapper. Another object is to provide improved apparatus to support a tree, to compress preservative material around the roots thereof, and to insert the roots together with the preservative material into a wrapper while maintaining the roots and the preservative material in a shaped, lightly compressed mass."

Plaintiff's exhibit 10 dated as of September 26, 1961, describing patent No. 3,001,345 (showing inventor to be Z. C. Zeller) in the first paragraph thereof states as follows, to-wit:

"This invention is a bush packing machine. It consists generally of a pair of spaced shoes that are more or less semicylindrical in shape which makes it possible, when they are moved close together, to slip a bag or sack over the roots of a bush or shrub, along with the packing material used around the roots in shipping, confined between them. The device also provides structure for modifying the machine to adapt it to a variety of different sized bushes and shrubs. Once the bag or the like to cover the roots of a bush is embracing the outside of the shoes, an ejecting mechanism forces the bush along with the bag surrounding the roots off the shoes. As soon as the bush has been removed from the shoes, the shoes open up again to permit insertion of a fresh bush along with the packing material to go around its roots. A safety structure is included to prevent the shoes from coming together accidentally."

The plaintiff says in this case that the patent claims in suit are supported by the disclosure of his 808 patent and that all of the elements called for in the patent claims hereinbefore set out are present in defendant's accused machine resulting in a direct infringement by the defendant. The defendant, on the other hand, contends that his machine although producing the same end result as the machine of the plaintiff, differs in the means for attaining the result and in the manner in which the elements operate and cooperate to produce the result. He further asks declaratory relief by urging strenuously upon the court that claims 1, 2, 5, 6, and 7 of the 808 patent are completely anticipated and, therefore, invalid in view of the prior art patents and particularly as they relate to what is known as the Gribner and Field patents. By reason of all these contentions, the following exhibits are set forth and are found to be issued pursuant to the dates proclaimed upon the exhibits: A, B, C, D, and E.

EXHIBIT A

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

EXHIBIT B

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

EXHIBIT C

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

EXHIBIT D

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

EXHIBIT E

COPYRIGHT MATERIAL OMITTED

In previous paragraphs, the first paragraph of the application for patent filed in the United States Patent Office for the plaintiff's machine and the defendant's machine have been set forth. Insofar as the machines relating to prior art are concerned, the first two paragraphs of Exhibit D are as follows, to-wit:

"My invention relates to a plant packing machine and more particularly to a machine to facilitate the packing of various types of plants in individual containers and lends itself to plant packing with the least amount of time, effort and material.

The present method of plant packing is as follows: The plant to be packed is placed in a piece of paper or material large enough to contain its root and a packing material such as soil, peat, humus or other damp materials is added to the root and root wrapping materials. The root wrapping material is then tied at the top so as to include the root and the packing material. The plant with its roots wrapped is placed in an outer container such as a bag, box or other container and this package is also tied at the top to complete the process of packing."

The first two paragraphs of Exhibit E are as follows:

"This invention relates generally to the florists' art and particularly to a fern packing machine.

The main object of this invention is to provide an apparatus by means of which ferns may be economically packed in bags instead of the usual bales and boxes as is the common practice."

The pleadings and the method of proof in this case raise certain problems as to what the court should determine first or whether or not it is essential to determine certain of the contentions. The generally recognized rule that there can be no infringement if the patent is invalid is so generally accepted and so elementary that the citation of authority would seem to be of little consequence. In any event, it seems that certain findings as they relate to these exhibits should at this juncture of the proceedings be made.

In each claim in suit, the plaintiff's expert contends that the elements in the defendant's machine operate in the same way that the elements do in the plaintiff's disclosure within the meaning of the claim and perform the same purpose in the same way. It is necessary to state here and now that the findings of this court are that all the elements and functions of claims 1, 2, 5, 6, and 7 asserted in the Romine patent 2,847,808 are found in defendant's accused machine, patent 3,001,345. It consequently follows that there is no doubt in the court's mind that there is an infringement of the plaintiff's machine.

The defendant's expert contends that the mechanical elements of claims 1, 2, 5, 6, and 7 of the Romine patent 2,847,808 are not found in defendant's machine. With this premise the court cannot agree. Defendant's expert further contends all of the elements and functions called for by the claims in suit of the Romine patent 808 are found literally and in the same operating combination in the prior arts patents, Gribner 2,393,102 and Field 2,628,753. He also contends that the defendant's accused machine follows the teachings of the prior art of...