Harrington Mfg. Co., Inc. v. Powell Mfg. Co., Inc.

• Decision Date: 27 November 1985
• Docket Number: No. 82-8-Civ-2.,82-8-Civ-2.
• Citation: 623 F. Supp. 872
• Court: U.S. District Court — Eastern District of North Carolina
• Parties: HARRINGTON MANUFACTURING COMPANY, INC., Plaintiff, v. POWELL MANUFACTURING COMPANY, INC., Defendant.

623 F. Supp. 872

HARRINGTON MANUFACTURING COMPANY, INC., Plaintiff, v. POWELL MANUFACTURING COMPANY, INC., Defendant.

No. 82-8-Civ-2.

United States District Court, E.D. North Carolina, Elizabeth City Division.

November 27, 1985.

Harvey B. Jacobson, Jr., Fleit, Jacobson, Cohn & Price, Washington, D.C., for plaintiff.

George M. Sirilla, Cushman, Darby & Cushman, Washington, D.C., for defendant.

ORDER

TERRENCE WILLIAM BOYLE, District Judge.

This is an action for injunctive relief and damages arising out of defendant's alleged infringement of four patents owned by Harrington Manufacturing Company, Inc., (hereinafter "Harrington"). All four patents are directed to various features of automatic tobacco harvesters, or tobacco combines. The matter presently before the court involves only United States Pickett, et al Patent No. 3,507,103 entitled TOBACCO HARVESTER (hereinafter "Pickett Patent"). The defendant, Powell Manufacturing Company, Inc. (hereinafter "Powell"), has moved for partial summary judgment alleging that claim 8 of the Pickett Patent is invalid.

The record shows that the application for the Pickett Patent was filed in the United States Patent and Trademark Office on October 2, 1967 and was granted April 21, 1970. There are three inventors listed in the Pickett Patent; William L. Pickett, Linwood J. Cooper, and Joseph J. Harrington. The Pickett patent is essentially a mechanized tobacco harvester that channels each tobacco stalk into a defoliation head where rubber-like blades, twisted into spiral shapes, rotate and strip, wipe or rub the leaves off the stalk in a downward wiping action. The leaves then fall on belts and then are conveyed to boxes located at the rear of the machine. What sets the Pickett patent apart from all previous attempts at mechanized harvesters, however, is its ability to accommodate tobacco stalks that are out-of-line or dog-legged and, to assist the driver in tracking the row of tobacco being harvested. This is accomplished by suspending the defoliator heads from the upper frame structure, thereby permitting the defoliation heads to swing laterally. Prior to the Pickett harvester the defoliator heads and guide elements on other harvesters were fixed on the frame so that any stalk that was out of line was knocked down and broken by the mechanized harvester. This so-called "swinging head" feature of the Pickett patent is found in claim 8 and distinguishes this harvester from the design of predecessors.

Powell contends that the Pickett patent is invalid under 35 U.S.C. § 102(b) which reads as follows:

A person shall be entitled to a patent unless —

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States...

Powell's invalidity argument under § 102(b) is predicated upon the ground that more than one year prior to the date upon which the patent application was filed the tobacco harvester, including the swinging head feature described in claim 8, allegedly (1) was in public use; (2) was on sale within the meaning of § 102(b); and (3) was described in a printed publication with sufficient clarity to enable one skilled in the art to reproduce the harvester. Anyone of these allegations, if proven, would serve to invalidate the patent.

There is no dispute that the patent application was filed on October 2, 1967, therefore making the critical date for § 102(b) purposes October 2, 1966. Powell's allegations of public use and "on sale" activities pertaining to the Pickett patent before the critical date center around an article written by Clyde Osborne about the harvester that appeared in the September 26, 1966 issue of The Charlotte Observer. A copy of this article has been submitted as evidence by Powell.

Powell has also submitted as evidence a deposition of Clyde Osborne taken on March 18, 1985, in which he testified, in part, as follows:

(1) That prior to writing the September 26, 1966 article, Mr. William Pickett invited him to visit Pickett's tobacco farm in Scotland Neck, North Carolina. Osborne's understanding was that Pickett wanted to demonstrate his newly developed tobacco harvester and that Pickett wanted publicity for this harvester.

(2) At Pickett's farm, Osborne watched the Harvester in operation for a half-hour and took photographs.

(3) That Osborne saw the defoliation head of the harvester in operation and that it channeled each stalk into the machine where the leaves were rubbed off.

(4) That Osborne wrote the September 26, 1966 article after returning from Pickett's farm and that the article was based on the interview and demonstration with Pickett.

(5) That during Osborne's interview with Pickett, Pickett told him that he thought the Harvester would be very helpful to farmers in the region and the "machine will cost between $6,000 and $7,000".

Powell has also submitted an affidavit of Mr. Robert Wilson, President of Powell, that states that prior to October 2, 1966 and after he read the Osborne article of September 26, 1966, he visited Mr. Pickett. Further, Mr. Wilson states that Pickett "allowed me to freely examine his tobacco harvester" and "let me observe it operating in a tobacco field removing tobacco leaves." There is also testimony that Pickett demonstrated the harvester to both Dr. William Splinter and Dr. Charles Suggs, two professors who did early research in an attempt to build a mechanized tobacco harvester.

Claim 8 of the Pickett patent has previously been held valid in Harrington Manufacturing Company, Inc., v. Taylor Tobacco Enterprises, Inc., 664 F.2d 938 (4th Cir.1981). Powell's basis for the present allegation of invalidity of the Pickett patent is new evidence that was not known by the court or the Taylor defendants in the prior litigation. This new evidence centers around The Charlotte Observer article written by Clyde Osborne. A prior judgment of patent validity against an unrelated defendant does not collaterally estop another defendant from attacking the validity of that patent in a subsequent law suit. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971). This is particularly true "when additional, prior or other evidence on patentability is produced in the subsequent suit." Stevenson v. Sears, Roebuck & Company, 713 F.2d 705, 711, n. 5 (Fed.Cir.1983). Therefore, while the court notes that the Pickett patent has previously been held valid, the weight given to such holding is greatly diminished in light of the new evidence in this case.

"Summary judgment is as appropriate in a patent case as in any other case." Barmag Barmer Maschinenfabrick AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed.Cir.1984). For summary judgment to be appropriate there must be no genuine issue as to the material facts in the case (emphasis added). The party opposing summary judgment may not merely rely on its denials and the pleadings, but must come forward with some admissible evidence in an offer of proof to challenge the movant's claim of undisputed material facts. (Rule 56(e) F.R.Civ.P). If the party resisting summary judgment fails to draw out a conflict in the evidence on the material facts, then summary judgment will lie. Mere denials or conclusory statements are insufficient. Barmag Barmer, supra, at 836; Union Carbide Corporation v. American Can Corporation, 724 F.2d 1567, 1571 (Fed.Cir.1984).

When, as in this case, a defendant in an infringement suit challenges the patent's validity on the ground that the claimed invention was in public use prior to one year before the patent was applied for, that defendant has the burden of showing by clear and convincing evidence that the invention was, in fact, in public use. "Even a single public use, or only a placing on sale is sufficient to invalidate a patent under 35 U.S.C. § 102(b)." Minnesota Mining & Manufacturing Company v. Kent Industries, Inc., 409 F.2d 99 (6th Cir.1969); Tool Research & Engineering Corporation v. Honcor Corporation, 367 F.2d 449 (9th Cir.1966), cert. denied, 387 U.S. 919, 87 S.Ct. 2032, 18 L.Ed.2d 972 (1967). Once a prima facie case of such use has been made out, however, the burden of going forward with the evidence shifts to the plaintiff, who must then show that the use was an experimental use. Hycor Corporation v. Schlueter Company, 740 F.2d 1529, 1535 (Fed.Cir.1984); TP Laboratories, Inc., v. Professsional Positioners, Inc., 724 F.2d 965, 971 (Fed.Cir.1984). On a motion for summary judgment once the "experimental use defense is raised by the patent holder, the burden is on the alleged infringer to demonstrate that no genuine issue of material fact exists with respect to such defense and that he is entitled to judgment as a matter of law." Watts v. University of Delaware, 622 F.2d 47, 51 (3rd Cir.1980), quoting Long Corporation v. Raymond International, 622 F.2d 1135, 1144 (3rd Cir.1980). See also Kelley Manufacturing Company v. Lilliston Corporation, 180 U.S.P.Q. 364 (E.D.N.C.1973).

In this case the fact that William Pickett demonstrated the Pickett harvester to Mr. Osborn, Mr. Wilson and Drs. Splinter and Suggs, on separate occasions prior to the critical one year period (i.e., October 2, 1967), is uncontested. There is no denial by plaintiff's witnesses that the tobacco harvester was shown to these individuals and that it was the subject of Mr. Osborne's article. However, the plaintiff asserts that the co-inventors were not aware of such demonstrations. Harrington's principal contention is that these incidents did not constitute public use, but rather, experimental use. Further, Harrington argues that the harvester shown by Mr. Pickett was only a second prototype and it was not until the third prototype proved satisfactory that the inventors applied for a patent.

The law is clear that "In the absence of any agreement to...