International Harvester Co. v. Deere & Co.

• Decision Date: 11 October 1979
• Docket Number: No. 79-4020.,79-4020.
• Citation: 478 F. Supp. 411
• Court: U.S. District Court — Central District of Illinois
• Parties: INTERNATIONAL HARVESTER COMPANY, Plaintiff, v. DEERE & COMPANY, Defendant.

478 F. Supp. 411

INTERNATIONAL HARVESTER COMPANY, Plaintiff, v. DEERE & COMPANY, Defendant.

No. 79-4020.

United States District Court, C. D. Illinois.

October 11, 1979.

Howard W. Clement and John L. Cline, Chicago, Ill., Stuart R. Lefstein, Rock Island, Ill., F. David AuBuchon, International Harvester Company, Chicago, Ill., for plaintiff.

Virgil Bozeman and John V. Patton, Moline, Ill., Robert H. Fraser and Louis A. Mok, Los Angeles, Cal., H. Vincent Harsha and Raymond L. Hollister, Deere & Company, Moline, Ill., for defendant.

DECISION AND ORDER ON MOTION FOR SUMMARY JUDGMENT

ROBERT D. MORGAN, Chief Judge.

This cause arises upon a complaint by plaintiff, International Harvester Company, hereinafter IH, against defendant, Deere & Company, hereinafter Deere, for a declaratory judgment that IH's CX-41 corn head does not infringe any claim of Deere's U.S. Patent No. 3,589,110.¹

The complaint is intimately related to a prior suit for infringement of that patent, wherein Deere was plaintiff and IH was defendant, in which this court entered a judgment holding the 110 patent to be valid and, in part, infringed by the accused device being then manufactured and marketed by IH. Deere & Co. v. International Harvester Co., 460 F.Supp. 523 (S.D.Ill.1978).

As a response to that decision, IH undertook to develop a corn head which would not infringe the 110 patent claims. The complaint alleges that IH has designed, developed and field tested its CX-41, that it has targeted commencement of production for the early part of 1981, that on April 5, 1979, it provided to Deere a statement defining the details of the CX-41 construction, and drawings showing the drive elements of that unit, and that it requested Deere's assurance that the CX-41 embodiment does not infringe the patent. It is further alleged that Deere's response to that request was to the effect that Deere would require the payment to it by IH of substantial sums of money before IH would have the right to produce and sell the CX-41. That controversy precipitated this complaint.

The cause is now before the court on IH's motion for summary judgment that the CX-41 does not infringe any claim of the patent.² It is Deere's position that there remain genuine issues as to material fact for decision, and that summary judgment should be denied.

IH predicates its motion upon its position that facts admitted by Deere in discovery compel the finding that the CX-41 does not infringe the patent. IH also contends that Deere is estopped by its position taken to sustain the validity of the patent in the prior case to now assert that the CX-41 does infringe.

The relevant language of the patent claims bearing upon the merits of this motion was not directly in issue before this court in the prior case. It was there shown, and not seriously contested, that the gear case, drive gear, and drive train of the accused device were literal copies of the same components as claimed in the patent.

The patent relates to the gear drive and support for a corn-harvesting row unit. In essence, a row unit is comprised of two deck plates with a restricted passage therebetween, two gathering chains and two harvesting rolls. The gathering chains are opposed parallel to each other on either side of the restricted passage between the plates. They function to draw the stalks of corn into and along the length of that passage. The harvesting rolls are likewise opposed on either side of the passage. They function to draw the stalks downward through the passage to draw the ears of corn against the plates and thereby to snap and remove the ears from the stalk for processing by the corn combine. All of such mechanism is old in the art, as is the use of drive gears and drive trains to operate the gathering chains and the rolls. The patent was held valid by reason of the fact that the inventors had rearranged essentially old elements in a non-obvious combination which achieved a result and effect for which practitioners in the art had long striven.

Claims 1, 9, and 10 of the patent are independent claims. All others depend upon one of those three claims. Of critical inquiry in this cause are limitations contained in the independent claims, as follows:

Claim 1: A gear housing, supported upon a transverse beam, "with a gear train within each gear housing including a main drive gear concentric with the drive shaft and rotatable relative thereto."³

Claim 9: The same gear housing, with "a gear train within the gear housing including main drive gear means concentric with the drive shaft and drivingly connected therewith . . .."⁴

Claim 10: The same gear housing, with a "drive mechanism within the gear housing including a gear concentric with the shaft with means interjoining the shaft and gear for effecting rotation in unison."⁵

Mr. Shindelar, one of the inventors, testified in the prior case that the object in developing the patented concept was to achieve a compact design for the row unit, and that the achievement in that respect exceeded the expectations of the inventors. He defined one of the most significant results of the inventive design as the extreme compactness of the unit. He testified that lateral compactness was achieved by the use of a single drive gear, which enabled the inventors to employ smaller gears and other components of the drive mechanism. The single drive gear "enables us" to attain "the very narrow width." As to the independent claims, he testified that the language above quoted from claims 1, 9 and 10 would not permit more than one drive gear and one gear train. He distinguished the Braud exhibits⁶ for the reason that Braud employed either three or four drive trains, each motivated by a separate drive gear. It was his position that the result of lateral compactness achieved by the inventors could not be achieved by the Braud device because of the multiple drive gears. In its findings of fact proposed to the court in the earlier case, Deere stated that the use of a single drive gear and a single drive train permitted the achievement of lateral compactness. In the same context, Deere distinguished the Braud exhibits and the Argentine patent⁷ in evidence because each employed four gear trains with four drive gears affixed to the main drive shaft. It stresses the single drive gear as the critical element of the claims in its briefing filed with the Court of Appeals.⁸

At the time when the prior decision was rendered, the concept of synergism was deemed to be a determinative factor upon the issue of obviousness under Section 103. Although an inquiry as to synergistic effect is not now a controlling factor,⁹ what was said in that context does accurately summarize the thrust of the claimed invention as presented to the court by Deere, to-wit:

"* * * However, synergistic effect is achieved by reason of the fact that old elements were combined in a manner which had the effect of rewriting the book on the prior art. The gear housing is, at once, the lubricated environment for the gear train, the whole support for the row unit * * *, and it provides the sole support for the row unit as a part of the integrated corn head. The combined effect is the creation of a totally new concept. The effect was to avoid trusses or other supporting means for the row unit and to achieve lateral and verticle compactness of the unit itself." 460 F.Supp. at 533-534.

The achievement of lateral compactness was stressed by Deere as being of value, in that it facilitated the lateral adjustment of the row units on a corn head to accommodate divergent spacing between rows of corn.¹⁰ The CX-41 employs three separate drive gears mounted on a single hollow shaft. One drives the gathering chain to the right side of the unit. One drives the opposed gathering chain. The third is a composite gear which drives both of the harvesting rolls.¹¹

It is apparent that there is no literal infringement of the patent in the CX-41. Were there any room for doubt upon that score in view of the prior decision, Mr. Shindelar testified on his discovery deposition that the independent claims do not read literally upon the CX-41, because the CX-41 does not have a main drive gear. Thus, the ultimate question is that of equivalents.

Before reaching that ultimate issue, it is necessary to determine whether there is any genuine issue as to any material fact which remains for decision. In addition to the background facts of the earlier case, IH relies upon the depositions of Mr. Shindelar and Mr. Schreiner to show that there remains no material question of fact and that there is no infringement.

Upon his deposition, Mr. Schreiner described the CX-41 as having four gear sets, with the hollow shaft driving four drive gears. He further stated that he found nothing in the CX-41 equivalent to the main drive gear limitation of the patent claims, and that the lateral compactness of the patented combination could not be achieved by four drive gears on a single shaft. In that context, he stated that the single drive gear is a significant element which permits lateral compactness.

Mr. Shindelar, upon his deposition, characterized the CX-41 as having a main drive gear assembly, but not a main drive gear. He described that assembly as four drive gears with a single power input. His testimony upon the question of equivalents is somewhat ambiguous. He first said that the mounting of the four gears upon a hollow shaft with power supplied to the whole assembly was the equivalent of claims 1 and 9 of the patent. He then modified his stance by the statement that the CX-41 unit includes all features and advantages of the patentable invention except lateral compactness. He further stressed that modification by admitting that the hollow shaft of the CX-41 is not the equivalent of a main drive gear in terms of achieving lateral compactness of the unit.

Deere's position that genuine issues of fact do remain for decision rests largely upon the affidavits of...