Jeoffroy Mfg. v. Graham

• Decision Date: 09 March 1955
• Docket Number: No. 15117.,15117.
• Citation: 219 F.2d 511
• Parties: JEOFFROY MFG., Inc. v. William T. GRAHAM. William T. GRAHAM v. JEOFFROY MFG., Inc.
• Court: U.S. Court of Appeals — Fifth Circuit

219 F.2d 511 (1955)

JEOFFROY MFG., Inc. v. William T. GRAHAM.

William T. GRAHAM v. JEOFFROY MFG., Inc.

No. 15117.

United States Court of Appeals, Fifth Circuit.

February 11, 1955.

Rehearing Denied March 9, 1955.

S. Tom Morris, Gibson, Ochsner, Harlan, Kinney & Morris, Amarillo, Tex., of counsel, for appellant.

Claude A. Fishburn, Kansas City, Mo., Clayton Heare and William Q. Boyce, Amarillo, Tex., Orville O. Gold, Kansas City, Mo., for appellee.

Before HUTCHESON, Chief Judge, RIVES, Circuit Judge, and DAWKINS, District Judge.

RIVES, Circuit Judge.

This suit was filed by Jeoffroy Mfg., Inc., on May 15, 1952, for declaratory judgment to determine whether a spring trip device used on its commercially manufactured plow infringes United States Patent No. 2,493,811, issued on January 10, 1950 as "Vibrating Plow and Mounting Therefor", and owned by William T. Graham.¹

By counterclaim, Graham charged Jeoffroy with infringement of its aforementioned patent, No. 2,493,811, and also with infringement of its United States Patent No. 2,627,798, issued February 10, 1953, and entitled "Clamp for Vibrating Shank Plows."

On a prior appeal involving the same parties and Graham's No. 2,493,811 patent, this Court affirmed with immaterial modification the judgment of the district court holding that patent valid and infringed by a device formerly manufactured and sold by Jeoffroy. See Jeoffroy Mfg., Inc., v. Graham, 5 Cir., 206 F.2d 772, certiorari denied 347 U.S. 920, 74 S.Ct. 515, 98 L.Ed. 1075.

The district court held patent No. 2,493,811 valid and infringed, and further held patent No. 2,627,798 invalid for lack of invention.² Jeoffroy has appealed only from that portion of the judgment holding the former Graham Patent infringed, while Graham has appealed from the holding as to invalidity of his later improvement patent for lack of invention. In view of this Court's decision on the prior appeal, no issue is presented as to the validity of patent No. 2,493,811, the basic question confronting us for determination being whether that patent is infringed by the accused device now manufactured and sold by Jeoffroy. However, Jeoffroy does defensively assert the alleged invalidity of Graham's improvement patent No. 2,627,798, both as anticipated in fact by the prior art and invalid in law for lack of invention, though it frankly concedes infringement of that patent by its new structure if the patent is valid.

I. Issue of infringement of Patent No. 2,493,811.

We think the basic structure, mode of operation and purpose of Patent No. 2,493,811, hereinafter simply referred to as the Graham 811 patent, is adequately set forth in our former decision and need not be restated here. Jeoffroy Mfg., Inc., v. Graham, supra, 206 F.2d at pages 773-774. Only claims 5 and 6 of this patent are here involved.³ Our inquiry on this infringement issue is further narrowed to a consideration of the specific language of claim 5, in view of Jeoffroy's admission that, while the bracket of its accused device exhibits some divergence in structure from the channel shaped formation of claim 6, it must nevertheless be conceded "that if we infringe Claim 5 we likewise infringe Claim 6."

We think the district court properly held that claim 5 could not be read in express terms upon the new Jeoffroy structure, since the Jeoffroy shank is not "between the fixed member and the moveable member of the bracket and in moveable engagement with the said parts." (See footnote 2, supra.) Like the district court, we reject as "too far fetched" Graham's insistence that the position of the Jeoffroy stirrup and yoke below the shank sufficiently locates the shank between at least a part of the movable member and fixed member so as to satisfy the literal language of the claim. Graham's insistence in this respect, like his further contention that the Jeoffroy structure meets the call of claim 5 for a shank "in movable engagement with the said parts" because of the looseness in the bolt fitting which connects the yoke, shank, and hinge and the small amount of play at the forward end of the shank between the stirrup and yoke, seems to us to stretch the express wording of claim 5 beyond the fair intendment of the language used in order to cover a substantially divergent structure. Irrespective, however, of our adoption of the district court's conclusion that no infringement exists in express terms, there nevertheless remains for our consideration the question of whether the trial court justifiably held claims 5 and 6 of Graham's 811 patent infringed under a broad application of the doctrine of equivalents.

We agree with the district court's statement that Graham's 811 patent "embodies a meritorius, yet not an outright pioneer invention," and that it is entitled to a range of equivalents consistent "with the context of the patent, the Patent Office history and the prior art and use." (Footnote 2, supra.) For reasons hereinafter stated, however, we disagree with its conclusion that the doctrine of equivalents should be broadly applied in this instance so as to bring the new Jeoffroy structure within the condemnation of claims 5 and 6.

If the litigation involving this patent were of first impression, we might appropriately concede that Graham's protection thereunder ought not be confined to the type structure disclosed by the patent claims and specifications. Under such circumstances, the trial court's finding of a mere transposition of members in the accused structure, with "no actual change of function", might be sufficient to warrant its finding of equivalence. Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097. However, we think the prior course of this litigation, in the Patent Office and in this Court, justly requires such limitation of the scope of the Graham 811 claims in issue as would necessarily prevent Graham from successfully urging infringement by the new Jeoffroy device.

In the former suit involving the old infringing Jeoffroy structure, Jeoffroy Mfg., Inc., v. Graham, supra, in order to distinguish the inventive concept embodied in his 811 patent from the prior art, Graham repeatedly and successfully urged upon the district court and this Court that his patent was not anticipated by a structure in which the shank is either directly pivoted on a fixed member,⁴ or is attached to a hinge member that is directly pivoted on the fixed member, yet he now contends that the new Jeoffroy structure, which we think embodies substantially the type attachment there distinguished by him, infringes this same patent. Moreover, Graham also testified in both the former and present suits that longitudinal motion of the shank relative to the hinge member was at least an important part of his invention,⁵ yet he now urges that the absence of such motion in Jeoffroy's new structure is practically immaterial and insufficient to avoid infringement.⁶ Furthermore, in filing application for his improvement patent, No. 2,627,798, with the Patent Office, which patent, if valid, both parties agree is infringed by the practically identical new Jeoffroy device, Graham contended that his shank was "rigidly secured" to the hinge member,⁷ yet he now asserts in order to sustain his present charge of infringement that the new Jeoffroy device, its structural twin and counterpart, is "in movable engagement" with the hinge member. Similarly, in prosecuting his new 2,627,798 patent application before the Patent Office he successfully urged, in effect, that patentable novelty and invention existed therein over his old 811 patent because, among other features, his different method of attaching the shank in his improvement patent, i.e. its location beneath the hinge member and rigid attachment thereto, resulted in a different mode of operation and distribution of stresses from that which had precipitated an inordinate amount of wear in the old sliding pivot and fulcrum assembly of his 811 patent,⁸ yet he now contends that the new Jeoffroy structure, which concededly duplicates the structure of his new patent, nevertheless retains that same degree of flexibility and method of operation of his old 811 patented structure as now fairly entitles him to prevail on the issue of infringement.⁹

Graham argues, in substance, that the claimed inconsistencies in his various positions before the Patent Office, the district court and this Court, are more illusory than real; that in defensively asserting these alleged inconsistencies Jeoffroy is seeking to avoid infringement on a new theory and technical basis by quoting prior statements and arguments in other independent and materially unrelated proceedings out of context, and either according them a binding effect never intended or interpreting the claimed structural and operational differences between Graham's 811 patent and the teachings of the prior art then relied upon as conclusive against infringement here, when at most the previously asserted distinguishing features were merely some among many which could have been urged to avoid anticipation and establish validity; that, in any event, the omission of these elements in the accused device is insufficient to avoid infringement under the applicable range of equivalents. In view of these contentions, we have re-examined Graham's arguments on the former appeal, as compared with those now urged by him, but we cannot agree that they are immaterial to his present charge of infringement, or that they do not effectively nullify the force which might otherwise flow from the trial court's finding and his argument that the new Jeoffroy device exemplifies a mere colorable departure in structure and method of operation from his 811 patent which is insufficient to avoid infringement. (Footnote 2, supra.) While we expressly disavow any intimation of actionable bad faith on the part of the patentee, Graham, in assuming positions for the purpose of avoiding anticipation and...