John Deere Company of Kansas City v. Graham

Decision Date13 July 1964
Docket NumberNo. 17441.,17441.
Citation333 F.2d 529
PartiesJOHN DEERE COMPANY OF KANSAS CITY, a Corporation, and Deere & Company, a Corporation, Appellants, v. William T. GRAHAM, and Graham Plow, Inc., Appellees.
CourtU.S. Court of Appeals — Eighth Circuit

S. Tom Morris, of Gibson, Ochsner, Harlan, Kinney & Morris, Amarillo, Tex., made argument for appellants and filed brief with Scofield, Kokjer, Scofield & Lowe, Kansas City, Mo.

Orville O. Gold, Kansas City, Mo., made argument for appellees and filed brief with Claude A. Fishburn, Kansas City, Mo.

Before VOGEL, MATTHES and BLACKBURN, Circuit Judges.

MATTHES, Circuit Judge.

This is an action for infringement of Patent No. 2,627,798 (hereinafter sometimes referred to as "Patent No. 798") issued to William T. Graham (plaintiff-appellee) on February 10, 1953, for a "Clamp for Vibrating Shank Plows." Graham Plow, Inc. (plaintiff-appellee) is a licensee under the patent. The trial court found the patent valid and that Claims 1 and 2 of the patent were infringed by defendants John Deere Company of Kansas City and Deere & Company. From the judgment entered pursuant to findings of fact and conclusions of law defendants (hereinafter called "appellants") have appealed.

Jurisdiction is established by virtue of 35 U.S.C. § 281 and 28 U.S.C. § 1338.

Appellants advance two basic contentions. (1) That Patent No. 798 is invalid for want of invention and that the finding for appellees on this issue is clearly erroneous because the trial court: (a) failed to give proper consideration and effect to the rule that the presumption of validity is weakened when pertinent prior art was not considered by the Patent Office; (b) applied an improper test of invention. (2) That even if validity of the patent is sustained, appellants' accused devices do not, within the rule or doctrine of equivalents, infringe Patent No. 798.1 If appellants' position as to contention (1) is sound, i. e., if the Graham patent is invalid for want of invention, there can be no infringement of its claims and we need not consider contention (2). Selmix Dispensers, Inc. v. Multiplex Faucet Co. (Inc.), 8 Cir., 277 F.2d 884, 886 (1960); Caldwell v. Kirk Manufacturing Company, 8 Cir., 269 F.2d 506, 507 (1959), cert. denied, 361 U.S. 915, 80 S.Ct. 260, 4 L.Ed.2d 185 (1959); Briggs & Stratton Corporation v. Clinton Machine Co., 8 Cir., 247 F.2d 397, 400, 401 (1957), cert. denied, 355 U.S. 914, 78 S.Ct. 344, 2 L.Ed.2d 274 (1958).

Appellees urge and rely upon the uncontroverted rule, established by statute and consistently recognized by the courts, that a patent shall be presumed valid and that the burden of establishing invalidity of a patent shall rest on the party asserting it. 35 U.S.C. § 282; e. g., Radio Corporation of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7-8, 55 S.Ct. 928, 79 L.Ed. 163 (1934); Steffan v. Weber Heating and Sheet Metal Company, 8 Cir., 237 F.2d 601, 602 (1956). It is equally clear, however, that the presumption of validity is a rebuttable one, that when substantial evidence attacking the validity of a patent is introduced, the question whether the patent constitutes an invention is for the court, Steffan v. Weber Heating and Sheet Metal Company, supra, 237 F.2d at 602; Continental Farm Equipment Co. v. Love Tractor, 8 Cir., 199 F.2d 202, 204 (1952), cert. denied, 345 U.S. 909, 73 S.Ct. 649, 97 L.Ed. 1344 (1953), and that the presumption of validity is weakened if applicable prior art is not considered by the Patent Office. L. S. Donaldson Company v. La Maur, Inc., 8 Cir., 299 F.2d 412, 420 (1962), cert. denied, 371 U.S. 815, 83 S.Ct. 27, 9 L.Ed.2d 57 (1962); Day-Brite Lighting, Inc. v. Sandee Manufacturing Co., 7 Cir., 286 F.2d 596, 597 (1960), cert. denied, 366 U.S. 963, 81 S.Ct. 1925, 6 L. Ed.2d 1255 (1961); Cornell v. Adams Engineering Company, 5 Cir., 258 F.2d 874, 875 (1958).

If, as urged by appellants, the trial court failed to apply the proper legal test or standard, it necessarily follows that its finding of patentability was induced by an erroneous view of the law, its finding is clearly erroneous, and the judgment based upon such finding cannot stand. Great A. & P. Tea Co. v. Supermarket Equipment Corporation, 340 U.S. 147, 153-154, 71 S.Ct. 127, 95 L.Ed. 162 (1950); Selmix Dispensers, Inc. v. Multiplex Faucet Co. (Inc.), supra, 277 F.2d at 886; Caldwell v. Kirk Manufacturing Company, supra, 269 F.2d at 508, 509.

This court has adhered to the position that since Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58 (1941), "the amount of originality and ingenuity, over and beyond novelty and utility, which will constitute invention necessary to sustain a patent for a combination of old elements such as we have here in a crowded art, has increased." Briggs & Stratton Corporation v. Clinton Machine Co., supra, (concurring opinion of Judge Sanborn, 247 F.2d at 401) and cases there cited. In Caldwell v. Kirk Manufacturing Company, supra, 269 F.2d at 509, Judge Sanborn again expressed the principle in this language:

"More exacting standards for determining patentable invention have been applied by the courts in recent years than was formerly the case. In Trico Products Corporation v. Delman Corporation, 8 Cir., 180 F.2d 529, 533, this Court said:
"* * * `The Supreme Court has, we think, raised the standards of originality necessary to sustain patents for improvements such as those involved in the instant cases, regardless of their usefulness or commercial success. Compare, Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523, and Temco Electric Motor Company v. Apco Manufacturing Company, 275 U.S. 319, 48 S.Ct. 170, 72 L.Ed. 298, with Cuno Engineering Corp. v. Automatic Devices Corp., supra, 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58.\'"

The same pronouncement appears in Steffan v. Weber Heating and Sheet Metal Company, supra, 237 F.2d at 604; Selmix Dispensers, Inc. v. Multiplex Faucet Co. (Inc.), supra, 277 F.2d at 887; and Crome & Company v. The Vendo Company, 8 Cir., 299 F.2d 852 (1952), where Judge Blackmun in his dissent observed, "Mechanical combination patents in this court have met with little recent success."

With these pronouncements clearly in mind, we turn to the factual setting of the case. Inasmuch as the trial court's Memorandum Opinion, Findings of Fact, and Conclusions of Law, W.D.Mo., 216 F. Supp. 272 (1963), adequately embody the general factual background, including the terms of the patent claims and other technical descriptions, we need here set forth only a condensed version of the facts.

Appellee Graham originally submitted twelve claims in his application to the Patent Office for a patent on a device which eventually was issued as Patent No. 798. The Patent Office rejected all twelve claims, partially on the grounds that some of them failed to patently distinguish from a prior patent issued to Graham — No. 2,493,811 (Patent No. 811) — and partially on the grounds of lack of invention. Graham then submitted two claims to be substituted for the original twelve, and these two claims were the basis for issuance of the 798 Patent.

Broadly stated, Patent 798 relates to the mounting of tools on a frame which is moved over the ground to break the soil — a process termed "chisel plowing." Appellee Graham Plow, Inc.'s predecessor manufactured and sold chisel plows wherein the upper forward portion of the shank was rigidly fixed to the plow beam by a rigid clamp. Because these rigid structures proved to be unsatisfactory due to their inability to withstand shocks when used for plowing in rocky country, Graham devised a spring clamp structure, and was issued a patent — No. 811 — on it in January, 1950. Graham Plow, Inc. has continued to manufacture and sell plows with spring clamps which embody the principle of the 811 Patent, but neither appellees, nor any licensee under them, has ever manufactured or sold a clamp embodying the 798 structure.

The 798 clamp — also a "spring clamp" — is used to connect the upper forward end of a resilient shank to a beam with the lower end of the shank carrying a chisel for plowing or other ground-working operations. The clamp includes a body portion movably attached to the beam with a rearward portion having a pivot pin on which is pivotally mounted a movable part with a plate portion extending forwardly or longitudinally of the normal direction of travel of the plow. The upper forward portion of the shank extends through a stirrup or loop element at the rear of the movable part and longitudinally beneath the plate portion of the movable part and is connected to the plate at the forward end thereof at a substantial distance from the pivot pin, whereby the shank and movable part pivot together about the axis of the pivot pin. A coil spring is arranged at the forward end of the body and, through a nut, washer and spring rod, acts on the shank and plate member to resiliently urge the forward end of the shank and plate upwardly toward the body of the clamp to a stop engagement therewith to normally hold the shank in normal position. In plowing operations, forces are exerted rearwardly and upwardly on the chisel or other ground-working tool, and when sufficient to overcome the forces applied by the spring the shank and movable part will pivot on the pivot pin with the forward end of the shank and plate moving downwardly against the tension of the spring. Forces in plowing hold the shank against the rear of the plate of the movable part and when said forces are removed or lessened, or the ground-working tool removed from the ground, the shank at the rear of the movable part is supported by a stirrup or loop that embraces the shank adjacent the pivot of the movable part. In plowing operations, if the ground-working tool strikes a rock or other obstruction, substantial shock and forces are applied to the shank,...

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