Joy Mfg. Co. v. Ingersoll-Rand Co.

• Decision Date: 05 December 1977
• Docket Number: Civ. A. No. 74-321-CH.
• Citation: 441 F. Supp. 1331
• Parties: JOY MANUFACTURING COMPANY, Plaintiff, v. INGERSOLL-RAND COMPANY, Defendant.
• Court: U.S. District Court — Southern District of West Virginia

441 F. Supp. 1331

JOY MANUFACTURING COMPANY, Plaintiff, v. INGERSOLL-RAND COMPANY, Defendant.

Civ. A. No. 74-321-CH.

United States District Court, S. D. West Virginia.

December 5, 1977.

Raymond G. Hasley, Pittsburgh, Pa., Charles A. Tutwiler, Welch, W. Va., for plaintiff.

Howard R. Klostermeyer, Spilman, Thomas, Battle & Klostermeyer, Lee F. Feinberg, Charleston, W. Va., John M. Calimafde, Hopgood, Calimafde, Kalil, Blaustein & Lieberman, Robert A. Schroeder, New York City, for defendant.

OPINION

HADEN, District Judge.

In this action the Plaintiff, Joy Manufacturing Company, has charged Defendant, Ingersoll-Rand Company, with infringement of U. S. Letters Patent 3,322,378 which describes a tripod drill support. Plaintiff, the owner of the patent-in-suit, seeks a judgment that Plaintiff's patent is valid and has been infringed, and asks that Defendant be enjoined against further infringement and that an accounting be held to determine damages. Defendant claims that the patent-in-suit is invalid and denies infringement.

Plaintiff is a Pennsylvania corporation, with its principal office at Pittsburgh, Pennsylvania. Plaintiff also is qualified to do business in the State of West Virginia. Defendant is a New Jersey corporation and is qualified to do business in the State of West Virginia. There is no dispute as to the Court's jurisdiction of this action under 28 U.S.C. § 1338(a), and venue is properly laid in this District under 28 U.S.C. §§ 1391(c) and 1400(b).

Both Plaintiff and Defendant manufacture rock drilling machines. The Plaintiff was assigned U. S. Patent No. 3,322,378, originally issued to C. T. Thompson, a former employee of the Plaintiff.

U. S. Patent 3,322,378 is for a tripod drill support system. The claimed novelty of this patent is the tripod support or mount which is comprised of two hydraulic cylinders (extensible legs) attached to a drill support tower to form a tripod. The hydraulic cylinders are attached at one end to the tower and at the other end to the frame of the drilling device by universal joints. The tower is likewise attached to the frame by a universal connection. The universality of the joints thus enables the support tower to move in any conical position; i. e. it can combine both forward and lateral movement in any desired position.

The broadest claim of the Thompson patent is claim one, which describes a tripod support for a drilling device comprised of a mobile support having an elongated generally horizontal frame; an elongated trunion member having a bottom end thereof universally pivotally mounted on a forward portion of said frame and extending upwardly therefrom; a pair of extensible leg members having respective one ends universally pivotally secured to rearward portions of said frame transversely spaced from each other, other ends of said leg members being universally pivotally secured to said trunion member at points upwardly spaced from said frame; an elongated guide frame means for slidably mounting said guide frame on said trunion member for longitudinal movement there-along.

Claim two is more limited in that it calls for a "first power means", which is a drill motor or hammer, and a "second power means", which is a mechanism for moving the drill motor itself.

Claim three merely adds to claim one the limitation that the extensible legs (hydraulic cylinders) are attached to upper portions of the tower.

Claim four adds to claim one the limitation that the guide frame (part of the tower) is twice as long as the trunion (also part of the tower).

This is an action for infringement of the patent held by the Plaintiff, but it has been stipulated by the Defendant, Ingersoll-Rand Company (hereinafter cited as IR) "that all of the elements in claim one with the exception of the elongated generally horizontal frame finds response in the accused machine, the CM-1000." Thus, IR has admitted infringement if this Court determines that the CM-1000 has an elongated generally horizontal frame, as does the patent-in-suit.

After reviewing the evidence and the exhibits submitted by both parties, the Court finds that the Defendant's CM-1000 does incorporate an elongated generally horizontal frame as described in claim one of the Thompson patent. Thus, if the Thompson patent is found to be valid then the Defendant will have infringed the Plaintiff's patent.

The Court also finds that the Defendant knew of the Plaintiff's patent on its drilling device called the Joy "Mustang"; and that the Defendant intentionally sought to compete with this drilling device of the Plaintiff by manufacturing a similar such device of its own. Such intent is demonstrated in Defendant's Development Memorandum (Plaintiff's Exhibit 14B), where it is demonstrated that Defendants desired a drill which would compete with the Joy "Mustang". The Development Memorandum indicates that the Defendant investigated the design of the Plaintiff's "Mustang" drill. Defendant later designed a tripod drill support system which admittedly is the same as the Plaintiff's "Mustang". Such evidence creates the compelling inference, which the Court accepts, that the Defendant intentionally copied the patent of the Plaintiff. Thus, if the patent of the Plaintiff is valid, then the Defendant has intentionally infringed such patent.

Once a patent is granted by the U. S. Patent Office, it is presumed valid under 35 U.S.C. § 282. But this presumption of validity is weakened where relevant prior art was not considered by the patent examiner. Christopher J. Foster, Inc. v. Newport News S. and D. Dock, 531 F.2d 1243 (4th Cir. 1975); and Blumcraft of Pittsburgh v. Citizens National Bank, 407 F.2d 557 (4th Cir.), cert. denied, 395 U.S. 961, 89 S.Ct. 2103, 23 L.Ed.2d 747 (1969). Since relevant prior art was not considered by the patent examiner, the presumption of validity of the Thompson patent is weakened.

The granting of patents is not to be freely given. Only inventions and discoveries which further human knowledge and are new and useful, justify the special inducement of a limited private monopoly. Thus Courts are called upon to scrutinize any invention claimed to be patentable. Graham v. John Deere Company, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

The Defendant claims that the Thompson patent is invalid because such a device would have been obvious to a person possessing ordinary skill in the art of designing rock drilling devices. Such defense is codified under 35 U.S.C. § 103, which states:

"A patent may not be obtained . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

Obviousness is a question of law determined against the factual background of the state of the prior art and claimed improvement on it. Deering Milliken Research Corporation v. Beaunit Corporation, 538 F.2d 1022 (4th Cir. 1976), citing Stamicarbon, N. V. v. Escambia Chemical Corporation, 430 F.2d 920 (5th Cir.), cert. denied, 400 U.S. 944, 91 S.Ct. 245, 27 L.Ed.2d 248 (1970). The factual inquiries required by Section 103 are stated in Graham v. John Deere Company, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). The trial court must (1) determine the scope and content of the prior art; (2) ascertain the differences between the prior art and the claims at issue; (3) and resolve the level of ordinary skill in the pertinent art.

IR in asserting its defense of obviousness, introduced into evidence three prior patents involving tripod drill support devices. Because the claim of the Thompson patent involved a tripod drill support device, the three prior patents introduced by IR are relevant prior art, as would be any other prior patent involving tripod drill supports.

The Defendant introduced into evidence U. S. Patent No. 3,035,646, which involved a crane type pile driving apparatus. (See Defendant's Exhibit 2 and 2a) Patent 3,035,646 was issued to John Ragnar Johannsson. The Johannsson patent incorporated struts (extensible arms) that "are connected at their upper ends by universal joints to a bracket . . ." The lower ends of the struts (extensible arms) "are pivotally connected by pivot pins disposed at right angles to the axle, so that the connections of the struts to the axle form universal joints." (See Defendant's Exhibit 2, page 3, lines 25 to 35.) Thus the connection of the extensible arms in the Johannsson drill support were exactly the same as those of the patent-in-suit, both being universally connected at each end. Defendant's expert also testified that the Johannsson machine consisted of a tripodal support with...