KIRK MANUFACTURING COMPANY v. Caldwell

• Decision Date: 17 June 1958
• Docket Number: Civ. No. 531.
• Citation: 163 F. Supp. 157
• Parties: KIRK MANUFACTURING COMPANY, a corporation, Plaintiff, v. Robert E. CALDWELL, an individual, and Caldwell Manufacturing Company, a corporation, Defendants.
• Court: U.S. District Court — District of Nebraska

163 F. Supp. 157

KIRK MANUFACTURING COMPANY, a corporation, Plaintiff, v. Robert E. CALDWELL, an individual, and Caldwell Manufacturing Company, a corporation, Defendants.

Civ. No. 531.

United States District Court D. Nebraska, Grand Island Division.

June 17, 1958.

Carter H. Kokjer and Thomas E. Scofield, Kansas City, Mo., for plaintiff.

John P. Jensen, Kenneth H. Dryden, Kearney, Neb., for defendants.

VAN PELT, District Judge.

Plaintiff, a Texas corporation, brings this action against the defendant, Robert E. Caldwell, a resident of Kearney, Nebraska, and the Caldwell Manufacturing company, a corporation incorporated under the laws of the State of Nebraska, charging defendants with infringement of its patent relating to an animal oiling and rubbing device, marketed under the trade name "Old Scratch". Defendant Caldwell, who manufactures and sells a device marketed under the trade name of "Itchit" and which device is used for the same general purposes as plaintiff's, denies infringement and also questions the patentability of plaintiff's device and the validity of plaintiff's patent.

Plaintiff is the holder by assignment of patent number 2,581,028 granted January 1, 1952 to William M. Kirk (see Exhibit 11). Defendant Caldwell was the original holder of patent number 2,706,465 (see Exhibit T) issued April 19, 1955 and patent number 2,785,653 (see Exhibit S) issued March 19, 1957, both of which have been assigned to the Caldwell Manufacturing Company, a Nebraska corporation.

Plaintiff's patent was applied for April 24, 1950. Caldwell's first patent was applied for March 18, 1953 when he was living at Lakin, Kansas; the second on March 11, 1955.

The case comes on for trial upon the issues relating to both validity and infringement. The questions relating to damages, if any, were reserved by the Court for later hearing if then material under the Court's findings.

The testimony supports the finding that William M. Kirk in late 1949 and early 1950 was a cow hand on a Texas ranch; that he worked on a device for applying oil and insecticides to cattle (see Exhibit 25 for picture of an early model). This was followed by another handmade model (see Exhibits 27 and 28) which he showed at the Amarillo Stock Show the week of March 7, 1950. In January or February, 1950 he had had a search made in the patent office and his patent application followed in April as above noted. At the Amarillo Show he made a few sales and within about 30 days thereafter was filling orders. Exhibit 29 is the first advertising folder put out by plaintiff.

Exhibit 21 shows sales by plaintiff of both his cattle and hog oilers. It shows sales in nine months of 1950 of 740 units; in eight months of 1951 of 2,851 units; in the fiscal year ending August 31, 1952 of 3,528 cattle oilers. Since that time the exhibit shows substantial sales altho, except for 1955, declining in number. The gross sales have ranged from a low of $106,130.39 the first year to a peak of $493,675.63. Public acceptance of the Kirk device was shown not only by the sales just mentioned and by items in local newspapers in Texas including an item in the Amarillo Register (Exhibit 13) and in the Houston Chronicle (see Exhibit 15), but also in national magazines (see Time Magazine April 9, 1951, Exhibit 14; Colliers Nov. 22, 1952, Exhibit 13). The Court finds from the evidence that the Kirk device did fill an existing need and has received public acceptance.

Robert E. Caldwell operated a machine shop in Caldwell, Kansas until he moved to Lakin, Kansas in 1945. He moved to Kearney, Nebraska, in 1953 and early 1954. About the middle of 1951 he had worked out a unit relating to an oiling device for cattle and had a search made on it. Later he applied for and received the first of the patents above numbered.

On direct examination Caldwell denied ever seeing a Kirk machine prior to 1953. He testified that he had seen a Cherokee Rubbin' Post made by Vassar (see Exhibit L), in 1952 and sold some of them while he was working on his device. The evidence supports the finding that in March, 1951 plaintiff established a Mr. Mackey as its dealer in Lakin. He was sold and furnished 14 "Old Scratch" devices on March 6, 1951. The evidence shows that in June, 1951 Kirk called Caldwell on the telephone. After that conversation Caldwell went to Mackey's store to see the "Old Scratch" unit. A few days before, when driving down the street, he saw a machine there but hadn't looked it over and didn't know who made it. The time of the telephone conversation becomes important because Mr. Caldwell maintains that it was in 1952. Mr. Kirk testifies that he closed Mackey out as an agent in 1951. It is the Court's belief from all the evidence, and the Court finds, that Mr. Caldwell examined an "Old Scratch" machine in 1951 and prior to the time of filing the application on which his first patent was based.

In Caldwell's first device he used washers and not a coil spring on the catenary and had a diaphragm pump at the bottom of the reservoir rather than in its present location. The evidence is in conflict on whether Caldwell sold any devices using washers rather than the coil spring. On cross-examination he was asked:

"Q. Did you ever sell any with the washers? A. Not to my knowledge, sir. There could or could not be. I don't know for sure." (R. 310)

His deposition was then used for impeachment purposes:

"Q. `Answer: The ones we sold was a steel washer.

"`Question: That is, with the circular shape? Answer: Yes, sir.

"`Question: And how long did you sell those? Answer: Until November or December of 1951.

"`Question: And when did you start selling them, about as best as you can recollect? Answer: I would say April.

"`Question: From April to November of 1951 or December? Answer: Yes, sir.'" (R. pp. 311, 312)

The Court finds that the first machines sold by the defendant used washers on the catenary.

Infringement

Does Caldwell's device infringe the Kirk patent? In discussing this point the Court should perhaps first review the law on the subject.

The United States Supreme Court has said:

"* * * generally speaking, one device is an infringement of another `if it performs substantially the same function in substantially the same way to obtain the same result. * * * Authorities concur that the substantial equivalent of a thing, in the sense of the patent law, is the same as the thing itself; so that if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.' Union Paper-Bag Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935. And see Elizabeth v. Pavement Co., 97 U.S. 126, 137, 24 L.Ed. 1000. That mere colorable departures from the patented device do not avoid infringement, see McCormick v. Talcott, 20 How. 402, 405, 15 L.Ed. 930." Sanitary Refrigerator Company v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147.

More recently the Court has not only in effect re-examined and approved the Refrigerator Company case but has outlined the path for a trial judge to follow:

"In determining whether an accused device or composition infringes a valid patent, resort must be had in the first instance to the words of the claim. If accused matter falls clearly within the claim, infringement is made out and that is the end of it. But the courts have also recognized that to permit imitation of a patented invention which does not copy every literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such a limitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of law. One who seeks to pirate an invention, like one who seeks to pirate a copyrighted book or play, may be expected to introduce minor variations to conceal and shelter the piracy. Outright and forthright duplication is a dull and very rare type of infringement. To prohibit no other would place the inventor at the mercy of verbalism and would be subordinating substance to form. It would deprive him of the benefit of his invention and would foster concealment rather than disclosure of inventions, which is one of the primary purposes of the patent system." Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 855, 94 L.Ed. 1097, 1099, 1101-1102.

Judge Parker, speaking for the Court of Appeals for the Fourth Circuit, in Oates v. Camp, 83 F.2d 111, 115, said

"Certainly one who * * * takes the heart of an invention cannot escape liability for infringement by such slight changes in form and such use of obvious equivalents. As was said by Mr. Justice Curtis speaking for the Supreme Court in Winans v. Denmead, 15 How. 330, 342, 14 L.Ed. 717:

"`It is only ingenious diversities of form and proportion, presenting the appearance of something unlike the thing patented, which give rise to question; and the property of inventors would be valueless, if it were enough for the defendant to say, your improvement consisted in a change of form; I have not taken that, and so have not infringed. The answer is, my improvement did not consist in a change of form, but in the new employment of principles or powers, in a new mode of operation, embodied in a form by means of which a new or better result is produced; it was this which constituted my invention; this you have copied, changing only the form.'"

In the Eighth Circuit, it was said in Montgomery Ward & Co. v. Clair, 123 F. 2d 878, 881, in laying out the pattern to be followed in determining infringement:

"It is settled that `to sustain the charge of infringement the infringing device must be substantially identical with the one alleged to be infringed in (1) the result attained; (2) the means of attaining that result;

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