Laser Alignment, Inc. v. Woodruff & Sons, Inc.
Decision Date | 22 January 1974 |
Docket Number | No. 72-1254,72-1255.,72-1254 |
Citation | 491 F.2d 866 |
Parties | LASER ALIGNMENT, INC., and Contractors Automated Devices, Inc., Plaintiffs-Appellants, v. WOODRUFF & SONS, INC., and Roy J. Woodruff, Defendants-Appellees. |
Court | U.S. Court of Appeals — Seventh Circuit |
COPYRIGHT MATERIAL OMITTED
Donald H. Zarley, Des Moines, Iowa, Lloyd A. Heneveld, Grand Rapids, Mich., for plaintiffs-appellants.
Eugene C. Knoblock, South Bend, Ind., for defendants-appellees.
Before CLARK,* Associate Justice, and FAIRCHILD and PELL, Circuit Judges.
Plaintiffs Laser Alignment, Inc., (Alignment) and Contractors Automated Devices, Inc., (Contractors) brought this patent infringement action against Woodruff & Sons, Inc., (Woodruff) and Roy J. Woodruff, alleging infringement of Trice Patent No., 3,116,557, owned by Contractors and licensed exclusively to Alignment. The Trice patent, issued January 7, 1964, and entitled "Method and Means for Laying Sewer Pipe," involves, in the words of the patent, "a method and means for laying said pipeline on a selected grade line by resort to establishing a light beam line of reference." The complaint sought a permanent injunction, triple damages, and costs. In their answer and counterclaim, the defendants challenged both validity and infringement. They also asserted misuse of the patent as a defense.
After a full trial on the merits, the district court held: (1) the Trice patent is valid; (2) the defendants had not infringed the patent; and (3) the plaintiffs had not misused the patent. Plaintiffs appeal the finding of noninfringement. Defendants appeal the court's resolution of the other two issues.
Prior to the development of Trice's method for laying underground pipe, pipes usually had been laid by the batterboard or the offset batterboard methods. Both traditional methods required supporting rigid boards on support stakes at predetermined altitudes and strings tied between the stakes from which measurements were taken to align properly the sections of pipe. This procedure, despite being time-consuming and costly, was often inaccurate.
James Trice, a pipe-laying entrepreneur discomfited by the unsatisfactory prevailing methods, experimented with improvements. Eventually, he decided that the use of a collimated beam of light smaller than the inside diameter of the pipe to be laid was a better method. He thereupon developed a projector to create the parallel light rays. The apparatus projected the collimated beam into a ring-shaped target housing on which there was a piece of frosted glass with cross hairs thereon. Using his light projector and target, he was able to lay and align sections of pipe.
After receiving his patent, Trice set up a corporation, Contractors Automated Devices, Inc., which manufactured several systems called the "Beam-A-Ligner." Three contractors bought these systems and successfully practiced the method by the use of the equipment.
At about the same time that Trice was beginning to produce his "Beam-A-Ligner," a Michigan contractor, Roger Roodvoets, heard about a light beam, with a laser as its source, that Laser Lign, Inc., of Illinois was manufacturing for use in sewer construction. The laser — the device's name is an acronym for "L(ight) a(mplification by) s(timulated) e(mission of) r(adiation)" — had not yet been invented when Trice filed his patent application in 1957. The principal features of the laser, the district court found, are The laser became available to the public only in 1963 and was not widely known until the mid 1960's.
Trice in his experimentation prior to the invention of the laser had achieved the nondiffusing effect apparently inherent in the laser beam by placing a lens the exact focal length away from a light source, thereby creating parallel light rays. The patent he was granted, however, was for a method and not for apparatus, and the claims of the patent here involved refer to a collimated narrow beam of light rather than to particular apparatus projecting that light.
Roodvoets's firm experimented for over a year with the Laser Lign equipment but was unable to make the apparatus perform satisfactorily. While negotiating with a Michigan company to build a complete laser with housing and grade equipment, Roodvoets learned of the Trice patent and Trice's "Beam-A-Ligner" apparatus. Roodvoets purchased one of these systems and successfully laid 200 feet of pipe with it. He decided, however, that the newly discovered laser source should be substituted for the white light source of the "Beam-A-Ligner." Alignment, the firm that Roodvoets had formed, entered into an agreement with Trice, improved the equipment, adapting it to a laser light source, and later offered it commercially. Alignment followed a policy of selling its apparatus only in conjunction with the grant of a sublicense to practice the patented Trice method. However, contractors who wished to purchase equipment from other companies could obtain licenses on the same terms as Alignment's customers did.
In November 1963, an Arkansas concern, Blount and George, was founded to further Blount's idea, apparently conceived without knowledge of Trice's earlier work, of laying pipe with a light beam instead of by the traditional, cumbersome batterboard method. In early 1964, after having tested other light sources, Blount and George began to experiment with lasers and built an apparatus called the "Automated Grade Light" (AGL). Several contractors used this equipment in mid 1964. Subsequently, on September 10, 1964, Blount and George filed a patent application asserting ten claims. The Patent Office in January 1966 rejected seven of the claims, one (claim no. 10) because it was deemed unpatentable over the Trice method.2 Blount and George amended its application, and, on October 18, 1966, the Patent Office granted patent 3,279,070 on seven claims. These claims, however, pertain only to specific apparatus.
Defendant Woodruff corporation read a December 1964 newspaper article about Blount and George's AGL system and, as a consequence, purchased some of the equipment. Woodruff eventually became a distributor of Blount and George's apparatus.
On or about May 8, 1968, the plaintiffs sent the defendants written notice of the existence of the Trice patent, alleged infringement, and offered the defendants a sublicense under the patent. On September 30, 1968, the plaintiffs filed the present patent infringement action.
Defendants challenge the validity of the Trice patent on several grounds: (1) lack of novelty under 35 U.S.C. §§ 101 and 102; (2) obviousness under 35 U.S.C. § 103; (3) failure to claim distinctly the invention and failure to describe it, 35 U.S.C. § 112; (4) old and exhausted combination; and (5) addition of new matter in violation of 35 U.S.C. § 132.
In a scholarly and detailed memorandum opinion, the district court considered and rejected each of the defendants' contentions. Although, and unfortunately, the district court opinion has not been published, we can conceive little purpose in now proliferating this reported decision by the factual minutiae necessarily examined and reported on by the district court in its disposition. Holding that the district court's opinion did correctly dispose of the validity issue, we therefore advert only to the principal bases on which we rest our approval and leave to those who may wish to know more about the prior art in this phase of ditchdigging the task of securing a copy of the district court's memorandum opinion from the clerk of that court.
As the district court correctly pointed out, a party asserting a patent's invalidity bears the burden of proving invalidity and must overcome by clear and convincing proof the presumption of validity established by 35 U.S.C. § 282. Walt Disney Productions v. Fred A. Niles Communications Center, 369 F.2d 230 (7th Cir. 1966). Further, this initial presumption is strengthened where the Patent Office, before granting the patent, has considered the prior art references, or equivalent references, relied upon by the party claiming invalidity. Ekstrom-Carlson & Co. v. Onsrud Machine Works, Inc., 298 F.2d 765 (7th Cir. 1962), cert. denied, 369 U.S. 886, 82 S.Ct. 1160, 8 L.Ed.2d 287; American Needle & Novelty Co. v. Schuessler Knitting Mills, 258 F.Supp. 98, 105 (N.D.Ill. 1966).
In order to overcome the presumption of validity and to show that the Trice patent was obvious, the defendants introduced into evidence as prior art four publications and twenty-one patents, most of which had either been before the Patent Office Examiner or were equivalent to those that...
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