Long v. Arkansas Foundry Company

• Decision Date: 19 August 1957
• Docket Number: No. 15540.,15540.
• Citation: 247 F.2d 366
• Parties: Russell E. LONG and Virgle Coleman, James R. Guerin and Earl Van Horn, Doing Business as Crossville Machine & Tool Company, a partnership, Appellants, v. ARKANSAS FOUNDRY COMPANY, a corporation, Appellee.
• Court: U.S. Court of Appeals — Eighth Circuit

247 F.2d 366 (1957)

Russell E. LONG and Virgle Coleman, James R. Guerin and Earl Van Horn, Doing Business as Crossville Machine & Tool Company, a partnership, Appellants, v. ARKANSAS FOUNDRY COMPANY, a corporation, Appellee.

No. 15540.

United States Court of Appeals Eighth Circuit.

August 19, 1957.

Lawrence C. Kingsland, St. Louis, Mo. (Estill E. Ezell, Edmund C. Rogers, and Kingsland, Rogers & Ezell, St. Louis, Mo., on the brief), for appellants.

Charles S. Harley, Little Rock, Ark. (Barber, Henry & Thurman, Little Rock, Ark., on the brief), for appellee.

Before GARDNER, Chief Judge, and VOGEL and VAN OOSTERHOUT, Circuit Judges.

VOGEL, Circuit Judge.

Appellants-plaintiffs brought this suit against Arkansas Foundry Company, a corporation, appellee-defendant, alleging patent infringement. On motion of Arkansas Foundry Company, the trial court granted summary judgment against Russell E. Long and others, appellants, on the ground that the patent upon which they relied was invalid. The parties will be referred to herein as they were in the court below.

Plaintiffs' complaint alleges that on September 1, 1953, United States Letters Patent No. 2,650,628 were duly and legally issued to Russell E. Long for an invention entitled "Tree Felling and Land Clearing Attachment"; that the other plaintiffs are exclusive licensees under said patent and that the defendant infringed the patent by making, using and selling embodiments thereof in Arkansas and elsewhere throughout the United States. Defendant's answer admits the issuance of the patent, but alleges that the application therefor was false and fraudulent in law and fact, did not reveal the true facts to the Patent Office, that the patent was wrongfully and illegally issued, and that Long was not the inventor of the so-called Tree Felling and Land Clearing Attachment.

Defendant filed an amendment to the answer, specifying in detail the patents that it would rely upon as showing (a) that there is no invention in the patent in suit; (b) that the patentee, Russell E. Long, is not the inventor of the device described or covered by the patent in suit, or purporting to be so described in or covered therein; (c) the invalidity of said patent and each and every claim thereunder. The amendment lists some six patents upon which the defendant relies and thereafter lists the names and addresses of the persons who had knowledge of the matter in issue.

The subject matter of the patent, as set out in the specifications, is described as a novel land-clearing blade. The blade is attached to a tractor or bulldozer and is primarily intended to clear foliage, vegetation and trees from land so as to allow for cultivation. The clearing attachment travels over the land at surface level and severs all growth. In the case of large trees, it severs the roots near the ground. Another object of the attachment is to "* * * provide a V-shaped land-clearing attachment of the character specified, said attachment having pusher booms extending outwardly from its prow and adapted to contact a tree at a point fairly high up on the trunk so as to provide sufficient leverage to push the tree over after the roots thereof have been severed". The upper boom extends beyond the lower boom and makes primary contact with the tree. The lower boom engages the bent tree so low that the tree is either torn out by the roots or severed by the knife blades of the attachment. The blade is so constructed that when larger more solid trees are engaged the tractor or bulldozer will be deflected clear of the trunk without stalling or damage. The attachment can be raised and lowered on its forward end by means of a block and tackle and on its after pivot ends by means of level-adjusting jacks, thereby providing substantially horizontal operation of the V-blades despite varying conditions of the terrain. Following the specifications Long set forth nine separate patent claims.

In ruling on defendant's motion, the trial court considered certain admissions whereby "* * * the plaintiffs have restricted their claims in this patent to a combination patent". Long v. Arkansas Foundry Co., D.C.Ark.1956, 137 F. Supp. 835, 838. Having determined that all of the individual elements of the patent were old and that there was involved only a combination patent, the trial court held that Long had failed to satisfy the statutory requirements for a valid patent by failing to "* * * set out the new from the old, and to fix the limits of his claims * * *." 137 F.Supp. at page 838. See 35 U.S.C.A. § 112.

In arriving at its conclusion as to the validity of the patent, the trial court, in addition to Long's discovery deposition, admissions of fact and brief, considered only claim No. 1 of the patent, referring to the other 8 claims as repetition and not enlarging. An examination of the other 8 claims indicates that they do enlarge on claim No. 1 and that the trial court failed to consider the function or functions of the old elements in the claimed combination, particularly the function or functions of the aftly situated level-adjusting jacks referred to in only claims Nos. 3, 7 and 8. It therefore becomes obvious that the admissions of plaintiffs were not conclusive against their claim that their patent described a new function patentable as a combination.

We think there was no justification for attempting to decide this case upon the defendant's motion for summary judgment. The case should have been tried on the merits and the parties afforded an opportunity to introduce evidence on the issue whether the combination of old elements disclosed by all of the claims of the patent, as explained and illustrated by the specifications and drawings, (G. H. Packwood Mfg. Co. v. St. Louis Janitor Supply Co., 8 Cir., 1940, 115 F.2d 958; Parker Appliance Co. v. Irvin W. Masters, Inc., D.C.Cal.1950, 94 F.Supp. 72, affirmed 9 Cir., 1951, 193 F.2d 180; Schriber-Schroth Co. v. Cleveland Trust Co., 1940, 311 U.S. 211, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132) constituted a patentable improvement over the prior art, of which the plaintiff Russell E. Long was the inventor, or whether the combination claimed was merely an unpatentable aggregation of old elements exhibiting no new and useful function.

In Hycon Manufacturing Co. v. H. Koch & Sons, 9 Cir., 1955, 219 F.2d 353, 356, the appeal was from a summary judgment for the plaintiff in an infringement action in which both sides had moved for summary judgment. The Court of Appeals, in reversing the judgment, among other things said:

"* * * any tendency to abolish trial in patent cases for consideration of documents in camera should be curbed."

In Paragon-Revolute Corporation v. C. F. Pease Co., 7 Cir., 1957, 239 F.2d 746, 748, the appeal, as in the instant case, was from a summary judgment for the defendant in a patent case. The judgment was reversed. The Court of Appeals said:

"One of the hazards of endeavoring to decide a patent infringement suit by a summary judgment procedure is that there would not ordinarily be anything before the Court by which a

...