Merry Manufacturing Company v. Burns Tool Company

• Decision Date: 24 May 1962
• Docket Number: Civ. A. No. 7081.
• Citation: 206 F. Supp. 53
• Parties: MERRY MANUFACTURING COMPANY, Plaintiff, v. BURNS TOOL COMPANY and Economy Auto Stores, Inc., Defendants.
• Court: U.S. District Court — Northern District of Georgia

206 F. Supp. 53

MERRY MANUFACTURING COMPANY, Plaintiff, v. BURNS TOOL COMPANY and Economy Auto Stores, Inc., Defendants.

Civ. A. No. 7081.

United States District Court N. D. Georgia, Atlanta Division.

May 24, 1962.

Richard W. Seed, Seattle, Wash., Hamilton Lokey, Atlanta, Ga., for Merry Mfg. Co.

Semmes & Semmes, Washington, D. C., Smith, Swift, Currie, McGhee & Hancock, R. W. Crenshaw, Jr., c/o Hansell, Post, Gardner, Brandon & Dorsey, Atlanta, Ga., for Burns Tool Co. and Economy Auto Stores, Inc.

MORGAN, District Judge.

This patent case concerns the alleged infringement of two United States patents. The earlier of these patents is Patent No. 2,614,474, and it is entitled WALKING CULTIVATOR. The second of the patents, namely 2,634,666 is entitled IMPROVED EARTHWORKING WHEEL. It is further complained that the defendant has engaged in unfair competition in promoting the sales of its garden tiller.

The issues of the law suit are three in number. As to each of the patents — are they valid — in view of the state of the art and/or in view of the laws of inventorship? Secondly, if valid, are the respective patents infringed? Thirdly, has the defense engaged in competitive practices which are unfair and in violation of the lawful rights of the plaintiff?

Plaintiff has alleged infringement of Claims 1, 2, 7, 8 and 9 of Merry Patent 2,614,474 and Claim 6 alone of Patent 2,634,666.

Since the patents are presumed valid, the burden of proving invalidity rests upon defendant. Plaintiff must prove infringement and also unfair competition.

In the Spring and Summer of 1945, Clayton B. Merry, living in Donelson, Tennessee, commenced experimentation with a power driven garden tiller, the details of which he made known to his neighbor and friend, Donald W. Balfour. Merry actually used Balfour's workshop in his early work. The two then joined together in improving upon the original device that Merry had developed. The results of this joint effort, including the improvements, were significantly recorded in a joint application for patent which the two, together, filed August 23, 1946. This application for patent was given the number 692,595.

Reference to the joint patent application was made by Mr. Merry after he signed an oath in an application which he later filed by himself, and which issued to Patent 2,614,474. Based upon this second application for patent, Mr. Merry engaged in negotiation with Seidelhuber Iron and Bronze Works Company of Seattle, Washington, he having moved there from Donelson, Tennessee.

Seidelhuber Iron and Bronze Works having entered into the agreement with Mr. Merry in late January of 1948, experimented with the Balfour-Merry device which had a coaxial drive, and found it to be dangerous due to lack of control. They immediately set about to improve the tiller and did so by adding a brake tooth or fixed plow at its rear end, to enhance the control and reduce the danger of operation. These and related improvements took place in the plant of Seidelhuber Iron and Bronze Works in the Winter of 1948. In the early Spring of 1948, and specifically as early as March thereof, sales of these improved garden tillers were made by Seidelhuber Iron and Bronze Works to certain people including Messrs. Helgeland and Michel. Some of these sales were made through Central Supply Company in Portland, Oregon, where one Hofer served as a sales agent. These tillers had both the coaxial drive and brake tooth control means.

It should be noted that Mr. Merry had a disagreement with the Seidelhuber family in the Spring of 1948, whereupon he commenced to manufacture tillers having their improved construction feature placed thereon by Seidelhuber. By this act he discontinued to honor the provisions of his original agreement with Seidelhuber that the parties would consider the agreements to bind improvements which were made upon the original construction. Seidelhuber thereafter discontinued manufacture of the tillers.

Having observed these improvements which were made by Seidelhuber, Mr. Merry, acting alone, and in disregard of the interests of Donald W. Balfour, caused a sole application for patent to be filed in his own name, on April 25, 1949, more than one year following sales of the same device, as is described in Patent 2,614,474, the principal patent in suit. The application was not at the time filed as a continuation-in-part. To date Merry has not taken an oath as to the allegation of status continuation (allegedly October 2, 1951) even though the inventions of the two applications basically contain the same principles excepting for the brake tooth control. This new patent application broadly described the transmission so as to encompass both "coaxial" and "direct" drives. Mr. Balfour was not informed of the filing of this second patent application by Clayton Merry, and did not become fully aware of it until the institution of this law suit.

The joint venture between Messrs. Merry and Balfour disintegrated in 1949, following Mr. Merry's disagreement with the Seidelhuber interests and Merry resumed activities in partnership with one Allbery. On May 20, 1949, Bliven, the attorney, and Merry cancelled the Seidelhuber agreement. On April 11, 1950, the joint application of Balfour and Merry was abandoned without notice to Balfour. In July, 1950, Merry filed a third application for patent No. 176,461 covering the CULTIVATING WHEEL.

Having filed the sole application which led to issuance of Patent 2,614,474, Merry did not obtain any disclaimer from Balfour as to the subject matter which was covered in the new application for patent. Specifically, Claims 1 and 2 of Patent 2,614,474 have never been disclaimed by Balfour.

Mr. Sam Burns, a manufacturer of chain saws, developed a garden tiller of his own design in 1959. Burns had access to tillers of plaintiff's design and tillers of others, who were then competitive with plaintiff. These others included Choremaster, Gibson, Simplicity, Springfield designs. When he had completed his design effort, he obtained clearance from patent counsel that he did not infringe the patent rights of Merry Manufacturing Company, and so he then entered into the market by the distribution and sale of his garden tiller. It appears from the evidence that in the early promotion and sale of the Burns Tillers, certain promotional literature appeared which depicted the Burns Tiller with the cultivating wheel components of the type which are manufactured by Merry.

Although Burns had sold cultivating wheels similar to those which were patented by Merry in his Patent 2,634,666, his company has never manufactured nor sold cultivating wheels having the same characteristics. The tines of Burns' early cultivating wheels were secured to the circular plate by weldment of the connection between two legs rather than by weldment of one leg or tine to the plate.

Suit was subsequently brought against Burns Manufacturing Company. The entire assets of the defendant Burns Manufacturing Company were later acquired by Draper Corporation of Hopedale, Massachusetts.

With respect to Claims 1, 2, 7 and 8 of Patent 2,614,474, none of them contains a recitation as to the manner in which the cultivating wheels are driven. Accordingly, Claims 1 and 2 describe the joint invention of Merry and Balfour, as well as the improved invention. Claim 9 recites a reduction drive in the drive housing covering both coaxial and direct drives as do the 7 and 8 claims.

Claims 1, 2 and 7 of Patent 2,614,474 recite a construction including:

"* * * a frame providing a laterally spaced pair of longitudinal frame members, a drive housing secured between the frame members and extending above and below * * *"

Claims 8 and 9 call for a construction including:

For 8 "* * * a frame assembly providing a forwardly positioned motor mount, a rearwardly positioned hitch, etc. * * * a transversely-centered flat-sided drive housing located between and extending higher and lower than both the hitch and motor mount * * *"

For 9 "* * * a frame assembly providing a motor mount, a rearwardly positioned hitch * * * a transversely-centered drive housing located forwardly of the hitch and extending higher and lower than both the hitch and motor mount * * *"

In short, Claims 1 and 2 define the joint invention of Messrs. Balfour and Merry making no reference to brake tooth control, and Claims 7 and 8 and 9 define the Seidelhuber "coaxial" model as well as the Merry direct drive model, each having brake tooth control.

The Burns tiller has a winglike housing which is self-sufficient and which does not carry longitudinally extending frame members securing the housing between. The engine and hitch are each mounted on the wings of the Burns tiller by small steel shelves.

Claim 6 of Patent 2,634,666 calls for a construction including:

"* * * a bent length of bar stock producing two connected tines, one of which tines is secured to an end face of the anchoring flange with its free end extending radially therebeyond."

At present the Burns tiller has slasher tines. At one time Burns made a tiller having finger tines but they were welded to the hub at the bottom of the "U" not on one leg thereof.

DISCUSSION

Invalidity of Patent 2,614,474

This Court agrees with the defendant's position that it was fatal to the validity of Patent 2,614,474 for Merry not to join his prior co-inventor Balfour in the filing of the application which led to 2,614,474. Shreckhise v. Ritchie, et al., 160 F.2d 593 (CA 4, 1947), 40 Am. Jur. 576. Merry cannot now avail himself of the benefit of the earlier filing date. 35 U.S.C. §§ 120 and 102.

As previously stated, Claims 1 and 2 of this patent broadly describe the joint invention of Merry and Balfour, as well as the later tillers of Seidelhuber and Merry. Balfour did not disclaim his joint invention and has not yet done so. Claims 7, 8 and 9 include the improvement relating to the brake tooth control means; but this was the improvement...