Miller v. DAYBROOK-OTTAWA CORPORATION

• Citation: 291 F. Supp. 896
• Decision Date: 17 July 1968
• Docket Number: No. C 65-226.,C 65-226.
• Parties: Howard B. MILLER and F M C Corporation, Plaintiffs, v. DAYBROOK-OTTAWA CORPORATION et al., Defendants and Counter-claimants.
• Court: U.S. District Court — Northern District of Ohio

291 F. Supp. 896

Howard B. MILLER and F M C Corporation, Plaintiffs, v. DAYBROOK-OTTAWA CORPORATION et al., Defendants and Counter-claimants.

No. C 65-226.

United States District Court N. D. Ohio, W. D.

July 17, 1968.

Donald R. Fraser, Toledo, Ohio, Harold C. Hohbach, San Francisco, Cal., for plaintiffs.

Albert L. Ely, Jr., Cleveland, Ohio, for defendants.

OPINION

DON J. YOUNG, District Judge.

This is an action for infringement of Patent No. 2,450,152, issued September 28, 1948, to Howard B. Miller. The patent involves devices referred to colloquially (to plaintiffs' pleasure and defendants' discomfiture) as "cherry picker" cranes.¹ The parties involved are FMC Corporation, formerly known as Food Machinery and Chemical Corporation, which boasts that it is one of the sixty largest corporations in the country, and Daybrook-Ottawa Corporation, a subsidiary of the Young Spring and Wire Corporation of Delaware, which is also a corporation of some magnitude.

During the time covered by the present controversy, the defendant Corporation acquired the assets and liabilities of the Paul Hardeman Division of the Young Spring and Wire Corporation, which had previously merged with the Young Spring and Wire Corporation of Michigan, and became the survivor of the merger. The Young Spring and Wire Corporation of Michigan in November of 1958 purchased the so-called Strato-Tower Division of Moore's Time-Saving Devices, Inc., of Elkhart, Indiana, which in turn had acquired the business at some obscure time in the past from the Elkhart Boiler & Welding Company.

Along for the ride on the plaintiff Corporation's side is Mae C. Miller, the widow of the original patentee, Howard B. Miller. On the defendant Corporation's side are Shannon K. Clements, a very shrewd and clever engineer who describes himself as a "simple farm boy", a description which should fool nobody, and Hugh M. Rush, also an engineer, who claims to have dedicated his career to the development of the best possible personnel lifting device. Mr. Rush excused himself after he had testified, and Mrs. Miller gave up after a couple of weeks, but Mr. Clements stayed to the bitter end.²

Fifteen full days of trial were required merely for the presentation of evidence in this case. While no great number of witnesses were called, some were required to come from the Pacific coast. About three hundred exhibits were offered, some of them being files containing hundreds of pages of letters and documents. In addition to the numerous red herrings which were drawn across the trails, such other fauna as Giraffes, Industrial Monkeys, Steel Squirrels, and Giant's Arms struggled through the orchards and lurked in the underbrush.

All of this mass of testimony and evidence was heard, seen, and carefully considered by the Court, which acted as the trier of the facts, without the intervention of a jury. This opinion will be expressive of the Court's findings of fact, even though it may not be completely detailed in its discussion of evidenciary matters, and also of its conclusions of law applicable to the facts so painfully exhumed from the massive record.

Since the patent in question expired on September 28, 1965, some weeks before this action was commenced, the fundamental question of the validity of the Miller Patent is pretty much academic, except for the purposes of this lawsuit. It is, however, the threshold question to be determined in this matter.

It is not too difficult to reach the conclusion that the patent in question was valid. The basic principle which was novel and original is the articulated boom mechanism which, mounted upon a turntable and on a moving platform, enables a worker, by manipulating controls placed on a "perch" at the end of the boom, to move himself in all directions, "Right and left and round about, And up and down and in and out."³ and position himself precisely where he needs to be.

None of the patents cited by the examiner in considering Miller's application either illustrated or recognized this ingenious idea. Most of them were concerned with the same basic problem, that of positioning a workman in space, but solved it either to a limited extent or not at all, and always by other and less flexible means than those claimed by Miller in his patent.

The defendant cited as prior art the Hulett, Havens and Clay patents. The first and last of these were not concerned with the same problem as the Miller patent. The Hulett patent, while it could move up and down and in and out relative to its platform, could move sideways only in relation to the ground. While the Clay patent involved an articulated boom, which could be raised and lowered, in relation to the ground, it clearly appears to be an apparatus which could only be operated from a fixed base, and it made no claim involving the vertical movement. The mechanism employed the articulation only to move the worker from side to side and in and out, and was so designed that if it had been turned on its side to change the horizontal movements to vertical ones, it must have broken down instantly. The Havens patent, which in the main was designed to attain the same end as the Miller patent, and is used for the same purposes as machines embodying Miller's invention, does not have the articulated boom, and thus lacks the flexibility of motion possessed by Miller's device. It could move in one direction only by sacrificing motion in another.

Early in this litigation, this Court ruled that the fact that the inventor used the descriptive words "fruit-picker's" to modify the word "crane," and discussed mainly the use of his invention for tree work, did not limit the scope of the patent to machines specifically built for use in fruit-growing operations. In any event, the fact that those using the now numerous machines embodying the invention for such varied purposes as servicing rockets and rescuing suicidally inclined little girls from watertowers continue to refer to them as "cherry-pickers" indicates that the inventor's language, slightly altered, has been broadened to go along with his invention. There is thus no reason to change the earlier ruling in the light of such semantic matters, or to narrow the invention to the most limited meaning of the words employed.

It is unnecessary to give further attention to the claims of invalidity based on the ground that the patentee's machine would not work, and that it was not commercially successful. Models prepared by defendants from the patent drawing indicate that a machine constructed exactly in accordance with them would not work very well. The defendant Clements testified very feelingly about this, since an early machine of this type pitched him out and fractured a number of his bones. But clearly, it would work. Clearly also, it was economically feasible, or there would not have been so many infringers.⁴ The fact that plaintiff Corporation was not smart enough to take full advantage of what it had is hardly evidence of lack of usefulness of the invention.

The Court concludes that the defendant Corporation has failed to overcome the presumption that the patent was valid.⁵

The second question is whether or not the patent was infringed. This problem needs no discussion. It is apparent at a glance that the defendants' "Strato-Towers" embody the same articulated boom which is the basic concept of Miller's invention. It would be impossible upon the evidence in this record to reach any other conclusion but that the defendant Corporation and its predecessors infringed upon plaintiffs' patent.

The real problems in the case occur in the area of whether or not the plaintiffs are entitled to recover damages for this infringement.

It must be recognized that this action was not commenced until October 28, 1965, some weeks after the patent expired, and there there is a six year statute of limitations on actions for patent infringement.⁶ Thus, plaintiffs are entitled to recover damages, if at all, only from a period beginning October 28, 1959.

It is undisputed that no actual notice of infringement was served upon the defendant Corporation until a letter dated July 16th, 1965, addressed to one of this defendant's predecessors, was delivered to this defendant on July 20th, 1965. Thus, unless the plaintiff can establish that the defendant Corporation and its predecessors had constructive notice of their infringement at some time prior to the latter date, plaintiffs' recovery must be limited to damages suffered during the period from July 20th to September 28th, 1965.

35 U.S.C. § 287 provides that in addition to actual notice of infringement, there may be constructive notice arising from marking articles made under the patent with a notice that they were made under the patent. Very seriously controverted questions of fact are presented upon this matter in this case, which have been belabored almost endlessly by the parties during the trial of the case.

It is only possible to come to a rational conclusion upon the various issues involved in this area by looking at the whole picture of the conduct of the parties to this litigation. The issues of fact and law are too intertwined and commingled to try to consider them in fragments.

The starting point of the story appears in the record with a visit of Howard B. Miller, an engineer of some ingenuity, to an apple orchard in the Pacific Northwest. He thought there ought to be a better way to pick apples than climbing up ladders, and set about to develop one. His efforts culminated with the application, in 1946, for the patent in suit, which was issued in 1948.

Naturally, of course, the problem of picking fruit had aroused the interest of many other people, both before and after Mr. Miller. Some of the minor cogs in the incredibly complex administrative machinery of the cumbersome plaintiff Corporation were interested in the problem. So was a man named Ormond Hukari. There are other shadowy persons with the same concern...