Moline Plow Co. v. Omaha Iron Store Co.

• Decision Date: 24 July 1916
• Docket Number: 4598.,4597
• Citation: 235 F. 519
• Parties: MOLINE PLOW CO. v. OMAHA IRON STORE CO. [a1] OMAHA IRON STORE CO. v. MOLINE PLOW CO.
• Court: U.S. Court of Appeals — Eighth Circuit

235 F. 519

MOLINE PLOW CO. v. OMAHA IRON STORE CO. ^[a1]

OMAHA IRON STORE CO. v. MOLINE PLOW CO.

Nos. 4597, 4598.

United States Court of Appeals, Eighth Circuit.

July 24, 1916

[Copyrighted Material Omitted]

Samuel W. Banning, of Chicago, Ill. (Thomas A. Banning, Thomas A Banning, Jr., and Ephraim Banning, all of Chicago, Ill., on the brief), for complainant.

Otto Raymond Barnett, of Chicago, Ill. (Percival H. Truman, of Chicago, Ill., on the brief), for defendant.

Before SANBORN, ADAMS, and CARLAND, Circuit Judges.

SANBORN Circuit Judge.

The Moline Plow Company, a corporation of Illinois, brought a suit in equity against the Omaha Iron Store Company, a corporation of Nebraska, for infringement of letters patent No. 860,308 for an improvement in plowshares, issued to August Lindgren July 16, 1907, and for unfair competition and prayed for an injunction and an accounting. The suit was founded on the sale by the defendant of plowshares manufactured by the Star Manufacturing Company and fitted to replace plowshares upon plows made by the Moline Plow Company. The Star Company assumed the charge and expense of the suit, and it developed into a trial of the respective equities of the two manufacturing companies, and resulted in a decree that the patent was void for lack of invention, that the defendant was guilty of unfair competition, and that it be enjoined from selling or dealing in plowshares made by the Star Company marked with the monogram 'M. Co.' standing in association with a star, and that the complainant was entitled to an accounting and to the costs of the suit.

Both parties have appealed, and the first complaint of the Moline Company is that the court did not adjudge the fifth claim of the patent to Lindgren valid and infringed. That claim reads as follows:

'5. The improved plowshare composed of hard steel having a soft metal reinforcing patch welded to its lower or reverse face, said patch being of an area to extend backward from the landside edge of the share adjacent the top edge, to a point back of the first bolt hole, and a landside welded to the share over the soft metal patch, thereby avoiding breakage and facilitating the attachment of the landside.'

The purpose of the improvement described in the specification and here claimed was to strengthen the thin, brittle, hard steel plowshare and prevent its breaking, and at the same time to provide at the place of junction of the landside of the plow and the plowshare a soft thick surface to which the landside could be welded more readily than to the hard steel surface of the share. Lindgren accomplished this object by welding to the under or reverse side of the share a patch of soft steel, extending from a point near the longitudinal center of the upper edge of the share to a point adjacent the forward end of the landside, which, after the application of the patch, was welded over it to the share. He states in his specification that plowshares are most liable to break at the forward bolt hole provided to bolt them to the mold boards, that to prevent this the soft metal patch is extended in his invention over the point where this bolt hole is formed both fore and aft of and below it, so as to reinforce and strengthen the share in the vicinity of this bolt hole. In his improved plowshare the soft metal patch extends backward from the landside edge of the share adjacent to the top edge to a point back of the first bolt hole. But the evidence is clear and convincing that as early as 1882 it was the common practice of blacksmiths to weld a patch of soft metal onto a blank plowshare before welding the latter to the landside of the plow for the purpose of gaining thickness and strength for the share, that this patch was of no specific size, that sometimes it would come up to the first bolt hole, and sometimes it would extend around and beyond it, but that the makers had no specific intention regarding this extension. Counsel argue that the patches of the prior art do not anticipate Lindgren's improvement, because those who made and used them had no purpose or intention of strengthening the specific part of the plowshares around the first bolt hole. But there can be no doubt that any mechanic skilled in the art presented with the problem of strengthening a plowshare around and in the vicinity of a bolt hole. and with the fact that patches of soft metal had been welded onto such shares to strengthen other parts of them, would have had no difficulty in solving that problem, by welding such a patch upon the share around the bolt hole, or by extending a patch about to be placed on the share beyond the bolt hole. There was no invention in perceiving or forming the device of Lindgren.

Since the year 1870 the Moline Plow Company has been manufacturing plows, and has had and has a trade-mark consisting of the letters 'M.P. Co.' in the form of a monogram. Since 1870 the Star Manufacturing Company has been making parts of agricultural implements, and has had a trade-mark consisting of the letters 'M. Co.' in monogram form inclosed in the representation of a star. The trade-mark of the Moline Plow Company antedates the trade-mark of the Star Company. About the year 1905 the Star Company commenced to make plowshares fitted to replace plowshares upon plows made by the Moline Plow Company and others fitted to replace shares upon plows made by other manufacturers. When the representation of the star which surrounds the monogram of the Star Company in its trade-mark is omitted the two monograms after 1905 were in these forms:

(Image Omitted)

The Moline Plow Company made plows of many styles and sizes. It also made plowshares of different qualities, styles, and sizes fitted to replace the plowshares on the plows of its manufacture when the latter became worn or broken. One of these shares was a solid steel plowshare of substantially uniform thickness, but such a share cannot be sufficiently hardened on the surface to secure effective scouring in some soils. Another and more expensive and valuable plowshare which it made was a soft center share, consisting of soft steel extra hardened on both sides, so that when finished it consisted of a very hard layer of steel on each side and a layer of soft steel between them. Its price for these soft center plowshares is $2.25 each, while its price for similar solid steel shares is $1.80 each. The defendant sells the solid steel shares to replace these soft center shares for $1.70 each. The soft center shares secure more effective scouring and greater durability. The very hard steel on the surface does not wear as rapidly as the softer solid steel shares, and it scours better. The Moline Company stamped or cut in the reverse or under side of all its soft center shares its trade-mark to denote that they were the genuine product of the Moline Company, the representation of a star to denote the quality of the share, that it was a soft center share, and such letters and figures as 'W. 14,' 'W.H. 16,' 'H. 116,' called stock marks, to indicate the respective styles and sizes of Moline plows which they would fit.

Since 1904, but not earlier, the Star Company in competition with the Moline Company's soft center shares has been making and selling solid steel shares fitted to replace the former into the under or reverse side of which it has stamped or cut into the metal its trade-mark-- that is to say, its monogram within the representation of the star-- and the letter and figures 'W. 14,' or such similar letters and figures as would denote the size and style of Moline plows they would fit. On the face or upper side of the shares it has stenciled in comparatively small letters the words 'Made by Star Mfg. Co.' on the next line in much larger letters the words 'Carpentersville, Ill.,' and in the middle of the face of the shares in bold type twice as large as those in which the words 'Made by Star Mfg. Co.' are stenciled, and occupying two lines, the words 'For 14 in. Moline Soft Center. ' It has also pasted on each of the shares a paper label containing a printed statement that the share was made by the Star Company and is guaranteed to be a duplicate of the original share and to fit the plow for which it is intended. The Star Company has also made, and sold in competition with the Moline Company's solid steel shares, plowshares fitted to replace them, stamped with its trade-mark and with the stock marks of the Moline Company, some of which bear no stenciled words on their face, except in bold type such words as 'For 14 in. Moline.' The defendant, the Omaha Iron Store Company has been and is buying from the Star Company and selling to its customers these shares of different types and sizes made and marked as described above. The decree enjoins the defendant from dealing in plowshares made by the Star Company bearing its monogram standing in association with the representation of a star.

The Moline Company complains that the decree does not prohibit the defendant from dealing in such shares marked with a star or with the Moline Company's stock marks, such as 'W.H. 16,' 'W. 14,' 'H. 116.' The Star Company objects to the decree...