National Steel Corporation v. Baltimore & Ohio Railroad

• Decision Date: 15 June 1970
• Docket Number: Civ. No. 18371.
• Citation: 313 F. Supp. 934
• Parties: NATIONAL STEEL CORPORATION, Plaintiff, v. BALTIMORE & OHIO RAILROAD and Armco Steel Corporation., Defendants.
• Court: U.S. District Court — District of Maryland

313 F. Supp. 934

NATIONAL STEEL CORPORATION, Plaintiff, v. BALTIMORE & OHIO RAILROAD and Armco Steel Corporation., Defendants.

Civ. No. 18371.

United States District Court, D. Maryland.

June 15, 1970.

Paul T. O'Neil, W. Cecil Townsend, and Shanley & O'Neil, Washington, D. C., and Michael P. Crocker and Piper & Marbury, Baltimore, Md., for plaintiff.

John W. Melville, Charles H. Melville, and Melville, Strasser, Foster & Hoffman, Cincinnati, Ohio, and Robert M. Thomas and Venable, Baetjer & Howard, Baltimore, Md., for defendants.

HARVEY, District Judge:

In this patent action, plaintiff here claims infringement of United States Patent No. 2,667,243, relating to a steel flooring for railway freight cars into which nails can be driven and removed. The patent in question was originally granted to Harry D. Fenske on January 26, 1954 and was thereafter assigned to and is now owned by National Steel Corporation, the plaintiff.

National Steel claims that the Baltimore and Ohio Railroad Company, one of the defendants, is guilty of direct infringement of this patent under 35 U.S. C. § 271(a) and that Armco Steel Corporation, the other defendant, is guilty of inducing infringement by the B. & O. under 35 U.S.C. § 271(b) and of contributory infringement under 35 U.S.C. § 271(c).¹ The plaintiff seeks an injunction against infringement of the Fenske patent, an accounting, damages and other relief. The usual defenses of invalidity and non-infringement have been asserted by the defendants and in addition the defendant Armco denies inducement of infringement and contributory infringement.

The patent in suit

Only Claim 1 of the patent is involved in this case. What is claimed is as follows:

"1. In a freight conveyance of the type in which freight in transit is subject to forces tending to move the freight relative to the conveyance, the combination comprising, a conveying supporting structure mounted for movement which sets up the forces and a metallic floor construction carried thereby to which blocking can be nailed for preventing shifting of freight in transit, the metallic floor construction including a plurality of long narrow metallic structural members arranged side by side, each structural member including a panel having a freight engaging face directed away from the conveying supporting structure, the freight engaging faces of the plurality of structural members being arranged at a uniform level to form the surface of the floor, a pair of side reinforcing webs joined to each panel along the side edges thereof and extending laterally from the panel in a direction toward the conveying supporting structure, a flange joined to at least one web on each structural member and extending laterally from said web along the edge removed from the panel, said flange being in the engagement with the conveying supporting structure, means including rigid connection between flanges of the structural members and the conveying supporting structure integrating the metallic floor construction and conveying supporting structure and holding the structural members in side by side relation in the conveyance with the opposed webs of adjacent structural members contiguous to form a slot therebetween, the opposed webs being shaped and spaced to receive snugly therebetween a nail driven into the slot, means acting between the opposed webs for deforming and retaining nails driven into the nailing slot, the faces of the panels and the entrances to the nailing slots being exposed for engaging freight and for receiving nails for blocking the freight, respectively, and a closure means of mastic material closing the entrance to each nailing slot along the length of the nailing slot at substantially the level of the surface of the floor."

In essence, the combination claimed included a conveying supporting structure and metallic floor construction made of a number of long, narrow, metallic structural members with means to form a slot to receive nails, means for deforming and retaining nails driven into the slot and a closure means of mastic material. Each metallic structural member included a freight engaging face, a pair of side reinforcing webs and a flange joined to at least one web on each structural member.

According to the specifications, it had been the practice in the past in freight conveyances such as wooden railroad freight cars to prevent freight from shifting by nailing stop blocks to the floors and walls of the cars. However, this practice contributed to the destruction of wooden floors because of re-nailing and wearing conditions from the freight. Furthermore, cargoes such as loose grain and sand would sift through the nail holes and cracks started by nail holes. The specifications accordingly stated that objects of the invention were to provide for freight conveyances a new and improved all metallic nailable interior surface structure which would stand hard usage without need of periodic repair, to provide further a structure which was economical to manufacture and construct and also to provide an interior surface structure which would make a freight conveyance suitable for carrying loose or unpackaged cargoes such as grain and sand without danger of such loose material sifting through nail slots. An essential part of the invention was therefore a closure means of mastic material which would fill each nailing slot to substantially the level of the surface of the floor. According to the specifications, any mastic or gummy material might be used as filler closing the nailing slots "to prevent loss of loose material freight through the nailing slots."

Validity

It is defendants' position that this combination patent is invalid because of obviousness. In asserting this defense, defendants rely on 35 U.S.C. § 103, which provides as follows:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made."

The requirement under 35 U.S.C. § 103 that a patent to be valid must be non-obvious was discussed by the Supreme Court in both Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) and in United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966). In the Graham case the Supreme Court said the following at pages 17-18, 86 S.Ct. at p. 69:

"While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket equipment Corp., supra, 340 U.S. 147, at 155, 71 S.Ct. 127, at 131, 95 L.Ed. 162, the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy."

The inquiry to be made by the Court is primarily a factual one. Graham v. John Deere Co., supra, 383 U.S. at p. 5, 86 S.Ct. 684; Diversified Products Corporation v. Sports Stores, Inc., 294 F.Supp. 375, 380 (D.Md.1968). Furthermore, it is well settled that an invention is construed not only in the light of the claims but also with reference to the file wrapper or prosecution history in the Patent Office. Graham v. John Deere Co., supra, 383 U.S. at p. 33, 86 S.Ct. 684.

Examination of the record of the prosecution of the patent in suit indicates that its history was a long and tortuous one. The application that was finally granted was filed February 16, 1946 (almost 8 years before the patent was issued) and was stated to be a continuation in part of an earlier application filed by the same inventor on January 12, 1945 and thereafter abandoned. After successive rejections of all claims on three prior occasions followed by various amendments by the applicant and the addition of new claims, the patent examiner finally rejected all claims on August 14, 1951. The applicant thereupon further amended his application and at the same time filed an appeal to the Board of Appeals with reference to six claims. After full briefing, the Board of Appeals heard oral argument on November 24, 1952 and in a written decision dated December 19, 1952 affirmed the primary examiner's rejection of all six claims. The applicant then filed a petition for reconsideration with respect to only two claims, namely Nos. 30 and 33, together with a brief in support of such petition. Without further hearing, the Board of Appeals on February 24, 1953 reversed its earlier decision and granted the petition as to these claims, which after further amendment became the two claims of the patent in suit which became effective on January 26, 1954.

In his final rejection of all claims in the amended application, the primary examiner had relied upon the following patents:

                       Inventor       Device          Number       Issuance Date
                       Buelow        Structural      1,900,541     Mar.  7, 1933
                                     element
                       Main          Structural      2,028,554     Jan. 21, 1936
                                     element
                       Marks         Floor and       2,084,853     June 22, 1937
                                     ceiling
                       Bradfield     Metal floor

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