No-Joint Concrete Pipe Co. v. Hanson

• Citation: 344 F.2d 13
• Decision Date: 10 May 1965
• Docket Number: No. 19403.,19403.
• Parties: NO-JOINT CONCRETE PIPE CO., a Corporation, Appellant, v. R. A. HANSON, an Individual, R. A. Hanson Co., Inc., a Corporation, Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

344 F.2d 13 (1965)

NO-JOINT CONCRETE PIPE CO., a Corporation, Appellant, v. R. A. HANSON, an Individual, R. A. Hanson Co., Inc., a Corporation, Appellees.

No. 19403.

United States Court of Appeals Ninth Circuit.

February 11, 1965.

Rehearing Denied May 10, 1965.

Oscar A. Mellin, Jack E. Hursh, Mellin, Hanscom & Hursh, San Francisco, Cal., for appellant.

Greek Wells, Richard J. St. John, Wells & St. John, John D. MacGillivray, MacGillivray, Jones, Clarke & Schiffner, Spokane, Wash., for appellees.

Before MERRILL, DUNIWAY and ELY, Circuit Judges.

MERRILL, Circuit Judge.

Appellant has brought this suit for infringement of patent.¹ Appellees defended upon the grounds, first, that appellant's patent was invalid for lack of invention, and, second, that there was no infringement. The District Court for the Eastern District of Washington, Northern Division, held the patent to be valid but not infringed. Appellees challenge the first holding. Appellant appeals from the second.

The device in question is for the forming of concrete pipe in place for use in irrigation and drainage systems. By means of the device pipe is formed by the following method: A ditch is dug, conforming to the outer dimensions of the pipe. Concrete is fed into the ditch around an inner core or form which is removed after the concrete has set. This method, in general, is not new in the art. What is new is the fact that the device permits a continuous operation. New pipe is continuously poured while the already formed pipe is still hardening. Thus it is not necessary to permit one section of the pipe to harden before passing on to the pouring of a new section. Also, the top, bottom and sides of the pipe are formed simultaneously. This is accomplished by pouring concrete through a hopper around a conduit through which overlapping sections of the inner core are continuously fed, with the entire device resting on the bed of the ditch and steadily advancing along the ditch by means of a powered winch.

The District Court has found that although it is a combination of old elements, this patent is valid "because it has a new modus operandi which produces an improved result in a more facile, economic and efficient way." This finding is not clearly erroneous. We conclude that the District Court was not in error in ruling appellant's patent to be valid, and direct our attention to the question of infringement.

The accused device adopts appellant's method, which, the record makes clear, was a decided advance, enthusiastically embraced by the public.

There is, however, one difference in the details of the competing devices around which the issues here revolve. This relates to the inner form or core, which is fed through the conduit. In the patented device the core is in two pieces. The upper portion is fed through the conduit in overlapping sections and remains stationary, supporting the upper portion of the pipe until the concrete has hardened. It stays behind (as the device moves forward along the ditch) and is removed later. The lower portion of the inner core is attached to the device and moves with it, leaving exposed the lower portion of the pipe.

In the method adopted by the accused device a one-piece, full-circle inner core is fed through the conduit in overlapping sections and in its entirety remains behind, stationary in the pipe, until the concrete has set.

Upon the appeal the sole question is presented by appellant's contention that appellees' one-piece inner core is the mechanical equivalent of appellant's two-piece core. The District Court has ruled that it was not.

In this we feel that the District Court has erred. Both cores accomplish precisely the same function of providing the inner form for the pipe. Both, in the words of appellant's Claim 1, are composed of "a plurality of sections releasably secured together * * * and extending through the barrier i. e., fed through what we have termed the "conduit" in slidable, sealing engagement therewith." Thus both permit of a continuous operation by virtue of their composition and the manner in which they are introduced into the ditch. A substantial body of law recognizes that infringement is not avoided by making into one part that which has been shown as two.²

Appellees contend that the cores accomplish an important secondary purpose, and do so in different ways, and that this prevents the doctrine of equivalents from applying. Appellees refer to the manner in which the bottom of the pipe is formed. The problem here is that of assuring that the concrete has fully reached and compacted below the inner core. The patented device accomplishes this by a removable vibrator and tampers. Also, however, it is apparent that the movable lower inner core does, in its motion over the concrete, accomplish a compacting, spreading and trowelling of the bottom of the pipe against the underlying ditch. This trowelling action is absent in the accused device, which operates by means of mechanically activated "consolidating rings" upon which appellees have secured a patent. Appellees also point out that each form of inner core has its advantages over the other.

But it is not the form of inner core (whether one or two pieces — whether wholly stationary until setting has occurred or only partially stationary) which accomplishes any different result. The function of the core is simply to serve as a form around which the concrete is compacted or consolidated. That which accomplishes a different result is the means chosen in collaboration with the inner core for compacting or consolidating the concrete forming the bottom of the pipe. That appellees may have found and patented an improved method of compacting concrete around the core does not preclude their one-piece core from being the mechanical equivalent of appellant's two-piece core.

Nor does the fact that each core has its advantages over the other per se prevent application of the doctrine of equivalents in every case. Whenever equivalents present themselves a choice is presented and every choice presumably is governed by the chooser's view as to what is preferable or advantageous. Here the respective advantages were not of such dimensions as to amount to the accomplishment of different results.³

Appellees' contentions would have the effect of limiting the scope of appellant's invention to the manner chosen for compacting the concrete. The claimed combination encompasses a far greater area of novelty and invention than that.

Appellees contend that file-wrapper estoppel precludes appellant from asserting the doctrine of equivalents as to the form of inner core and limits appellant's claim to the precise inner core specified. The District Court so held. In this respect, too, we feel that the District Court was in error.

The application for the Tunsen (appellant's) patent originally included broad method claims⁴ and apparatus claims⁵ which were rejected by the Patent Office as being so broad as to encompass prior art. Specifically, the examiner at this point was concerned with a prior Ransome patent which disclosed a method of in-place pouring of concrete pipe. The Ransome method was not continuous. The bottom was poured first and then the top, or cap. One section had to set before the apparatus could be moved on to a new section. Tunsen's original claims were stated so broadly as to encompass this intermittent method.

Certain of these claims were then withdrawn by Tunsen. One of the original claims was amended to specify simultaneous motion of the upper outer form and lower inner form. It is the remarks of Tunsen in support of this amendment upon which appellees principally rely in their contentions of estoppel.⁶

The examiner was not persuaded. In the next action which he took all claims were rejected for lack of invention over other Ransome patents. Tunsen started all over again, confining his claims to apparatus claims. One statement made by Tunsen in his remarks in support of these claims is singled out by appellees: "All of the claims bring out the idea of a barrier moving along a ditch and carrying an outer form and part of the inner form, the other part of the inner form being temporarily left in place in the formed conduit. The stationary parts of the inner form slidably extend through the barrier and over the movable parts of the inner form carried by the barrier."

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