Pederson v. STEWART-WARNER CORPORATION

• Decision Date: 23 July 1975
• Docket Number: No. 73 C 2607.,73 C 2607.
• Citation: 400 F. Supp. 1262
• Parties: Walter H. PEDERSON, Plaintiff, v. STEWART-WARNER CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

400 F. Supp. 1262

Walter H. PEDERSON, Plaintiff, v. STEWART-WARNER CORPORATION, Defendant.

No. 73 C 2607.

United States District Court, N. D. Illinois, E. D.

July 23, 1975.

Harold J. Kinney, St. Paul, Minn., Rolf O. Stadheim, Haight, Hofeldt, Davis & Jamber, Chicago, Ill., for plaintiff.

Theodore R. Scott, Augustus G. Douvas, Chicago, Ill., for defendant.

MEMORANDUM OPINION

DECKER, District Judge.

In this case, a jury found that the plaintiff, Walter H. Pederson, had a valid patent for a snowmobile speedometer, and that the defendant, Stewart-Warner Corporation ("Stewart-Warner") had willfully infringed the patent through the sale of parts from which a snowmobile owner or manufacturer could mount a speedometer on a snowmobile. Damages of $140,000 were assessed as part of the verdict. Defendant has moved for a judgment notwithstanding the verdict, or in the alternative for a new trial, under Rule 50 of the Federal Rules of Civil Procedure. Because of the inadequacy of the facts presented to support the verdict, both motions will be granted.

In considering the motion for judgment notwithstanding the verdict, this court has carefully reviewed the evidence adduced at trial. There is in patent cases a fine line between the constitutional right to a trial by jury, and the constitutional limitation on the governmental creation of an enforceable patent monopoly. The plaintiff is entitled, as he requested in this case, to have the jury resolve issues of fact, but a jury's finding of patent validity necessarily encompasses issues of law. Therefore, to properly consider the motion for judgment notwithstanding the verdict, the court must inquire, under the proper legal standard of patentability, "whether the evidence, together with all reasonable inferences which may be drawn therefrom, when viewed in the light most favorable to the party against whom the motion is directed, is insufficient to support the verdict." Appleman v. U. S., 338 F.2d 729, 730 (7th Cir. 1964), cert. denied, 380 U.S. 956, 85 S. Ct. 1090, 13 L.Ed.2d 972 (1965); Moore's Federal Practice, ¶ 50.07.¹ In conformity with Armour & Co. v. Wilson & Co., 274 F.2d 143 (7th Cir. 1960), the court treats this case as it would any other civil litigation.

Defendant produced uncontroverted evidence as to the prior art and use of speedometers. The plaintiff's evidence showed that his speedometer patent satisfied a long-felt need, was an enormous commercial success when produced, and that the speedometer differed in its assembly (in some respects) from earlier speedometers.

Plaintiff's closing argument to the jury presented an intriguing version of the law of obviousness of a patent, placing emphasis on the notion that a long-sought invention or idea, once supplied by another, may seem very obvious and simple in retrospect. While this version is generally correct, it cannot, by extension, enable a jury to grant a patent monopoly to a clever and valuable mechanical solution which nevertheless fails to rise to the level of innovation necessary for a patent. As the Third Circuit indicated in Packwood v. Briggs & Stratton Corp., 195 F.2d 971, 973 (3d Cir.), cert. denied, 344 U.S. 844-45, 73 S.Ct. 61, 97 L.Ed. 657, reh. denied, 344 U.S. 882, 73 S.Ct. 174, 97 L.Ed. 683 (1952), "A jury in a patent case is not free to treat invention as a concept broad enough to include whatever discovery or novelty may impress the jurors favorably." The determination as to whether a patent is invalid by reason of obviousness is a matter of law. Armour & Co. v. Wilson & Co., supra; accord, Panther Pumps & Equipment Co., Inc. v. Hydrocraft, Inc., 468 F.2d 225 (7th Cir. 1972), cert. denied, 411 U.S. 965, 93 S.Ct. 2143, 36 L.Ed.2d 685 (1973); Allen Industries, Inc. v. National Sponge Cushion, Inc., 292 F.Supp. 504 (D.N.J.1967) (granting judgment notwithstanding the verdict of patent validity), aff'd, 403 F.2d 717 (3d Cir. 1968), cert. denied, 394 U.S. 920, 89 S. Ct. 1194, 22 L.Ed.2d 453, reh. denied, 394 U.S. 1025, 89 S.Ct. 1627, 23 L.Ed.2d 50 (1969).

The importance of the legal standard of obviousness is underscored in this verdict since there was no real controversy as to the allegation that Stewart-Warner's products utilized, at least in part, the Pederson claims. The major issue was whether those utilized claims were validly patented to justify the jury in its finding of infringement.

Evidence at Trial

The speedometer art relevant to this case involves the monitoring of the movement of rotary driven vehicles such as cars, tractors, or snowmobiles. The plaintiff's patent concerns speedometers for snowmobiles. The basic function of speedometers is to transform the rotary motion of a shaft, in some proportion, and ultimately to display that motion on the speedometer head (i. e. dial). The display may take the form of the rate of movement (speed), or the accumulation of movement (distance), in which case the device may also be referred to as an odometer.

Precisely the same function is performed by a tachometer in measuring the rotary speed of an engine shaft. The display may differ from that of a speedometer on the same vehicle because of slippage, transmission gearing, or clutching which take place between the engine shaft and the shaft which supplies the actual force of movement.

The Pederson patent, No. 3478606, issued from the United States Patent Office on November 18, 1969, and was filed December 4, 1967. It is entitled, "Apparatus For Indicating The Relative Movement Of A Snowmobile". The specific claims under this number granted by the Patent Office² can be summarized as follows: Much of the rotational energy of the snowmobile engine is ultimately transmitted to the drive axle (otherwise referred to as the drive shaft), the rotation of which causes a simultaneous rotation of an "endless track" or tank type tread whose outer surface touches the snow and moves the snowmobile. The track thus performs the function of the rear tires of an ordinary automobile. One end of the drive shaft is made hollow, and an adaptor is fitted inside. As the shaft rotates, the adaptor is supposed to rotate with it. The adaptor is indirectly connected to the speedometer head. Should the adaptor slip, less movement will be indicated than actually occurs. To prevent slippage, the adaptor is made of a conically shaped resilient material which is wedged into the hollow end of the shaft to produce a frictional engagement.

The adaptor turns a small shaft which turns a first sprocket. The first sprocket turns a chain which drives a second sprocket. The second sprocket drives, or causes to rotate, a flexible shaft which feeds into the speedometer head. By varying the size of the second sprocket, the rotational speed of the drive shaft (and adaptor) can be proportioned so as to conform with the calibration of the speedometer head. If this proportioning is correctly done, the speedometer will indicate the speed of movement (e. g., thirty miles per hour) rather than just a figure of relative accuracy (i. e., wherein a reading of thirty miles per hour indicates twice the speed of a fifteen miles per hour reading, but not the actual speed of thirty miles per hour).

If there was a truly innovative feature in this patent, it was the use of (1) the hollowed end of a (2) drive shaft, and plaintiff so testified. Most snowmobiles prior to the time the patent was filed did not have an accessible, hollow ended drive shaft, but in 1967, the Bombardier Company, a manufacturer of snowmobiles, fitted the end of the drive shaft with a removable bearing cup. Pederson's claims were thus formulated at a time when a substantial potential commercial market for snowmobiles with an accessible connection for speedometers had just appeared. The defendant demonstrated, however, that these "innovations" were not new in terms of the prior art. None of this prior art had been considered by the Patent Office which allowed the claims.³

There was uncontradicted testimony that in 1960, Edgar Hetteen installed and used a snowmobile speedometer which operated through the direct insertion of the core of the speedometer cable into the end of a shaft which had been drilled or hollowed out. While this shaft was not the drive shaft exactly analogous to the one Pederson intended to use, it was a shaft, nonetheless. The difference in rotation between the Hetteen shaft and the drive shaft is one of proportion only, and it is therefore the functional equivalent of the drive shaft, for speedometer purposes.

In 1962, the International Harvester Company sold one hundred snow tractors to the Department of Sanitation of the City of New York. Gayle Stenstrom, who had responsibility for minor engineering changes for special orders from International Harvester, testified that the speedometers for these tractors utilized the hollowed end of a brake shaft to drive the speedometer cable. A clutch was pressed into the hollowed end, thereby frictionally engaging the shaft. The frictional engagement provided a nonslipping means of transferring the rotary motion of the shaft to a set of interlocking "right angle" gears. The shaft motion is transferred to one gear which turns the other gear at a right angle to the first gear. The other gear turns the speedometer cable, which turns the inside of the speedometer head. Thus, the brake shaft, which turned in proportion to the drive shaft of the tractor, itself drove the speedometer.

Myron Johnson, an engineer employed by the defendant, testified as to the pre-1966 existence of two Stewart-Warner tachometers, and the speedometers of two automobiles, all four of which took their rotational input from the hollowed end of a rotating shaft.

The speedometer/odometer head (i. e., the device commonly mounted on the vehicle dashboard which displays speed and distance), and the flexible shaft which derives it, are standard items, and no originality is claimed as to them individually. Moreover, the sprocket and chain...