Performed Line Products Co. v. Fanner Mfg. Co., 15117
| Decision Date | 19 February 1964 |
| Docket Number | No. 15117,15118.,15117 |
| Citation | 328 F.2d 265 |
| Parties | PREFORMED LINE PRODUCTS COMPANY, Plaintiff-Appellee, v. The FANNER MANUFACTURING COMPANY, Defendant-Appellant. PREFORMED LINE PRODUCTS COMPANY, Plaintiff-Cross-Appellant, v. The FANNER MANUFACTURING COMPANY, Defendant-Cross-Appellee. |
| Court | U.S. Court of Appeals — Sixth Circuit |
Richard F. Stevens, Cleveland, Ohio, Patrick H. Hume, Henry L. Brinks, Chicago, Ill., J. Richard Hamilton, Cleveland, Ohio, on brief; Byron, Hume, Groen & Clement, Chicago, Ill., Baker, Hostetler & Patterson, Cleveland, Ohio, of counsel, for Preformed Line Products Co.
George F. Karch, Jr., Timothy F. McMahon, Cleveland, Ohio, Thompson, Hine & Flory, Cleveland, Ohio, McCoy, Greene, Medert & TeGrotenhuis, William C. McCoy, William C. McCoy, Jr., Cleveland, Ohio, on brief, for Fanner Mfg. Co.
Before WEICK, Chief Judge, CECIL, Circuit Judge, and PECK, District Judge.
These appeals involve the validity and infringement of two patents, the scope of a license agreement, misuse of a patent, and purge of that misuse. They arise out of an action commenced in the United States District Court for the Northern District of Ohio, Eastern Division, by Preformed Line Products Company, as plaintiff, against The Fanner Manufacturing Company, as defendant. Jurisdiction was claimed by virtue of Sections 1338(a) and (b) and 1400(b), Title 28 U.S.C. and Sections 281-285, inclusive, Title 35 U.S.C.
In an opinion and supplemental opinion of the District Judge, reported at 225 F.Supp. 762 (), findings were made adverse to both plaintiff and defendant. Both parties appealed from the judgment of the trial court. The defendant is appellant in No. 15117 and the plaintiff is cross-appellant in No. 15118.
Thomas F. Peterson, inventor of four patents with which we are here concerned, is president and principal stockholder of Preformed Line Products Company, an Ohio corporation. At the time suit was begun, the plaintiff was the owner of the patents as the assignee of Mr. Peterson. Subsequent to the commencement of the action all of the assets of the defendant were conveyed to Textron, Inc., a Rhode Island corporation, and, simultaneously, Textron, Inc., assumed all of the defendant's liabilities. The defendant corporation has been dissolved and its business has been continued as the Fanner Division of Textron, Inc. The parties will be referred to as Preformed and Fanner or as plaintiff and defendant as they were in the trial court.
Two patents are in suit: Nos. 2,609,653 and 2,761,273. They are part of a family of four related patents. As a background for a discussion of the patents in suit, it is necessary to consider the other two patents: Nos. 2,275,019 and 2,587,521. For convenience, the patents are referred to as numbers 1, 2, 3 and 4 and are described as follows:
Number Application Issued
No. 1 2,275,019 May 14, 1936 March 3, 1942
No. 2 2,587,521 June 23, 1945 Feb. 26, 1952
No. 3 2,609,653 April 27, 1948 Sept. 9, 1952
No. 4 2,761,273 Sept. 20, 1946 Sept. 4, 1956
The patents developed by Peterson relate to the use of helical preformed elements in various reinforcement and anchoring functions involved with power transmission lines and line conductors. The basic element in all the patents is the armor rod which consists of a hard, spring type wire preformed to a helix with a pitch length several times the diameter of the conductor or strand on which it is applied. This simple basic element allows an endless variety of uses which include conductor armor, splices, dead ends, repair coverings, electrical connectors and cable suspenders. These reinforcement accessories are often applied to cables or other suspended wires or bodies to increase their fatigue life. This reinforcement protects them against excessive vibrational and axial movements and abrasion.
Patent No. 1 is the basic patent for helical preformed elements used in combination with line conductors. The claims of patent No. 1 define a preformed open helix, having a pitch length several times its diameter and capable of substantial elastic deformation manually whereby it may be laid sideways against the conductor and wrapped around without permanent deformation of the helix, the inside diameter of the helix being substantially equal to the outside diameter of the conductor.
Turning now to the questions presented on appeal, we will discuss first the validity of the patents. The Supreme Court has said that due to the greater public importance of the validity of a patent it is the better practice to inquire fully into that issue. Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644; Maytag Co. v. Murray Corp. of America, 318 F.2d 79, 80, C.A. 6.
The trial court determined that patent No. 3 was invalid for double patenting, since the claims read on each other and because no inventive difference existed between patents Nos. 2 and 3. An inventor may not receive more than one patent on one invention. Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121; Application of Stanley, 214 F.2d 151, 41 CCPA 956; Hope Basket Co. v. Product Advancement Corp., 187 F.2d 1008, 1012, C.A. 6, cert. den., 342 U.S. 833, 72 S.Ct. 44, 96 L.Ed. 630. "Under our patent system, based as it is upon statutory monopoly limited to a seventeen year period, it is an inherent principle that an inventor is not entitled to the issuance of two patents at different times for the same invention." Pierce v. Allen B. Du Mont Laboratories, Inc., 297 F.2d 323, 327, C.A. 3, cert. den., 371 U.S. 814, 83 S.Ct. 24, 9 L.Ed.2d 55.
Patent No. 3 has only two claims.1 It is singularly directed to the use of reinforcements on stranded bodies which have a pitch length greater than the pitch length of the reinforcement. Patent No. 2 has nine claims, also concerned with the direction of lay of the strands of the cable of reinforcement upon the cable of association. Claim 3 of that patent is fairly representative.2
Patent No. 3 describes the invention as follows:
Patent No. 3 states:
The objective of patent No. 3 was stated: "The present invention is aimed at curing these defects (the `tracking' defects of patent No. 2) by providing for a helical element that is preformed with an angle of pitch that is less than the angle of lay of the associated stranded body and with a pitch length that is less than the length of the lay of the latter."
The preliminary question in establishing double patenting is ascertaining whether the patent claims read on each other. "The courts apparently felt that to have double patenting it was necessary that the claims of the patents cross-read, that is that not only must the practice of the first patent be an infringement of the second but the practice of the second must be an infringement of the first." Application of Stanley, 214 F.2d 151, 155, 41 CCPA 956.
The question here is whether the language employed in the two patents in description of the pitch lengths has essentially the same import. The issue was stated by the District Court: "whether the `slightly less' pitch lengths of the claims of Patent No. 3 are patentably distinguishable over the pitch lengths of the reinforcements as defined in the claims of Patent No. 2." The language used in patent No. 2 to describe the corresponding pitch lengths is predominately "* * * substantially the same. * * *"3
The District Court determined that * * *" We agree that the claims of the patents read on each other.
Additionally, two patents may not issue for different forms of the same invention when they are not inventively different, Application of Stanley, 214 F.2d 151, 41 CCPA 956. To sustain the validity of a second patent, the Court said in Miller v. Eagle Mfg. Co., 151 U.S. 186, at 198, 14 S.Ct. 310, at 315, 38 L.Ed. 121, that: ...
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