Piel Manufacturing Company v. George A. Rolfes Co.
| Decision Date | 02 October 1964 |
| Docket Number | Civ. No. 5-1250. |
| Citation | 233 F. Supp. 891 |
| Parties | PIEL MANUFACTURING COMPANY, Incorporated, Alfred J. Piel and Curry-Trol Oil Corp., Plaintiffs, v. GEORGE A. ROLFES CO., and Rolfes Manufacturing Co., Defendants. |
| Court | U.S. District Court — Southern District of Iowa |
Donald H. Zarley, Bruce W. McKee, Des Moines, Iowa, for plaintiffs.
Sherwin J. Markman, Des Moines, Iowa, Theodore R. Scott, James P. Ryther, Chicago, Ill., for defendants.
Plaintiff, Piel Manufacturing Company, Incorporated, is an Iowa corporation located at Hubbard, Iowa. It was incorporated in 1959 and was preceded in business by a partnership, Piel Manufacturing Company, which was composed of plaintiff, Alfred J. Piel, and members of his family. Plaintiff Curry-trol Oil Corp., of Hubbard, Iowa, is also an Iowa corporation which was formed in 1959, and plaintiff Alfred J. Piel is president of both plaintiff corporations.
Defendants, George A. Rolfes Co. and Rolfes Manufacturing Co. are Iowa corporations located at Boone, Iowa, and George A. Rolfes is President of both corporations. Subsidiary Rolfes corporations exist in several midwestern states. Since about 1954, defendants have been manufacturing and selling grain aeration equipment and related items. The Rolfes Manufacturing Co. does the manufacturing of these products and sales are handled by the George A. Rolfes Co.
Plaintiff Alfred J. Piel is the inventor of record and owner of the patents in suit, namely, patent Nos. 2,813,510 and 2,794,422 on cattle oilers and rubbing elements therefor, respectively. Plaintiff, Piel Manufacturing Company, Incorporated, is the licensee under these patents.
Plaintiff Piel Manufacturing Company, Incorporated, is the owner by assignment from its preceding partnership of the trademark "Currytrol" and trademark registration No. 679,190 thereon, said trademark being used on cattle oilers. Said corporation is also the owner of the trademark "Currytrol" and registration No. 748,038 thereon for use on insecticide oil, and plaintiff Curry-trol Oil Corp. is a licensee under this trademark. Piel Manufacturing Company, Incorporated, makes and sells cattle oilers under its trademark, and the Currytrol Oil Corp. manufactures and sells the insecticide oil sold under its licensed mark.
Of patent 2,813,510 (referred to as the 510 patent), only claims 1, 2, 3, 4, 5, and 12 are involved in this suit. These claims read as follows:
Claim 12 contains:
Claim 1 of the 510 patent is substantially the same as claim 12 except that it calls for two spaced apart wheels rotably mounted on the frame.
Claim 4 of the 510 patent is the washers mounted on the cables.
Claim 5 of the 510 patent consists of the spring connected to the actuating member of the pump and it incorporates all of claim 1.
Claim 2 of the 510 patent modifies the structure of claim 1 by providing that the liquid discharge conduit leads from the pump to a point in the vicinity of the cable at a point between the wheels.
Claim 3 of the 510 patent defines the wheels of claim 1 as pulley wheels.
It is the claim of the plaintiffs that these claims of the 510 patent are infringed by the defendants and that the 510 patent is valid. Defendants deny the infringement and claim the 510 patent is invalid.
Piel made a few cattle oilers substantially the same as shown in the patent drawings. Later Piel developed Model 561 which used a single pulley wheel instead of two wheels shown in the patent drawing. Still later, Piel developed Model 601 which added a full sized cylindrical tank. It is this Model 601 which is involved in the unfair competition claim. Both Models 561 and 601 worked on the principle of a single cable.
The defendants claim that the original 510 patent under the doctrine of equiva-member on the pump to be operatively connected to the cable. Defendants also claim that this was necessary to make the unit operative.
Defendants contend that because their machine does not have two spaced apart pulley wheels and because the actuating member on their pump is not connected operatively to the cable, their structure does not literally infringe the 510 patent and further that it does not infringe the 510 patent under the doctrine of equivalents.
Patent No. 2,794,422 () is a liquid redirecting element located on the cables of the cattle oiler and is designed to reduce oil wastage by redirecting oil from the surface of the rubbing elements back to the cable. The 422 patent contains 9 claims and the defendants are charged with infringing claims 1, 2, 5, 6, 7, 8, and 9.
The elements of claim 1 of the 422 patent are:
Claim 2 of the 422 patent incorporates claim 1 and adds a spool having an open well at one end thereof receiving a portion of the washer-like means and a communicating bore embracing the cable.
Claim 5 of the 422 patent contains the following elements:
Claim 6 of the 422 patent incorporates claim 5 and adds the fins on the outer surface of the 422 structure.
Claim 7 of the 422 patent is very similar to claims 1 and 5.
Claim 8 of the 422 patent incorporates claim 7 and adds the feature that the lower end portion of one washer structure has an outside diameter less than that of the inside diameter of the top end of the washer structure. This allows the separate washer-like structures to fit together.
Claim 9 of the 422 patent includes claims 7 and 8 and adds the fins on the outside.
The defendants deny infringement of the 422 patent and claim that it is not a valid patent.
The defendants claim that the 510 patent is invalid because it was anticipated by the Assman patent and the combination of the Caldwell and Muzzy patents.
The Assman patent No. 2,762,335, issued on an application filed in the United States Patent Office in May 1955, and although there is some dispute in the evidence, the court finds that the Piel structure was not conceived prior to that time.
The court finds that the Piel 510 patent is invalid by reason of the prior Assman patent. The court further finds that the Piel 510 patent is invalid by reason of the Caldwell and Muzzy patents. The principal difference between the Assman patent and the Piel 510 patent is that the tank in the Assman patent is located in a different position. This does result in oil getting to the cables in a somewhat different manner. The difference, however, is not a patentable one. Especially is this so when other prior art taught the use of pumping the oil up to the cables. The court does not feel that the plaintiffs' machine as disclosed in the patent eliminated lateral stress and that this at any rate would not make the machine patentable.
The Caldwell structure differs from the Piel 510 unit principally in that Caldwell used two cables and two pumps instead of one of each. The difference would not be patentable, but at any rate the other prior art, particularly the Muzzy patent, teaches the use of a single pump. Whether the prior art teaches the process of the patent to one skilled in the art is a question of fact. That distinguishes Ditto v. Minnesota Mining & Manufacturing Company, 336 F.2d 67.
In Caldwell v. Kirk Manufacturing Company, 269 F.2d 506 (8th Cir.), the court said the apparatus must reveal real inventive genius and not merely the skill of a mechanic familiar with the prior art. That court further said that novelty, utility, public acceptance, and the presumption of validity is not sufficient to make a patent valid. Novelty, utility, and public acceptance are strongly relied on by Piel in this case but it is not sufficient. The Caldwell case has been adhered to. See John Deere Company of Kansas City v. Graham, 333 F. 2d 529 (8th Cir.). In Calmar, Incorporated v. Cook Chemical Company, 336 F. 2d 110, the patent produced a long needed and desired advancement in the field. That is not so in this case.
The finding of invalidity of the 510 patent makes it unnecessary to decide whether the claims of the 510 patent are infringed. The court concludes that because of the crowded prior art in the field of cattle oilers, the doctrine of equivalents should not apply. This is not a situation where some of the elements of the patent existed in the prior art machines designed for different purposes than a cattle oiler, but here the elements are found in prior art machines which are used for the same purpose as the Piel machine, i. e., as cattle oilers.
The defendants claim that the Piel 422 patent is invalid as being anticipated...
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