Porter v. Farmers Supply Service, Inc.

• Decision Date: 14 May 1986
• Docket Number: 85-2802,Nos. 85-2748,s. 85-2748
• Citation: 229 USPQ 814,790 F.2d 882
• Parties: , 229 U.S.P.Q. 814 Florence PORTER, Executrix of the Estate of Wellington W. Porter, and Porterway Harvester Manufacturing Co., Inc., Appellants/Cross-Appellees, v. FARMERS SUPPLY SERVICE, INC., Appellee/Cross-Appellant. Appeal
• Court: U.S. Court of Appeals — Federal Circuit

Page 882

790 F.2d 882

54 USLW 2643, 229 U.S.P.Q. 814

Florence PORTER, Executrix of the Estate of Wellington W.

Porter, and Porterway Harvester Manufacturing Co., Inc., Appellants/Cross-Appellees, v. FARMERS SUPPLY SERVICE, INC., Appellee/Cross-Appellant.

Appeal Nos. 85-2748, 85-2802.

United States Court of Appeals, Federal Circuit.

May 14, 1986.

Charles S. McGuire, Syracuse, N.Y., for appellants/cross-appellees.

Donald F. Parsons, Jr. and Jack B. Blumenfeld, Morris, Nichols, Arsht and Tunnell, Wilmington, Del., for appellee/cross-appellant.

Before MARKEY, Chief Judge, FRIEDMAN and NIES, Circuit Judges.

MARKEY, Chief Judge.

Florence Porter, as executrix of Wellington W. Porter's estate, and Porterway Harvester Manufacturing Co., Inc. (collectively, "Porterway"), appeal from a final judgment of the United States District Court for the District of Delaware (Wright, Senior Judge) granting summary judgment of non-infringement to Farmers Supply Service, Inc. (Farmers). 617 F.Supp. 1175, 228 USPQ 1 (D.Del.1985). We affirm.

Background

Porterway, owner of U.S. Patent No. 3,999,613 ('613 patent) issued to Wellington W. Porter, sued Farmers for patent infringement, trademark infringement, and unfair competition under federal and state law.

The '613 patent relates to a "Tomato Harvester Header". The header includes two counter-rotating notched disks with overlapping edges, two power-driven shafts to rotate the disks, and a supporting structure to position the disks and permit adjustment. The notches on the disks facilitate the uprooting of plant stems.

Farmers sells disks exclusively to owners of Porterway harvesters, and solely to replace worn out disks. For each replacement disk, Farmers charges $79.50 and Porterway charges $112.70. Porterway sells the harvester for $42,400, and does not sell headers separately from harvesters. The useful life of a disk is measured in weeks, that of a harvester is five or six years. The district court found, and it is undisputed, that a purchaser can expect to wear out many disks during the useful life of the header.

Porterway contended before the district court that Farmers directly and contributorily infringed claims 9 and 10 of the '613 patent. Claim 10 depends from claim 9 and therefore requires no separate consideration here. Claim 9 reads:

In a tomato harvesting machine of the type movable through a field to remove plants and fruit from the ground, a header construction for mounting at the forward end of the machine to sever plant stems and direct plants and fruit onto the machine, said header construction comprising:

a. a pair of substantially flat, circular discs arranged in side-by-side relation with overlapping edges for rotation about substantially parallel axes through the center of said discs;

b. power drive means imparting rotation to said disks in opposite directions with the forward edges thereof, with respect to the intended direction of movement of the harvester, moving toward one another; and

c. a plurality of evenly spaced notches extending into the peripheries of each of said discs and inclined generally in the intended direction of rotation, said notches being spaced to provide an edge of the circular disc periphery therebetween, whereby the stems of plants are engaged between said discs and pulled upwardly and rearwardly to be severed from the roots, each of said notches including:

i. a first straight edge extending inwardly from a first point on the disc periphery at an angle to the radius inclined in the direction of rotation;

ii. a rounded edge extending from the inner terminus of said first edge in the direction of rotation; and

iii. a second straight edge extending from the terminus of said rounded edge to a second point on said disc periphery.

Porterway based its trademark and unfair competition counts on the assertion that Farmers used the "Porterway" trademark, Reg. No. 583,362, to cause purchaser confusion, citing as the sole evidence of that use two Farmers invoices indicating that the disks were sold to fit a Porterway Harvester.

The District Court's Decision

The district court granted Farmers' motion for summary judgment on all counts. Respecting the patent counts, the court: (1) construed the claims as including more than the disks; (2) found that sale of disks could not directly infringe the claims; (3) The district court dismissed the trademark and unfair competition counts because Porterway failed to set forth specific facts supporting their allegations of purchasers deception and failed to point to any non-functional aspect of the disk's design. The court noted that the invoices support an inference that customers would not have been deceived.

held that replacement of the disks is permissible repair, not direct infringement; and (4) held that, because of (3) and because direct infringement is absent, sale of the disk could not constitute contributory infringement.

Lastly, the district court denied Farmers' request for attorney fees, stating that:

The Court is not of the opinion that this action was of such an exceptional nature which would justify the imposition of sanctions in the form of attorneys' fees pursuant to Fed.R.Civ.P. 11. While certain of [Porterway's] claims were weak, especially those concerning trademark infringement and unfair competition, the Court believes the action was neither frivolous, nor brought in bad faith.

617 F.Supp. at 1189, 228 USPQ at 11.

The Appeals

In Appeal No. 85-2748, Porterway appeals only from the portion of the judgment holding Farmers not liable for contributory infringement, arguing that if the district court had properly construed claim 9 it would have found direct infringement by owners of Porterway Harvesters because they reconstructed the harvester when they replaced worn disks. That finding, Porterway argues, would make Farmers a contributory infringer.

In Appeal No. 85-2802, Farmers cross-appeals the denial of its motion for attorney fees, arguing that the suit was frivolous. Farmers also requests an award of its costs and attorney fees expended in this court, on the ground that this appeal is frivolous.

Issues

(1) Whether the district court erred in granting summary judgment of non-infringement.

(2) Whether the district court abused its discretion in denying Farmers' motion for attorney fees.

(3) Whether this appeal is frivolous.

OPINION

(1) Summary Judgment

This court has repeatedly upheld the grant of summary judgment in favor of those accused of infringement where there was no genuine issue of material fact, the trial court had properly construed the claims, and a finding of infringement would therefore have been impossible. See Brenner v. United States, 773 F.2d 306, 227 USPQ 159 (Fed.Cir.1985); Builders Concrete, Inc. v. Bremerton Concrete Products Co., 757 F.2d 255, 225 USPQ 240 (Fed.Cir.1985); Prodyne Enterprises, Inc. v. Julie Pomerantz, Inc., 743 F.2d 1581, 223 USPQ 477 (Fed.Cir.1984). Conceding the absence of disputed issues of material fact in this case, Porterway argues that the district court committed purely legal errors.

It is well settled that, absent direct infringement, there can be no contributory infringement. Aro Manufacturing Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341, 81 S.Ct. 599, 602, 5 L.Ed.2d 592, 128 USPQ 354, 357 (1961) (Aro I); 35 U.S.C. Sec. 271(c) (1982). However, as above indicated, Porterway argues that owners of Porterway Harvesters are direct infringers because they impermissibly reconstruct the header when they replace a disk. Porterway says to conclude otherwise "is to ignore all prior law on the subject."

Citing Paper Converting Machine Co. v. Magna-Graphics Corp., 745 F.2d 11, 223 USPQ 591 (Fed.Cir.1984), Porterway argues that the district court must have thought there could be no infringement unless the entire combination of claim 9 left the seller fully assembled. Porterway misunderstands or distorts the district court's analysis, citing nothing of record to support its conjecture. Moreover, the focus of the direct infringement inquiry is, as it was in the district court, on owners of Porterway Harvesters. The argument is frivolous.

Porterway argues that the district court misconstrued claim 9. The argument is frivolous. The district court held that the claim "contains elements that are not strictly related to the structure of the disks or their design." 617 F.Supp. at 1182, 228 USPQ at 5. That conclusion is readily and unquestionably apparent from a mere reading of the claim.

Porterway says the district court's comparison of the disks' life and cost to those of the harvester as a whole is irrelevant. See 617 F.Supp. at 1186, 228 USPQ at 8. However, the claim preamble places the header in the harvester and section b of the claim limits the disks' forward edges "with respect to the intended direction of the harvester." Though a limitation to consideration of the header construction of claim 9 produces the same outcome in this case, it was not error for the court to consider the preamble which in this case gives meaning to other elements of the claimed invention. ¹ Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675-76 (Fed.Cir.1984), cert. denied, --- U.S. ----, 105 S.Ct. 187, 83 L.Ed.2d 120 (1984); In re Bulloch, 604 F.2d 1362, 1365, 203 USPQ 171, 174 (CCPA 1979).

Porterway makes a surface concession that claim 9 is not drawn to the disks per se, but argues that the district court incorrectly emphasized the power drive means, saying that the claims "stressed the novel configuration of the disk notches" and that Porterway never suggested that the power drive means was a novel or critical element of the claimed invention. ² That argument is frivolous.

Porterway's contentions on repair v. reconstruction are contrary to the law pronounced by the Supreme Court. The Court has "eschewed the suggestion that the legal distinction between 'reconstruction' and 'repair' should be...