Porter v. Farmers Supply Service, Inc.

• Decision Date: 07 August 1985
• Docket Number: Civ. A. No. 84-527 CMW.
• Citation: 617 F. Supp. 1175
• Parties: Florence PORTER, Executrix of the Estate of Wellington W. Porter, and Porterway Harvester Manufacturing Company, Inc., Plaintiffs, v. FARMERS SUPPLY SERVICE, INC., Defendant.
• Court: U.S. District Court — District of Delaware

617 F. Supp. 1175

Florence PORTER, Executrix of the Estate of Wellington W. Porter, and Porterway Harvester Manufacturing Company, Inc., Plaintiffs, v. FARMERS SUPPLY SERVICE, INC., Defendant.

Civ. A. No. 84-527 CMW.

United States District Court, D. Delaware.

August 7, 1985.

COPYRIGHT MATERIAL OMITTED

Arthur G. Connolly, Jr., of Connolly, Bove, Lodge & Hutz, Wilmington, Del. (Charles S. McGuire, Syracuse, N.Y., of counsel), for plaintiffs.

Donald F. Parsons, Jr., and Jack B. Blumenfeld, Esquire of Morris, Nichols, Arsht & Tunnell, Wilmington, Del., for defendant.

OPINION

CALEB M. WRIGHT, Senior District Judge.

This action for patent and trademark infringement arises out of Farmers Supply Service's (hereinafter "Farmers Supply") sale of replacement disks (or puller blades) for Porterway Tomato Harvesters which are manufactured by Porterway Harvester Manufacturing Co. (hereinafter "Porterway"). The patent in question—Patent No. 3,999,613 (hereinafter "'613 patent")—was issued to Wellington Porter under the title "Tomato Harvester Header." The '613 patent contains a series of combination claims describing a harvester header and the header's use in combination with the Porterway Tomato Harvester. The present action is prosecuted by Porterway and the executrix of Mr. Porter's estate. The plaintiffs' complaint alleges four causes of action against Farmers Supply: patent infringement, federal trademark infringement, federal unfair competition, and unfair competition under state law. Defendant has moved for summary judgment on all counts.

BACKGROUND FACTS

Since incorporation in 1957, Porterway has engaged in the design and manufacture of farm harvesting equipment for a veritable cornucopia of vegetable types including peas, spinach, lima beans, asparagus, pumpkins, cucumbers, brussels sprouts and tomatoes. The Porterway Tomato Harvester, which is a single row tomato harvester, is one of Porterway's most commercially successful machines, accounting for nearly 70% of the company's gross revenues over the past ten years according to Porterway's own estimates.

The machine itself is not especially complicated. It consists of three major structures—a header, a conveyor section and a main frame. These three structures are in turn made up of smaller components and sections.

The header mechanism is found at the front of the machine. It consists of two counter-rotating notched disks (puller blades) positioned so that the edges of the two disks overlap, two power-driven rotating shafts to propel the disks, two dome covers to constrain soil and debris flying up from the disks, and a supporting structure which holds the disks in place and permits adjustment in the blade's lateral angle.

The disks have an approximate diameter of 30 inches. The notches on the disks' periphery are about 1½ inches in width and spaced about an inch apart. The disks differ from ordinary blades in that their edges and the interior of their notches are blunt rather than sharp. These blunt surfaces facilitate the pulling action of the overlapping disks as they rotate.

When operating, the harvestor's counter-rotating disks are tilted forward so that the leading edge of the disks penetrates the ground in front of the harvester, causing the stem of the tomato to be engaged by the notches of the overlapping disks. The plant stem is lifted by the overlapping disks and severed from its roots by the pulling action of the rotating disks.

The header is mounted on a wheeled conveyor section. As the stem passes through the disks, the plant is deposited on a conveyor whose bed is made of metal segments linked together. The conveyor bed keeps the plant and vegetables moving toward the main frame structure while permitting the soil to pass through the conveyor bed.

The conveyor is attached to the main frame of the harvester by a flexible coupling device. The device permits the movement of the conveyor and header to adapt to the contour of the ground as the entire harvester mechanism moves along. The main frame structure consists of shaker and sorting sections which function to separate the vegetable from the plant.

While the harvester can be adopted for purposes of self-propulsion, it is typically used in conjunction with a tractor. The harvester comes with platforms to carry workers while the machine is in operation. The harvester is equipped with manual controls which can be used to adjust the tilt of the disks and regulate other functions performed by the harvester.

The '613 patent covers those patentable aspects of the tomato harvestor involving the use of the header. The patent consists of ten claims, all of which are "combination" claims. The patent along with sixteen other patents is listed on an aluminum plate which is attached to every harvester sold. There is no way of knowing through a visual inspection of the machine which of the harvester's parts are within the patents listed on the attached plate.

Farmers Supply's principal source of business is selling replacement parts for farm machinery. Since August, 1983, it has sold replacement disks for the Porterway Tomato Harvester. Farmers Supply does not manufacture these disks, nor does it obtain them from Porterway. Farmers Supply does not act as a supplier for original equipment manufacturers. (Cannon Affidavit ¶ 9). It's replacement disks are sold exclusively to farmers owning Porterway Harvesters whose blades are worn out. (Id.). Although Porterway markets its own replacement disks for its harvesters at $112.70 per blade (Plaintiffs' Responses to Interrogatories I-8), a replacement disk from Farmers Shipply costs only $79.50. (Cannon Affidavit ¶ 7).

There is no dispute as to the similarity between the disks marketed by Porterway and the replacements sold by Farmers Supply. The disks are virtually identical in every respect with the possible exception of the type of steel used and the thickness of their gauge. In February of 1983, some six months prior to Farmers Supply's sales of the disks, its employees conducted a detailed inspection of a Porterway disk. Porterway's disks carry no markings except a designation that they are manufactured in the United States. Farmers Supply's disks are marked: "Del-Mar-Va made in England." Porterway contends that Farmers Supply's sale of disks infringes claims 9 and 10 of the '613 patent.

The disks for a Porterway Tomato Harvester are expected to wear out long before the harvester itself does. A disk will typically last about half of a harvest, although any estimate will depend on the size of a farmer's acreage and the type of soil. Porterway suggests the machine's five-year depreciation period for tax purposes as an estimate of the machine's useful life. (Plaintiffs' Responses to Interrogatories I-9). Farmers Supply estimates the actual life of a harvester at around ten years during which time the farmer may have worn out as many as twenty pairs of disks. (Cannon Affidavit ¶ 9). Porterway does not sell headers separately from its harvester, and a new harvester costs $42,400. (Plaintiffs' Responses to Interrogatories I-8).

Porterway is a registered federal trademark (Reg.No. 583,362). After substantial but by no means exhaustive discovery, involving production of all of Farmers Supply's sales slips, two instances have come to light in which the Porterway name was used by a Farmers Supply employee. On one invoice, dated April 25, 1984, the following phrase appears: "Cutter Blade—Porterway Harvester to Fit." (Cannon Affidavit, Exhibit A). A second invoice, dated August 28, 1984, states: "Cutter Blade— Porter Way Harvester to Fit." (Id., Exhibit B). Farmers Supply asserts that, to the best of its knowledge, its employees have never tried to deceive customers through any representation that the puller blades (or disks) sold were manufactured by Porterway. (Id. ¶¶ 11, 14).

PATENT INFRINGEMENT

Porterway alleges that Farmers Supply's sale of disks infringes claims 9 and 10 of the '613 patent both directly and contributorily. Farmers Supply has responded with three defenses: (1) its sales do not infringe any of the claims contained in the '613 patent; (2) the '613 patent is invalid; and (3) Porterway's misuse of the '613 patent bars recovery in an action for infringement.

Defendant's motion seeks summary judgment with respect to the first of these defenses. A finding of infringement requires that the sale of an article either itself comes within the scope of a patent claim or that the article either is uniquely suited for purposes of infringement or is knowingly sold to someone who will use it for that purpose. 35 U.S.C. § 271. There is no factual dispute regarding the nature of the articles sold by Farmers Supply. The defendant, however, contends that a finding of infringement is precluded because sale of the puller blades to owners of Porterway Harverters neither directly nor contributorily infringes the '613 patent.

Actions arising under the patent laws are no less subject to summary judgment than any other type of action, once a moving party has met his burden under Fed.R.Civ.P. 56(c). Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831, 835 (Fed.Cir.1984); Chore-Time Equipment, Inc. v. Cumberland Corp., 713 F.2d 774, 778-79 (Fed.Cir. 1983).

In this case, the overriding issue is one of claim construction. Claim construction is generally an issue of law rather than one of fact. Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 654 (Fed.Cir.1984): Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1569 (Fed.Cir. 1983). In construing the scope of a patent claim, the trial court must look at the language of the claim in question, the specification of the other claims in the patent, and the patent's prosecution history. See Lemelson v. United States, 752 F.2d 1538, 1549 (Fed.Cir.1985); SSIH Equipment, S.A. v. USITC, 718 F.2d 365, 376 (Fed.Cir. 1983). Although this may require the Court to make certain factual findings, this does...