PULLMAN INCORPORATED v. ACF INDUSTRIES INCORPORATED
| Decision Date | 04 April 1967 |
| Docket Number | No. 61 Civ. 3644.,61 Civ. 3644. |
| Citation | 269 F. Supp. 279 |
| Parties | PULLMAN INCORPORATED, Plaintiff, v. ACF INDUSTRIES INCORPORATED, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Kane, Dalsimer, Kane, Sullivan & Smith, New York City, for plaintiff, David S. Kane and Haynes N. Johnson, Stamford, Conn., Robert C. Brown, Jr., and John M. Mann, Chicago, Ill., of counsel.
Davis, Hoxie, Faithfull & Hapgood, New York City, for defendant, John Hoxie, Cyrus S. Hapgood and George E. Faithfull, New York City, of counsel.
In challenging the validity of a patent, advocates sometimes assert facetiously that the patentee, instead of patenting an invention, invented a patent. The occasional aptness of this cliché is illustrated by the present litigation.
The railroad freight car cushioning apparatus that is the subject of the patent in suit differs materially from its predecessors only in the respect that the cushion specified has a longer stroke or yield. Having found that this sole material difference is a distinction without inventive significance, the Court has concluded — for the reasons more particularly set forth in the course of the opinion — that the patent is invalid.
This action, commenced by the filing of a complaint on October 16, 1961, is for the alleged infringement of United States Letters Patent No. 3,003,436 on a "Method & Apparatus for Protecting Vehicle Loads" issued in the name of William H. Peterson on October 10, 1961. Plaintiff, a Delaware corporation with a place of business in New York, is and has been, since the issue date thereof, the owner of the Peterson patent. Defendant is a New Jersey corporation with its principal place of business in New York. The Court has both in personam and subject-matter jurisdiction.
The Peterson patent was granted on an application of December 3, 1959. That application was a continuation-in-part of an earlier application of March 5, 1959, the disclosure of which, to the extent that it is not inconsistent, is expressly incorporated by reference in the subsequent application and in the patent.
The patent itself is directed to the protection of lading, while it is being transported in or on a railway freight car, against damage arising from longitudinal impacts to the car such as those which commonly occur during switching operations in classification yards. Moreover, the patent states that the invention has broader aspects in that "its benefits can be applied to various types of passenger-carrying vehicles as well as freight-carrying vehicles."
Reduced to simple terms, the subject of the patent is a cushion or shock absorber of stated characteristics which is interposed at some point between the car body and the car couplers. The cushion serves to give some degree of protection to the vehicle and its contents from impacts received at the couplers. Since cushions of various kinds had been used for many years in railway cars to serve the same basic purpose, the fundamental questions arising in this litigation revolve around the stated characteristics of the cushion described in the patent claims. As claimed, the cushion is of the energy-dissipative type, and is identified by its travel stroke, closure time and force-travel characteristic.
The defendant, one of the plaintiff's competitors in the field of railroad car building, is charged with infringement of the Peterson patent by reason of its admitted manufacture, use and sale of freight cars of the known "cushion-underframe" type employing one or another of three styles of hydraulic cushion. Those styles, each of a different make, are:
a) The "Freight Saver," formerly made by the Bendix Products Division of Bendix Corporation but now made by defendant itself since its acquisition, on or about November 15, 1962, of the freight-car cushion business of Bendix. The Freight Saver is made in two sizes with respect to the nominal length of cushion travel: 20 inches and 30 inches.
b) The "Hydra-Cushion," sold by Hydra-Cushion, Inc., which has a nominal length of cushion travel of 20 inches.
c) The "Shock-Control" unit, sold by Keystone Railway Equipment Co., which has a nominal length of cushion travel of 20 inches.
Plaintiff relies upon 13 of the 27 claims of the Peterson patent. It divides the selected claims into three groups designated A, B and C, as follows:
Plaintiff takes claim 1, and defendant takes claims 1 and 21, to be typical of the A claims. Plaintiff takes claim 7, and the defendant takes claims 7 and 26, to be typical of the B claims. Claims 9 and 27 of the A group and claim 26 of the B group — which are limited by their terms to a cushion having a "stroke" or travel length of about 30 inches, or to a cushion with characteristics equivalent to a 100% efficient cushion having that length of stroke — are relied upon only in support of the charge against the 30-inch Freight-Saver. The C claim, No. 20, is relied upon only against the Hydra-Cushion.
In addition to denying the charge of infringement, defendant raises several issues of patent validity. Specifically, defendant contends that:
a) The patented subject is an old combination, has no material novelty and is anticipated in substance (35 U.S.C. §§ 101, 102);
b) The patented subject was not inventive but was "obvious," within 35 U. S.C. § 103; and
c) The patent fails in material respects to comply with 35 U.S.C. § 112, both as to its disclosure and its claims, and especially as it is asserted in this action.
A familiarity with some basic technology of railway freight cars and some elementals of railroad operations is helpful to an understanding of the issues here in controversy.
In simplified form, a conventional or standard freight car consists of: a car underframe mounted on the wheeled trucks; a car body mounted, in turn, on the underframe; couplers projecting from each end of the underframe; and draft gear units, which are friction or rubber shock absorbers of less than three-inch yield, interposed between each coupler and the underframe. Thus, a push or pull received by the coupler is applied endwise to the underframe and car body through the draft gear.
Freight cars receive longitudinal impacts in being coupled together. During train operation, impact forces are also applied at the couplers when the slack present in the couplers and draft gears permits the coupled cars to be pulled somewhat apart or squeezed somewhat together. A severe, though common, impact occurs in the assembly of cars into trains at classification yards when a car is set in motion to run down a track into the end car of a previously assembled string of cars, which offers little "give."
To protect railway cars and their contents, railroads sought for many years to limit car speeds to 4 miles per hour in the coupling of cars. It was and is generally accepted that, when the car speed is held below this rate, the impact at coupling is sufficiently cushioned by the conventional draft gear so that it does not cause damage to the cars or to most of the many kinds of lading, of diverse degrees of fragility, that are carried. Above this speed, however, the shock absorbing capacity of the draft gear is generally insufficient; and there may be damage to some forms of lading resulting from the higher force applied to the car following closure of the draft gear. Because the energy of the striking car, and therefore the severity of the impact, increases as the square of the speed, the probability of damage is multiplied as the speed is greater.
Despite attempts by railroads to keep coupling speed down, increased traffic demands and other factors resulted in frequent higher coupling speeds including speeds up to and above 10 miles per hour. It was well known that, because of their modest cushioning capacity, conventional draft gears could not generally provide adequate lading protection at speeds higher than 4 miles per hour. Although the cushioning capacity could be increased by increasing the travel of the draft gears, such a solution was proscribed in practice because it would increase the extent of slack in trains, thereby creating difficulties in train operation.
In recognition of this need for greater cushioning capacity, the "cushion-underframe" car was introduced in the late 1920's. In this car, the couplers are mounted, frequently through draft gears, on the ends of a sliding sill, a long and heavy member which slides lengthwise in a channel in the center sill which is the principal longitudinal beam of the underframe. A cushion forms the connection between the sliding sill and the center sill of the underframe, so that an impact received at the coupler at either end of the sliding sill is applied through the cushion to the underframe and the attached body. Thus, supplemental cushion yield can be provided without introducing additional slack between the cars of a train (sometimes denominated the "bellows" effect) because the through connection of car to car is by way of the rigid sliding sills commonly carrying only conventional draft gears and couplers.
To understand the manner by which the cushion affords protection to the lading, it is necessary to consider the sequence of physical events which occur during a coupling impact. To simplify the explanation, the case to be described will involve a cushion-underframe car (containing the lading under consideration) which is struck by a moving uncushioned car while the cushioned car is at rest but free to move. While this is not the most common impact situation, it is a satisfactory model for understanding the sequence of events.1 When the coupler of the moving car makes contact with the standing cushion-underframe car, the impact is received by the coupler at one end of the sliding sill. The immediate result is that the coupler starts to move inward. If there is a...
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