Pullman Incorporated v. ACF Industries Incorporated

• Decision Date: 04 April 1968
• Docket Number: Docket 31598.,No. 265,265
• Citation: 393 F.2d 83
• Parties: PULLMAN INCORPORATED, Plaintiff-Appellant, v. ACF INDUSTRIES INCORPORATED, Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

393 F.2d 83 (1968)

PULLMAN INCORPORATED, Plaintiff-Appellant, v. ACF INDUSTRIES INCORPORATED, Defendant-Appellee.

No. 265, Docket 31598.

United States Court of Appeals Second Circuit.

Argued January 24, 1968.

Decided April 4, 1968.

David S. Kane, New York City (Kane, Dalsimer, Kane, Sullivan & Smith, Martin E. Goldstein, New York City, Haynes N. Johnson, Stamford, Conn., Robert C. Brown, Jr., John M. Mann, Chicago, Ill., of counsel), for appellant.

John Hoxie, New York City (Davis, Hoxie, Faithfull & Hapgood, Cyrus S. Hapgood, Laurence R. Hefter, New York City, of counsel), for appellee.

Before MEDINA, MOORE and ANDERSON, Circuit Judges.

MOORE, Circuit Judge:

This appeal involves the validity and alleged infringement of United States Patent No. 3,003,436 which issued to William H. Peterson on October 10, 1961, on an application dated December 3, 1959, which incorporated therein an application dated March 5, 1959. Plaintiff-appellant Pullman Incorporated (plaintiff) has been the owner of the Peterson patent since issuance. On October 16, 1961, it filed its complaint in the United States District Court for the Southern District of New York claiming infringement; the answer of ACF Industries Incorporated (defendant) denied infringement and set up the defense that the patent was invalid because the patented subject was "obvious" within the meaning of 35 U.S.C. § 103.¹

The patent relates to a cushion for a "cushion-underframe" freight railroad car — the most popular type of railroad freight car today. Before that type of freight car appeared, the lading inside a car was prevented from feeling the full force of collisions with other freight cars — such as occur when a train is being assembled — by something called a "draft gear," normally a rubber or friction unit with less than three inches of yield. Draft gears reduced the impact by providing a cushioning effect but the protection afforded was found to be insufficient. The "cushion-underframe" car was designed in the late 1920's to provide more lading protection. In this type of car, the couplers are mounted, frequently through draft gears, to the ends of a sliding sill, a long member which slides through a channel that runs the whole length of the car. When a car is hit, the sliding sill slides, cushioning the impact by the need to overcome the friction of the sill against the channel walls. In addition, there is a cushioning mechanism that connects the sill to the car underframe so that the car does not receive the same jolt as the sill.

Despite these improvements, damage to fragile lading continued to occur and the railroads saw some of their freight being diverted to trucks as a result. The search for a better cushion continued and in the 1950's plaintiff brought out a compressible rubber unit which had 8 inches of travel providing still more cushioning effect. "Travel" is the distance that a unit moves before it reaches its point of maximum compression or give. Thus, a standard 10-inch-long spring will have approximately 9 inches of travel if it is one-inch long when it is fully compressed. The Southern Pacific began using the "Hydra-Cushion," which has a 10-inch travel, in the mid-1950's. This was a more advanced unit as it applied hydraulic principles to the cushioning problem.

A hydraulic unit is superior to a cushion relying on rubber or a spring because it can be designed to offer uniform pressure against impacts for the entire length of its travel (a so-called constant-force cushion), unlike rubber or springs which have a substantial amount of give at first but which quickly increase in the amount of resistance offered. They can thus "go hard" or offer no cushioning effect before the entire amount of the impact force has been absorbed. At high speed impacts the hydraulic unit has the same limitation but it can offer more cushioning effect for the same amount of travel than other types of cushion.² The hydraulic unit furthermore dissipates the energy it receives, avoiding the recoil inherent in energy compressing devices such as springs.

For several years the ten-inch cushion was the standard of the industry, but lading damage continued to exist. In 1958 Peterson, an engineer in plaintiff's research department, conducted tests with longer travels than the normal ten inches. By empirical testing he found that an increase in travel length from 10 to 20 inches greatly reduced the lading force — i. e., the force of the end wall of the car against the lading when the car is jolted. He made tests that showed that travels of 20 to 40 inches would protect "resilient lading" such as cartoned canned goods, one of the most fragile types of lading, under almost all freight yard conditions. It was well known that the average impact speed in freight yards was around 10 mph and impacts at up to 15 mph were not uncommon. The original draft gear was designed to cushion impacts at only 3-4 mph and the "Hydra-Cushion" simply extended this same level of protection to impacts of 9-10 mph. To protect against impacts of 9.5 mph Peterson discovered that 19 inches of cushion travel were needed — using an energy dissipative cushion, i. e., a hydraulic or hydraulically operated friction unit — and that to protect against speeds up to 14.2 mph 32½ inches of travel were required. Plaintiff applied this knowledge to the cushions then in use and received a patent (in 1962) for a cushion described in Claim 1 of the patent as follows:

"In a railway freight car adapted to carry a shiftable load thereon, the combination of a car underframe, couplers at each end of the underframe, a load carrying body supported by the underframe and longitudinally movable relative to the couplers, and a cushioning device interposed between the couplers and said body, said cushioning device having energy transferring and dissipating characteristics equivalent to a 100% efficient cushioning mechanism having a cushion travel in one direction within the range from about 20 inches to about 40 inches, and in which, for an impact of 10 miles per hour delivered to one of said couplers by another car, the cushioning device will not close in less than about .23 second, said cushioning device having a cushion stroke length for closing in one direction of not more than about 40 inches."

The Patent Examiner and plaintiff have summarized the essential characteristics of the cushion as:

"1. high energy absorption

2. substantially dissipative energy system travel characteristics 3. substantially constant force-travel cushion

4. a range of travel (i. e., 20-40 inches) extended over a sufficient closing time, so applicant\'s desired results will be obtained."

These patent claims encompass all hydraulic cushions (and other energy dissipative devices) having an efficiency of close to 100% (constant-force cushions) and a travel of from 20-40 inches, and cushions equivalent thereto.³ The patent, in conjunction with the doctrine of equivalence, therefore stakes out a monopoly on the most popular size and type of cushion used in the industry. The trial judge came to the conclusion that the patent was invalid because plaintiff's cushion would have been obvious to the ordinary man skilled in the art. 35 U.S.C. § 103. We agree.⁴

Plaintiff's first objection to the decision below is that it failed to make a finding as to the level of skill that this person "reasonably skilled in the art" was deemed to have. See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 37, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Plaintiff argues that since the patent law uses a "specialized reasonable man test for obviousness" (Formal Fashions, Inc. v. Braiman Bows, Inc., 369 F.2d 536 (2d Cir. 1966)), an explicit definition of this man's level of skill is a necessary foundation to a determination of obviousness. While this might be true in some cases, the District Court was correct in concluding that "manifestly, this `hypothetical mechanic' would be familiar with the principles of cushioning and with the application of cushioning devices to the protection of car and lading." 269 F.Supp. at 298 n. 9. Plaintiff's other objections to the decision of the District Court simply amount to denials that the patented cushion was obvious within the meaning of § 103. We therefore turn to that broad issue.

Plaintiff does not, and of course could not, claim to have invented all types of cushions. To obtain the patent Peterson had to limit his claims of invention to a cushion that brought about the protection of resilient lading at impact speeds in excess of 9 mph by a means not obvious to those skilled in the art. To narrow the issue of what advances, if any, plaintiff's cushion had made over the prior art, the parties have stipulated that prior to June 1955 the following combination was in public use as described in printed publications:

"A car underframe, a draft & buffing column (sill) carried by the underframe and capable of longitudinal movement relative thereto, couplers with draft gears operatively connected thereto at opposite ends of the column, a load carrying body supported by the underframe and longitudinally movable relative to the column and couplers, means for supporting said underframe for travel over the rails of a track, and dissipative energy type cushioning means interposed between the underframe and the column for providing cushioning therebetween through a certain maximum distance of cushion travel in each direction."

To distinguish his cushion from this prior art, plaintiff proposes that it be of the 100% efficient or constant-force energy-dissipative type (with certain allowances for design limitations). However, plaintiff admits that the 10-inch Hydra-Cushion which antedated his cushion, was a constant-force energy-dissipative cushion, and the District Court was, therefore, correct in determining that the constant-force specification would be an obvious method of obtaining the most cushion per inch of travel. The only reason...