Railroad Dynamics, Inc. v. A. Stucki Co.

• Decision Date: 25 March 1983
• Docket Number: Civ. A. No. 76-800.
• Citation: 579 F. Supp. 353,218 USPQ 618
• Parties: RAILROAD DYNAMICS, INC., Plaintiff, v. A. STUCKI COMPANY, Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

579 F. Supp. 353

218 USPQ 618

RAILROAD DYNAMICS, INC., Plaintiff, v. A. STUCKI COMPANY, Defendant.

Civ. A. No. 76-800.

United States District Court, E.D. Pennsylvania.

March 25, 1983.

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Ronald L. Panitch, Alan S. Nadel, Philadelphia, Pa., for plaintiff.

Raymond G. Hasley, Rose, Schmidt, Dixon & Hasley, Pittsburgh, Pa., for defendant.

MEMORANDUM

RAYMOND J. BRODERICK, District Judge.

This is a declaratory judgment action instituted by plaintiff Railroad Dynamics, Inc. ("RDI") against A. Stucki Company ("Stucki") seeking a declaration that United States Patent Number 3,837,292 (hereinafter "the '292 patent" or the "patent in suit") is invalid. This Court has jurisdiction over the action under 28 U.S.C. §§ 2201 and 2202 and 28 U.S.C. § 1338(a).¹ Stucki, the owner of the patent as assignee of the inventor, Donald Wiebe, counterclaimed against RDI alleging that the patent was valid and infringed by RDI. RDI has admitted that if the patent is found to be valid, RDI has infringed the patent.

Following a fifteen day trial a jury, in its answers to eleven special interrogatories, found for defendant on all validity issues submitted. The damages portion of the case was then tried to the Court, and judgment was entered on August 26, 1981 in favor of Stucki and against RDI in the amount of $1,960,700.

Plaintiff has moved for judgment notwithstanding the verdict, or, in the alternative, for a new trial, contending that the evidence was insufficient to support the jury's findings and that, as a matter of law, the '292 patent is invalid. RDI contends, as it contended at trial, that the patent is invalid for four reasons: 1) the invention claimed was obvious in view of the prior art at the time of invention, and hence was unpatentable under 35 U.S.C. § 103; 2) the patent fails to disclose the best mode of installing and retaining the patented device, rendering the patent invalid under 35 U.S.C. § 112; 3) the claims in the patent were filed more than one year after sale and use of the claimed invention, rendering the patent invalid under the late claiming doctrine; and 4) no supplemental oath was filed in support of the claims which ultimately became the claims of the patent, a violation of 37 C.F.R. § 1.67 which renders the patent invalid. RDI further contends that even if the patent is valid, it has intervening rights under 35 U.S.C. § 252 to continue to make and sell its infringing device because Stucki added the claims which cover RDI's device only after seeing RDI's device in use. Finally, RDI submits that this Court erred in its charge to the jury, making a new trial necessary if judgment notwithstanding the verdict is not granted. For the reasons which follow, we reject all of plaintiff's contentions, and we will deny its motion for judgment notwithstanding the verdict or, in the alternative, for a new trial.

The standards by which a court must decide motions for a new trial and for judgment notwithstanding the verdict have been set forth by this Court as follows:

1, 2 Motions for a new trial require the exercise of discretion by the Court, whose "duty is essentially to see that there is no miscarriage of justice." 6A Moore's Federal Practice ¶ 59.085, at 59-160 (footnote omitted) (2d ed. 1974); Thomas v. E.J. Korvette, Inc., 476 F.2d 471, 474-75 (3d Cir.1973). The jury's verdict may be set aside only if manifest injustice will result if it were allowed to stand. The Court may not substitute its own judgment for that of the jury merely because the Court may have reached a different conclusion. To grant a motion for judgment n.o.v., the Court must find as a matter of law that the plaintiff failed to adduce sufficient facts to justify the verdict. Neville Chemical Co. v. Union Carbide Corp., 422 F.2d 1205, 1210 (3d Cir.), cert. denied, 400 U.S. 826, 91 S.Ct. 51, 27 L.Ed.2d 55 (1970). Such a motion "may be granted only when, without weighing the credibility of the evidence, there can be but one reasonable conclusion as to the proper judgment." 5A Moore's supra, ¶ 50.072, at 50-77 (footnote omitted); Korvette, supra, at 474.

Douglas W. Randall, Inc. v. AFA Protective Systems, 516 F.Supp. 1122, 1126 (E.D. Pa.1981), aff'd, 688 F.2d 820 (3d Cir.1982).

These standards are applicable to patent cases. Although the question of patent validity, including the determination of the obviousness or non-obviousness of the subject matter of a patent is ultimately a legal one, the determination depends on underlying questions of fact. Northern Plastics Engineering Co. v. Eddy, 652 F.2d 333, 336 (3d Cir.1981); Tights, Inc. v. Acme-McCrary Corp., 541 F.2d 1047, 1060 (4th Cir.) cert. denied sub nom., Kayser-Roth Corp. v. Tights, Inc., 429 U.S. 980, 97 S.Ct. 493, 50 L.Ed.2d 589 (1976); Stevenson v. International Trade Commission, 612 F.2d 546, 549, 67 C.C.P.A. 109 (1979).² Where, as here, the jury has found a patent to be non-obvious, and has made other findings which support the validity of the patent, these findings are determinations that the disputed factual questions with respect to the issues of obviousness and validity have been resolved favorably to the patentee. Dual Manufacturing & Engineering, Inc. v. Burris Industries, Inc., 619 F.2d 660, 664 (7th Cir.) (en banc) cert. denied, 449 U.S. 870, 101 S.Ct. 208, 66 L.Ed.2d 90 (1980). The jury's factual findings may not be overturned if supported by sufficient evidence, viewing the record in the light most favorable to the verdict winner, and giving the verdict winner the benefit of all reasonable inferences. Black and Decker Manufacturing Co. v. Sears, Roebuck & Co., 679 F.2d 1101, 1103 (4th Cir. 1982); Velo-Bind, Inc. v. Minnesota Mining & Manufacturing Co., 647 F.2d 965, 971 (9th Cir.) cert. denied, 454 U.S. 1093, 102 S.Ct. 658, 70 L.Ed.2d 631 (1981).

Much of the background to this case was set forth in this Court's memorandum of August 25, 1981 on the damages issues, and can be summarized as follows:

The patent in suit concerns the spaced placement of a hydraulic shock absorber or "snubber" in the spring group of a railroad freight car, between the bolster and the side frame, held in place by a biasing spring so that it is normally operative only when the car is loaded and is normally inoperative when the car is unloaded.³ A freight car has four side frames, each of which holds two of the car's eight wheels. A freight car also has two bolsters. A bolster is a metal rod which connects the two side frames at each end of the freight car. The spring group is a group of springs, usually eight to ten in number, located between the wheels in each side frame. Each end of a bolster is attached to and rests upon the springs in the spring group of a side frame. An illustration of the shock absorber in the patented location is given in Figure 1.⁴

The springs in the spring group operate in the same manner as springs in an automobile and absorb energy when the freight car is in motion. The energy absorption capacity of the springs is not sufficient, however, to control the movement of many large freight cars, particularly when such cars are being operated at higher speeds or on railroad track that is in poor condition. In such circumstances, these large freight cars begin to rock from side to side, a phenomenon known in the railroad industry as "rock and roll". Primarily on curved track, the rock and roll motion of a freight car can become so severe that the freight car body can be lifted off the center plate upon which it rests, and one or more wheels can actually be lifted off of the track for a fraction of a second. If the wheel does not return to the track, a derailment occurs. Though this problem previously existed in the industry it became particularly acute when 100-ton capacity freight cars, 25-30% larger than previously existing cars, were introduced around 1964. (N.T. 3.109)

In order to prevent derailments due to "rock and roll", the railroad industry developed shock absorbers, or "snubbers", designed to provide added energy absorption capacity to that already supplied by the springs in the spring group. A number of companies developed friction snubbers, designed to dissipate rock and roll energy in the form of heat by bringing two pieces of metal together while the freight car was in motion. In the mid to late 1960's RDI and Stucki manufactured hydraulic snubbers that absorbed excess energy by use of the principles of hydraulics. No snubber completely absorbs all of the energy created by the rock and roll motion of a freight car, but it is claimed that hydraulic snubbers absorb a greater amount of energy than friction snubbers. Only RDI and Stucki manufactured hydraulic snubbers which were accepted in the trade in the late 1960's.

The Stucki hydraulic snubber based on the patent in suit, known as the "HS-6" snubber, is located in the spring group and designed so that it does not become engaged, or begin to absorb energy, until a freight car is loaded with freight. The HS-6 is installed in a spring group by removing one of the outboard springs of the group and replacing it with the HS-6 unit. Since the HS-6 unit is not as long as the distance between the bolster and the side frame, the unit makes use of a "biasing" spring located between the side frame and the snubber which holds the snubber in place and away from the side frame when the freight car is empty. The snubber is pressed into contact with the side frame when the car is loaded and, once pressed into contact, can begin to absorb energy.

The patent in suit, number 3,837,292, was issued to Donald Wiebe on September 24, 1974. It was based on an application PX-3 filed April 15, 1971. This application was a continuation-in-part of application number 857,274, filed August 22, 1969 PX-6 ("the parent application"), which was itself a continuation-in-part of application number 709,142, filed February 28, 1968 and later abandoned PX-7 ("the...