Reinharts v. Caterpillar Tractor Co.

• Citation: 85 F.2d 628
• Decision Date: 08 September 1936
• Docket Number: No. 7636.,7636.
• Parties: REINHARTS, Inc., v. CATERPILLAR TRACTOR CO.
• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)

85 F.2d 628 (1936)

REINHARTS, Inc., v. CATERPILLAR TRACTOR CO.

No. 7636.

Circuit Court of Appeals, Ninth Circuit.

September 8, 1936.

George L. Wilkinson and Charles L. Byron, both of Chicago, Ill., Percy S. Webster, of Stockton, Cal., and Thatcher & Woodburn, of Reno, Nevada, for appellant.

Charles M. Fryer and Alfred C. Aurich, both of San Francisco, Cal., for appellee.

Before WILBUR, GARRECHT, and MATHEWS, Circuit Judges.

MATHEWS, Circuit Judge.

This appeal is from a decree which held that five patents owned by appellee were, as to the claims in suit, valid and infringed by appellant, enjoined appellant from further infringing them, and referred the case to a master for an accounting and for the assessment of damages.

The patents in question are Turnbull, No. 1,304,416; Holt, No. 1,314,651; Wickersham, No. 1,356,679; Whitacre, No. 1,744,516; and Norelius, No. 1,317,653. The Turnbull, Holt, Wickersham, and Whitacre patents are for improvements in tractors. The Norelius patent is for an improvement in trailer wagons. The infringement charged was the sale by appellant of two tractors, one being a wheel tractor and the other a track-type tractor, both of which were manufactured by International Harvester Company of New Jersey. Appellant admitted having made these sales, but defended on the grounds that, as to the claims in suit, appellee's patents were invalid, and that, if the patents were valid, the tractors which appellant sold did not infringe them.

Grounds of invalidity pleaded in appellant's answer were: (1) Want of invention; (2) anticipation, or lack of novelty; and (3) failure to "particularly point out and distinctly claim" the patented improvements, as required by section 4888 of the Revised Statutes, as amended (35 U.S.C.A. § 33). Appellant, at the close of the evidence, submitted its proposed findings of fact and conclusions of law, wherein the court was requested to hold all the patents invalid for want of invention and to hold the Norelius patent, but none of the others, invalid for noncompliance with section 4888 of the Revised Statutes. There was no request to hold any of the patents invalid for lack of novelty. Thus the defense of anticipation was abandoned, and the defense of noncompliance with section 4888 was limited to the Norelius patent.

Appellant's brief states: "The validity of the claims at issue of plaintiff's appellee's patents depends upon whether the structures they define, when compared with the prior art structures, result from the exercise of invention or merely from mechanical skill of those versed in the art." The question thus presented is one of fact. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 446, 44 S.Ct. 533, 68 L. Ed. 1098; Stoody Co. v. Mills Alloys (C.C. A.9) 67 F.(2d) 807, 812; Schumacher v. Buttonlath Mfg. Co. (C.C.A.9) 292 F. 522, 533.

Having been regularly issued, appellee's patents were presumptively valid, and the burden of establishing their invalidity rested on appellant. Radio Corporation of America v. Radio Engineering Laboratories, 293 U.S. 1, 7, 55 S.Ct. 928, 79 L.Ed. 163; Morgan v. Daniels, 153 U.S. 120, 123, 14 S.Ct. 772, 38 L.Ed. 657; Cantrell v. Wallick, 117 U.S. 689, 695, 6 S.Ct. 970, 29 L.Ed. 1017; Coffin v. Ogden, 18 Wall. 120, 124, 21 L.Ed. 821; Stoody Co. v. Mills Alloys, supra; Banker's Utilities Co. v. Pacific National Bank (C.C.A.9) 18 F.(2d) 16, 18; Chester N. Weaver, Inc., v. American Chain Co. (C.C.A.9) 9 F.(2d) 372, 380; Schumacher v. Buttonlath Mfg. Co., supra; Wilson & Willard Mfg. Co. v. Bole (C.C.A.9) 227 F. 607, 609.

The question of infringement also is a question of fact. Stilz v. United States, 269 U.S. 144, 147, 46 S.Ct. 37, 70 L.Ed. 202; United States v. Societe Anonyme des Anciens Etablissements Cail, 224 U.S. 309, 322, 32 S.Ct. 479, 56 L.Ed. 778; Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U. S. 301, 312, 29 S.Ct. 495, 53 L.Ed. 805; Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 422, 28 S.Ct. 748, 52 L.Ed. 1122.

On both questions — the question of validity and the question of infringement — the trial judge, who personally heard the evidence and personally inspected the accused tractors, decided against appellant. His findings, unless clearly wrong, should not be disturbed. Adamson v. Gilliland, 242 U.S. 350, 353, 37 S.Ct. 169, 61 L.Ed. 356; Diamond Patent Co. v. Webster Bros. (C.C.A.9) 249 F. 155, 158; Central California Canneries Co. v. Dunkley Co. (C.C. A.9) 247 F. 790, 794. See, also, Collins v. Finley (C.C.A.9) 65 F.(2d) 625, 626; Easton v. Brant (C.C.A.9) 19 F.(2d) 857, 859.

The trial court found, as a fact, that the combination defined in each of the claims in suit was a substantial and meritorious advance over anything found in the prior art, and constituted subject-matter which required inventive genius to produce. Accordingly, the trial court concluded, as a matter of law, that, as to each of the claims in suit, all the above-mentioned patents were valid. As to the Turnbull, Holt, Wickersham, and Whitacre patents, the trial court's finding is well supported by the evidence and is, we think, clearly correct. The supporting evidence consists of the patents themselves, with their specifications and drawings, working models of the patented structures¹ and the testimony of experts familiar with the prior art, from all of which it appears that the improvements disclosed by Turnbull, Holt, Wickersham, and Whitacre required the exercise of the faculty of invention, and were not the mere product of mechanical skill. We conclude, therefore, that in holding these patents valid, the trial court did not err.

The question next to be considered is whether the Turnbull, Holt, Wickersham and Whitacre patents were infringed.

The Turnbull patent was applied for on May 25, 1918, and was issued on May 20, 1919. As stated in the specification: "This invention relates to tractors ...... and has for its object to simplify and improve the manufacture and assembly of the machine, and particularly to render the transmission mechanism readily accessible."

The specification contains a detailed description, accompanied by drawings, exemplifying one form which the invention may assume. From these it appears that, except for an axle and a drive shaft, all parts of the transmission mechanism, including a change speed gear set and a power shaft for a belt pulley, are carried entirely by the cover of the transmission housing. This cover is fitted detachably upon the lower portion of the housing and is bolted tightly thereon, so that the housing is entirely closed. When it is desired to remove the transmission mechanism, the cover is taken off, bringing with it the gear set and associated parts, without disturbing the lower portion of the housing, which forms an indispensable part of the main frame. Aside from the advantage of accessibility, this manner of mounting the gears on the cover provides a further advantage, in that the lower half of the transmission housing does not have to be machined to the extent that would be necessary if the bearings for the various shafts of the transmission mechanism were formed thereon. Also with the transmission parts so arranged, it becomes much easier to assemble the machine.

Claims 1, 2, 5, and 6 of the Turnbull patent are in suit.² Each claim defines a combination one element of which is a cover for a transmission housing so constructed and arranged that it carries and supports a change speed gear set; or, in other words, a change speed gear set the support for which forms the closure for a transmission housing.

Appellant contends that no such element is contained in either of the accused tractors. This contention is not borne out by the evidence. Included in the evidence are photographs and working models of the accused tractors and the testimony of experts as to whether these tractors contain this and other elements of the patented combinations. In addition, the trial judge had before him the accused tractors themselves and saw them dismantled and reassembled. Appellant attempts to differentiate between the patented and the accused structures by applying the term "cage" to that which the patentee calls a "cover." The evidence shows that the "cage" referred to by appellant is, in fact, a cover for a transmission housing, and that it carries and supports a change speed gear set. Appellee's "cover" and appellant's "cage" perform substantially the same function in substantially the same way to obtain substantially the same result. That they are called by different names is immaterial. Bates v. Coe, 98 U.S. 31, 42, 25 L.Ed. 68.

The trial court found that both the accused tractors contain each of the elements of the several combinations defined in claims 1, 2, and 6 of the Turnbull patent, and that the accused wheel tractor contains each of the elements of the combination defined in claim 5 thereof. This finding is amply supported by the evidence. There was, therefore, no error in holding these claims infringed by the tractors in which the combinations defined by them are, respectively, contained.

The Holt patent was applied for on September 5, 1917, and was issued on September 2, 1919. It is for a traction attachment which may be substituted for the ordinary round wheels of an auto truck or other wheeled vehicle. The attachment comprises a rear driving axle and a self-laying track propelling mechanism operatively connected to the axle at each end thereof. This mechanism includes a rear driving sprocket wheel, a front guide wheel, a track chain trained about said wheels, a roller truck mechanism operating upon the ground stretch of the chain and supporting the axle, and a jointed carrying frame for the sprocket and guide wheels. The jointed carrying frame is in two sections, constituting, in effect, two frames, pivotally connected to each other. The rear section carries the sprocket wheel and is called the supporting frame. The front section, which...