Robbins Company v. Lawrence Manufacturing Company
| Decision Date | 24 July 1973 |
| Docket Number | No. 71-2944.,71-2944. |
| Citation | 482 F.2d 426,178 USPQ 577 |
| Parties | The ROBBINS COMPANY, Plaintiff-Appellee, v. LAWRENCE MANUFACTURING COMPANY, Defendant-Appellant. |
| Court | U.S. Court of Appeals — Ninth Circuit |
John M. Calimafde (argued), Stephen B. Judlowe, of Sandoe, Hopgood & Calimafde, New York City, Bruce M. Pym, of Graham, McCord, Dunn, Moen, Johnston & Rosenquist, Seattle, Wash., for defendant-appellant.
John O. Graybeal (argued), James R. Uhlir, of Graybeal, Barnard, Uhlir & Hughes, Seattle, Wash., for plaintiff-appellee.
Before MERRILL, CARTER and CHOY, Circuit Judges.
Appellee The Robbins Company (hereafter Robbins) brought suit against appellant Lawrence Manufacturing Company (hereafter Lawrence), a competitor in the field of tunnel boring machines, for infringement of Robbins' Patent No. 3,216,513. Lawrence moved for summary judgment. This appeal is from an order of the district court denying that motion.
Ordinarily such an order would not be a final judgment and, hence, not appealable. However, the trial court granted appellant's petition to certify the question for appeal and a panel of this court, pursuant to 28 U.S.C. § 1292(b), granted appellant's motion to hear the interlocutory appeal.
The sole question on appeal is whether the patented subject matter, rock cutter assemblies, was "on sale" in this country more than a year prior to application for the patent, thereby rendering the patent invalid. We reverse.
The statute involved, 35 U.S.C. § 102(b), reads as follows:
No question is presented as to the description of the patent in any printed publication in this country or elsewhere, or as to public use.
The patent concerns cutters which are designed for attachment to tunnel boring machines. The boring machine has at its front a rotating headplate to which an array of cutters are attached. The remainder of the machine is a locomotive-like device for driving the front end into the face of the earth while rotating the headplate. The patent does not concern anything but the cutters.
An application for the patent was filed on January 6, 1964, and Patent No. 3,216,513 issued on November 9, 1965. The patent specification refers to an earlier application dated February 18, 1963. Appellant assumes that the patent is entitled to the earlier filing date of February 18, 1963. Thus the patent is invalid under 35 U.S.C. § 102(b) if it was "on sale" more than one year prior to February 18, 1963, that is, prior to February 18, 1962, the critical date.
The prior cutters used slightly different seal and bearing arrangements. The patented version uses inclined, instead of arcuately disposed, roller bearings, and metal-to-metal seals instead of metal-to-rubber or gasket seals. Inclined roller bearings and metal-to-metal seals were, however, merely standard items purchased in the market place.
The appellant relies upon two transactions, claimed to be within the "on sale" prohibition, before the critical date: (1) the Hydro-Electric Commission transaction, and (2) the M. J. Bles Construction Company transaction.
In 1959, the Hydro-Electric Commission of Tasmania, Australia, invited offers from manufacturers who had successfully built tunnel boring machines, for a machine to be custom built to detailed specifications for use in constructing the Great Lake Power Development, near Poatina in northern Tasmania. The terms of the bid made the successful manufacturer responsible for shop testing the boring machine before shipping; placed delivery f. o. b. the shipping port; reserved the right to cancel if the April 1, 1961 delivery date were not met; required a specific boring rate of 40 feet per day; and demanded a guarantee of performance.
In December 1959, Robbins submitted a detailed written offer for sale of such a machine. The Commission accepted. A contract was executed in June 1960, which specifically provided for a list of machine components and a price schedule, and required delivery f. o. b. Seattle, Washington by March 18, 1961. Time was made of the essence, with a penalty for late delivery and a bonus for early delivery.
Robbins guaranteed a tunneling rate of five feet per hour, against a $21,550 penalty for breach thereof. Robbins was to receive 95 percent of the total price, which was $453,705.05, when the goods were delivered in Seattle. The remainder was due after 500 feet of tunneling, or six months after on-site acceptance. There was no mention in the offer of the patented cutter; an earlier version was listed. However, the Commission's design acceptance under the contract, in September 1960, did specify the later-patented D-1053 cutter. Nothing in the contract mentioned experimentation, and the Commission had no obligation to supply test or other data to Robbins.
The assembled machine, with 50 of the D-1053 cutters, was assembled, shop tested, disassembled, packed and then delivered on shipboard in Seattle on January 30, 1961 — more than one year prior to the critical date of February 18, 1962. Robbins received 95 percent of the price, in U.S. dollars. The machine was publicized in the newsletter of its fabricator, Pacific Car & Foundry Company, in February 1961, without reference to experimentation. It arrived in Australia, was assembled and tested under Robbins' supervision, and the Commission certified it acceptable on May 5, 1961. Robbins received the remaining five percent of the purchase price. The machine was then used to bore thousands of feet of tunnel, prior to the critical date.
Thus, well before the critical date Robbins competitively sought and obtained a "time of the essence" contract for 50 cutters, had them manufactured and delivered to it, sold and received payment for them, and the customer received, successfully used, and accepted the equipment.
In the summer of 1960, the M. J. Bles Construction Company of McLean, Virginia, had obtained a contract from the District of Columbia to build an underground tunnel for a Potomac sewer project. Robbins contacted Bles in July 1961 to persuade Bles to lease or rent Robbins' tunneling equipment for the project. Robbins made a detailed proposal, offering to lease or rent to Bles its Model 71 machine. Bles accepted, and an agreement, lease and option to purchase were executed on November 10, 1961, prior to the critical date of February 18, 1962.1
The document provided for use of the machine in tunneling 7,900 feet for the sewer project, with an advance rental of $30,000 plus an amount based on tunneling footage. A minimum royalty of $154,050 was specified for 7,900 feet. Robbins guaranteed a boring rate of at least three feet per hour, within 30 days after the work commenced. Bles was to have exclusive control over the machine, and bear the expense of any necessary technical assistance. The document, at Bles' request, contained an option to purchase the machine, including the cutters, for an additional $175,000.
As with the Commission contract, nowhere was "experimental use" mentioned in the Bles transaction.
Robbins ordered D-1142 cutters, which were within the later patent, from its subcontractor, and the cutters were delivered to Robbins on January 16, 1962, prior to the critical date. Thereafter, in March 1962, the machine and cutters were delivered to Bles. The machine was unsuccessful, for reasons unrelated to the cutters. On June 22, 1962, the lease agreement was terminated, and Bles' advance rental was returned to it.
The fact that this is an appeal from an order denying the motion for summary judgment marks the case as an unusual one. Of course, such orders are interlocutory and not appealable without compliance with 28 U.S.C. § 1292(b). Here an able trial judge acceded to Lawrence's desires and certified the matter under the statute, stating that "the . . . order denying summary judgment involves a controlling question of law . . . and that an immediate appeal from this order as authorized by 28 U.S.C. § 1292(b) may materially advance the ultimate termination of this litigation." The Court of Appeals will grant such interlocutory review only in extraordinary cases where decision might avoid protracted and expensive litigation. United States Rubber Co. v. Wright (9 Cir. 1966) 359 F.2d 784, 785 (per curiam).
Robbins contends that the use of the patented device in the two transactions set forth above, was an experimental use and thus within an exception to 35 U.S. C. § 102(b), supra. The case law makes clear that an experimental use is not within the "public use" provisions of the statute, Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256, 8 S.Ct. 122, 31 L.Ed. 141 (1887); FMC Corp. v. The F. E. Myers & Bro. Co. (6 Cir. 1967) 384 F.2d 4, 9-10, cert. denied, 390 U.S. 988, 88 S.Ct. 1183, 19 L.Ed.2d 1291 (1968), nor is such experimental use within the "on sale" provisions. Watson v. Allen (1958) 103 U.S.App.D.C. 5, 254 F.2d 342, 346 (Burger, Circuit Judge).
There were no provisions in either the Hydro-Electric or the Bles transactions which stated that the sale was for experimentation, or required secrecy in the use of the device or reporting the results of the supposed experimentation.
After Lawrence filed its motion for summary judgment, Robbins for the first time contended that its offers for sale and sales were solely for experimental use. Robbins submitted three affidavits, two by James S. Robbins, its president and the inventor, and one by Sugden, a friend and sales agent for...
To continue reading
Request your trial
-
Gemveto Jewelry Co., Inc. v. Jeff Cooper Inc.
...See also Record at 231-38, 242, 252-54. Cf. Timely Prods. Corp. v. Arron, 523 F.2d 288, 302 (2d Cir.1975); Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426, 431 (9th Cir.1973). 20 Application of Braithwaite, 54 C.C.P.A. 1589, 379 F.2d 594, 602 (C.C.P.A.1967) (Smith, J., 21 Application of Kaye......
-
Kock v. Quaker Oats Co.
...102(b). The district court granted summary judgment for the defendants, reasoning, first, that under the case of Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426 (9th Cir. 1973), the court may not look beyond the four corners of the written contract in search for an experimental purpose, and ......
-
In re Yarn Processing Patent Validity Litigation
...its wording, the Synfoam license in itself cannot conclude the experimental use issue. Appellees urge adoption of the Ninth Circuit's Robbins rule, which is as A sale or an offering for sale precludes any inquiry into the experimental nature of the sale unless the contract of sale or the of......
-
Aguayo v. Universal Instruments Corp., CIV.A.H-02-1747.
...sale did occur in the United States. The meaning of "on sale in this country" under section 102 is discussed in Robbins Co. v. Lawrence Mfg. Co., 482 F.2d 426 (9th Cir.1973). The court held that or not a sale is consummated in a foreign country, the product is "on sale" in the United States......
-
McKesson, The Ghost Of New Rules Past?
...significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff'd, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. If an Applicant......
-
Umc Electronics v. United States: Should Reduction to Practice Be a Requirement of the on Sale Bar?
...(BNA) 906 (1966); In re Corcoran, 640 F.2d 1331 1334, 208 U.S.P.Q. at 870. See also supra note 63. 171. Robbins Co. v. Lawrence Mfg., 482 F.2d 426, 428, 178 U.S.P.Q. (BNA) 577, 579 (9th Cir. 1973); Western Marine Elec. Co. v. Fururo Elec. Co., 764 F.2d 840, 845, 226 U.S.P.Q. (BNA) 334, 338;......
-
Timothy R. Holbrook, Territoriality and Tangibility After Transocean
...(“There is little case law examining the requirement that the offer be made in the United States.”); Holbrook, supra note 4, at 742.121 482 F.2d 426 (9th Cir. 1973).Id. at 434.See, e.g., MDS Assocs., Ltd. P’ship v. United States, 37 Fed. Cl. 611, 631 (1997) (holding that “if substantial act......