Roller Bearing Company of America v. Bearing, Inc.

• Decision Date: 02 February 1971
• Docket Number: Civ. A. No. 30552.
• Citation: 322 F. Supp. 703,168 USPQ 648
• Parties: ROLLER BEARING COMPANY OF AMERICA, Plaintiff, v. BEARING, INC., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

322 F. Supp. 703

168 USPQ 648

ROLLER BEARING COMPANY OF AMERICA, Plaintiff, v. BEARING, INC., Defendant.

Civ. A. No. 30552.

United States District Court, E. D. Pennsylvania.

February 2, 1971.

Joseph G. Denny, III, and Leonard L. Kalish, Philadelphia, Pa., for plaintiff.

Howson & Howson, Philadelphia, Pa., Foorman L. Mueller, Mueller § Aichele, Vincent J. Rauner, Chicago, Ill., for defendant.

OPINION

JOHN MORGAN DAVIS, District Judge.

Before the Court is the defendant's Motion for Partial Summary Judgment (Document 127), pursuant to Federal Civil Rule 56, wherein it seeks dismissal of this action as to United States Patent No. 2,884,288 ('288), on the grounds of invalidity.¹

Specifically, the defendant asserts that the '288 patent is invalid, alleging that several commercial applications were placed on sale or in some cases actually sold to the public on at least five separate occasions, each more than one year prior to the filing of an application for letters patent on August 31, 1951. See 35 U.S.C. § 102(b).²

COMPLIANCE WITH PLEADING AND NOTICE REQUIREMENTS

Preliminarily, the plaintiff asserts that the failure of the defendant to properly plead and give notice of the contemplated defense of invalidity 30 days before trial, as required by 35 U. S.C. § 282,³ forecloses consideration of this defense. We find this assertion to be without merit.

There is substantial authority to the effect that the notice and pleading requirements are inapplicable where the prior use is shown by the patentees' own testimony.

In the instant case, the deposition testimony of Mr. Victor Barr, a co-patentee, together with documents which he prepared as Director of Engineering of the plaintiff Corporation, were substantially relied upon by the defendant in furtherance of this motion. See e. g., depositions of Victor L. Barr dated July 1, 1965, pages 392-394, 404-405; deposition dated February 14, 1964, page 98.

The '288 patent was assigned by Mr. Barr to the plaintiff Corporation. In a similar manner, its Sales Manager, Joseph J. Trainer, furnished substantial information upon which the defendant relies in support of its motion. See e.g. Exhibits A and B to defendant's Motion for Summary Judgment (Document 127). Finally, much information was also furnished by the plaintiff's President, Mr. Raymond Trainer. See e. g. Exhibit 16 to defendant's Motion; his deposition dated February 13, 1964 and specifically, pages 150, 219, 239, 240 and 243. See also inventory records and similar documents maintained by the plaintiff Corporation and identified as Exhibit Nos. 19(a) and (c); 22(a) and (b) to defendant's Motion. Finally, the plaintiff's answers to defendant's requests for admission partially corroborated some of the transactions relied upon by the defendant. See e. g. Admission Nos. 31, 34, 42, 56 (Document 21).

The purpose of the well-established pleading and notice requirement set forth in Section 282 is essentially to prevent surprise. Philadelphia and Trenton R.R. Co. v. Stimpson, 39 U.S. (14 Pet.) 448, 459, 10 L.Ed. 535 (1840); Davis Harvester Co. v. Long Mfg. Co., 252 F.Supp. 989 (D.N.C.1956), affirmed, 373 F.2d 513 (4th Cir. 1967). In the instant case, the preponderance of the evidence in support of this motion for summary judgment was elicited from either the co-patentee, the corporate assignee, or the corporation's own officers. The plaintiff can not now be reasonably heard to assert that it was in any way "surprised" by information which it itself furnished. See Paddies, Inc. v. Broadway Dept. Stores, 147 F.Supp. 373 (S.D.Cal.1956), and cases cited therein at p. 375.

This conclusion is further strengthened by the fact that on November 5, 1965, this Court entered a pre-trial Order (document 51) authorizing the defendant to amend its pre-trial memorandum (document 49), "* * * To add the following defenses: (a) invalidity of patent No. 2,884,288 * * * based on prior public use-offer for sale and sale of the bearings more than one year prior to the date of the filing of the patent." This was two and one half years prior to the filing of the defendant's Motion for Partial Summary Judgment.

We agree with the plaintiff that the notice and pleading provisions of Section 282 equally pertain to motions for summary judgment. However, in addition to the reasons set forth above, we note that the defendant filed its motion on July 6, 1968. As required by the Federal Civil Rules, the motion set forth the affidavit, documents and exhibits and other pleadings upon which the defendant would rely. The oral argument was conducted over 60 days later. In the interim, the plaintiff was given ample opportunity to obtain and submit any material in reply thereto. Thus, the plaintiff actually received well over the 30 day period prescribed by the aforementioned statute.⁴

We accordingly conclude that there was sufficient compliance by the defendant with the pleading and notice provisions of Section 282 to permit consideration of this Motion for Summary Judgment.

INCIDENTS OF PRIOR SALE

The defendant principally relies upon five transactions involving either the sale or the offer to sell roller bearings, which were admitted to be commercial applications of the claims in suit.⁵

In each instance the plaintiff does not dispute that its bearings were conveyed to its customers, but would characterize the transactions as "tests" or merely for "experimental use." Principal reliance is placed by the plaintiff upon City of Elizabeth v. Pavement Co., 97 U.S. 126, 24 L.Ed. 1000 (1878). In this decision the Supreme Court essentially recognized that bona fide test or "experimental use" of an invention is an exception to the public use bar.

As a general rule this exception is applicable if the experiment is conducted in good faith for the purpose of testing the qualities of the invention, and for no other purpose "not naturally incident to that use." Hobbs v. Wisconsin Power and Light Co., 250 F.2d 100, 108 (7th Cir. 1957) cert denied. 356 U.S. 932, 78 S.Ct. 774, 2 L.Ed.2d 762 (1958). More specifically, the plaintiff asks this Court to consider the following guidelines in determining whether the experimental or test-use exception is applicable:

1. Where the prime object of the invention is to increase reliability and durability over the existing art, the permissible test-use may extend over a longer period. City of Elizabeth, supra, 97 U.S. at p. 135, 24 L.Ed. 1000;

2. The experimental test-use may be in the premises of another. City of Elizabeth, supra at p. 135, 24 L.Ed. 1000;

3. The experimental or test-use may be in public view. Universal Marion Corporation v. Warner and Swasey Co., 354 F.2d 541 (10th Cir. 1965), cert. denied, 384 U.S. 927, 86 S.Ct. 1444, 16 L. Ed.2d 530 (1966); and

4. Where a specimen of an invention is built or made to order, it is not "on sale" until it is completed, delivered or accepted; citing inter alia, Walker on Patents, Vol. 2 §§ 147 and 148.

The individual transactions involved will now be examined.

The HYDRECO Transactions

The defendant has rather comprehensively documented the transactions between the plaintiff and one of its principal customers, the Hydraulic Equipment Co. (HYDRECO) which had been actively seeking a roller bearing of longer life for use in heavy-duty pumps which were commonly installed in earthmoving and heavy construction equipment. After extensive preliminary negotiations,⁶ 20 bearings were delivered to HYDRECO on March 29, 1950 which bore the designation SJ-74197. The comparatively small quantity was dictated by the fact that HYDRECO desired to subject this bearing to testing, both in their plant and in the field, prior to converting from their present (albeit unsatisfactory) bearing to the SJ-74197. See Exhibits 21 B and D. The plaintiff asserts that this transfer was merely a continued implementation of its (plaintiff's) testing program. The bearings were given gratis to HYDRECO and were not placed into any pumps destined for sale.

It is clear, however, from various documents submitted by the defendants, that the principal intent of R.B.C. was not merely to obtain additional test results, but to convince HYDRECO of the reliability of the SJ-74197. It was anticipated that the test results, if favorable, would culminate in further sales. This rather conclusively appeared in a memorandum from R.B.C's sales representative handling the HYDRECO account to the R.B.C. Sales Department. See Exhibit 21A:

It was agreed by Ray Trainer, the President of RBC that we should make a pass at Ed. Hrdlica Vice Pres. and General Manager of HYDRECO with supervision over engineering on the proposition of our replacing their stock of these bearings the full-complement type which had proven unsatisfactory with the new cage-type bearing SJ-74197 * * *

In a deposition, Mr. Trainer indicated that on March 30, 1950, he visited HYDRECO and delivered some SJ-74197 samples:

I would say that that was the main purpose, to deliver the samples and to use our selling efforts to interest them in it, because at that time we were competing with a Stallman full-complement bearing.

Q. And your efforts to interest HYDRECO were for use in their equipment?

A. Yes, sir. In their pumps. (Trainer deposition dated Feb. 13, 1964, page 209. See also p. 150).

The evidence of the HYDRECO transactions rather comprehensively substantiates the defendant's assertion that the efforts of R.B.C. can only be characterized as sales overtures. In J. L. Clark Manufacturing Co. v. American Can Co. 256 F.Supp. 719 (D.N.J.1966), a similar situation was presented. About one month before the critical date, the plaintiff had rather vigorously embarked upon a sales campaign by way of personal visits, correspondence, telegrams, etc. Ten days before the critical date, samples were mailed to prospective customers. The samples were not production items; they were specifically made for this purpose, although they were completely operative prototypes. The...