Shields-Jetco, Inc. v. Torti, 7750.

• Decision Date: 19 January 1971
• Docket Number: No. 7750.,7750.
• Citation: 436 F.2d 1061
• Parties: SHIELDS-JETCO, INC., et al., Plaintiffs, Appellees, v. Emanuel TORTI, Defendant, Appellant.
• Court: U.S. Court of Appeals — First Circuit

436 F.2d 1061 (1971)

SHIELDS-JETCO, INC., et al., Plaintiffs, Appellees, v. Emanuel TORTI, Defendant, Appellant.

No. 7750.

United States Court of Appeals, First Circuit.

January 19, 1971.

Elliot A. Salter, Providence, R.I., with whom Leonard Michaelson and Salter & Michaelson, Providence, R.I., were on brief, for appellant.

Thomas A. Harwood, Dallas, Tex., with whom Hinckley, Allen, Salisbury & Parsons, Providence, R.I., was on brief, for appellees.

Before ALDRICH, Chief Judge, McENTEE and COFFIN, Circuit Judges.

ALDRICH, Chief Judge.

This appeal by Emanuel Torti, the owner of Patent No. 3,089,310, from a finding of non-infringement raises a single question. The patent, known as a Trench Shoring Machine, is a combination patent that provides self-propelled parallel shields, whose purpose is to line and shore both sides of the trench during back-hoe and pipe-laying operations, "to prevent cave-ins and the like." There is substantial need for such a device because pipes are laid in relatively unstable earth or sand in depths up to and exceeding 20 feet. The described device has a solid back-end, containing an aperture at the bottom portion, to permit straddling the already laid pipe. The side walls partially telescope, laterally, and can be extended forward by hydraulic pressure. The patent claims, in addition, a top wall.

A top wall is perhaps needed only when a great depth is being reached and the entire machine operates below grade. In these circumstances the phrase "and the like" doubtless applies to falling debris and cave-ins from overhead. However, we observe in the descriptive portions of the patent, "It will also be noted that the workers are protected from inclement weather." To the extent that there is value to this last, it must be unrelated to whether the top is below or above grade.

It may be that, except when operating below grade, a top wall may, on balance, be an inconvenience, since the pipe sections that are about to be laid must be introduced from overhead. In any event, Shields-Jetco, Inc., plaintiff in a petition for a declaratory judgment of non-validity and non-infringement, manufactures a device that essentially copies Torti in all other respects, but, plaintiff alleges, omits the top wall or any equivalent thereof. The correctness of this allegation is the sole issue. The district court, although recognizing the perhaps greater inventiveness of the rest of the device, found in plaintiff's favor, and held this absence fatal to Torti's claim of infringement. 314 F.Supp. 1292. Torti appeals.

At first blush one might think that omitting the top wall, with the consequent lessening of the protection to the workers below, might invoke the rule that the omission of part of a device, accompanied by a corresponding loss of function, may not prevent infringement. Cf. Hobbs v. Beach, 1901, 180 U.S. 383, 401, 21 S.Ct. 409, 45 L.Ed. 586; McDonough v. Johnson-Wentworth Co., 8 Cir., 1928, 30 F.2d 375, 384, cert. denied 280 U.S. 572, 50 S.Ct. 28, 74 L.Ed. 624. However, for reasons that we need not pursue, very possibly a fear that he would lose on the issue of validity of the patent,¹ Torti conceded in the...