Sims v. Mack Trucks, Inc.

• Decision Date: 15 September 1978
• Docket Number: Civ. A. No. 75-985.
• Citation: 459 F. Supp. 1198
• Parties: R. W. SIMS, Trustee, and R. W. Sims Trust v. MACK TRUCKS, INC.
• Court: U.S. District Court — Eastern District of Pennsylvania

459 F. Supp. 1198

R. W. SIMS, Trustee, and R. W. Sims Trust v. MACK TRUCKS, INC.

Civ. A. No. 75-985.

United States District Court, E. D. Pennsylvania.

September 15, 1978.

COPYRIGHT MATERIAL OMITTED

John A. Young, Fort Wayne, Ind., Stanley B. Kita, Philadelphia, Pa., John A. Young, Fort Wayne, Ind., for plaintiff.

Jon A. Baughman, Philadelphia, Pa., Bernard & Brown, Washington, D.C., for defendant.

OPINION

JOSEPH S. LORD, III, Chief Judge.

Plaintiffs, a family trust and its trustee, brought suits for patent infringement and for unfair competition based on defendant's manufacture and sale of chassis for front-discharge concrete mixers. We granted defendant's motion for summary judgment as to the unfair competition claim but denied the motion as to the patent claim, 444 F.Supp. 1277 (E.D.Pa.1978). Three issues were tried before me: the validity of the patent in suit under 35 U.S.C. § 103; infringement of it by the defendant under 35 U.S.C. § 271; and, if there was infringement, whether the willfulness of defendant's conduct calls for increased damages under 35 U.S.C. § 284. I now make the following findings of fact and conclusions of law:

FINDINGS OF FACT

I. Background:

1. The plaintiff R. W. Sims is an individual who is the sole trustee of the plaintiff R. W. Sims Trust, a trust organized under Utah law whose beneficiaries are R. W. Sims, his wife and their four children.

2. The defendant is a corporation which is incorporated in Pennsylvania, has its principal place of business in Pennsylvania and is engaged in the manufacture of trucks.

3. The patent in suit is United States Patent No. 2,859,949, issued on November 11, 1958, to J. Jack Willard for a Forward Discharging Transit Concrete Mixer (the "Willard patent") (Fig. 1).

4. A self-transit concrete mixer is a truck with facilities for receiving, mixing and transporting concrete and for discharging concrete at the site where it is to be used. The construction disclosed in the Willard patent is a fully operative front-discharge self-transit concrete mixer, although its operation could be and later was improved by altering that structure.

5. R. W. Sims in 1958 designed and constructed a front-discharge self-transit concrete mixer and sought to have it patented. When his counsel's patent search disclosed the Willard patent and he learned that his construction would infringe the Willard patent, he entered into negotiations with the patentee.

6. In order to continue to make, use and sell front-discharge mixers, Sims entered into a licensing agreement under the Willard patent. In 1965 Willard assigned to the plaintiff trust all rights under the Willard patent.

II. Validity:

A. The Prior Art

7. In 1955 the prior art of self-transit concrete mixing trucks included a rear-discharge mixer, with a drum on a fixed longitudinal axis inclined upwardly toward the rear. This construction is disclosed in, inter alia, United States Patent No. 2,661,935, issued on December 8, 1953, to Carl L. Willard, and United States Patent No. 2,672,327, issued on March 16, 1954, to John F. Oury (Fig. 2).

In these trucks the concrete mixing drums are filled with concrete through their rear ends. The drums are rotated in one direction to mix the concrete and in the opposite direction to discharge the concrete through their rear ends.

8. The prior art in 1955 included a separate attachment to a tractor for mixing, transporting and discharging concrete, disclosed in United States Patent No. 2,706,623, issued on April 19, 1955, to Fred J. Styes. In this construction, the concrete is carried in a small mixing drum forward of the tractor connected to it by sidebars. These bars can swing from their point of attachment either to extend the mixing drum downward and forward of the tractor for loading or to lift it up, like a car of a ferris wheel, for discharge.

9. The prior art in 1955 included a self-transit concrete mixer which could be loaded from the front of the mixer, disclosed in United States Patent No. 2,327,473, issued on August 24, 1943, to Harold A. Wagner and Gustave H. Wagner. In this construction, a loading device is attached to the truck chassis by arms. When those arms are extended forward, the loading hopper is on the ground and can be loaded. Those arms can be rotated, lifting the hopper over the cab, again like a car of a ferris wheel. When the hopper is over the cab it can be emptied into the front part of the drum. This truck provides for the discharge of concrete through the rear end.

10. The prior art in 1955 included a chute to control the discharge of concrete from self-transit mixers, disclosed in United States Patent No. 2,045,532, issued on June 23, 1936, to John C. Merwin and Charles F. Ball, and in the Oury patent. The Oury cylindrical chute is attached to the side of the mixer for transport and can easily be placed at the discharge end of a mixing truck and positioned so as to control the flow of concrete from the drum to the area where the concrete is to be distributed, while the Merwin chute is a similarly placed open trough.

11. The prior art in 1955 included mechanisms for driving mixing drums on self-transit concrete mixers disclosed in United States Patent No. 2,729,435, issued on January 3, 1956, to Henry C. Harbers and Edward D. Sharpe. These mechanisms are illustrated in the patent by use with a rear-discharge mixer.

12. The prior art mentioned in ¶¶ 6-10, with the exception of the Merwin chute, composed the references cited by the United States Patent Office in the Willard patent file. Of these, only the patent issued to Styes discloses a concrete mixer which discharges concrete in front of the vehicle. The construction in this patent was limited in its use to tractors using small amounts of concrete, however, and was not adaptable to full-sized self-transit concrete mixing trucks.

13. The prior art in 1955 included a concrete mixing drum with helical blades, disclosed in United States Patent Reissue 23,320, reissued on January 2, 1951, to Carl L. Willard and J. Jack Willard. This device is a concrete mixing drum in the shape of a cylinder with a frustum at each end constructed so that the material in the drum is mixed by rotating the drum in one direction and discharged out of one end of the drum by rotating the drum in the other direction.

14. The prior art in 1955 included a rear-discharge concrete mixing truck with a mixing drum which has a non-inclined horizontal axis but which can be inclined in the rear to effect higher discharge, disclosed in United States Patent No. 1,998,749, issued on April 23, 1935, to Charles F. Ball. In this construction the mixing drum did not have a fixed longitudinal axis but rather one which could be varied in order to meet the needs of the discharge on a particular job. This patent was not cited as prior art in the Willard patent.

15. The prior art in 1955 included a concrete mixing truck which discharged concrete out of the front of a cylindrical drum by tilting the drum forwardly and allowing gravity to induce the discharge, disclosed in United States Patent No. 1,509,055, issued on September 16, 1924, to Charles Payne (Fig. 3).

The construction disclosed in this patent appears to be the only one providing for front discharge of concrete in a full-sized self-transit mixer before the Willard patent. In this construction, the concrete is loaded into the cylindrical drum through the top of the cylindrical drum, which has a non-inclined horizontal axis during the loading and mixing of the concrete. At the time of discharge, the driver in the cab at the forward end of the vehicle operates a lever which causes the rear end of the drum to be raised and the forward end to be lowered, giving the drum an axis upwardly inclined from front to rear and inducing the concrete to slide out the front of the drum, with discharge under the driver's position. The Payne patent provides for discharge into a portable concrete distributing cart, which in turn would be used to apply the concrete. The Payne patent, which was not cited by the United States Patent Office as prior art in the Willard patent, was among the prior art most pertinent to the Willard patent because it embodies a front-discharge self-transit mixer.

16. The prior art included in 1955 self-transit mixers with non-inclined horizontal mixing drums which discharged concrete out the rear ends of the mixing drums by tilting them, much as the Payne patent did in effecting front discharge.

17. Most of the self-transit concrete mixers in use in 1955 were rear-discharge self-transit mixers with drums of fixed axis upwardly inclined toward the rear or discharging end. These trucks had certain disadvantages in their operations. Among these were the slowness of discharging, in that the truck had to be backed up to the point of discharge and the driver often had to leave the cab in order to ascertain where the concrete would be discharged, so that at least two persons were needed to operate the truck when the point of discharge was being varied slightly, one person to drive the truck and the other or others to observe the point of discharge and instruct the driver; and the high rate of accidents caused by the driver's inability to observe the discharging end and chute.

18. There were also in use in 1955 rear-discharge mixers of the type disclosed in the Ball patent which inclined the mixing drum in the rear in order to achieve a high point of discharge, which is advantageous in some situations. These mixers shared the disadvantages of rear-discharge self-transit mixing trucks generally. There were also in use in the 1950's "dumper" self-transit mixers like the construction disclosed in the Payne patent, but they were subject to frequent breakdowns and like rear-discharge mixers with fixed drums required at least two persons, a driver and someone stationed on the ground to operate the separate concrete distributor.

19. The rear-discharge mixers which...