Stevenson v. Diebold, Incorporated

• Decision Date: 04 May 1970
• Docket Number: No. 23227.,23227.
• Citation: 422 F.2d 1228
• Parties: Clarence H. STEVENSON, III, an individual and F M C Corporation, a corporation, Plaintiffs-Appellees, v. DIEBOLD, INCORPORATED, a corporation, Defendant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

422 F.2d 1228 (1970)

Clarence H. STEVENSON, III, an individual and F M C Corporation, a corporation, Plaintiffs-Appellees, v. DIEBOLD, INCORPORATED, a corporation, Defendant-Appellant.

No. 23227.

United States Court of Appeals, Ninth Circuit.

February 17, 1970.

Rehearing Denied May 4, 1970.

Carl Hoppe (argued), of Eckhoff & Hoppe, McCutchen, Doyle, Brown & Enersen, San Francisco, Cal., Theodore E. Simonton, Cazenovia, N. Y., for appellant.

Roland N. Smoot (argued), of Lyon & Lyon, Los Angeles, Cal., Flehr, Hohbrach, Test, Albritton & Herbert, San Francisco, Cal., for appellees.

Before DUNIWAY and CARTER, Circuit Judges, and CROCKER^*, District Judge.

DUNIWAY, Circuit Judge:

Diebold appeals from a judgment holding certain claims of appellees' patent valid and infringed¹ and awarding damages of $404,470.50 plus interest for the infringement.² The patent at issue is No. 2,815,846, owned by appellee Stevenson and exclusively licensed to appellee FMC. We reverse.

The invention covered by the Stevenson patent relates to feeding and orienting devices for automatic pallet loading machines. The invention seeks to position articles such as cartons moving on a conveyor so as automatically to stack them on a pallet in a predetermined interlocking pattern. The interlocking pattern promotes stability of the pallet load and is achieved by placing layers of articles adjacent to one another with the faces of the articles in a given layer turned at 90 degrees from the article faced in neighboring layers, much as bricks or stones are arranged in a good piece of masonry.

Before trial, Diebold³ conceded that claims 1, 2, 4-6, 9-11, 13-16, and 18-20 of the Stevenson patent were infringed "if such claims be valid." In appealing from the trial court's decision that the patent was valid, Diebold makes only the contention that the invention was obvious within the standards of 35 U.S.C. § 103.

Section 103's condition of nonobviousness for the issuance of a patent has been considered by the Supreme Court in Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545; United States v. Adams, 1966, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 and Anderson's-Black Rock, Inc. v. Pavement Salvage Co., Inc., 1969, 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258. In Graham the Court stated:

"The emphasis on non-obviousness is one of inquiry, not quality, and, as such, comports with the constitutional strictures.

While the ultimate question of patent validity is one of law, * * * the § 103 condition, which is but one of three conditions each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained, and the level of ordinary skill in the pertinent art resolved." (383 U.S. at 17-18, 86 S.Ct. at 693-694)

See also Spring Crest Co. v. American Beauti Pleat, Inc., 9 Cir., 1970, 420 F.2d 950; Carborundum Co. v. Wilbanks, Inc., 9 Cir., 1969, 420 F.2d 43; Proler Steel Corp., Inc. v. Luria Bros. & Co., 9 Cir., 1969, 417 F.2d 272; Aerotec Industries of California v. Pacific Scientific Co., 9 Cir., 1967, 381 F.2d 795; Jeddeloh Brothers Sweed Mills, Inc. v. Coe Mfg. Co., 9 Cir., 1967, 375 F.2d 85.

Here, as in all cases where a patent's validity is questioned, the patent is presumed to be valid, and the burden of showing invalidity rests on the party asserting it. See 35 U.S.C. § 282; Western Lighting, Inc. v. Smoot-Holman Co., 9 Cir., 1966, 381 F.2d 355; Eimco Corp. v. Peterson Filters and Engineering Co., 10 Cir., 1968, 406 F.2d 431. Nonetheless, this court has recognized that "the concept of invention is inherently elusive when applied to a combination of old elements," particularly in a mechanical area such as this one. Jeddeloh Brothers Sweed Mills, Inc. v. Coe Mfg. Co., supra, 375 F.2d at 88 and n. 5. Moreover, the "patent standard is basically constitutional" Anderson's-Black Rock, Inc., su- pra, and the ultimate question of patent-ability is one of law.

Accordingly, we turn to the factors which Graham mentions as bearing on obviousness, and to the district court's treatment of those factors.

"Palletizing" has been used for over 40 years to stack a number of articles such as cartons or boxes on portable platforms called pallets. Pallet loads are a standard means of handling materials for shipment and storage. Throughout the period ending with World War II, no automated means of loading pallets was known. The pallet interlocking patterns were stacked by hand or by using semi-automatic devices in which a man would turn some of the cartons or articles on a ball table.

Stevenson had observed palletizing systems used during World War II, and in 1946 he began to work on a completely automated means of loading pallets. By the end of 1947 he had developed a model of a pallet loader which led to the patent questioned in this case. Stevenson's model is most completely described by claim 18 of his patent⁴.

"An article feeding device comprising 1 conveying means for conducting the articles along a predetermined path, 2 a normally-ineffective article obstructing element located at one side of said conveying means and arranged to be projected into the path of oncoming articles on said conveying means at one side only of the center of the path to effect turning of the articles about an axis perpendicular to said conveying means into a position for further advancement thereof, and 3 means operable to effect projection of said article obstructing means into the path of selected articles on said conveying means." (The bracketed numbers have been added to separate the three elements of Stevenson\'s device.)

In every day English and in application, claim 18 describes (1) a "live-roll" feed conveyor, i. e., a conveyor with power driven rollers, (2) an obstruction means such as a pin, plunger, finger, or flag placed to one side of the conveyor's midline, and (3) a control mechanism for moving the pin, etc. into or out of the path of selected articles moving down the conveyor.

In operation certain of the articles move along the conveyor without hindrance from the obstruction. For selected others, the control mechanism moves the obstruction into their path. The selected article strikes the obstruction, and because the powered rollers keep the article moving, the article pivots around the obstruction to get free of it and in so doing faces around at a 90 degree angle from its original position on the conveyor. With a control mechanism set to achieve a given pallet pattern, Stevenson's device can automatically turn selected articles and thus obtain interlocking pallet loads without the necessity of turning the articles by hand.

As one might expect, Stevenson was not the only would-be inventor working on a "palletizer." A John K. Bruce began working on the problem in 1943. Bruce had some success and filed a patent application for his device on February 2, 1948, about four months before Stevenson filed. Bruce's orienting means used a different principle than Stevenson's did. Rather than a simple obstruction placed off-center on a conveyor, Bruce's orienting means

"consisted of a turntable located immediately below the conveyor leading to the pallet loader proper, which turntable, in response to previous programming, was adapted to be raised above the level of the conveyor as an article to be turned passed thereover, the turntable first lifting the article from the conveyor, then turning it the requisite 90°, then stopping, and then returning to beneath the conveyor level to redeposit the reorientated article on the conveyor to pass into the pallet loader proper." (Trial Court\'s Finding No. 13.)

It's apparent that Bruce's control device and conveyor were quite similar to Stevenson's, but that he means of article orientation were quite different. Bruce believed that he had to lift the articles from the conveyor to reorient them.

Nonetheless, the conveyor industry had known for some time of the concept of using a simple pin or finger to obstruct the path of articles moving down a powered conveyor and thus turn the articles. Patent No. 1,028,766, issued to W. L. Montgomery on June 4, 1912, discloses a device intended to achieve 90 degree reorientation of articles moving down a conveyor, chiefly for use in feeding articles to a sealing machine. Montgomery claimed:

"The combination with 1 a movable belt, 2 of a finger secured rigidly at one side of the belt and extending substantially perpendicular thereto and adjacent the center of said belt, and 3 an inclined guide located at one side of said belt spaced from said finger." (Claim 2.) (Bracketed numbers added.)

There is a good deal of other, similar, prior art shown in the record.

Diebold argues that the Stevenson device is obvious in light of the prior art as disclosed by the Bruce and Montgomery patents. Diebold asserts that Stevenson did no more than assemble on one conveyor the Montgomery article turning finger and operate it selectively with Bruce's control mechanism. Stevenson counters by asserting (1) that his combination produces a new result which had not been achieved by any other device, (2) that he applied a new principle not previously used by men skilled in the materials handling art, and (3) that the components of his combination in fact perform a different function in the combination than they do out of it.

Our task in evaluating the contentions of the parties is made considerably easier because they tried the case as if they fully appreciated the Graham-Adams teachings, even though those decisions were written nearly four years after this case was heard below.

We first consider Stevenson's second and third asserted grounds supporting nonobviousness. It seems apparent to us that the turning means and the control mechanism in Stevenson's device serve precisely the same purposes there as they did, respectively, in...