TATKO BROTHERS SLATE CO. v. Hannon, Civ. A. No. 1836.
| Decision Date | 22 November 1957 |
| Docket Number | Civ. A. No. 1836. |
| Citation | 157 F. Supp. 277,116 USPQ 53 |
| Parties | TATKO BROTHERS SLATE CO., Inc., v. Matthew HANNON. |
| Court | U.S. District Court — District of Vermont |
Sennett & Sennett, Poultney, Vt., Maxwell E. Sparrow, New York City, J. Preston Swecker, Washington, D. C., for plaintiff.
J. Malcolm Williams, Poultney, Vt., John C. Blair, Stamford, Conn., for defendant.
This is an action for patent infringement, arising under Title 35 U.S.C. § 281. Plaintiff's patent is No. 2,693,926. The complaint was filed on May 13, 1955. Following a stipulation for extension of time for filing the answer, on July 9, 1955, the defendant answered, denying infringement and denying the validity of the plaintiff's patent (No. 2,693,926). The defendant counterclaimed against the plaintiff for damages, on the theory of unfair competition. Defendant also sought a declaratory judgment and injunctive relief. On June 29, 1956, the defendant moved for a summary judgment, under Rule 56 of the Federal Rules of Civil Procedure, 28 U.S.C. The defendant relied upon an allegation that the case involved no genuine issue of any material fact, and upon the decisions in the case of Vermont Structural Slate Co., Inc. v. Tatko Brothers Slate Co., Inc., as reported in D.C., 134 F.Supp. 4, and 2 Cir., 233 F.2d 9.
The motions for summary judgment and declaratory judgment came on for hearing at Brattleboro, Vermont, on July 16, 1956. Arguments of counsel were heard, briefs were filed, and exhibits were received by the Court. This Court, along with counsel for plaintiff and defendant, observed the transporting of slate stacked vertically upon the Tatko pallet with the use of a fork-lift truck at the Woodward Lumber Co. in Brattleboro, Vermont, and observed and compared the Tatko pallet with the Cruickshank pallet, Patent No. 2,297,347, and the Lilienfeld pallet, Patent No. 2,471,693. By an opinion filed on September 24, 1956, 147 F.Supp. 865, this Court denied the defendant's motion for summary judgment.
Trial of the cause was commenced on September 11, 1957, in Windsor, Vermont, before the Court. During the four-day trial, fifteen witnesses testified, seven depositions were introduced, and many exhibits were admitted.
1. The plaintiff is a corporation duly organized under the laws of the State of New York, and has its principal place of business in Middle Granville, New York.
2. The defendant is a citizen and resident of Poultney, Vermont.
3. The plaintiff is and for over thirty years has been engaged in the business of quarrying slate and flagstone, and in the business of quarrying, processing, selling, and transporting slate products.
4. In the slate quarry industry, the handling of slate slabs or panels coming from the quarry or processing plant, the storing of the same and transporting the same, has always been a serious handling problem. On account of the weight, differences in sizes and possibility of breakage, there was a long-standing need for a simplified, efficient and practical handling method which would reduce the expense of loading and unloading by hand.
5. Throughout the slate industry until about 1954, it was the general practice to handle all slate and flagstone by hand, piece by piece. Trucks were loaded by hand at the quarry, and for every successive move from the quarry to the processing plant, to the truck or train, to the wholesaler or jobber, to the contractor or retailer, to the ultimate job site, each piece had to be picked up by hand and placed in its next position. The cost of labor for these operations was detrimental to the slate industry.
6. Sometime following 1946, a few of the people who dealt with slate products commenced using flush-type pallets (Pl. Ex. 8) and fork-lift trucks for the handling of slate products. The stone was piled flat on these pallets, and it had a tendency to slide off. No over-the-highway transportation of slate was practical or commercially feasible with flush-type pallets. Flagstone and slate stones, when palletized, are of considerable weight, and the handling and transporting thereof on a pallet, unless the slate was securely held thereon, was dangerous. For many years slate had been shipped edgewise because this was the safest method of transportation, involving far less breakage. As the demand for palletized slate increased, the industry was confronted with the problem of stacking slate in an edgewise position on pallets.
7. In June of 1951, John Tatko conceived the idea of building a pallet with slots in each end which could be used for the purpose of standing up two or three pieces of slate or flagstone. These end pieces would then support rows of slate stacked on their edges, vertically. In June of 1951, John Tatko built his pallet and tested it. It proved to be very workable. Because of the scarcity of slate dealers who had fork-lift trucks, and because he thought that the slate industry was not yet ready to palletize, John Tatko kept his invention a secret and did not start extensive use of it until January of 1954, at which time the use of fork-lift trucks in the building supply industry had become so prevalent that slate quarriers were receiving many requests for delivery of slate or flagstone on pallets.
8. On November 9, 1954, United States Letters Patent, No. 2,693,926, were duly and legally issued to the plaintiff as assignee of John Tatko, on the slot-type pallet. Tatko had filed for this patent on March 3, 1954.
9. The plaintiff has, since the date of issuance of said patent, been the owner of said letters patent.
10. The plaintiff, in the course of its business, has utilized, and still utilizes, the said invention as patented, and since the making of said invention by John Tatko, its president, the plaintiff has spent time, effort, and money in adapting its business to the use of the pallets.
11. The plaintiff has purchased over 12,000 Tatko-type pallets since 1954.
12. The invention provides a practical pallet for use in handling slate products safely, and the pallet construction devised by John Tatko has been in extensive commercial use by the plaintiff and has fulfilled a long-felt need in the trade. It enables the pallet to be efficiently and economically loaded with slate products at the quarry and lifted by a fork-lift truck onto a trailer truck or railway car for economic transport to the desired point of destination. This is made possible by reason of the provision of slots at the ends of the pallet, constructed to receive flat slabs of slate standing on edge therein to form end supports for the pallet. These serve to confine and wedge there between slabs of slate that are arranged on edge, side-by-side, on the pallet as a rigid unit. They prevent this unit from falling apart and individual slabs falling off the truck in transit. The essential difference between the Tatko pallet and previously existing ones is the slots or pockets. The Tatko pallet made a very substantial contribution to the art of handling and transporting flagstone and other slate products.
13. Other handlers of slate, before the Tatko patent, had been attempting to solve the pallet problem. Various types were devised, but none of them proved completely satisfactory. They were either too weak, structurally, or too heavy, or too difficult to transport. None of these prior devices employed the slot-type innovation. One such attempt was made by Lawrence W. Morrison, an officer of Tomkins Brothers, Jamaica, Long Island, New York, who obtained 125 flush-type pallets (Pl. Exs. 24C and 24D). Some evidence was offered tending to show that these Morrison pallets were not entirely satisfactory for hauling flagstone over long distances by truck, and also evidence that Tomkins Brothers have since used the same type of pallet as in the Tatko patent (Pl. Exs. 20A-20D). Others attempted to solve the problem by attachment of fixed headboards to flush-type pallets (Def. Ex. N). One of the large manufacturers of pallets, Pallet Sales Corporation, proposed a fixed headboard on a flush-type pallet as late as 1953 (Pl. Exs. 26A and 26B). None of these went into extensive commercial use, although used to limited extent.
14. The plaintiff, with its two associated slate companies, does a gross business of over a million dollars a year. As a result of this invention, large savings have been made by the plaintiff and its customers. A professional time study showed that to load a trailer truck with fifteen tons of slate by hand (as was formerly done) required six man hours. The same load could be accomplished by one man, using a fork-lift truck and Tatko pallets, in five minutes and seven seconds. Assuming that only about 25% of his customers have fork-lift trucks, a slate quarrier doing a $750,000 annual business can save approximately $23,000 a year by using the Tatko pallet.
15. The invention of the Tatko pallet is of great value, importance, benefit and advantage to the plaintiff. Plaintiff has expended large sums of money in making the invention claimed in Letters Patent No. 2,693,926 profitable to it and useful to its customers. Devices made according to this Letters Patent have been introduced into extensive commercial use by the plaintiff, and because of these pallets, there has been created a great and increasing demand for plaintiff's slate products loaded on the said pallets.
16. This invention, as patented, was, and is, of great utility and value, and is novel despite its simplicity. For a considerable length of time, people skilled in the trade worked to devise an effective pallet for the purpose of easily and safely handling flagstone and slate, but this innovation escaped them. The difference between the previously existing pallets and the Tatko pallet was not obvious at the time of the invention to a person having ordinary skill in the slate industry. Since John Tatko's invention, the trade has generally acknowledged the...
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Tatko Bros. Slate Co. v. Hannon, 142
...that the Tatko patent was valid and infringed; he granted judgment for the plaintiff and dismissed the defendant's counterclaim. 157 F.Supp. 277.2 This appeal followed. In the present case there was no privity between the defendant and the Vermont Structural Slate Company, the party who had......