Thomson Machinery Company v. Larose, Civ. A. No. 7222.

• Citation: 197 F. Supp. 636
• Decision Date: 19 September 1961
• Docket Number: Civ. A. No. 7222.
• Parties: THOMSON MACHINERY COMPANY, Plaintiff v. Royal J. LAROSE, Edward P. Clause and Larose-Clause Company, Inc., Defendants and Third-Party Plaintiffs v. Byron C. THOMSON, Estival Aysen, Roland Clement, Ruby Thibodaux and Victor Wintz, Third-Party Defendants.
• Court: U.S. District Court — Eastern District of Louisiana

197 F. Supp. 636

THOMSON MACHINERY COMPANY, Plaintiff v. Royal J. LAROSE, Edward P. Clause and Larose-Clause Company, Inc., Defendants and Third-Party Plaintiffs v. Byron C. THOMSON, Estival Aysen, Roland Clement, Ruby Thibodaux and Victor Wintz, Third-Party Defendants.

Civ. A. No. 7222.

United States District Court E. D. Louisiana, New Orleans Division.

September 19, 1961.

Harvey Peltier, Donald L. Peltier, Thibodaux, La., Keith, Bolger, Isner & Byrne, W. D. Keith, New York City, Wilkinson, Mawhinney & Theibault, A. Robert Theibault, Washington, D. C., for plaintiff and for Byron C. Thomson, third-party defendant.

Deramee & Deramee, Edmond L. Deramee, Thibodaux, La., Garvey & Garvey, Bernard F. Garvey, Diggins & LeBlanc, Bartholomew A. Diggins, Washington, D. C., for defendants and third-party plaintiffs.

Robert D. Morvant, Thibodaux, La., for Estival Aysen, Roland Clement and Ruby Thibodaux, third-party defendants.

Borron, Owen, Borron & Delahaye, Paul G. Borron, Jr., Baton Rouge, La., for Victor Wintz, third-party defendant.

J. SKELLY WRIGHT, District Judge.

In this declaratory judgment¹ action plaintiff, Thomson Machinery Company of Thibodaux, Louisiana, asks to have declared invalid and non-infringed two patents relating to the harvesting of sugar cane. Since substantially all of the sugar cane grown in this country comes from a few parishes in south Louisiana, these patents operate in a very narrow compass and are of no general interest.

Sugar cane is a standing crop planted in rows usually spaced about six feet apart. The harvesting machines now in use cut and top one row at a time. These machines have great wheels, the treads of which run on the ground between the rows. In cutting a field of sugar cane, the harvester usually begins by cutting the second row from the ditch so that the sugar cane in that row falls in a leaning position against the first standing row. After making this initial cut, the harvester can then proceed to cut and pile the remaining rows in so-called "heap" rows, which are rows of cut sugar cane lying perpendicular to, and between, the cut standing rows. From the heap row the cane is conveyed from the field.

Prior to the patents in suit, it was the practice to gather the leaning row of cut cane by hand and place it on the heap row lying between the second, or leaning, row and the third row in the field. The patents here describe a means by which the leaning row is mechanically turned from its position against the standing uncut row onto the adjacent heap row while at the same time cutting the standing row.

Thomson Machinery Company manufactures substantially all of the sugar cane harvesters used in south Louisiana. The defendant, Larose-Clause Company, Inc., owned by the inventors of the patents in suit, Royal J. Larose and Edward P. Clause, is engaged in the business of servicing these harvesters as well as other sugar cane harvesting equipment in the area. For some years Thomson had sought to design and place on its harvester an attachment which would turn the leaning row of cut cane into the heap row. As late as 1954 Thomson had been working with one Wintz in an effort to design such an apparatus. In connection with this endeavor, Thomson experimented with various attachments similar to the one described in the apparatus patent in suit. Its efforts, however, were unavailing and in each instance the apparatus was cut from the harvester to which it had been attached and the parts thereof eventually used as salvage.

Some time in the spring of 1954 the defendants here were asked by one Campesi, a sugar cane farmer, to design an attachment for his Thomson harvester which would turn the leaning row of cut cane. After some experimentation, and with the help of an engineer named Oswald, formerly employed by Thomson but then employed by the inventors, such a device was designed and attached to Campesi's harvester. Its successful operation won immediate acceptance in the industry until finally, in 1956, Thomson began placing a device similar to the Larose-Clause apparatus on its own harvesters. It was this action on the part of Thomson which gave rise to this litigation.

The two patents in suit were originally included in one application. The inventors, defendants herein, were advised by the Patent Office that their application should be divided in two,² one describing a method for mechanically turning the leaning row of cut cane while in the same operation cutting the standing row, and the second, an apparatus patent, covering the turning machine itself. This was done and the two patents were issued in due course.³

The method patent has two claims,⁴ the first of which merely outlines a method of harvesting sugar cane by cutting an intermediate row of standing cane, permitting it to fall in a leaning position against the standing row, after which the rows of standing cane, in a direction opposite to the lean of the cut row, are successively cut and piled in heap rows, followed by mechanically raising the leaning cane row and gradually lifting and turning it to a position from which it will gravitate onto a heap row. The second claim of the method patent merely provides for the cutting of the standing row after the leaning row has been disengaged therefrom.

The process patent has four claims⁵ describing an apparatus for mechanically lifting and turning cut stalks of sugar cane by employing a mobile supporting means, such as a harvester, adapted to be moved along a row of cane stalks. An elongated cane moving means, such as an endless chain, is mounted on the front of the harvester and is adapted to engage and move the cut cane upward and over onto the heap row to the right. The cane moving means has a forward lower end and an elevated rear end, which rear end is displaced laterally with respect to the path of the harvester. The turning of the cut cane clears a path for the movement of the harvester along the row of uncut cane on its left. Claim 2 merely substitutes the words "disposed diagonally" for "laterally displaced" in Claim 1. Claim 3 expands the function of the "kickers," or projections from the endless chain which engage the leaning cane, and Claim 4 limits the invention to an apparatus for turning leaning rows of cut cane onto a heap row.

Thomson's main reliance here is on its allegations of invalidity, since there is little doubt that the claims of the patents read directly on the accused device. Thomson asserts many grounds for invalidity. First, it challenges the patents as lacking in invention. 35 U.S.C. § 103. As to the method patent, it is argued that mechanically doing, and in the same way, what was formerly done by hand is not invention. Nor does the apparatus patent describe an invention, according to Thomson, since it is merely an aggregation of elements old in the art which perform no new function. Thomson asserts that the apparatus in suit is nothing but a boom-mounted endless chain having projections which pick up the leaning cane and, as the chain moves rearward diagonal to the path of the harvester, pull the cane upward and turn it onto the heap row. Thomson maintains that these old elements perform no new function in the apparatus patent and, if they do, then the assembly of these old elements to perform this new function comes within the ordinary skill of the art exclusion of 35 U.S.C. § 103.

Thomson further maintains that the patents in suit were anticipated in the prior art, particularly by the work of Wintz in which it participated. 35 U.S. C. § 102(a). In support of this position it cites many patents, most of which were cited by the Patent Office in issuing the patent. In this connection, however, it rests most strongly on a patent for a snow plow⁶ which was not cited by the patent examiner but which is in a non-analogous art. Further claims of invalidity advanced by Thomson allege that the defendants were not the inventors,⁷ that Campesi was, and that in any event the claims of the patents were in public use in this country more than one year prior to the date of the application. 35 U.S.C. § 102(b).

I

The elusive concept of invention stands at the threshhold of every patent application. Unless it tends "To promote the Progress of Science and useful Arts," it does not meet the standard of invention set up in the Constitution itself. U.S. Const. Art. 1, § 8, cl. 8. There seems to be some difference of opinion as to whether the Congress or the Supreme Court is the final authority on this constitutional standard. After the Supreme Court enunciated the "flash of creative genius" test in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 41, 86 L.Ed. 58, Congress defined its own standard of patentability, adopting the "ordinary skill in the art" test on which many courts had previously relied.⁸ 35 U.S.C. § 103. Since the Congressional standard has been promulgated, courts more or less have sought to apply it rather than require the "flash of creative genius" as the primary ingredient of invention.⁹

To say that the Congressional test is a definitive one is to misunderstand the fugitive nature of the concept of invention. "The truth is the word cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involves an exercise of the inventive faculty or not." McClain v. Ortmayer, 141 U.S. 419, 427, 12 S.Ct. 76, 78, 35 L.Ed. 800. Moreover, "Invention is not always the offspring of genius; more frequently it is the product of plain hard work; not infrequently it arises from accident or carelessness; occasionally it is a happy thought of an ordinary mind; and there have been instances where it is the result of sheer stupidity. It is with the inventive concept, the thing achieved, not with the manner of its achievement or the quality of the mind which gave it birth, that the patent law concerns itself." Radiator Specialty Co. v. Buhot, 3 Cir., 39 F.2d 373, 376.

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