Toro Co. v. Textron, Inc.

• Decision Date: 05 September 1980
• Docket Number: Civ. A. No. 78-50.
• Parties: The TORO COMPANY, Plaintiff, v. TEXTRON, INC., Defendant.
• Court: U.S. District Court — District of Delaware

499 F. Supp. 241

The TORO COMPANY, Plaintiff, v. TEXTRON, INC., Defendant.

Civ. A. No. 78-50.

United States District Court, D. Delaware.

September 5, 1980.

Rudolf E. Hutz, and Paul E. Crawford, of Connolly, Bove & Lodge, Wilmington, Del., Robert T. Edell, and Earl D. Reiland, of Merchant, Gould, Smith, Edell, Welter & Schmidt, Minneapolis, Minn., for plaintiff.

David A. Anderson, of Potter, Anderson & Corroon, Wilmington, Del., Dugald S. McDougall, and Keith V. Rockey, Chicago, Ill., Arthur J. Hansmann, Racine, Wis., for defendant.

OPINION

STAPLETON, District Judge:

Plaintiff, The Toro Company ("Toro") and defendant Jacobsen Manufacturing Company ("Jacobsen")¹ are competitors in the manufacture and sale of labor—saving machines for outdoor use by consumers. Toro's amended complaint in this action charges Jacobsen with making and selling snow throwers that infringe Toro's Patent No. 3,359,661 (the "'661 patent") and with competing unfairly with Toro by issuing false and misleading advertisements. This Opinion constitutes the Court's findings of fact and conclusions of law after a trial on the merits.

I. THE PATENT INFRINGEMENT CLAIMS.

Toro charges that Jacobsen's snow thrower infringes four claims of the '661 patent: Claims 19, 33, 4 and 15. Jacobsen contends in response that each of these claims is invalid under Section 103² and is, in any event, not infringed by its machine.

A. Claim 19.

Claim 19 of the '661 patent claims the principal features of the alleged invention. Specifically, it claims:

A snow plow comprising:

an upstanding rear wall means generally transverse of the normal direction of travel, impeller means mounted forwardedly of said wall means for rotation about a horizontal transverse axis for throwing snow rearwardly and upwardly along a front face of said wall means,

a plurality of generally vertically disposed horizontally spaced vanes defining with said rear wall means a plurality of forwardly open chute means,

said chute means being in close relationship with the impeller means and directly receiving snow into the chute means and discharging snow therefrom upwardly from substantially the entire forward vertical length of the open chute means, and means for varying the snow directing attitude of said vanes.

1. Background Information And The Circumstantial Evidence Bearing On Obviousness.

The early 1950's saw the first efforts to sell snow throwers to homeowners. The products then offered as alternatives to the snow plow and snow shovel were primarily what is known in the industry as two stage snow throwers: the first stage consisting of augers which gathered and transported the snow to the middle of the machine and the second stage consisting of some kind of impeller which discharged the collected snow. Toro marketed such a two stage snow thrower commencing in 1950 under the trade name Snow Hound.

Two stage snow throwers were effective snow removers but tended to be heavy (and thus not easily maneuvered) and expensive. In 1962 or 1963 Toro assigned a three man team, headed by Ralph W. Speiser, the task of developing a new lightweight snow thrower which could be marketed as "motorized snow shovel." The machine designed by this team (the "Speiser snow thrower") led to the filing of the application for the '661 patent on June 30, 1964 and its issuance on December 26, 1967.

The Speiser snow thrower was a single stage machine which utilized a down-milling paddle wheel as an impeller. This paddle wheel extended the full width of the machine and impelled snow rearwardly and upwardly against a back wall mounted transversely to the normal direction of travel. The snow was then discharged through a plurality of flexible vanes which controlled the direction of discharge. The Speiser machine was first marketed in the 1964-1965 season under the trade name SNOW-PUP. At the time of the invention of the Speiser snow thrower there were a few single stage machines on the market but these utilized an auger to gather and discharge the snow and, like the two stage machines, tended to be heavy and expensive. While the record does not reveal whether there was a single stage, paddle wheel machine on the market in 1964, there were a number of such snow throwers described in the prior art.³

Toro has marketed the Speiser machine with some modifications⁴ since 1964. At the same time it has continued to market a line of more expensive and more powerful two stage machines. In 1974, for example, its line of two stage snow throwers went from 8 horsepower machines weighing 287 pounds and selling in the $520 range to a 5 horsepower machine weighing 225 pounds and selling in the $380 range. Toro, at the same time, was marketing a 14" SNOW-PUP weighing 22 pounds and selling for approximately $130 and a 21" SNOW-PUP weighing 27 pounds and selling in the $145 range.

The marketplace received the Speiser machine cautiously. Toro analyzed the problem as a "credibility gap". It seemed that distributors and dealers, as well as homeowners, refused to believe that the SNOW-PUP would be an effective and durable snow remover. As one Toro official put it, it looked "something like a plastic toy and that is what they called it in the hardware stores in the early days of its introduction". (Tr. 55).

In the first ten years of marketing its single stage snow throwers Toro's national sales fluctuated up and down from a low of about 17,500 units in the fiscal 1966 season to a high of about 34,400 units in fiscal 1974. Fiscal 1975 and 1976 started an upward trend showing modest gains to 55,000 units and 76,500 units respectively. In the 1976-77 season Toro mounted the biggest snow thrower advertising campaign in its history. During that year over a million dollars was spent on advertising. (PX 209). Sales increased sharply and the next year Toro engaged in another aggressive advertising effort. (PX 209). Sales literally "took off", rising from 157,684 units in 1977 to 557,672 units in 1979. It is important to note, however, that this "sales explosion" involved more than only the Speiser machine. While Toro sales of its single stage snow thrower were going from 76,633 units in 1976 to 557,672 units in 1979, its share of the single stage market was going from 70% to 54%. Thus, the single stage market during this period was growing at a rate higher than that of Toro sales.⁵ The record suggests that this phenomenon was produced by increased public familiarity with single stage machines and by heavy advertising and promotion.

2. The Prior Art And Claim 19.

Prior to 1952, the art was devoted to snow removal equipment of various kinds for use by governmental and commercial enterprises. From 1952 to 1962 this record discloses approximately fifteen patents pertaining to snow removal machines designed for homeowners to use in clearing driveways and sidewalks.

Turning to Claim 19 of the '661 patent, the closest single piece of prior art is United States Patent No. 2,871,585, issued to Merry on February 3, 1959 (DX 37N), a patent which the examiner of the '661 patent apparently did not consider. The Merry patent taught a hand-guided snow thrower with a down-milling paddle wheel impeller which swept snow backward and upward against a rear wall disposed transversely to the normal direction of travel. Moreover, Merry's snow thrower discharged snow forwardly, to either the left or right side via a discharge chute which was totally open—i. e., unobstructed—in the forward direction. It incorporated a single flexible vane which the user could cause to form a curved surface diverting the upwardly and forwardly impelled snow to one side or the other.

The only difference between the Merry snow thrower and the machine described in Claim 19 is that Claim 19 calls for a plurality of vanes for directing the snow rather than a single vane.⁶

There were at least two other prior art hand-guided snow throwers which utilized a paddle wheel impeller to sweep snow against a curved backplate in the same manner as the '661 machine. The Erickson thrower, embodied in United States Patent No. 2,714,772 issued in 1955 (DX 37K), and the Phelps thrower, shown in United States Patent No. 3,074,189 (DX 37Q), utilized this approach but discharged the snow through enclosed, rather than forwardly open, discharge chutes.

In addition, several prior art references taught the use of several adjustable vanes in tandem to guide the discharge of the snow. (DX 37I; DX 37J, Figs. 5 and 6; DX 37X, Fig. 2). Of particular interest is the Borg snow thrower which utilized a discharge chute having a series of vanes rigidly fastened at their base ends and ganged together at their upper ends for deflection in tandem just as in the machine illustrated in the '661 patent.

3. The Level Of Ordinary Skill In the Pertinent Art.

The parties disagree as to whether there is evidence in the record bearing on the level of ordinary skill in the pertinent art. Clearly, there is little direct evidence. The nature of snow throwers, however, is itself circumstantial evidence which permits the Court to say something about the skill of those involved in designing such apparatus and in solving the problems presented by that task. At a minimum the designing of a snow thrower requires knowledge of the rudimentary principles of mechanical engineering, whether that knowledge be acquired by formal training or experience. Given the view I take of this matter, nothing more need be said about the level of ordinary skill in the art.

4. The Obviousness Issue.

As previously noted each of the principal features of the snow thrower claimed in Claim 19 of the '661 patent — a down-milling paddle wheel impeller; a curved back wall; a plurality of snow-directing flexible vanes which, together with the back wall define forwardly open discharge chutes, and a means for varying the snow directing attitude of the vanes — is found in the prior art. Indeed, except for the fact that it had a single, snow-directing,...