Triax Company v. Hartman Metal Fabricators, Inc.

• Decision Date: 31 May 1973
• Docket Number: Dockets 71-1843,No. 35,36,71-1978.,35
• Citation: 479 F.2d 951
• Parties: The TRIAX COMPANY, Plaintiff-Appellant, v. HARTMAN METAL FABRICATORS, INC., Defendant-Appellee.
• Court: U.S. Court of Appeals — Second Circuit

479 F.2d 951 (1973)

The TRIAX COMPANY, Plaintiff-Appellant, v. HARTMAN METAL FABRICATORS, INC., Defendant-Appellee.

Nos. 35, 36, Dockets 71-1843, 71-1978.

United States Court of Appeals, Second Circuit.

Argued November 27, 1972.

Decided May 31, 1973.

Thomas V. Koykka, Arter & Hadden, Cleveland, Ohio, George S. Baldwin, Richard J. Egan, Robert J. Fetzer, Baldwin, Egan, Walling & Fetzer, Cleveland, Ohio, George W. Shaw, Cumpston, Shaw & Stephens, Rochester, N. Y., for plaintiff-appellant.

B. Edward Shlesinger, Philip K. Fitzsimmons, Shlesinger, Fitzsimmons & Shlesinger, Rochester, N. Y., for defendant-appellee.

Before WATERMAN, FRIENDLY and HAYS, Circuit Judges.

WATERMAN, Circuit Judge:

In this action The Triax Company alleges that three of its patents relating to automatic "stacker" machines it manufactures for use in its patented automated warehousing system were infringed by the "stackers" the defendant Hartman Metal Fabricators, Inc. has manufactured, sold, and installed in warehouses. Hartman defends on the ground that the three Triax patents are invalid for obviousness under 35 U.S.C. § 103; and that, even if they are valid, they are not infringed. The three patents in suit (a Lemelson patent and two Chasar patents) describe an automated warehousing system of the kind in relatively common use among large manufacturing concerns and other types of commercial enterprises. The purpose of the system is to provide an inexpensive and efficient way to handle goods and materials which flow through, and are stored in; warehouses. The typical installation consists of sets of high rise storage racks, rising to heights of 100 feet or more, and extending to lengths of from 120 feet to over 800 feet, which are arranged in parallel rows in a large room. Each set of storage racks consists of two side panels containing a multiplicity of storage bins. The panels are separated by a narrow aisleway that contains a "guide rail" running along the floor of the aisleway or above the aisleway higher than the height of the highest bin. The storage-retrieval machine or "stacker" moves along the aisleway on the guide rail carrying loads to and from specific, pre-selected bins in pre-selected storage racks. The machine is self-propelled; it functions automatically on the basis of programmed instructions which are fed by a control operator into a control panel located on the base of the machine. The design of the stacker is relatively simple: it consists of a "shuttle arm" or shuttle table which extends laterally to pick up and deposit the load; an elevator carriage which raises the load to the proper height (the elevator runs along a "mast" which is a part of the stacker); and the electrical apparatus which controls both the vertical and horizontal automatic movements of the machine. When programmed to deposit a load, the stacker positions itself by the side of a loading platform, its home station for pickup or discharge, which is located at one end of an aisleway having columns of high rise storage racks on either side thereof. When so positioned, the shuttle arm or table, upon receiving the programmer's command, extends out under the materials programmed for storage, lifts the materials from the loading platform, and then retracts. Having acquired its load the stacker automatically moves away from the loading platform in a horizontal direction down the aisleway. When it reaches the proper distance so that it is opposite the pre-selected stack of bins it stops, the loaded shuttle table moves up the mast, stops automatically at the height of the pre-selected bin, and deposits the load there. After warehousing its load the shuttle table moves down the mast, and the stacker returns automatically to the home station loading platform.¹ At this point the stacker can be programmed to perform another command.

The Lemelson patent (No. 3,119,501) covers the elements that constitute the system and particularly covers the electrical apparatus which controls the automatic vertical and horizontal movements of the stacker.

The two Chasar patents (No. 3,139,994 and No. 3,219,207) cover three mechanisms which affect the operational ability of the stacker in various ways. Under the claims of Chasar 994 the stacker can be programmed to perform two commands, a command to load an article into one bin and a command to retrieve an article from another bin, or vice-versa, before it returns to the home loading platform for reprogramming. This ability to perform two commands would appear to be a new feature of the machine; earlier machines had the capability of executing but one command (either a storage command or a retrieval command) before returning to the home loading area. Chasar 994 also claims the mechanism by which the shuttle table of the stacker will automatically retract if the bin into which the article is to be deposited already holds another load. By virtue of this device, collisions between loads are avoided. In Chasar 207 the third mechanism is claimed, an "evil eye" measuring device which measures the height of the load that is to move onto the stacker. If the load is too tall to fit into the pre-selected storage bin the load breaks a light beam emitted by a source located on the stacker, thereby causing a photocell measuring device in the control circuit to stop the stacker's progress.

After a trial in the United States District Court for the Western District of New York, Judge Harold Burke found that all three of the plaintiff's challenged patents were valid, but that none of the patents were infringed by the defendant's accused apparatuses. Plaintiff Triax now appeals the finding that its valid patents were not infringed, and defendant Hartman cross-appeals the finding of the patents' validity. For reasons which follow, we hold that the two Chasar patents which the lower court found to be valid are invalid for obviousness, and we agree with the lower court that the Lemelson patent is valid, but, although valid, has not been infringed. Accordingly, we affirm the judgment below in defendant's favor, although we affirm for different reasons from those relied upon by the trial court when it entered judgment for the defendant.

Chasar Patents 994 and 207

We have little difficulty in concluding that the challenged devices in both of these patents are invalid for obviousness. The tests for obviousness were described in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) as follows:

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. Against this background, the obviousness or nonobviousness of the subject matter is determined. 383 U.S. at 17, 86 S. Ct. at 694.

Accord, Reeves Brothers, Inc. v. U. S. Laminating Corp., 417 F.2d 869 (2 Cir. 1969). Citing a prior Chasar patent (3,132,753) and a British patent (British Sterling Patent No. 866,107), Hartman argues, we think convincingly, that the dual command and bin reject elements of Chasar 994 were amply foreshadowed in the prior art. Applications seeking grants of these two patents were pending at the time the application which matured into Chasar 994 was filed, and there is no doubt that they are relevant prior art.² Moreover, inasmuch as neither of these pending applications is disclosed in the file wrapper of Chasar 994 the ordinary presumption in favor of the validity of a granted patent is severely undercut. See, e. g., Lemelson v. Topper Corporation, 450 F.2d 845 (2 Cir. 1971), cert. denied, 405 U.S. 989, 92 S.Ct. 1253, 31 L.Ed.2d 456 (1972); Reeves Brothers, Inc. v. United States Laminating Corp., supra, 417 F.2d at 872; Continental Can Co. v. Old Dominion Box Co., 393 F.2d 321, 326 n. 8 (2 Cir. 1968); Formal Fashions, Inc. v. Braiman Bows, Inc., 369 F.2d 536, 539 (2 Cir. 1966). Also, close reading of the British patent seems to disclose the precise dual command mechanism which is claimed in the plaintiff's challenged patent.³ In Sterling the "transporter" and "hoist" seem to have the capability of depositing one load and collecting another load prior to returning to the ground floor. The earlier Chasar patent (753) discloses the same storage-retrieval machine as the one claimed in the challenged Chasar patent, and, when these two patents are read together, the conclusion seems inescapable that the dual command means was obvious to anyone with ordinary skill in the art.

The same conclusion of invalidity must be reached with respect to the bin reject mechanism — based again on a reading of the earlier Chasar patent (753). Indeed, this mechanism appears to be expressly set out in Claim 4 of that earlier patent:

Claim 4. A load transfer and storage apparatus as set forth in Claim 1 wherein the recited control means includes means responsive to loads positioned simultaneously on both said selected support means and said carrier stopping, before collision damage occurs, travel of said laterally extendible frame in the direction of said storage frame, and means automatically thereafter returning said carrier to said station. (Emphasis added).

Accordingly, we find that both mechanisms in Chasar 994 are invalid for obviousness.

We also agree with Hartman that Claim 6 of Chasar 207 disclosing the photoelectric cell measuring device is invalid for obviousness. Indeed, this kind of device was in such ordinary use that it would have been obvious to almost anybody, not only those skilled in the art. In particular we rely on two patents cited in Hartman's brief (the Macchi U.S. Patent No. 2,118,651, and the Lauterbach U.S. Patent No. 2,366,-152) in finding this patent invalid. Neither of these patents was disclosed in the 207 file wrapper.

Macchi claims a system for automatically controlling the feeding of coal into a furnace in order to maintain a predetermined coal level. The system employs a...