True Temper Corp. v. CF&I Steel Corp.

• Decision Date: 31 May 1979
• Docket Number: 76-2107,Nos. 76-2106,s. 76-2106
• Citation: 601 F.2d 495
• Parties: TRUE TEMPER CORPORATION, Plaintiff-Appellant and Cross-Appellee, v. CF&I STEEL CORPORATION, Defendant-Appellee and Cross-Appellant.
• Court: U.S. Court of Appeals — Tenth Circuit

Page 495

601 F.2d 495

202 U.S.P.Q. 412

TRUE TEMPER CORPORATION, Plaintiff-Appellant and Cross-Appellee, v. CF&I STEEL CORPORATION, Defendant-Appellee and Cross-Appellant.

Nos. 76-2106, 76-2107.

United States Court of Appeals, Tenth Circuit.

Argued and Submitted March 13, 1978.

Decided May 31, 1979.

J. Helen Slough, Cleveland, Ohio (Squire, Sanders & Dempsey, Cleveland, Ohio, Peter Holme and Joseph E. Meyer, III, of Holme, Roberts & Owen, Denver, Colo., of counsel, on the brief), for plaintiff-appellant and cross-appellee.

Lawrence F. Scinto, New York City (Nels T. Lippert of Fitzpatrick, Cella, Harper & Scinto, New York City, and Miles C. Cortez, Jr., of Welborn, Dufford, Cook & Brown, Denver, Colo., of counsel, on the brief), for defendant-appellee and cross-appellant.

Before HOLLOWAY, DOYLE and McKAY, Circuit Judges.

HOLLOWAY, Circuit Judge.

Plaintiff-appellant True Temper Corporation (True Temper) appeals from an adverse judgment in its suit against defendant-appellee CF&I Steel Corporation (CF&I) for infringement of its U. S. Patents Nos. 3,102,690 and 3,195,198. The '690 patent covers a one-piece rail anchor used by the railroads, and shown in Appendix A. The '198 patent covers the automated hot-forming press used to manufacture this rail anchor on a commercial basis.

The trial court held in its unreported opinion (I App. 14 Et seq.) that both patents were invalid on grounds of full anticipation in the prior art, 35 U.S.C. § 102, and of obviousness to a person of ordinary skill in the art, 35 U.S.C. § 103. The court further held that plaintiff's inequitable conduct in prosecuting both patents before the Patent Office barred their enforcement against an alleged infringer. And the court held that, even if the patents were deemed valid and enforceable, defendant's accused devices did not infringe on plaintiff's claims thereunder. The court granted judgment dismissing plaintiff's complaint and granted injunctive and declaratory relief for defendant, adjudging plaintiff's patents invalid and not infringed. The trial judge also ruled that these were not exceptional cases warranting recovery of attorney fees by the defendant CF&I and that each party should bear its own costs.

Plaintiff True Temper appeals all the adverse rulings against it and defendant CF&I cross appeals from the denial of attorney fees and costs.

I

A. THE GENERAL BACKGROUND OF THE PATENTS IN SUIT

Rail anchors are used in the railroad industry to prevent longitudinal movement of railroad rails during passage thereover by rolling stock, which naturally exerts great pressures on the rails. The anchors, which are manufactured by several different companies and come in several forms, are attached to the bottom flange of a rail at a point adjacent to and on either side of a railroad tie. By gripping the base of the rail firmly, and bearing up against the tie (though not actually being fastened to it), the anchor transmits the longitudinal force of the railroad load from the rail to the tie and restrains any forward movement of the rail itself.

There are two main types of rail anchors. The "spring" type is made of heavy bar section iron with a hook at one end (for grasping the rail flange), being bent along its length in a variety of "dips" to achieve tie-bearing area (the exact configuration depending on the manufacturer), and culminating in a "latching" piece to grip the rail at the opposite end. Such an anchor "is held on the rail by a spring force that is exerted between the two outside edges of the base." (I App. 55). The "jaw" type anchor, before plaintiff's '690 patent, was generally made of bar or T-section iron, having a deep jaw at one end to hold onto the rail flange; a relatively flat, unbent central section running under the rail; ¹ and a small vertical face at the opposite end to latch onto the rail. Such an anchor derives holding power from the tension created by the distortion of the "jaw" when it is driven onto the rail flange, causing the vertical face at the opposite end to snap into place on the rail base. The best-selling anchor on the market before introduction of plaintiff's patent was a jaw-type, the so-called Fair anchor manufactured by Portec Company from a patent issued to Ruppert. (See Appendix B).

Regardless of the exact form to be employed, the qualities making for a good rail anchor and hence leading to increased sales from the manufacturer's viewpoint include holding power (the extent to which an anchor will hold the rail and carry out its purpose under increasing pressure), maximum rail-and tie-bearing areas (to prevent gouging of rail or tie caused by relatively narrow anchors bearing against them), and high reapplicability (the ability to reuse rail anchors several times without significant loss of holding power). In mid-1958, Graham M. Fee, then in charge of plaintiff True Temper's Lake City plant, set out to design a better rail anchor under the above criteria. He had a plexiglass model by early fall of that year, and a metal version by October 1. (I App. 59).

Fee's idea was to utilize the general jaw design which had proven so successful in the Fair anchor (and which True Temper had incorporated into the two-piece "Bulldog" anchor it was then manufacturing), but to make several important improvements in construction. First, from the possible T-, I-, angle-, and channel-shaped stock available for fabrication of an anchor, Fee chose the channel; its -shape would give the best tie-bearing area in conjunction with the best rail-bearing area when the was inverted so that its "legs" pointed away from the rail. (Id. 57, 62). ² Second, by designing the anchor so that the rail base "bearing pads" were inclined The '690 rail anchor patent was issued on September 3, 1963. True Temper had countered initial Patent Office rejection of Fee's application and claims by submitting amendments, additional remarks, and affidavits of both Fee and Harold E. Sutch concerning tests and calculations on the subject of the application as compared with certain prior art, notably the British patent to Williams. In the meantime, too, True Temper had started to manufacture a rail anchor, like that covered by Fee's application, under the name of Channeloc. In 1973 and 1974, when the '690 patent was in effect, Channeloc sales reached 15.2 and 16.2 million units respectively; the Channeloc thus claimed 32% Of the rail anchor market, compared to 28% For the previously front-running Fair anchor. (I App. 105-06). True Temper's own two-piece Bulldog anchor had sold only 2-3 million units annually (roughly 5-10% Of the market) before being phased out in preference to the Channeloc, one-and-one-half years after the latter's introduction.

slightly toward the center, holding power would be increased due to increasing tension as the jaw was driven onto the rail flange. (Id. 72-73). Third, and perhaps most important, a "downwardly bowed" central portion which was "upwardly convexly rounded" in cross-section ³ would both add to the holding power of the anchor (since, when applied, the bowed portion would flatten somewhat and come under tension), and also increase the tie-bearing area of the anchor. (IV App. 325). ⁴

Although the Channeloc was produced on a limited basis by a partially non-automatic process in 1959-60, True Temper naturally desired to turn out the new device at a commercially acceptable level. Graham Fee assigned to Harold Sutch the task of designing a suitable production method, with the requirements that it be a fully automated system and operate on a continuous basis while still adhering to strict tolerances for a properly functioning rail anchor.

Sutch started work in August of 1959 and took about two years to develop the process. All dies, punches, and transfer mechanisms were made in-house by True Temper, since there was then available no standard equipment for hot-forming steel blanks into channel-shaped, Fee-type rail anchors. (Id. 177-78). The end result was a four-station hot-forming press, with automatic transfer from station to station, a different formation occurring at each station (identification stamping, channel formation, bending of jaw, and finishing), ⁵ and simultaneous formation at each station. This new process allowed True Temper to obtain better anchors than were possible under the old hand-fed method, ⁶ and at a faster rate 38 units per minute as opposed to three or four per minute. (Id. 215). The '198 patent was granted for Sutch's work on December 1, 1964. (V App. 815).

B. THE ALLEGED INFRINGEMENTS BY DEFENDANT CF&I

Defendant CF&I Steel Corporation is alleged to have infringed both the Fee patent, by coming out with its own "Hi-Guard" channel-stock rail anchor, and the Sutch patent, by the method CF&I uses to produce the Hi-Guard.

CF&I did not introduce the Hi-Guard until December 1972. Deposition testimony reveals, however, that the company became interested in rail anchors to fill out its CF&I ultimately decided to produce a new design, and the channel-shaped anchor which emerged was assertedly dictated by "what we felt was necessary in the performance of an anchor . . . (I. e., h)olding power, reapplication and maximum tie-bearing surface." (Id. 333). The Hi-Guard does however bear strong resemblance, at least superficially, to plaintiff's Channeloc. There are also many similarities between the automatic hot-forming process by which the Hi-Guard is manufactured and the process taught by plaintiff's '198 patent.

product line in the early fall of 1971. (II App. 330). Corporate officials first assessed whether they should acquire an existing rail anchor producer or create a new design, and in this educational endeavor made trips to the plants of various manufacturers including True Temper. (Id. 319, 332, 375-77).

As noted, the trial court held for defendant on both the '690 and '198 patents, declaring them invalid for obviousness and anticipation in the field, and therefore incapable of...