TSC Industries, Inc. v. International Harvester Company

• Decision Date: 03 March 1963
• Docket Number: No. 16571.,16571.
• Citation: 406 F.2d 53
• Parties: TSC INDUSTRIES, INC., a corporation, Plaintiff-Appellant, v. INTERNATIONAL HARVESTER COMPANY, a corporation, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

406 F.2d 53 (1968)

TSC INDUSTRIES, INC., a corporation, Plaintiff-Appellant, v. INTERNATIONAL HARVESTER COMPANY, a corporation, Defendant-Appellee.

No. 16571.

United States Court of Appeals Seventh Circuit.

December 5, 1968.

Rehearing Denied March 3, 1963.

Thomas E. Dorn, Wallace, Kinzer & Dorn, Theodore W. Anderson, Jr., Pendleton, Neuman, Seibold & Williams, Chicago, Ill., for plaintiff-appellant.

Howard W. Clement, Melvin F. Jager, Hume, Clement, Hume & Lee, Chicago, Ill., for defendant-appellee; Noel A. Artman, John J. Kowalik, Chicago, of counsel.

Before CASTLE, Chief Judge, DUFFY, Senior Circuit Judge and HASTINGS, Circuit Judge.

Rehearing En Banc Denied March 3, 1963.

DUFFY, Senior Circuit Judge.

This suit was initiated as a declaratory judgment action stemming from defendant's charge that plaintiff was in-infringing Walker United States Patent No. 2,729,930 by reconstructing and selling spent doffers.

A mechanized cotton picking machine is large in size and is of considerable complexity. It contains, among other parts, a combination of rotating, elongated picking spindles which remove and collect the cotton from the cotton plants as the cotton picker moves along a row of plants, and disc-like rotating doffers which cooperate with the spindles to remove the picked cotton therefrom. This combination constitutes the "heart" of the machine.

Only two companies make rotary doffer cotton picking machines in the United States. Those are the defendant and John Deere Company. From 1958 to 1966, these two companies sold most of the 23,000 cotton picking machines which were sold in this country.

As the cotton picker moves down a row of cotton plants, the spindles are moved in a path around a drum. Each spindle projects successively out of the picker housing and contacts the cotton plants. As the picker moves forwardly, the spindles move rearwardly. Each spindle is rapidly rotated on its own axis. When a spindle contacts the cotton boll of the plant, the cotton is wound on the spindle and thus removed from the plant.

Each cotton-laden spindle is then moved in close association with a rotating doffer. Each doffer has a number of depending lugs. The doffers are rotated in the direction of the rotation of the spindles but at a higher speed so that the lugs sweep successively across the spindles in an unwinding action. The loose cotton is carried by a stream of air through passageways into a storage basket at the top of the picking machine. The spindle and doffer assemblies are in vertical stacked rows so as to operate on the entire cotton plant.

Since the inception of the mechanized cotton picker using a combination of picking spindles and doffers, there always has been the disadvantage that the lugs or other comparable elements on the doffers rapidly become worn, after which they do not operate efficiently. This problem plagued the industry for years. Many unsuccessful efforts were made to supply the trade with a doffer which would give service for an entire picking season.

The many attempts to solve the wear problem is shown by a number of patents in this field which were filed in the period from 1937 on. Most of these patents disclosed doffers having a circular row of lugs projecting downwardly. In some, the discs are solid, and the doffing lugs are completely backed by metal. These were referred to at the trial as "solid back" doffers. The defendant and others used this type of doffer prior to the invention of Walker's '930 doffer.

The problem persisted of providing an effective doffer with a useful life extending as long as a one-picking season. It was with this background that Mr. Walker, product engineer on cotton pickers at defendant's Memphis plant, conceived the doffer construction as shown in the '930 patent. This patent describes a doffer construction having a lug with "axial movement relative to the support structure." The preferred embodiment is one "where the outer ends of the doffing pads or lugs are free-floating and the inner ends are somewhat more restricted in their action." An alternative embodiment is one in which the lugs are "supported and isolated from the rigid structure of the supporting disc."

The evidence discloses that defendant's '930 doffer construction clearly prolonged the useful life of doffers to about four hundred hours of operation. This was substantially one full season of use.

Mr. Walker later conceived another type of doffer having the same form of plate member but having the lugs supported principally by the relatively rigid fingers of the plate. This was the subject matter of Walker's No. 2,700,266 patent issued on January 25, 1955.

The District Court tried the issue of infringement first. The critical question before us, as to the alleged infringement, is whether plaintiff merely repaired worn doffers or whether it was engaged in infringing reconstruction of the doffers which were originally manufactured and sold by defendant.

There were cross motions for summary judgment. Both parties seemed to agree that the undisputed activities of plaintiff amounted either to permissible repair or infringing reconstruction and that this issue was an appropriate one to submit to the Court on a summary judgment basis.

The original construction of the Dofflex doffers is accomplished by first applying a rubber-to-metal bonding cement to a new metallic carrier plate which has spaced, peripheral fingers. Thereafter, the carrier plate is placed in the cavity of a molding apparatus, an annulus of rubber is placed on the fingers of the plate, and the mold cavity is closed. The high pressure and heat of the molding apparatus forms the annulus of the rubber into the lugs and the wafter-like web of the doffer assembly, including the resilient lug sustaining portions, and bonds the web to the fingers of the metallic carrier plate. The metallic carrier plate is initially positioned in the molding apparatus so that the doffer lugs so formed are positioned between the spaced fingers of the metallic plate.

The process of manufacturing a new '930 doffer as done by the defendant, and plaintiff's process of reconstructing or repairing a worn '930 doffer from a reclaimed metallic carrier, are identical. Plaintiff does not take the worn doffer to be repaired and thereafter return it to the original owner. Plaintiff purchases worn-out '930 doffer assemblies for a nominal sum. After reclaiming the plate from the doffer assembly, plaintiff carries out additional steps which are identical with those performed by the defendant and which have been hereinbefore described. Plaintiff claims that what it has done is a "rerubbering" process and that it is a permissible repair and therefore, not an infringement.

After accumulating a substantial number of defendant's worn and spent doffers, plaintiff follows the practice of initiating its "re-rubbering" program. Plaintiff destroys what is left of the patented doffer combination by removing the molded rubber lugs and the wafer-like web including the resilient lug sustaining portions of the web, spanning the space between the fingers of the carrier plate. It is possible to reuse the metal plate a number of times.

The trial court found that plaintiff first destroyed the patented doffer combination and then reconstructed a new combination using a process practically identical with that described in defendant's patent No. '930, and as used in the original manufacturing process. The trial court concluded that plaintiff's conduct was not a permissive repair but was, in fact, an infringing reconstruction.

Both parties cite and discuss at some length the opinion of the Supreme Court in Aro Manufacturing Company v. Convertible Top Replacement Company, 365 U.S. 336, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961). It is not surprising that the position of the Court in that case is subject to varying interpretations. There, we have first, the opinion of the Court followed by a lengthy concurring opinion which, in turn, is followed by an opinion ...