Ward Machinery Co. v. WM. C. STALEY MACH. CORP.
| Decision Date | 24 February 1976 |
| Docket Number | Civ. No. 72-683-H. |
| Citation | 409 F. Supp. 273 |
| Parties | The WARD MACHINERY COMPANY, Plaintiff, v. WM. C. STALEY MACHINERY CORPORATION, Defendant. |
| Court | U.S. District Court — District of Maryland |
Roberts B. Larson, Washington, D. C., Walter G. Finch, Baltimore, Md., and
William D. Denson, New York City, and Eric S. Spector, Washington, D. C., for defendant.
In this civil action, the plaintiff is claiming infringement of United States Patent No. 3,588,095, which was issued on June 28, 1971 to Henry D. Ward, Jr., William F. Ward and John H. Bachman, Jr.1 The patent in suit is a mechanical patent and relates to a suction table system for the feeding of warped sheets into machinery which makes boxes from corrugated paperboard.
The Ward Machinery Company,2 assignee of the patent and plaintiff herein, manufactures box-making machinery at its plant in Cockeysville, Maryland. The patent in suit relates to a structure located at the initial stage of a production line and designed to feed rectangular sheets of corrugated paperboard of various sizes into machinery for processing into boxes or containers. The suction table system disclosed by the patent is specifically intended to permit warped sheets to be fed into the box-making machinery for processing at high rates of speed.
The defendant is Wm. C. Staley Machinery Corporation, a competitor of the plaintiff's, also located in Baltimore County, Maryland. Defendant asserts the usual defenses of invalidity and non-infringement, contending in particular that the patent in suit is invalid (1) because of obviousness under 35 U.S.C. § 103; (2) because of anticipation by the prior art under 35 U.S.C. § 102(a); (3) because the invention claimed was on sale in the United States more than one year prior to the date of the application for the patent under 35 U.S.C. § 102(b); (4) because of indefiniteness under 35 U.S.C. § 112; and (5) because the applicants committed fraud on the Patent Office in procuring the issuance of the patent. Defendant has counterclaimed, seeking a declaratory judgment that the patent in suit is invalid and that it has not infringed the patent.
For the reasons set forth hereunder, this Court has concluded that U. S. Patent No. 3,588,095 is invalid under 35 U.S.C. § 103 because of obviousness. Because such invalidity so clearly appears on the record here, it is not necessary to and the Court will not therefore undertake to decide any of the other issues of invalidity presented, here nor will the Court address itself to the issue of infringement.
The relationship of this case to litigation pending in another District should here be mentioned. Besides suing the defendant in this case, The Ward Machinery Company filed a similar action in the United States District Court for the District of New Jersey against The Langston Company, another competitor, claiming that Langston had also infringed this very same patent. Ward Machinery Company v. The Langston Company, Civil No. 1256-72, United States District Court for the District of New Jersey. That case involved similar issues of validity as were presented here.
Following extensive pre-trial proceedings and the filing of lengthy pre-trial briefs, the trial of this case commenced on November 10, 1975 and lasted for some three weeks. Final argument was heard on Friday, November 28, 1975. The New Jersey case was scheduled to commence before Judge Stanley S. Brotman in Camden, the very next Monday, December 1, 1975. At the conclusion of his argument in this case, counsel for the defendant moved for an immediate judgment, pointing out that if this Court ruled in favor of the defendant on the issue of invalidity, the defendant in the Langston case would move immediately for a judgment in the New Jersey Court under Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971).
Although declining to enter immediate judgment at the conclusion of the final argument, this Court undertook over the weekend of November 28-30, 1975 to review the briefs, exhibits and transcripts in the light of the final arguments. Following such review, this Court concluded that the defendant was entitled to judgment on the issue of validity. Therefore, on Monday morning, December 1, 1975, an Order was entered finding that the patent in suit was invalid under 35 U.S.C. § 103 because of obviousness, entering judgment in favor of the defendant and providing that the Court's written findings and conclusions would be filed at a later date. Judge Brotman and counsel were promptly notified of this Court's action so that the New Jersey proceedings might properly reflect the finding of invalidity made by this Court.
There are fifteen claims in the patent in suit, and plaintiff contends that eight of the fifteen claims have been infringed by the defendant. However, only Claims 1, 14 and 15 need be considered by the Court in deciding the issue of validity, as the other claims in issue are dependent upon these. Claim 14, which is typical, is as follows:
14. A sheet feeding system for feeding sheets from a stack thereof, comprising, structure including a threshold member and gate means spaced therefrom to form an opening along one side of said stack for the passage of an outermost sheet of said stack through said opening, reciprocating means including a lip positioned along the opposite side of said stack, and means for initially engaging by suction at least a centermost portion of the surface of said outermost sheet of said stack and thereafter engaging by suction successive portions of at least some of the remaining surface of said sheet and for urging said outermost sheet towards said reciprocating means to insure positive engagement of said lip of said reciprocating means with the trailing end of said outermost sheet so that said lip of said reciprocating means pushes said outermost sheet through said opening between said threshold member and gate means.
As the specifications indicate, the invention claimed relates generally to sheet feeders in the box manufacturing industry. By linking a series of machines together, sheets of corrugated paperboard can be cut, slotted, printed, folded, glued and otherwise made into boxes or containers by a box manufacturer.3 The suction table disclosed by the patent is at the very beginning of the manufacturing process and is designed to permit rapid feeding of paperboard sheets into the box-making machinery. Stacks of rectangular sheets are placed by an attendant between a front and rear gate on the table. A feeder plate connected to a reciprocating arm pushes the lowermost sheet into the nip of the feed rolls, which then delivers the feed to the various machines downstream. Thus, the structure disclosed performs the function of removing a sheet from a stack and starting it on its way.4
Corrugated paperboard, which is the material used by box manufacturers, is subject to various degrees of warping, depending upon the moisture content of the air. Warped sheets present particular problems to the box-making industry. If sheets in a stack are warped, the feeding system cannot operate because, depending upon the amount of warp, the feeder plate may not engage the trailing edge of the sheet or the leading edge of the sheet may not pass through the front gate into the nip rollers.5 The patent in suit sought to solve this problem by using a suction means which would pull the lowermost sheet down by means of a vacuum and flatten it at both the leading and trailing edges of the sheet for proper feeding. As disclosed by the patent, the vacuum box was made in two sections so that sheets of varying size could be handled.
In order to start the operation of the machine, an attendant fills the hopper with sheets and switches on the vacuum. The lowest sheet is then sucked down by vacuum pressure and is fed into the nip of the rotating rolls by the forward motion of the feeder plate engaging the trailing edge of the sheet. As the feeder plate starts its return stroke to the rear, it separates from the trailing edge of the sheet, thus exposing the next sheet to vacuum pressure. This next sheet is then sucked down as the feeder plate is being retracted. The departing sheet is then pulled through the nip rolls, and when the feeder plate has been fully retracted, the next sheet will have been completely flattened out by the vacuum pressure and will be ready to be pushed forward by the feeder plate as it once again starts its feed stroke. This feeding and sucking process continues until all the sheets in the stack have been fed into the machinery.
The defendant contends that this combination patent is invalid because of obviousness. In asserting this defense, defendant relies on 35 U.S.C. § 103, which provides as follows:
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
It is conceded in this case that all the elements of the patent in suit are old, but plaintiff is claiming that this aggregation of old parts or elements is patentable because the parts in combination perform a new and different function. The rule to be applied in a combination patent was stated by the Supreme Court in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008 (1938), as follows (at page 549, 58 S.Ct. at p. 664):
The mere aggregation of a number of old parts or...
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