Watkins v. Northwestern Ohio Tractor Pullers Ass'n, Inc.

Decision Date03 October 1980
Docket NumberNo. 78-3598,78-3598
Citation208 USPQ 545,630 F.2d 1155
PartiesBilly K. WATKINS, Plaintiff-Appellant, v. NORTHWESTERN OHIO TRACTOR PULLERS ASSOCIATION, INC., Defendant-Appellee.
CourtU.S. Court of Appeals — Sixth Circuit

Dennis Gross, Hill, Gross, Simpson, Van Santen, Stedman, Chiara & Simpson, Chicago, Ill., for plaintiff-appellant.

Donald R. Fraser, Wilson, Fraser, Raptes & Clemens, Wilbur A. Schaich, Toledo, Ohio, for defendant-appellee.

Before LIVELY, BROWN and KENNEDY, Circuit Judges.

CORNELIA J. KENNEDY, Circuit Judge.

Plaintiff Billy K. Watkins appeals the dismissal by summary judgment of his action for patent infringement. Watkins, a small Livingston, Illinois farmer, is the inventor and patentee of a tractor sled, a device used in contests at county fairs and other exhibitions to determine which tractor can pull the most weight. Northwestern Ohio Tractor Pullers Association is a non-profit corporation organized for the purpose of sponsoring tractor pulls. It built two tractor pulling sleds, Heartbreaker I and Heartbreaker II, which Watkins alleges infringe his patent. The District Court found that there were no material issues of fact and that plaintiff's claim was barred by laches and estoppel.

I. Findings of the District Court and Disputed Issues of Fact

There are a number of facts which are not in dispute. In August 1967, plaintiff demonstrated his tractor sled in Bowling Green, Ohio. Merle Grimm, one of defendant's founders, saw the demonstration. At that time, Grimm was a member of an unincorporated club which was defendant's predecessor. In the fall of 1967, Grimm built a sled (Heartbreaker I) for the club. December 30, 1969, plaintiff wrote to the club, in care of Grimm, that a patent would be issued to him shortly on his sled and that plaintiff learned defendant intended to use the Grimm sled at the forthcoming National Farm Machinery Show at Louisville, Kentucky, February 11 and 12, 1970. The letter stated the use of the Grimm sled without a license would be an infringement and threatened suit. Plaintiff also wrote the National Farm Machinery Show, warning of the possible infringement.

Plaintiff's patent was issued January 27, 1970 (Patent # 3,491,590). The sled was not used at the February 1970 show and plaintiff was so advised by his attorney. Grimm did not respond to the December 30, 1969 letter. Grimm wrote other sled owners in February 1970 to ask their help in challenging plaintiff's patent, but no concrete action was taken. June 23, 1970, the club incorporated as Northwestern Ohio Tractor Pullers Association, Inc., and Grimm became the first president. The Grimm sled was transferred to the corporation. September 1972, plaintiff wrote to defendant in care of the person he believed to be president, a Mr. Chamberlain, but the letter was returned. In 1974, defendant sold its first sled and built another sled (the Heartbreaker II). Contracts for the use of both sleds were filed with defendant's answer. The earliest date legible was August 11, 1970. January 21, 1976, plaintiff sued another alleged infringer named Lloyd Luedtke. Plaintiff, on advice of his counsel, wrote a letter to Grimm and others who might be infringing, advising that he was presently suing on his patent and intended to enforce his rights against other infringers upon completion of the Luedtke suit. This letter to Grimm was undated but was given by Grimm to defendant's attorneys May 27, 1976. Grimm did not answer this letter. Plaintiff's attorney wrote Grimm again June 15, 1977 inquiring as to the relationship between Grimm and defendant, offering to license, and threatening immediate suit for patent infringement if no response was received. Grimm's attorneys did respond at this point to say the matter had been referred to them. A substantive response was written by Grimm's attorneys, claiming laches and estoppel, October 11, 1977. Suit was filed against defendant December 2, 1977.

Defendant has no post office box, no office, no phone. It does have officers and a statutory agent, but no mailing address other than through the statutory agent or the officers.

The District Court found that there were no disputed facts and defendant was entitled to summary judgment. Based on the depositions, exhibits, and answers to interrogatories, it found the following facts were undisputed. Plaintiff built his sled June 1967 and demonstrated it in Bowling Green, Ohio August 1967, where it was examined by Grimm. Grimm constructed his sled, tested it March 1968, and used it July 4, 1968. Plaintiff filed for his patent April 24, 1968. By December 30, 1969, certain of plaintiff's claims had been deemed allowable by the patent examiner. The Court held the December 30, 1969 letter could only be characterized as a Notice of Infringement and Offer to License. The Court found that Grimm, without knowing the merits of plaintiff's claim, desisted from using his sled at the February 1970 show. Since that time, the sled has been used openly at county fairs and in 1974, a larger sled was built and the original was sold. The Court found the next contact with defendant from plaintiff was the May 27, 1976 letter which the Court characterized as a Notice of Prior Suit for Infringement, an Intent to Sue, or an Offer to License. It concluded that since more than six years had passed between the December 30, 1969 Notice of Infringement and the filing of the suit defendant was presumed to have been injured by the delay. It held defendant was injured in fact by acceding to plaintiff's request not to use the sled February 1970 and by building a larger sled. It held there was sufficient similarity in identity between the unincorporated club and defendant and between the first sled and the second that the notice in 1969 to the club of infringement by use of the first sled was notice to defendant of infringement by the second sled. The other litigation was held not to have tolled the six-year period. The District Court concluded plaintiff was barred by laches from pursuing his noticed alleged infringement claim against an entity which was easily ascertainable by mail or diligent pursuit and which carried on its allegedly infringing activities openly and publicly for more than six years. Without any further findings, the Court held plaintiff was estopped and granted defendant's motion for summary judgment.

Plaintiff argues several material issues of fact are in dispute and should not have been decided by the District Court on a motion for summary judgment. Specifically, plaintiff argues that no evidence supports the Court's findings of similarity between the unincorporated club and defendant and between Heartbreaker I and Heartbreaker II. It argues that whether or not defendant is easily ascertainable and whether or not defendant was injured by the delay are also disputed facts.

He also urges that he is not guilty of laches as the applicable period did not start running until the first threatened use after issuance of the patents. The delay in suing was not unreasonable, he argues, as he could not locate defendant earlier. Moreover, defendant was not harmed by the delay. He further argues the applicable period is tolled because he was involved in other litigation concerning the same patent. He claims he is not estopped as defendant did not rely to its detriment on any action or representation of plaintiff.

The District Court may grant a motion for summary judgment only if it finds from the whole record before it that there are no material facts which are in dispute. See Rule 56(c), Fed.R.Civ.Pro. It may not make findings of disputed facts on a motion for summary judgment. The movant has the burden of showing conclusively that there exists no genuine issue as to a material fact and the evidence together with all inferences to be drawn therefrom must be considered in the light most favorable to the party opposing the motion. The movant's papers are to be closely scrutinized while those of the opponent are to be viewed indulgently. See Smith v. Hudson, 600 F.2d 60, 63-64 (6th Cir.), cert. dismissed, 444 U.S. 986, 100 S.Ct. 495, 62 L.Ed.2d 415 (1979).

Upon a review of the entire record in this case, this Court must agree with the plaintiff that the District Court made findings with respect to facts which were in dispute. Grimm testified that Heartbreaker II was similar in some respects to Heartbreaker I, but he also said it was bigger, carries more weight, has more gears, and carries the sled as a self-contained unit which Heartbreaker I did not do.

Grimm said defendant was easily located through its officers, and defendant's name, although not its address or officers' names, was on the side of the tractor sled. He said Heartbreaker I was used in about 10-15 pulls the first couple of years and 15-25 the next. The sponsoring organizations of the pulls were aware of defendant and knew how to contact it. Plaintiff, by affidavit, stated that after February 1970 he was not sure about defendant's existence or the continued use of the Grimm sled. He heard about the sled being used in 1971 and wrote to defendant in care of Dan Chamberlain but this letter was returned. (Grimm said David Chamberlain has been president since 1973.) Plaintiff's attorney stated by affidavit that he attempted to find defendant through the Ohio Secretary of State's Office and Dun & Bradstreet in 1976. Plaintiff's attorney's efforts to find defendant came after the May 27, 1976 letter noticing the other litigation and an intent to sue. Thus, these efforts cannot prove defendant was difficult to locate prior to this notice. However, that plaintiff's counsel had difficulty finding defendant after tends to support plaintiff's assertion that defendant was difficult to locate before and at least creates a disputed issue of fact.

Plaintiff stated that he believed Heartbreaker I was not used at the February 1970 show, but no evidence indicates...

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