MERCER, Chief Judge.
Plaintiffs, Donald J. Bauer and The Cover Board, Inc., filed this action for an injunction and damages for alleged infringement of United States Patent to Bauer No. 2,733,647. Defenses of invalidity, non-infringement and file-wrapper estoppel are pleaded by the defendant. After a trial of the suit, the issues were taken for decision upon the evidence and the exhaustive briefs filed by the respective parties.
The patent in suit relates to a blade jointer designed for mounting upon the moldboard of a plow. The patent contains a single claim addressed to that subject. The evidence reveals that plaintiff, Cover Board, manufactures and markets a commercial jointer device under the trade-name "Cover Board". The accused device is a blade plow jointer manufactured and marketed by defendant under the trade-name "Yetter Trashboard".
As a preface to the entry of findings of fact, I think that the decisive issue of the case is the question of infringement. Plaintiff's theory is most accurately summarized as the contention that defendant's accused device is substantially equivalent in its structure and function to the commercial coverboard, that the commercial coverboard device is a substantial embodiment of the invention described in the patent claim and that, therefore, the patent claim reads upon the alleged infringing device.
Defendant's position in defense is two-fold. First, defendant invokes the principle that the monopoly of a patent must be measured by the claims thereof, contending that the claim of the patent in suit does not read on the structure of defendant's trashboard. Second, defendant contends that plaintiffs are estopped by the file-wrapper from invoking the doctrine of equivalents to show infringement
Invoking the fundamental principle that the claims of a patent measure the scope of the monopoly, Graver Tank & Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, 277, 69 S.Ct. 535, 93 L.Ed. 672, and the equally fundamental principle that limitations introduced into a patent claim to secure its allowance are binding upon the patentee and may not later be ignored in attempting to establish an infringement, Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-137, 62 S.Ct. 513, 86 L.Ed. 736; Dixie Cup Co. v. Paper Container Mfg. Co., 7 Cir., 169 F.2d 645, 649, I think that defendant's position with respect to the issue of infringement is sound.
Bauer's patent application, filed June 5, 1953, contained eight claims. Claim 5, thereof as subsequently modified and rewritten by several amendments to the application became the claim of the patent in suit.
Original claim 5 was broad enough to read upon any curved blade jointer. Thus, Bauer claimed:
The claim was rejected by the Examiner, the Examiner saying:
By a subsequent amendment, claim 5, together with two other claims, was again presented to the Examiner for allowance. In support of the allowance of those claims, Bauer represented to the Patent Office:
Again, the claim was disallowed by the Examiner, the Examiner saying:
Thereafter, on July 20, 1955, all remaining claims were withdrawn with the exception of claim 5, and that claim was amended in several particulars, including the insertion of a limitation that the blade was "twisted at its outer trailing tip end." In urging the claim upon the Examiner for allowance Bauer represented:
On July 22, 1955, claim 5, as then amended, was again rejected by the Examiner, the Examiner saying:
Thereafter, on September 21, 1955, an amendment to the application was filed in which claim 5 was rewritten as claim 12 of the application.
It is thus seen that Bauer originally processed his application with broad claims which would cover any curved, blade jointer positionably mountable upon the top of the moldboard of a plow. In order to secure the allowance of the claim and to overcome the teachings of the prior art, Bauer inserted the limitation that the jointer blade be "twisted at its outer trailing tip end" and the further limitation that, when mounted upon the moldboard of a plow, "the trailing end of said blade" would be "at substantially right angles to the furrow being plowed and horizontal to the ground." Bauer having thus limited the invention claimed, plaintiffs cannot now claim equivalence of every twisted blade jointer designed for moldboard mounting, irrespective of the position of the trailing end of the jointer when mounted in operable position and irrespective of the position of the twist with relation to longitudinal placement. It is clear that that is precisely what the plaintiffs attempt to do as evidenced by plaintiffs' position, stated in their brief, that introduction of the concept of twist itself into a blade jointer is invention. Although not specifically so articulated, plaintiffs would read the patent claim as reading upon any blade jointer which employs the concept of twist, irrespective of the degree and location of the twist with reference to the longitudinal structure of the device.
With those preliminary remarks in explanation thereof, the court finds the facts as hereinafter stated.
Findings of Fact
1. The court has jurisdiction of the parties and the subject matter of this suit.
2. Plaintiff Donald J. Bauer, a citizen and resident of the State of Ohio, is the patentee in the patent in suit, United States Patent No. 2,733,647.
Plaintiff the Cover Board, Inc., is an Ohio corporation and the exclusive licensee of the Bauer Patent.
3. Defendant, Yetter Manufacturing Company, Inc., an Illinois corporation with its principal place of business at Colchester, McDonough County, Illinois, is engaged in the business of manufacturing agricultural implements and equipment.
4. The patent in suit relates to a plow jointer, a device which is designed to effect substantial coverage of vegetable growth standing and being upon land being plowed. The jointer device of the patent is in the form of a curved blade designed to be mounted upon the top edge of a conventional plow moldboard. The specifications of the patent describe the blade as follows:
In operation, the blade is designed to shear off the landward side of the furrow slice being turned and to divert the sheared portion thus removed therefrom laterally across the furrow slice into the furrow being filled by the plowing operation.
The invention is claimed in a single claim, in language as hereinabove set forth.
5. Plaintiff, Cover Board, manufactures a plow jointer which it markets under the trade-name "Cover Board". The device consists of a blade which is designed to be mounted atop the moldboard of a plow, with the front edge thereof co-planar with the leading edge of the plow moldboard. When so mounted, the front end straight section of the blade rests upon the top of the moldboard for a space of several inches. The trailing part of the blade curves laterally from the plane of the face of the moldboard across the furrow being plowed, the degree of curvature becoming most pronounced slightly forward of the trailing tip end. In addition to the curvature of the blade, the top of the rear portion of the commercial cover board is disposed forwardly and downwardly by reason of the fact that the blade is helically twisted along its longitudinal center axis, the twist being imparted to approximately the rear two-thirds of its length. When mounted for operation, the trailing end of the commercial cover board is disposed at an angle of approximately 100 to 110 degrees to the furrow being turned and substantially horizontal to the plane of the ground being turned. In development of the commercial cover coard, the curvature of pilot models
6. The accused device is a blade jointer attachment which defendant markets under the trade-name "Yetter Trashboard." The physical dimensions of the Trashboard are approximately the same as those of the commercial cover board. The degree of curvature of the trashboard is slightly less than that of the commercial cover board, and the top of the rear portion of the device is forwardly and downwardly disposed by the employment of helical twisting of the blade along its longitudinal center axis, the twist being imparted to approximately the rear half of the blade. The trashboard is designed for mounting atop the moldboard of a plow with the leading edge of the blade co-planar with the leading edge of the moldboard. In operation, the trailing tip end of the trashboard is disposed at an angle of approximately 110-120 degrees to the furrow being turned and approximately 15 to 20 degrees above a position horizontal to the plane of the ground.
7. Other manufacturers produce and market blade jointers substantially similar to both the trashboard and the commercial cover board.
8. Defendant's officers and employees brought samples of the commercial cover board and other similar devices which they studied in effecting their design for the trashboard.
9. The trashboard is substantially the equivalent of the commercial cover board, but the question of infringement cannot rest upon a comparison of the physical characteristics of the two devices.
10. When the scope of the monopoly is measured by the claim of the patent, in view of the file-wrapper history of the application, the claim of the patent reads upon neither the commercial cover board nor the accused trashboard. The monopoly is limited to a jointer device designed for positionable mounting atop the moldboard of a plow in which a forward and downward disposition is achieved by imparting twist to the "outer trailing tip end" of the blade, with the trailing end of the blade being at substantially right angles to the furrow being plowed and horizontal to the plane of the ground. Neither the commercial cover board nor the trashboard embodies each of those essential features.
11. In view of the file-wrapper history of the application, I reject plaintiff's position that the teaching of the concept of twist in a jointer is the inventive feature of the patent, and I refuse to so find. The monopoly of the patent with relationship to use of helical twist of the blade is restricted to twist imparted to the trailing tip end. Bauer adopted the restrictive clause "said blade being twisted at its outer trailing tip end" in order to obtain the allowance of his claim over the prior art. The descriptive term "outer trailing tip end" has a commonly understood meaning denoting the rear extremity of an elongated object or device. So restricted, the claim does not read upon the trashboard which is twisted beginning approximately at the center of its longitudinal dimension. By the same token, the claim does not read upon the commercial cover board which employs twist along approximately the rear two-thirds of its longitudinal axis.
12. The accused device does not infringe the claim of the patent in suit.
13. It is unnecessary to reach the question of validity of the patent in suit and no opinion thereon is herein expressed. If we presume the patent to be valid, it is not infringed by defendant.
14. None of the evidence supports the allegations of the complaint alleging unfair competition.
15. The equities of the case do not support defendant's prayer for the allowance of attorneys' fees.
Conclusions of Law
1. The court has jurisdiction of the subject matter, 28 U.S.C. § 1338, and of the parties to this suit.
3. A patentee may not have recourse to the doctrine of equivalents to claim a monopoly of an element or concept which the patentee has surrendered by limitations introduced into his claim by amendment in order to obtain its allowance. Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736.
4. To obtain the allowance of the patent in suit plaintiff, Bauer, by several amendments to his application, limited his claim to the specific structure described in the claim of the patent. Limitations engrafted upon the broad language of the original claim 5 included the concept to fixing the twist of the device at the outer trailing tip end thereof and the mounting of the device in such fashion that the trailing tip end would be disposed approximately at right angles to the furrow being turned and horizontal to the plane of the ground. By so doing, Bauer disclaimed the monopoly on devices embodied in the concept of the trashboard and, also, incidentally in the commercial cover board. Exhibit Supply Co. v. Ace Patents Corp., supra; Dixie Cup Co. v. Paper Container Mfg. Co., 7 Cir., 169 F.2d 645, 649. The disclaimer must be strictly construed against the plaintiffs. Dixie Cup Co. v. Paper Container Mfg. Co., supra.
5. To prove infringement it is not enough for plaintiffs to show that the trashboard device is a substantial equivalent of the commercial cover board. The proof required is proof that the claim of the patent reads upon the accused device. Plaintiffs have not sustained that burden of proof and have failed to prove their charge of infringement.
6. Defendant is entitled to judgment dismissing plaintiffs' complaint and for its costs of suit. Plaintiffs are entitled to judgment against defendant upon defendant's prayer for the allowance of attorneys' fees.
Case No. P-2288
This is a companion case to No. P-2201, involving the same parties plaintiff and defendant. The cases were consolidated for trial.
Plaintiffs prosecuted this suit for an injunction and damages for the alleged infringement by defendant of United States Patent to plaintiff, Bauer, No. 2,829,580. Defendant filed its answer and counterclaim praying that the complaint be dismissed at plaintiff's cost, that a declaratory judgment be entered declaring the patent invalid and not infringed and awarding to defendant reasonable attorney's fees.
The patent in suit relates to a bracket arrangement for the securing of a moldboard-mounted, blade jointer to a plow. More specifically, the patent claims invention in a combination composed of a plow, a moldboard-mounted, blade jointer and bracket means for adjustably mounting the jointer upon the plow. The patent consists of five claims, of which claims 1 and 5 are set forth as representative of all, to-wit:
In this case, as in Number 2201, I think the question of infringement is decisive, and that it is not necessary to consider the question of validity of the patent.
An essential element of the Bauer combination is a wedge-shaped brace, designed for adjustable mounting against a plow beam to flexibly support the bracket and jointer assembly described in the patent. This supporting wedge is comprised of a horizontal face, embracing a longitudinally extending slot for adjustably securing the wedge by means of a bolt, and a horizontal face having an inclined edge for adjustable mounting against a plow beam. Use of the wedge is explained by the specifications and shown by the drawings as insertable from the rear toward the front of the plow, while each claim of the patent specifies that the wedge-shaped face of the brace, as mounted against a plow beam, is inclined "toward the front of" or "toward the cutting edge of" the plow upon which the device is mounted.
Defendant's bracket does not employ the element of a wedge-shaped brace at all. The accused bracket employs a rectangular plate which is transversely slotted to be adjustably secured to the top of the bracket means to support the bracket-jointer combination by abutting against the beam or other convenient area of a plow structure. Although not decisive, the Patent Office granted a patent to defendant's president, H. G. Yetter, upon the accused device over the citation of the patent in suit as one of the prior art references.
Plaintiffs have not proved that the accused bracket infringes the Bauer patent, since it is clear beyond cavil that an essential element of the plaintiffs' bracket is not employed in the accused device. C. f., Fuller v. Yentzer, 94 U.S. 288, 296, 24 L.Ed. 103.
This brief memorandum embodies the court's findings of fact.
Judgment is ordered for defendant against plaintiffs dismissing the complaint, plaintiffs to pay the costs of suit. Defendants' counterclaim for attorney's fees is dismissed.
"5. (An) A jointer attachment for a plow moldboard for promoting complete coverage of stubble of previous crops, the attachment comprising a curved blade, (a) having a first end straight section, said first end section (of which is) being positionable immediately above and co-planar with the upper forward part of the moldboard of the plow and the remainder of the blade curving across the furrow being plowed on a level with the top of the moldboard, THE TRAILING END OF SAID BLADE BEING AT SUBSTANTIALLY RIGHT ANGLES TO THE FURROW BEING PLOWED AND HORIZONTAL TO THE GROUND, said blade being (adjusted) twisted at its outer trailing tip end to divert a portion of the ground being turned to a path leading across the main portion of the turning ground and generally downwardly into the far side of the furrow being filled, said (diverted portion) twisted tip end serving to (drive) divert stubble and old crop stalks to the bottom of the furrow being filed, [a bracket secured to the rear face of said blade, and means fastening said bracket to the rear face of the plowshare.]"