Appendix — Sims v. Mack Trucks, Inc.

IN THE

SUPREME COURT OF THE UNITED STATES

ae ~19 1 9

R.W. SIMS, TRUSTEE, and

R.W. SIMS. TRUST,

Petitioners,

v.

MACK TRUCKS CORP.

Respondents.

APPENDIX TO:

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED.STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

JOHN A. YOUNG

600 Lincoln Tower

Fort Wayne, IN 46802

(219) 424-4947

APPENDIX

STANLEY B. KITA

Howson & Howson

1500 Seven Penn Center Plaza

Philadelpha, PA 19103

Counsel for Petitioners

. UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

Nos. 78-2516/17/18/19/20

R. W. SIMS, Trustee and R. W. SIMS TRUST,

Appellants in Nos. 78-2517/18/19/20

v.

MACK TRUCK CORPORATION Muck Trucks, Inc.,

Appellant in No. 78-2516

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

(D.C. Civil Nos. 75-0985 and 76-2070)

Argued August 8, 1979

Before: ALDISERT and WEIS, Circuit Judges,

and DIAMOND, District Judge*

Opinion filed Octobe: 16, 1979

Jon A. Baughman, Esq. (Argued)

Deborah F. Cohen, Esq.

Stephen J. Sundheim, Esq.

Pepper, Hamilton & Scheetz

2001 The Fidelity Building

123 South Broad Street

Philadelphia, Pa. 19109

Attorneys for

Mack Trucks, Inc.

John A. Young, Esq. (Argued)

600 Lincoln Bank Tower

jie Fort Wayne, Indiana 46802

a

*Honorable Gustave Diamond, United States District Court for

the Western District of Pennsylvania, sitting by designation.

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Co-Counsel:

Stanley B. Kita, Esq.

Howson and Howson

1500 Seven Penn Center Plaza

Philadelphia, Pa. 19103

Attorneys for R.W. Sims

OPINION OF THE COURT

WEIS, Circuit Judge.

Changing the discharge point of a concrete mixer

from the rear to the front of the truck results in definite

advantages but does not raze the roadblock of nonobvi-

ousness required for patentability. We therefore re-

verse a district court finding of patent validity. We find

jurisdiction also to review a companion count alleging

con\ersion of trade secrets related to the construction

of concrete mixers. Because that claim contains dis-

puted matters of fact, we vacate a summary judgment

centered in favor of the defendant.

By. virtue of an assignment in 1965, plaintiffs R. W.

Sims, Trustee, and the R. W. Sims Trust hold U.S. Pa-

tent No. 2,859,949 issued in 1958 to J. Jack Willard fora

front-discharge concrete mixer. The pending action is

based on allegations of infringement by defendant and

an additional count of unfair competition. The district

court entered summary judgment in favor of the de-

fendant on the unfair competition count on February 9,

1978.' : :

1. For reasons not here relevant. plaintiffs’ unfair competition

claim appears in two separate lawsuits. In Civil No. 75-985, the

case that we are entertaining on appeal, the unfair competition

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After a bench trial, the district judge upheld the

patent, found that the defendant had infringed, and

awarded double damages to the plaintiff, but denied

attorneys’ fees. The defendant appeals the infringe-

ment issues under 28 U.S.C. §1292(a)(4). Plaintiffs

cross-appeal the denial of the attorneys’ fees and seek

review of the summary judgment on the unfair compe-

tition claim.

The Willard patent describes a concrete mixer

mounted on a truck chassis and used to deliver pre-

mixed concrete to a construction site. The more com-

mon truck in general use unloads the concrete from the

rear. The Willard design, however, reverses the mixing

drum so that its narrow discharge end is at the front

rather than the rear of the truck. The drum is inclined

upward toward the front so that the pour end is above

the driver’s cab. A portable chute is used to move the

concrete from the dium to the particular spot where

the construction is in progress.

The great advantage of the front-end discharge is

that it allows the truck to be driven directly to the place

where the concrete is to be poured without the neces-

sity of backing into the area, as is required with vehi-

cles of conventional configuration. Thus, the dangers

of backing to the unloading site are eliminated, and by

maneuvering the truck the driver can assist in the ac-

tual pouring of the concrete. In a modification added by

claim is Count II of a two-count complaint, the first count charging

defendant with patent infringement. In Civil No. 76-2070, the un-

fair competition claim comprises the only count of the complaint.

By opinion dated February 8, 1978 and orders dated February 9,

1978 and April 18, 1978, Judge Lord dismissed this claim as found

in both complaints. See Sims v. Mack Trucks, Inc., 444 F.Supp

1277 (E.D. Pa. 1978). Civil No. 75-985 then proceeded to trial on

the patent infringement issue. After the trial, plaintiffs appealed

from both dismissals, with the appeals filed October 13, 1978. No.

78-2518 is Sims's appeal as to Civil No. 75-985. Nos. 78-2519/20 are

the appeals from Civil No. 76-2070. Clearly, the appeals from Civil

No. 76-2070 (Nos. 78-2519°20) are infirm because plaintifts failed

to comply with the 30-day time limit of Fed. R. App. P. 4.

+ mock iilll

Oe

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plaintiff Sims, the driver may sit in the cab and shift

the chute by means of hydraulic controls.

Willard first applied for the patent on July 18, 1955,

but it was not granted until 1958. On November 14,

1955, Evan S. Pritchard filed an application for a

front-discharge mixer of similar construction. In 1958

plaintiff Sims also considered applying but decided

against it when he learned of Willard’s patent. At first,

the Willard truck met with little commercial success,

and in 1965 it was assigned to the Sims Trust. Thereaf-

ter, plaintiffs successfully marketed licenses to a

number of manufacturers.

Defendant considered the possibility of manufac-

turing front-end discharge trucks in 1963 and met with

Sims at that time to discuss a possible licensing ar-

rangement. Although Sims was not at that time the

holder of the Willard patent, Mack’s interest in him

was aroused by his development of one of the first

technically and commercially feasible front-discharge

mixers. After some study, however, defendant decided

not to cnter the market. In late 1972, defendant con-

ducted a new market survey and concluded that it

should reevaluate its position. The following year, de-

fendant modif.ed an existing chassis to accommodate

a front-discharge mixer and in the next four years sold

a number of chassis, some with the mixer attached.

Although the record does not establish when those

transactions took place, it does reveal that defendant

exhibited a front-discharge mixer in two trade shows

before the patent expired in 1975.

In a detailed and scholarly opinion,” the district

judge concluded that the defendant had failed to prove

obviousness. Recognizing that the front-discharge

mixer concept was a combination of known compo-

nents, the court nevertheless determined that because

of the combination’s “synergistic” effect, the patent

2. The opinion is reported at 459 F.Supp. 1198(E.D. Pa. 1978). .

A-5

survived the required close judicial scrutiny. In re-

sponse to defendant's contention that there was no in-

fringement because the mixer drums mounted atop the

Mack truck chassis were purchased from a licensee,

the court ruled that Mack had waived the license de-

fense by not pleading it in its answer. Double damages

were determined to be appropriate because the defen-

dant willfully infringed, but since the defenses of inva-

lidity and noninfringement were colorable and non-

frivolous, counsel fees were denied the plaintiffs.

VALIDITY

As its principal defense, Mack contends that the

Willard patent was invalid on the ground of obvious-

ness, 35 U.S.C. §103. We turn to that issue first.

The courts have long adhered to the principle that

patents are not to be issued for every device effecting

some improvement, but only for those that may be

called “inventions.” The problem of separating the two

was recognized early by Jefferson, whose duties as

Secretary of State included administration of the pa-

tent system. It was his belief that the limited monopoly

sanctioned by the Constitution should be construed

narrowly: “Only inventions and discoveries which

furthered human knowledge, and were new and use-

ful, justified the special inducement of a | mited pri-

vate monopoly.” Graham v. Jolin Deere Co., 383 U.S.

1, 9 (1966) (discussing Jefferson's \iews).

In Hotchkiss v. Greenwood, 52 U.S. 248 (1850),

the Supreme Court, in one of its first expressions of this

sentiment, said that if “that degree of skill and in-

genuity which constitute essential elements of every

invention” were absent, the improvement would be

only the “work of the skilful mechanic, not that of the

inventor.” Id. at 267. Attempts over the next hundred

years, however, were unsuccessful in producing a

workable definition of invention, and in the 1952 Pa-

ti sta nhanae Baio <a

aA-6

tent Act, Congress attempted to resolve the issue by

enacting $103, which reads in pertinent part:

A patent may not be obtained. . . if the differ-

ences between the subject matter sought to be pa-

tented and the prior art are such that the subject

matter as a whole would have been obvious at the

time the inyention was made to a person having

ordinary skill in the art to which said subject mat-

ter pertains. Patentability shall not be negatived by

the manner in which the invention was made.

Some years passed before the Court had occasion

to review this standard, but it finally did so in Graham

v. John Deere Co., supra, articulating the three factual

inquiries that underlie a determination of obviousness:

Under $103, the scope and content of the prior art

are to be determined; differences between the prior

art and the claims at issue are to be ascertained;

and the level of ordinary skill in the pertinent art

resolved. Against this background, the obvious-

ness or nonobviousness of the subject matter is de-

termined. Id. at 17.

In addition, the Court indicated that secondary consid-

erations might have relevancy in determining obvi-

ousness and listed such matters as the commercial

success of the device, long felt but unresolved needs,

and the failure of others. Id. But these factors “‘cannot,

by themselves, support a finding of nonobviousness if it

is otherwise established that a patent's disclosures are

obvious in light of the prior art.” Tokyo Shibaura Elec-

tric Co. v. Zenith Radio Corp., 548 F.2d 88, 94-95 (3d

Cir. 1977).

The patent bar read Graham as adopting a more

liberal view toward patentability, and as moving away

from the invention concept treated in Hotchkiss v.

Greenwood, supra, and Great Atlantic & Pacific Tea

Co. v. Supermarket Equipment Corp., 340 U.S. 147

A-7

(1950). In two later cases, however, Anderson’s-Black

Rock, Inc. v. Pai ement Salvage Co., 396 U.S. 57, 61

(1969), and Sakraida v. Ag Pro, Inc., 425 U.S. 273, 279

(1976), the Court reiterated that constitutional limita-

tions, which find expression in the invention concept,

restrict patentability. The Court also had some special

words about patents utilizing a combination of ele-

ments known in the frior art:

‘Courts should scrutinize combination patent

claims with a care proportioned to the difficulty

and improbability of finding invention in an as-

sembly of old elements. .. . A patent for a combi-

nation which only unites old elements with no

change in their functions . . . obviously with-

draws what already is known into the field of its

monopoly and diminishes the resources available

to skillful men. . . .’ Sakraidu v. Ag Pro, Inc,

supra at 281, quoting Great Atlantic & Pacific

Tea Co. v. Supermarket Equipment Corp., supra

at 152-53.4

3. For an interesting contrast of views on the Sakraida case

and its underlying philosophy, compare Sears, Combination Pa-

tents and 35 U.S.C. §103, 1977 DET. C.-L. REV. 83 (generally

favoring the strict patentability approach) with Mintz, The Standard

of Patentability in the United States—Another Point of View, 1977

DET. C. L. REV. 755 and Judge Rich's article, Laying the Ghost of

the “Invention” Requirement, 1 AM. PAT. L. A. Q. J. 26 (1972)

(taking the liberal view).

The controversy has by no means subsided. In Roanwell Corp.

v. Plantronics, Inc., 429 U.S. 1004 (1976), Justice White, while

acknowledging that the Court's “crowded docket does not permit

review of every case where error has been committed,” id. at 1009,

dissented together with Justice Brennan from the denial of cer-

tiorari in a case where the court of appeals affirmed a district court

ruling of nonobviousness in a combination patent. The dissenters

noted that each element in the combination had previously been

used to perform the same function it now performed in respondent's

device, and that, therefore, the patent was obvious under the rea-

soning of Black Rock and Sakraida.

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Thus, the courts, in determining obviousness in a com-

bination patent, must undertake the tripartite Graham

inquiry without losing sight of the necessity to deter-

mine whether the device performs its function in an

innovative fashion.

There was little dispute among the parties as to the

scope of prior art. The mixing drum was constructed with

interior helical blades. Rotating the drum in one direc-

tion caused the concrete to be mixed, counterrotation

pushed the concrete through the discharge opening.

This type of drum made it possible to have a high pour-

ing point since the unloading did not depend on grav-

ity. Patents for this drum design had been obtained

before 1955.‘ The prior art also included open and

closed chutes to direct the flow of concrete from the

drum discharge to the delivery point.*

The most important reference in the prior art was

the Payne patent," describing a mixing truck that dis-

charged concrete at the front of a cylindrical drum by

tilting the drum forward and emptying it by gravity.

The driver controlled the unloading by operating a

lever that caused the rear of the drum to be raised. The

concrete would slide out through a trough beneath the

truck cab into a portable distributing cart, which was

then wheeled to the desired delivery point. The Payne

plan of discharging into a cart and thence to the con-

struction point differs from the Willard’s discharge into

a chute to the construction point, but, as the district

judge noted, that difference does not necessarily make

the Willard subject matter nonobvious.

4. US. Patent No. 2,661,935 issued on December 8, 1953 to

Carl L. Willard. U.S. Patent No. 2,672,327 issued on March 16,

1954 to John F. Oury. U.S. Patent Reissue 23,320 reissued on Jan-

uary 2, 1951 to Carl L. Willard and J. Jack Willard.

5. U.S. Patent No. 2,045,532 issued on June 23, 1936 to John

C. Merwin and Charles F. Ball. See also the Oury patent, supra

note 4.

6. USS. Patent No. 1,509,055 issued on September 16, 1924 to

Charles F. Payne.

aA- 9

The prior art discloses, therefore, that the three

main components of the Willard patent, a mixing drum

with a high discharge opening, use of a chute for pour-

ing to the construction point, and unloading at the

front of the truck, were all matters of record in the

patent office before 1955. The components, that is the

drum and the chute, performed the same functions in

the same way as they had previously, and the concept

of pouring to the front with the attendant advantages

was the same as that previously disclosed.

In essence, the Willard concept did nothing more

than flip the discharge end of the drum from the rear to

the front of the truck. That it offered advantages in

delivery of the concrete to the construction point, such

as reduction of outside help in positioning the chute, is

clear. But the gains in maneuverability and elimina-

tion of backing the truck, which are characteristics of

the front-discharge mode, were also present in the

Payne patent.

In these circumstances, the third Graham inquiry

— obviousness to a person having ordinary skill in the

pertinent art — presents some problems. In the usual

case, validity will hinge on the answer to this question.

In the context of combination patents, however, the

Supreme Court, in Sakraida v. Ag Pro, Inc., supra,

teaches that the answer will be affected by the fact that

the device is a combination of components known to

the prior art.

The Sakraida patent, a barn-cleaning system, was

a combinat.on of elements causing a cascade of water

to flow across a barn floor with a striking cleansing

action. In entering a judgment of validity, the court of

appeals had found the plaintiff's evidence ‘‘a full and

lucid view of... the prior art” showing an “inventive

‘breakthrough,’ ” as contrasted with defendant's

“meager,” “paltry factual presentation.” Ag Pro, Inc.

v. Sakraidu, 474 F.2d 167, 170 (Sth Cir. 1973). The

detendant’s single trial witness, a person who ran a

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dairy, testified that certain elements of the plaintiff's

patent — paved sloped floors with downhill drains and

raised stalls — were known to the prior art. In addition,

three affidavits were submitted, including one by the

defendant himself, stating that there was nothing

novel or patentable in plaintiff's device. Plaintiff, on

the other hand, “painted a convincing picture of a

nonobvious advance” through “vivid documentary

evidence” and the testimony of an agricultural en-

gineer which presented “the only technical analysis of

the prior art.” Id.

Despite the court of appeals’s meticulous review of

the evidence and adherence to the Graham standard,

the Supreme Court, in a brief and unanimous opinion,

reversed. In the Court’s view. the device was the work

of a skillful mechanic rather than that of an inventor,

and amounted to no more than an “assembly of old

elements [that] would be obvious to any person skilled

in the art of mechanical application.” 425 U.S. at 282.

Sakraida thus indicates that in some circumstances,

the standard of a “person having ordinary skill in the

art to which the said subject matter pertains” may not

be a demanding one.

This nuance did not escape the able district judge

in the case sub judice. Although he determined that

the “hypothetical person skilled in the pertinent art

was the designer of self-transit concrete mixing

trucks,” 459 F.Supp. at 1211, the judge also concluded

that a “reasonable person” would not find the combi-

nation obvious on the basis of the prior art. Id. at 1214.

In the judge’s view, however, the latter standard would

not be in conformance with the Graham formula.

The trial court’s position is understandable. The

“art to which the said subject matter pertains” and the

“person having ordinary skill” in that art are hardly

precise notions. Indeed, our opinions in Systematic

Tool & Machine Co. v. Walter Kidde & Co., 555 F.2d

342 (3d Cir.), cert. denied, 434 U.S. 857 (1977), and

A-1]

Universal Athletic Sales Co. v. American Gym, Recre-

ational & Athletic Equipment Corp., 546 F.2d 530 (3d

Cir. 1976), cert. denied, 430 U.S. 984 (1977), reflect

the difficulty that courts have had with the third

Graham test.

In Systematic Tool, we held that a tomato slicer

would have been obvious to a mechanic familiar with

the design of food slicers and that an engineer with

ordinary mechanical or design skills — not specifically

those of designing food slicers — possessed the requi-

site skill in the art. In Universal Athletic Sales, how-

ever, we determined that the pertinent art was the de-

sign of body exercising apparatus rather than mechan-

ical engineering or weight lifting. In that case, the de-

vice under cons deration was designed to eliminate the

problems inherent in the ‘chest press” exercise, a

highly specialized art. Cf. Hadco Products, Inc. v. Wal-

ter Kidde & Co., 462 F.2d 1265, 1271-72 (3d Cir.), cert.

denied, 409 U.S. 1023 (1972) (a pre-Sakraida case as-

serting that the standard of obviousness is tied “to a

worker of ordinary skill in the art” rather than the “‘or-

dinary observer” in a design patent case).

The district court, in adopting the standard of a

designer of self-transit concrete mixers, declined to

give controlling weight to the testimony of some of de-

fendant’s experts, none of whom were mixer designers.

In our view, however, this standard is unduly restric-

tive when the combination is merely a rearrangement

of components disclosed in the prior art. Sakraida

seems to make suspect any standard that is more re-

strictive than that of a mechanic familiar with the de-

sign of concrete mixers. Accordingly, although it is ar-

guable that defendant’s evidence was adequate even

under the more restrictive standard, the defense did

* produce ample testimony that one familiar with the

design of concrete mixers would have found the Wil-

lard patent obvious. Looking at this record through

Sakraida eyes leads us to conclude that the Willard pa-

Bititccisi cro

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tent was obvious to a mechanic familiar with the design

of concrete mixers as well as to a reasonable man. We

therefore hold that the application of the Graham

criteria compels a finding of obviousness.

In addition to the required Graham analysis, the

district court also found that the Willard patent pro-

duced a marked synergistic effect in that concrete was

discharged in view of the driver in the cab and, less

significantly, that there was a better weight distribu-

tion than in conventional mixers. As the court put it,

“(t]he Willard patent deploys these components in a

fashion that produces an entirely new result, not

merely a ‘more striking’ version of an old one.” 459

F.Supp. at 1215. This finding was no doubt an attempt

to comply with language in Supreme Court opinions

suggesting that combination patents, to be \ alid, must

produce a synergistic effect — one which “ ‘results in an

effect greater than the sum of the several effects taken

separately.’ ” Sakraida v. Ag Pro, Inc., supra at 282,

quoting Anderson’s-Black Rock, Inc. v. Pavement

Salvage Co., supra at 61.

In view of our holding that the patent at issue fails

to meet the test for obviousness set down by Graham,

we need not rule on the question whether a finding of

synergism is a precondition to validity in all such

cases.’ We do note, however, that the Willard design is

no more striking an improvement than those found to

be inadequate for a combination patent in Sakraida or

in Black Rock. In the latte\ case, the combination of a

radiant heat burner and oth&r elements on one chassis

of a road paving machine, thdxgh a convenient dev ice

fulfilling a useful function and addressing a long felt

need, was not an invention by the obvious-nonobvious

standard. ; \

7. The courts of appeals have split on the question. Sve Plastic

Container Corp. v. Continental Plastics, Inc., _. F.2d ___, __,

(No. 77-1753 10th Cir. Aug. 8, 1979); Satco, Inc. v. Transequip,

Inc., 594 F.2d 1318, 1322 (9th Cir. 1979), petition for cert. filed, 48

U.S.1 W. 3013 (No. 79-50 July 24, 1979). and cuses cited therein.

Am 13

The Supreme Court precedents binding on us re-

quire that we declare the Willard patent invalid and,

accordingly, we do not meet the question of infringe-

ment and denial of attorneys’ fees."

JURISDICTION OVER THE UNFAIR

COMPETITION CLAIMS

Defendant’s appeal from the district court rul.ng

on validity and infringement is grounded on 28 U.S.C.

§1292(a)(4), which confers jurisdiction on the courts of

appeals in all “[jjudgments in civil actions for patent

inft:ngement which are final except for accounting.”

Plaintiffs have cross-appealed the order of the district

court granting summary judgment on Count II of the

complaint, which alleges conversion of trade secrets.

Defendant contends we have no jurisdiction to con-

sider that cross-appeal since no final judgment has

been entered in the district court in the patent phase of

the litigation, and our review under §1292(a)(4) is lim-

ited to the issues of patentability and infringement.

Our research and that of counsel has not revealed

any controlling case liiw. In two cases ruling on re-

quests for injunctions for infi ngement, Paeco, Inc. v.

Applied Moldings, Inc., 562 F.2d 870 (3d Cir. 1977),

and W.L. Gore & Associates, Inc. v. Carlisle Corp., 529

F.2d 614 (3d Cir. 1976), we held that appeals under

another interlocutory provision, 28 U.S.C. §1292(a)(1),

were limited to the issues bearing on the denial of in-

junctive relief and did not extend to other claims or

issues determined by the judgment. It has also been

held, however, that an appeal under §1292(a)(4) will

not lie for any claim unless there have been final orders

(or compliance with Fed. R. Civ. P. 54(b) entered in

. the district court on all other issues joined with those of

8. Our silence on the waiver of the license defense in the cir-

cumstance of this case should not be construed as agreement with

the ruling of the district court.

pe Bas eae Mince sta st i ws

A114

patent validity and infringement. See Bergman v.

Aluminum Lock Shingle Corp., 237 F.2d 386, 387 (9th

Cir. 1956), followed in American Cyanamid Corp. v.

Lincoln Laboratories, Inc., 403 F.2d 486, 488 (7th Cir.

1968), and cited in W.L. Gore & Associates, Inc. v.

Carlisle Corp., supra at 617. But see 16 C. WRIGHT,

A. MILLER, E. COOPER & E. GRESSMAN, FED-

ERAL PRACTICE AND PROCEDURE §3928 (1977)

(criticizing that view).

One case that has considered the question of re-

viewing an unfair competition claim in a §1292(a) 4)

appeal is Saf-Gard Products, Inc. v. Service Parts,

Inc., 532 F.2d 1266 (9th Cir.), cert. denied, 429 U.S. ©

896 (1976). There, the court of appeals affirmed the

district court’s findings of validity and infringement

but declined to consider the unfair competition claims

because they ‘“‘may become moot by reason of the dis-

trict court’s determination as to damages for infringe-

ment in the accounting phase of the trial.” Id. at 1273.

Thus, the court in that instance apparently chose as a

matter of discretion not to review the companion

claim.

Our situation, however, is quite different. Because

the patent is invalid, there will be no accounting pro-

cedure in the district court and thus at this point the

patent case is concluded, absent a grant of certiorari by

the Supreme Court. We perceive no reason, therefore,

to remand the case to the district court for entry ol a

dispositive order on its docket and then require the

plaintiff to take an appeal at that time. The contin-

gency that existed in Saf-Gard is not present here, and

we believe that sound judicial administ: ation dictates

that we reach the merits of the unfair competition

claim at this point. ;

This result is in accord with the views of leading

commentators who assert that although the scope of

the appeal under §1292(a)(4) should ordinarily be con-

fined to the issues of validity and infringement, the

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court should entertain any other matter necessary for

“reasons of efficient relations between the court of ap-

peals and the district court.” 16 C. WRIGHT, A. MIL-

LER, E. COOPER & E. GRESSMAN, supra $3928, at

132. That we have the power to do so is clear. As the

authors of MOORE’S FEDERAL PRACTICE state:

Once a timely appeal is taken from an order made

appealable by statute, the power of a court of ap-

peals should be plenary to the extent that it chooses

to exercise it. A court should not close its eyes to

what is plainly there. . . . [Once a case is lawfully

before a court of appeals, it does not lack power to

do what plainly ought to be done. 9 MOORE’S

FEDERAL PRACTICE §110.25[1], at 273 (2d ed.

1975).

We conclude that because of the unique procedural

posture in this case we should, and will, review the

appeal from the partial summary judgment entered

against the plaintiff on Count II of his complaint.

THE UNFAIR COMPETITION CLAIMS

In Count II of its complaint, the plaintiffs alleged

that the defendant improperly obtained trade secrets

under the guise of negotiating for a license and used

this information to produce its own mixer some years

later; disparaged the products of plaintiffs’ licensees;

and illegally tied the sales of mixer barrels to those of

the chassis. The district court considered these allega-

tions to state a single Claim sounding in the tort of un-

fair competition and granted the defendant’s motion

for summary judgment. The court read Pennsylvania

law as limiting that cause of action to a defendant's

competitors, and ruled the plaintifis did not hold that

status. Suspecting that the tort of stealing trade secrets

might be conceptually different from that of unfair

Lit enlace one

eet on tee

A-16

competition, the court nevertheless declined to con-

sider the issue in view of the parties’ failure to brief or

argue it. See 444 F.Supp. at 1281-83."

The plaintiffs contend that the inclusion of the

trade secrets claim in the summary judgment was er-

ror. They assert ownership of the trade secrets, disput-

ing the defendant’s contention that the owner was

Travel Batcher Corporation, a company controlled by

the plaintiffs. We agree that a factual dispute has been

established and it cannot be resolved on motion for

summary judgment.

Rule 56(c) of the Federal Rules of Civil Procedure

provides, in part, that a motion for summary judgment -

shall be granted “‘if the pleadings, depositions, answers

to interrogatories, and admissions on file, together

With affidavits, if any, show that there is no genuine

issue as to any material fact and that the moving party

is entitled to a judgment as a matter of law.” The plain-

tiffs’ affidavit demonstrates that the dispute over the

ownership of these trade secrets is genuine. The only

issue is whether plaintiffs’ ownership, if established,

would entitle them to maintain the claim for theft.

Unfair competition and regulation of trade secrets

are matters of state law and for the reasons stated in

the district court’s opinion, 444 F.Supp. at 1281, we

agree that Pennsylvania law controls the disposition of

this claim. Pennsyl\ ania seemingly would follow the

Restatement of Torts in determining trade secrets is-

sues. See College Watercolor Group, Inc. v. William H.

Newbauer, Inc., 468 Pa. 103, 112-14, 360 A.2d 200,

204-05 (1976); Van Products Co. v. General Welding

9. In a later suit filed by plaintiffs and The Travel Batcher

Corp., the district court analyzed Pennsylvania law including the

case of Van Products Co. v. General Welding and Fabricating Co.,

419 Pa. 248, 213 A.2d 769 (1965), and concluded that conversion of

trade secrets was not conceptually distinct from unfair competition

and only competitors could recover. Sims v. Mack Trucks, Inc., 463

TY Supp. 10GS (E.D Pa. 1979). ;

A-17

and Fabr cating Co.. 419 Pa. 248, 258, 213 A.2d 769,

775 (1965). Comment b of §757 of the Restatement in-

cludes as a trade secret any compilation of information

used in one’s business that gives one an opportunity to

obtain an advantage over competitors who do not know

or use it — the information need not be patentable.

Comment c of the same section states that one who has

a trade secret may be harmed by its disclosure to

others, as well as by the use of his secret in competition

with him. A trade secret is vendible, and mere disclo-

sure may reduce its value.

Restatement $759 provides that one who for the

purpose of advancing a rival business :nterest procures

information — not limited to trade secrets — may be

liable for the use of that information. In determining

such lability, the courts pose the question of how the

defendant obtained the information, rather than sim-

ply relying upon a breach of a confidential or special

relationship. See Smith v. Dravo Corp., 203 F.2d 369,

374 (7th Cir. 1953) (applying Pennsylvania law). Di-

rect competition is not essential to tort liability since

the opposing interests of persons in a bargaining situ-

tion, such as buyer and seller, are also rival interests.

RESTATEMENT OF TORTS §759, Comment d (1939).

Thus, requiring the parties to be direct business com-

petitors before recognizing a cause of action construes

the Restatement too narrowly.

Given this background, we cannot say at this point

that the plaintiffs’ claim is meritless, and since their

affidavits assert ownership, summary judgment

should not have been awarded. We think a sufficiently

protectible interest has been alleged that requires

further examination on remand.

Accordingly, the judgment of the district court is

’ reversed insofar as it found patent validity and infring-

ement and as to that count, judgment will be entered

for the defendant. The district court's order entering

summary judgment on the unfair competition claim

a-18

will be vacated and the matter remanded for further

proceedings consistent with this opinion.

A True Copy:

Teste:

Clerk of the United States Court of Appeals

jor the Third District

R. W. SIMS, Trustee, and R. W.

Sims Trust

v.

MACK TRUCKS, INC.

Civ. A. No. 75-985.

United States District Court

E. D. Pennsylvania.

Sept. 15, 1978.

Action was brought for patent in-

fringement. The District Court, Joseph S.

Lord, III, Chief Judge, held that: (1) patent

No. 2,859,949 covering front-discharging

self-transit concrete mixer was valid and

was infringed under the doctrine of equiva-

lence by concrete mixer depicted by defend-

ant in its promotional film and brochures;

A-I9

(2) plaintiff would be awarded increased

damages on grounds that defendant's in-

fringement was knowing, deliberate, wan-

ton and willful, and (3) plaintiff would not

be awarded attorney fees, since defenses of

patent invalidity and noninfringement

raised at trial were colorable and nonfrivo-

lous.

Order accordingly.

1. Patents e=36(2)

As consequence of statutory presumj-

tion that patents are valid, defendants who

raise defense of patent invalidity in in-

fringement cases ordinarily bear the burden

of demonstrating invalidity by clear and

convincing proof. 85 U.S.C.A. § 282.

2. Patents e=312(4)

In patent infringement action, defend-

ant would not bear burden of demonstrat-

ing clear and convincing proof of patent

SIMS v. MACK TRUCKS, INC. 1199

Cite as 439 F.Supp. 3398 (1978)

invalidity but would be required to show by

only a small amount more than the prepon-

derance of evidence that patent in suit was

invalid, since file history of patent in ques-

tion revealed no citation or other evidence

of consideration of a prior patent which

disclosed prior art highly pertinent to the

art patented by the patent in question. 35

USCA. § 282

3. Evidence €=571(6)

In action to recover for infringement of

patent relating to front-discharging self-

transit concrete mixers, trial court would

give only very limited weight to testimony

of defendant’s expert witness who was

qualified primarily as a user of and.an

expert in concrete and who never designed

self-transit mixers or any comparable de-

‘vices.

4. Evidence 570

In patent infringement action, trial

court would give little weight to testimony

of defendant’s experts who were interested

by virtue of both their status as executives

of the defendant and their personal involve-

ment in the litigation.

5. Patents ¢=36.2(4)

Where commercial acceptance is attrib-

utable to properties other than those dir

closed in patent, such commercial accepv-

ance does =:* demonstrate even secondarily

nonobviousness. 35 U.S.C.A. § 103.

6. Patents ¢=>328(2)

Patent No. 2,859,949 covering front-dis-

charging self-transit concrete mixer was

valid and was infringed under the doctrine

of equivalence by concrete mixer depicted

by defendant in its promotional film and

brochure; however, defendant's manufac-

ture and sale of chassis for front-discharg-

ing self-transit concrete mixers did not

make defendant liable as a direct infringer.

35 U.S.C_A. §§ 103, 271.

7. Patents €>310(7%)

Noninfringement as a result of licens-

ing is a defense to an infringement claim,

and therefore, it must be pleaded by de-

fendant or it will be waived. 35 US.C.A.

§ 282; Fed.Rules Civ.Proc. rule ec), 28

US.C.A.

8. Patents ¢>259(3)

In each instance in which chassis built

by defendant was used in the construction

of a front-discharging self-transit concrete

mixer, the sale of such chassis by defendant

constituted an inducement of infringement |

of patent covering front-discharging self-

transit concrete mixers $85 USCA.

§ 271(b).

9. Patents ¢=259(3)

A “contributory infringer” is one who

sells a component of a patented device with

the conjunctive requirement that the con-

tributory infringer know that component is

made especially for an infringing use and

that component is not a staple article of

commerce suitable for any substantial non-

infringing use.

See publication Words and Phrases

for other judicial constructions and

definitions.

10. Patents ¢>312(8)

In action to recover for infringement of

patent covering front-discharging self-tran-

sit concrete mixer, plaintiff failed to sustain

burden of proving that chassis manufac-

tured by defendant was not a staple article

of commerce suitable for any substantial

noninfringing use, and therefore, plaintiff

could not recover from defendant for con-

tributory infringement. 85 USCA.

§ 271(c).

IL. Patents ¢>319(3)

An infringer'’s consultation of patent

counsel, solicitation of a validity opinion

and receipt of an opinion of invalidity do

not by themselves preclude a finding of

wanton and willful infringement justifying

increased damages. 85 U.S.C_A. § 284.

12. Patents ¢=319(3)

In action to recover for infringement of

patent covering front-discharging self-tran-

1200 459 FEDERAL SUPPLEMENT

sit concrete mixer, plaintiff would be

awarded increased damages on ground that

defendant's infringement was knowing, de-

liberate, wanton and willful, since evidence

established that defendant did not rely

upon letter from counsel advising that pat-

ent in suit was invalid when it intentionally

infringed and induced infringement of pat-

ent. 35 U.S.C.A. § 284.

13. Patents ¢=325.11(3)

In action to recover damages for in-

fringement of patent covering front-dis-

charging self-transit concrete mixer, in

which plaintiff recovered damages for

knowing, deliberate, wanton and willful in-

fringement, plaintiff would not be awarded

attorney fees, since defenses of patent in-

validity and noninfringement raised at trial

were colorable and nonfrivolous. 35 U.S.

C.A. § 285.

John A. Young, Fort Wayne, Ind., Stan-

ley B. Kita, Philadelphia, Pa. John A.

Young, Fort Wayne, Ind., for plaintiff.

Jon A. Baughman, Philadelphia, Pa., Ber-

nard & Brown, Washington, D.C., for de-

fendant.

OPINION

JOSEPH S. LORD, III, Chief Judge.

Plaintiffs, a family trust and its trustee,

brought suits for patent infringement and

$: &£.

=

for unfair competition based on defendant’,

manufacture and sale of chassis for fron.

discharge concrete mixers. We granted dc.

fendant’s motion for summary judgment a:

to the unfair competition claim but denieg

the motion as to the patent claim, 444

F.Supp. 1277 (E.D.Pa.1978). Three issues

were tried before me: the validity of th.

patent in suit under 35 U.S.C. § 103; jn.

fringement of it by the defendant under 35

U.S.C. § 271; and, if there was infring,.

ment, whether the willfulness of defend.

ant’s conduct calls for increased damages

under 35 U.S.C. § 284. I now make the

following findings of fact and conclusions

of law:

FINDINGS OF FACT

I. Background:

1. The plaintiff R. W. Sims is an individ.

ual who is the sole trustee of the plaintiff

R. W. Sims Trust, a trust organized under

Utah law whose beneficiaries are R. W.

Sims, his wife and their four children.

2. The defendant is a corporation which

is incorporated in Pennsylvania, has its

principal place of business in Pennsylvania

and is engaged in the manufacture of

trucks.

3. The patent in suit is United States

Patent No. 2,859,949, issued on Novemlwr

11, 1958, to J. Jack Willard for a Forward

Discharging Transit Concrete Mixer (the

“Willard patent”) (Fig. 1).

SIMS v. MACK TRUCKS, INC. 1201

Cite as 459 F.Supp. 1198 (1978)

4. A self-transit concrete mixer is a

truck with facilities for receiving, mixing

and transporting concrete and for discharg-

ing concrete at the site where it is to be

used. The construction disclosed in the

Willard patent is a fully operative front-dis-

charge self-transit concrete mixer, although

its operation could be and later was im-

proved by altering that structure.

5. R. W. Sims in 1958 designed and con-

structed a front-discharge self-transit con-

crete mixer and sought to have it patented.

When his counsel's patent search disclosed

the Willard patent and he learned that his

construction would infringe the Willard

patent, he entered into negotiations with

the patentee.

6. In order to continue to make, use and

sell front-discharge mixers, Sims entered

into a licensing agreement under the Wil-

lard patent. In 1965 Willard assigned to

the plaintiff trust all rights under the Wil-

lard patent.

Il. Validity:

A. The Prior Art

7. In 1955 the prior art of self-transit

concrete mixing trucks included a rear-dis-

charge mixer, with a drum on a fixed longi-

tudinal axis inclined upwardly toward the

rear. This construction is disclosed in, inter

alia, United States Patent No. 2,661,935,

issued on December 8, 1953, to Carl L. Wil-

lard, and United Siates Patent No. 2,672,-

327, issued on March 16, 1954, to John F.

Oury (Fig. 2).

2 a Jz

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459 F Supp —26

1202 459 FEDERAL SUPPLEMENT

In these trucks the concrete mixing drums

are filled with concrete through their rear

ends. The drums are rotated in one di-

rection to mix the concrete and in the oppo-

site direction to discharge the concrete

through their rear ends.

8. The prior art in 1955 included a sepa-

rate attachment to a tractor for mixing,

transporting and discharging concrete, dis-

closed in United States Patent No. 2,706,-

623, issued on April 19, 1955, to Fred J.

., Styes. In this construction, the concrete is

carried in a small mixing drum forward of

the tractor connected to it by sidebars.

These bars can swing from their point of

attachment either to extend the mixing

drum downward and forward of the tractor

for loading or to lift it up, like a car of a

ferris wheel, for discharge.

9. The prior art in 1955 included a self-

transit concrete mixer which could be load-

ed from the front of the mixer, disclosed in

United States Patent No. 2,327,473, issued

on August 24, 1943, to Harold A. Wagner

and Gustave H. Wagner. In this construc-

tion, a loading device is attached to the

truck chassis by arms. When those arms

are extended forward, the loading hopper is

on the ground and can be loaded. Those

arms can be rotated, lifting the hopper over

the cab, again like a car of a ferris wheel.

When the hopper is over the cab it can be

emptied into the front part of the drum.

This truck provides for the discharge of

concrete through the rear end.

10. The prior art in 1955 included a

chute to control the discharge of concrete

from self-transit mixers, disclosed in United

States Patent No. 2,045,532, issued on June

28, 1936, to John C. Merwin and Charles F.

Ball, and in the Oury patent. The Oury

cylindrical chute is attached to the side of

the mixer for transport and can easily be

placed at the discharge end of a mixing

truck and positioned so as to control the

flow of concrete from the drum to the area

where the concrete is to be distributed,

while the Merwin chute is a similarly placed

open trough.

11. The prior art in 1955 included mech-

anisms for driving mixing drums on self-

transit concrete mixers disclosed in United

States Patent No. 2,729,435, issued on Janu-

ary 3, 1956, to Henry C. Harbers and Ed-

ward D. Sharpe. These mechanisms are

illustrated in the patent by use with a rear-

discharge mixer.

12. The prior art mentioned in $4 6-10,

with the exception of the Merwin chute,

composed the references cited by the Unit-

ed States Patent Office in the Willard pat-

ent file. Of these, only the patent issued to

Styes discloses a concrete mixer which dis-

charges concrete in front of the vehicle.

The construction in this patent was limited

in its use to tractors using small amounts of

concrete, however, and was not adaptable

to full-sized self-transit concrete mixing

trucks.

13. The prior art in 1955 included a con-

crete mixing drum with helical blades, dis-

closed in United States Patent Reissue 23,-

$20, reissued on January 2, 1951, to Carl L.

Willard and J. Jack Willard. - This‘device is

a concrete mixing drum in the shape of a

cylinder with a frustum at each end con-

structed so that the material in the drum is

mixed by rotating the drum in one direction

and discharged out of one end of the drum

by rotating the drum in the other direction.

14. The prior art in 1955 included a rear-

discharge concrete mixing truck with a

mixing drum which has a non-inclined hori-

zontal axis but which can be inclined in the

rear to effect higher discharge, disclosed in

United States Patent No. 1,998,749, issued

on April 23, 1935, to Charles F. Ball. In

this construction the mixing drum did not

have a fixed longitudinal axis but rather

one which could be varied in order to meet

the needs of the discharge on a particular

job. This patent was not cited as prior art

in the Willard patent.

15. The prior art in 1955 included a con-

crete mixing truck which discharged con-

crete out of the front of a cylindrical drum

by tilting the drum forwardly and allowing

gravity to induce the discharge, disclosed in

United States Patent No. 1,509,055, issued

on September 16, 1924, to Charles Payne

(Fig. 3).

A-23

SIMS v. MACK TRUCKS, INC.

Cite as 459 F.Supp. 1198 (1978)

1203

Fig.

The construction disclosed in this patent

appears to be the only one providing for

front discharge of concrete in a full-sized

self-transit mixer before the Willard pat-

ent. In this construction, the concrete is

loaded into the cylindrical drum through

the top of the cylindrical drum, which has a

non-inclined horizontal axis during the load-

ing and mixing of the concrete. At the

time of discharge, the driver in the cab at

the forward end of the vehicle operates a

lever which causes the rear end of the drum

to be raised and the forward end to be

lowered, giving the drum an axis upwardly

inclined from front to rear and inducing the

concrete to slide out the front of the drum,

with discharge under the driver's position.

The Payne patent provides for discharge

into a portable concrete distributing cart,

which in turn would be used to apply the

concrete. The Payne patent, which was not

cited by the United States Patent Office as

Prior art in the Willard patent, was among

Prior art most pertinent to the Willard

Patent because it embodies a front-di

charge self-transit mixer.

16. The prior art included in 1955 self-

transit mixers with non-inclined horizontal

mixing drums which discharged concrete

out the rear ends of the mixing drums by

tilting them, much as the Payne patent did

in effecting front discharge.

17. Most of the self-transit concrete

mixers in use in 1955 were rear-discharge

‘self-transit mixers with drums of fixed axis

upwardly inclined toward the rear or dis-

charging end. These trucks had certain

disadvantages in their operations. Among

these were the slowness of discharging, in

that the truck had to be backed up to the

point of discharge and the driver often had

to leave the cab in order to ascertain where

the concrete would be discharged, so that at

least two persons were needed to operate

the truck when the point of discharge was

being varied slightly, one person to drive

the truck and the other or others to observe

the point of discharge and instruct the driv-

er; and the high rate of accidents caused by

the driver’s inability to observe the dis-

charging end and chute.

A- 24

i aN a a a

1204 459 FEDERAL SUPPLEMENT

18. There were also in use in 1955 rear-

discharge mixers of the type disclosed in

the Ball patent which inclined the mixing

drum in the rear in order to achieve a high

point of discharge, which is advantageous in

some situations. These mixers shared the

disadvantages of rear-discharge self-transit

mixing trucks generally. There were also

in use in the 1950's “dumper” self-transit

mixers like the construction disclosed in the

Payne patent, but they were subject to

frequent breakdowns and like rear-dis-

charge mixers with fixed drums required at

least two persons, a driver and someone

stationed on the ground to operate the sep-

arate concrete distributor.

19. The rear-discharge mixers which

dominated the self-transit mixer market in

the 1950’s had their weight concentrated

over the rear wheels. This concentration

made it difficult and dangerous to dis-

charge concrete into an excavation or on

soft ground because the heaviest part of the

vehicle had to be near the point of dis-

charge.

B. Differences Between Prior Art and

the Patent In Suit

20. The Willard construction provides

for front discharge of concrete by inclining

the bowl upward toward the front, rather

than rearward as is the case both in the

rear-discharge mixer with a drum of fixed

longitudinal axis and in the “dumper” mix-

er of the type disclosed in the Payne patent.

21. The mixing drum employed in the

Willard patent is of the type disclosed in

United States Patent Reissue 23,320,» per-

mitting mixing and discharge by the rota-

tion and counterrotation of helical blades.

The shape of the drum is generally similar

to those disclosed in the prior art, i. e., a

cylinder and a frustum with the cylinder

further from the loading and discharging

end, but in the Willard construction there is

adjacent to the frustum a drum extension, a

relatively narrow cylindrical section at the

discharging end. This drum extension is

somewhat analogous to the narrowed part

of the drum at the discharging end of the

cylindrica! drum in the Payne patent. At

the discharging end of the drum extension

in the Willard patent there is a discharging

chutc, similar to those revealed in the prior

art, which is supported by a bracket and

chain. Like the chute disclosed by the Oury

patent, this chute is removed from its dis-

charging position and carried on the side of

the unit during transit.

22. As a result of providing for dis-

charge at the front end of the unit, inclin-

ing the drum forwardly, providing a drum

extension which is elongated and narrowed

relative to the frustum adjacent to it and

placing a chute extending forward at the

poirt of discharge, the Willard patent per-

mits the point of discharge from the chute

to be in the view of the driver of the unit

when he is in the cab. Because front dis-

charge is achieved by having the drum dis-

charge above the cab, rather than under it

as in the Payne patent, the advantage of

high discharge is retained in the Willard

construction.

23. The construction disclosed in the

Willard patent has a number of advantages

over the rear-discharge mixer which domi-

nated the self-transit mixer market as of

1955. Most of these stem from the driver's

ability to observe the discharge from the

cab and therefore to be able to see the point

where concrete is being discharged without

leaving the cab. As a result of this visibili-

ty, the driver of a Willard unit is able to

vary the point of discharge while remaining

in the cab. Furthermore, the driver is able

to drive forward to the proper point of

discharge and bring the point of discharge

to it in the first instance without getting

out of his cab or relying on other persons’

instructions, as is often necessary in rear-

discharge mixers where the driver must

back into the point of discharge. In addi-

tion, the danger that the driver would drive

onto a surface which was unable to support

the truck or into construction forms with-

out observing the nature of the surface is

reduced significantly by the Willard unit.

Furthermore, this construction potentially

would reduce the high rate of accidents in

rear-discharge mixers on account of the full

visibility to the driver of the discharging

chute and discharge operation.

A-25

etasie mn Aree ee 5.2

ee |

SIMS v. MACK TRUCKS, INC. — 1205

Cite as 459 F.Supp. 1198 (1978)

24. By extending the mixing drum

roughly from the rear axle to the forward

axle, the Willard construction distributes

the weight between the axles more evenly

than the rear-discharge mixers in use at the

time of its invention.

25. Because the Willard construction

distributes the weight of the vehicle more

evenly between the front and rear axles

and because of the forwardly protruding

discharging chute, the Willard vehicle is

able to discharge near soft ground or a

excavation more safely than a rear-dis-

charge mixer.

26. Relative to the dumper type of self-

transit mixer disclosed in the Payne patent,

the Willard construction has three types of

advantages. First, by incorporating the

mixing drum with helical blades which had

been developed since the Payne patent and

had come to dominate the market by 1955,

it incorporates all the advantages of those

drums over the more cumbersome and more

fragile cylindrical drums and tilting mecha-

nisms of the dumper type of mixer. In

addition, the Willard construction permits

the driver to see the point of discharge of

concrete onto the place where it is being

used, with all the advantages which accrue

from that visibility, whereas in the Payne

patent it is claimed only that the driver is

able to observe the discharge into a sepa-

rate unit used for concrete distribution.

The Payne patent does not disclose whether

discharge to the point of application itself

can be observed by the driver, but its fail-

ure to claim that advantage and the place-

ment of the discharging end of the drum

relative to the cab make it appear that

there would not be such visibility. Finally,

the Willard construction maintains the ad-

vantages of high discharge, which is impos-

sible in a dumper-type self-transit mixer.

C. Level of Skill In the Relevant Art

27. There was little evidence presented

at trial as to the general level of ordinary

skill possessed by those involved in the de-

sign of self-transit mixing trucks. The

Plaintiffs presented evidence through the

testimony of R. W. Sims and that of an

expert, Robert W. Fay, suggesting that de-

signers of such vehicles were unable to

solve the problem of delivering concrete

efficiently, quickly and safely and that

progress in the industry was through 1955

very slow. The art was characterized by

several witnesses as an active one during

the early 1950's in spite of the fact that

there were no striking advances made.

Most of the evidence which related to the

level of skill in the art of self-transit mixer

design, however, involved only the narrow

conclusion that persons of ordinary skill in

this art would or would not have perceived

the design of the Willard construction as an

obvious improvement.

D. Testimony as to Obviousness

28. Irving M. Fogel, offered by the de-

fendant as a witness on the obviousness of

the patent in suit, was in 1955 a civil engi-

neer in the construction business who was a

user of concrete. He did not state that he

had any familiarity with the art of design-

ing self-transit mixers, other than as a pur-

chaser and repairman of such vehicles, ei-

ther in 1955 or at any other time.

29. Robert W. Stieg, the defendant's

chief engineer in charge of special purpose

vehicles, was from 1940 until 1968 employed

by a company which manufactured and sold

self-transit mixer chassis and was involved

in the design of self-transit concrete mixer

chassis during those years. He stated thet

it would have been obvious in 1950 to him,

as a designer of such vehicles, to replace the

cylindrical drum in the dumper disclosed by

the Payne patent with a drum of fixed axis

of the type used in rear-discharge mixers at

that time. This testimony suggests that

the result of that replacement would be the

Willard construction. In his discussion of

the Payne patent, however, Stieg evidenced

an unfamiliarity with that construction as

disclosed in the patent. Furthermore, he

testified that he was unfamiliar with the

problems in the art of self-transit mixer

design in the 1950's which the Willard pat-

ent addressed and solved.

30. Richard B. Essex, a civil engineer

who was fom 1933 until 1977 a principal in

a company which used self-transit concrete

mixers, testified that in 1954 it would have

A - 26

1206 459 FEDERAL SUPPLEMENT

been obvious to him as a user of self-transit

mixers to replace the cylindrical mixing

drum on the “dumper” disclosed by the

Payne patent with a modern drum of fixed

axis, adding a drum extension and chute at

the discharging end of the drum, that is,

that the Willard construction would have

been obvious on the basis of the prior art.

Essex was in 1954 familiar with the types

of self-transit concrete mixers in use, and

he supervised at that time the assembly of

self-transit mixers (that is, mounting of

mixing drums onto chassis). However, he

was not engaged in the design of self-tran-

sit mixers then or at any other time (except

for consulting as to the design of vehicles,

which he did not explain), was not familiar

with their design and was unfamiliar with

the problems confronting that art in 1954.

31. Walter M. May, who has been an

engineer for the defendant since 1939 and is

currently executive vice-president of engi-

neering and product, testified that an ordi-

nary civil engineer who was not skilled in

the design of self-transit concrete mixers

could have made the invention disclosed iz.

the Willard patent on the basis of exam-

ining the prior art disclosures of the Payne

and Oury patents, and that a mechanic

might have been able to come up with the

Willard construction.

32. Robert W. Fay, a chemical engineer

who has been since 1964 a consultant and

executive involved in the engineering and

production of front-discharge self-transit

concrete mixers, testified that the Willard

construction would not have been obvious in

1954 to one skilled in the design of self-

transit concrete mixers. Fay was in 1954

not involved in or familiar with the design

of these vehicles, but his familiarity begin-

ning in 1964 with vehicles designed in the

mid-1950's and his participation in their de-

sign beginning at that time have made him

familiar with the state of the art in 1955.

E. Secondary Considerations

33. Since at least the early 1940's there

had been a need to develop a self-transit

concrete mixer which could deliver concrete

more efficiently, quickly and safely than

the vehicles which were in use at that time.

Throughout the 1940’s and early 1950's, the

A-27

advancements in the art of designing seif.

transit mixers were few and halting, e. g¢_

improvements to the mixing drums and

chutes for discharging concrete, and the

principal problems persevered. The front.

discharge self-transit mixer disclosed by the

Willard patent marked an extremely signif-

icant advance in solving these problems.

Immediately after its invention in 1955 the

Willard construction met with little com.

mercial success. The plaintiff R. W. Sims

made improvements on the construction dis-

closed in the Willard patent in the late

1950’s and early 1960's and he organized a

corporation which purchased a license under

the Willard patent and manufactured front-

discharge mixers. Eventually six compa-

nies, including every major mixer manufac.

turer except for the defendant and one

other, took licenses under the Willard pat-

ent to make, use and sell front-discharge

self-transit mixers. These front-discharge

mixers, incorporating improvements made

by licensees (including R. W. Sims) and

others (including the defendant), have en-

joyed considerable commercial success from

the mid-1960's until the present due to both

the advantages disclosed in the Willard con-

struction and those effected by the im-

provements. j

34. The application for the Willard pat-

ent was filed on July 18, 1955. On Novem-

ber 14, 1955, Evan S. Pritchard filed an

application for a patent relating to a front-

discharge self-transit concrete mixer which

disclosed a similar construction. In 1958

the plaintiff R. W. Sims began the process

which culminated in the design and produc-

tion of a prototype of a front-discharge

self-transit concrete mixer resembling the

Willard construction. Sims did not become

aware of the efforts of Willard or Pritchard

or of the constructions disclosed in these

patent applications until he had a patent

search conducted.

F. Combination

35. The component parts of the Willard

vehicle do not differ greatly from compo

nents of self-transit mixers which already

existed in the prior art. This construction

SIMS v. MACK TRUCKS, INC. 1207

Cite as 459 F.Supp. 1196 (1978)

employs a mixing drum already in common

use, a chute closely resembling that dis-

closed in the Merwin patent and a conven-

tional truck chassis and cab. The cylindri-

cal drum extension at the discharging end

of the mixing drum in the Willard patent

does not conform precisely to anything in

tke prior art, but it resembles closely the

drum extension at the discharging ond of

the Payne construction both in its general

shape (i e., of reduced diameter relative to

the adjacent drum section) and function (i

e., to project the discharge beyond the cab,

over it in the Willard construction and un-

der it in the Payne construction). The Wil-

lard patent thus represents a rearrange-

ment of elements known in the prior art.

86. Among the effects of this rearrange-

ment of known elements were the visibility

of the discharging operation to the driver of

the vehicle and more even weight distribu-

tion, producing more efficient, faster and

safer discharge while retaining the advan-

tages of modern mixing drum operation

and of high discharge of concrete afforded

by some rear-discharge mixers. These im-

provements were made possible by the rear-

rangement of the components disclosed in

the Willard patent rather than by the com-

ponents themselves.

Ill. INFRINGEMENT:

37. In 1973 the defendant engineered

and began to produce and sell HMM chassis

with half-cabs (i. e., cabs occupying only the

left half of the front of the vehicle), which

were specially designed to accommodate

concrete mixing drums which incline for-

wardly and discharge concrete above the

cab and out a chute in front of the cab, in

view of the driver.

88. In most instances from 1973 through

1975, the defendant sold HMM chassis only

to manufacturers of cement mixing drums

and to others, who would mount the drums

on the chassis. In some of these cases, the

defendant’s personnel would work with the

purchaser in order to insure that the chassis

and drum were properly “mated”, that is,

that the chassis which was purchased would

accommodate the drum properly. ’

89. In or before January 1977, the de-

fendant sold to purchasers 24 HMM chassis

with drums mounted on them and invoiced

the purchasers for the price of the entire

front-discharge mixer.

40. The defendant at no time manufac-

tured complete front-discharge mixer vehi-

cles consisting of chassis and mixing drums.

41. The defendant advertised to users of

self-transit concrete mixers HMM chassis in

brochures, in a promotional film and by

exhibition in a trade show. The defendant

did not limit its marketing effort to licen-

sees under the Willard patent. These pro-

motions mentioned that the defendant man-

ufactured only a chassis which was adapted

for use in a front-discharge concrete mixer.

The promotional film, exhibition and most

of the advertising depicted a complete

front-discharge self-transit concrete mixer,

however, and much of the defendant's ad-

vertising emphasized the advantages inher-

ent in front-discharge mixers rather than in

its HMM chassis alone.

42. The HMM chassis is adaptable to

other uses besides front-discharge mixers,

including rear-discharge concrete mixers,

dump trucks and trucks with block haulers

and cranes mounted on them. Of sixty-five

_ HMM chassis sold by the defendant as of

January 1977, sixty-two were ultimately

used for front-discharge mixers, one for a

rear-discharge mixer and two for special

conveyor bodies.

48. The front-discharge self-transit con-

crete mixer depicted by the defendant in its

advertisements and promotional film

(“HMM mixer”), i e., an HMM chassis and

cab with a forward discharging and for-

wardly inclined mixing bow] mounted upon

it, provides for the discharge of concrete in

view of the driver by positioning a mixing

drum in the shape of a cylinder and frus-

tum and a discharging chute in much the

same way as the Willard construction.

44. There are three main differences be-

tween the construction disclosed in the Wil-

lard patent and the HMM mixer. First, the

HMM mixer employs a half-cab, occupying

only the left side of the front of the chassis,

and the discharging end of the mixer is at

A- 26

1208 459 FEDERAL SUPPLEMENT

the front of the right side of the vehicle.

Consequently, the discharging end of the

mixing drum is to the right of and above

rather than directly above the cab as it is in

the Willard construction. However, the

functions of the relative positions of the

discharging end of the drum and the cab

are identical in-the HMM mixer and the

Willard construction: to provide high dis-

charge forward of the vehicle in view of the

driver. In addition, the discharging chute

in the HMM mixer is operated hydraulically

whereas the chute in the Willard construc-

tion is moved manually. Again, though, the

chutes serve the same function in both: the

placement of the discharging chute in the

HMM mixer is such that the driver can

position the means for concrete delivery to

a precise point. Third, the HMM mixer

does not have a cylindrical drum extension

at its discharging end but rather extends

the frustum portion of the drum to the

front of the chassis. This difference is of

little or no practical significance, however,

since the structure of the two drums is

quite similar and the functions of the elon-

gation of the frustum and the cylindrical

drum extension are identical: to bring the

discharging end of the forwardly inclined

fixed-axis mixing drum above and forward

of the cab.

45. The HMM mixer is a combination of

a truck chassis; a cab mounted on the front

of that chassis providing the driver with

forward visibility; bearings behind the cab

to support a mixing drum; a mixing drum

of fixed longitudinal axis upwardly inclined

toward the front with helical blades such

that it could discharge by rotating it; a

mixing drum composed of a cylindrical por-

tion for mixing and frustum-shaped section

forward of that extending in diminished

diameter over the cab; means for rotating

the drum located on the chassis; and a

removable chute for discharging the con-

crete supported by an arm attached to the

chassis.

46. The cab in the HMM mixer is locat-

ed at least partly under the discharge end

of the mixing drum in that it is of lower

elevation. The HMM chassis also has a

discharge chute supported by a supporting

arm mounted on the truck chassis upon

which the chute can be swung in and out of

the driver's vision.

47. In the HMM mixer most of the en-

gine is directly to the right of the driver's

cab, with a smaller part of the engine ex-

tending behind and to the right of the cab.

48. In the HMM mixer the driver's cab

is centered directly over the front axle.

IV. INTENTIONAL INFRINGEMENT:

49. The defendant was aware by 1963 of

the plaintiffs’ rights in the Willard patent

and of the plaintiff trustee R. W. Sims’

involvement in the production of front-dis-

charge mixers. In that year an officer of

the defendant visited R. W. Sims and re

ceived information concerning front-dis-

charge mixers. The defendant ultimately

decided not to enter into negotiations with

the plaintiffs for a license under the Wil-

lard patent because it concluded that there

was limited sales potential in this market.

50. In 1963 the defendant received from

its patent counsel an opinion that the Wil-

lard patent would be infringed by virtually

any front-discharge mixer with a cab

mounted on the front of the chassis. That

opinion concerned the scope of the Willard

patent only and not its validity..

51. During a survey conducted in 1963,

the defendant learned that a prominent

manufacturer of self-transit mixers had

concluded that the Willard patent was “ful-

ly bona fide” after a search by its patent

counsel.

52 In late 1972 the defendant was

asked by a customer and one of its distribu-

tors to produce for them a truck chassis

which could accommodate a front-discharge

concrete mixing drum. The defendant then

conducted a new market study on front-dis-

charge mixers and determined that it would

be advantageous to enter this market.

53. During the early part of 1973, while

it was engaged in the engineering and de-

velopment of the HMM chassis and cab, the

defendant was aware that production of

these units might create liability for in-

fringement by it of the Willard patent

Accordingly, the defendant’s new product

A-29

Pitesti wee ee

SIMS v. MACK TRUCKS, INC. 1209

Cite as 459 F.Supp. 1198 (1978)

committee decided at its January 1973

meeting to proceed with Phase I of the

engineering of the HMM chassis (involving

modification of an existing chassis) but de-

ferred a decision as to whether to embark

on Phase II (design of a complete HMM

chassis and cab which would be ready for

mounting of a mixer), apparently in light of

the patent problem.

54. A memorandum of the defendant

dated March 23, 1973, stated that the pat-

ent rights to front-discharge mixers had

been sold to a company which was experi-

encing financial difficulty.

55. At the defendant’s March 27, 1973

new product committee meeting, a commit-

tee member (the defendant’s director of

marketing product planning) stated that

the patent problem was no problem. At

that meeting the product committee decid-

ed to go ahead with Phase II of the HMM

program, involving engineering and release

of the chassis. No employee of defendant

had any reason at this time to believe that

the Willard patent was invalid.

56. At the March 27, 1973 new product

committee meeting, the officer of defend-

ant who stated that the patent problem was

no problem was advised to get an opinion

from the defendant’s patent counsel. On

April 18, 1973, the defendant’s patent coun-

sel stated that manufacture of the HMM

chassis and advertisement of its use in a

front-discharge mixer would induce in-

fringement of the Willard patent if the

total self-transit mixer construction would

80 infringe. In a letter dated July 5, 1973,

that counsel gave similar advice as to liabil-

ity for inducing infringement by advertis-

ing the HMM chassis’ use in a front-dis-

charge mixer and suggested that the de-

fendant authorize it to conduct a search

into the validity of the Willard patent.

57. Ina letter dated June 8, 1973, to one

of the defendant's distributors, defendant's

director of marketing product planning said

that in spite of the patent problem the

engineering of the HMM chassis was pro-

ceeding unimpeded and that the HMM pro-

gram was going and would continue to go

forward at full speed. .

58. Robert W. Stieg, an engineer for the

defendant, wrote in an August 7, 1973

memorandum that while the patent validity

search was being made the defendant was

continuing with Phase II of its engineering

for the HMM chassis in order to be prepar-

ed to show a front-discharge mixer at its

sales meeting in December 1973. Observ-

ing that the Willard patent would expire in

just over two years, Stieg stated that:

“I would assume the program would be of

value even if the patent was proved basic.

As I see it, the worst that could occur

would be a royalty payment for two years

by the party that mounted the front dis-

charge mixer on the chassis.”

This evaluation ignored the advice of patent

counsel that defendant might be liable for

inducing infringement even if it made and

sold only chassis if it advertised their use in

infringing mixers.

59. Defendant’s patent counsel rendered

an opinion on August 29, 1973, that the

Willard patent was either invalid or should

be limited in its coverage so as not to be

infringed by the front-discharge mixer em-

ploying a half-cab chassis as proposed by

the defendant. The defendant's patent

counsel’s letter of August 29, 1973, invited

the defendant to contact it with any ques-

tions or comments on its opinion of patent

invalidity. Walter M. May, the defendant's

vice-president of engineering and a member

of the new product committee who claimed

he relied on the opinion letter, undertook no

analysis of the opinion or further inquiry of

counsel. It does not appear that any other

employee of the defendant scrutinized that

opinion or the references contained therein

or contacted counsel.

60. The defendant knew at this time of

at least one opinion of counsel engaged by a

prominent mixer manufacturer that the

Willard patent was valid.

61. When it sought and received the

opinion letter from its patent counsel that

the Willard patent was invalid, the defend-

ant had already decided to engineer and sell

HMM chassis for use in front-discharge

self-transit mixers as soon as possible with-

out purchasing a license under the Willard

A-30

1210 459 FEDERAL SUPPLEMENT

, 1024-25 (3d Cir.

tent. The determination had been made ucts Corp., 552 F.2d heey tos Sygate

that the benefits to be derived from mar- 1977); U. S. ee a a inte

keting the chassis at the earliest practicable Industries, Inc., ; 2 sabeavelaon

. Sicheclallah the costs of a possible 1973); Phillips gpg = conga

ieibinendeih suit, in which a — = mea eed ag : ca aaa sek tees

mbling the en nics ,

peace hac! 2 arr to aioe for (3d Cir. 1971). 1 conclude prong oa

pees Consequently, there was no rea- the defendant does not bear the burden .

inquiri invalidity opinion it re- of patent invalidity; .

ua tiie ane ply it deter- oak show by only a small amount =

mined that the opinion was incorrect or than the preponderance of ~ ‘gos

suspect, it was going to continue with de- that the patent in suit was inv. “ ge

velopment of the HMM chassis. Thus, the theless, the statutory presump se ~~

defendant did not rely on the invalidity entirely overcome here since ~ 0 oh

opinion in deciding to manufacture achassis ¢;... gig consider a great deal be : wed

specifically designed to accommodate front- ojevant prior art? ae ; on

discharge mixers. of proof as to patent: invalidity, in “ -

both the burden of going forward wi

DISCUSSION evidence and the burden of persuasion, re-

° mains on the defendant. See DeMarines v.

pegs tch Airlines, 580 F.2d 1193

[1,2] As a consequence of the statutory KLM Royal Du <a a

presumption that patents are valid, 35 at 1200-1201 (3d Cir.

i : i der the modus

defendants who raise the de- It is my conclusion that un © modu.

pe ae invalidity in ip procedendi for a ee

inarily bear in this circuit the bur- ty on the basis of obviousness, C.

den ; eae invalidity by “clear § 103, prescribed by the Supreme Court in

jor convincing proof.” Tokyo Shibaura Graham v. John Deere Co., 383 US. 1, 86

Electric Co. Ltd. v. Zenith Radio Corp., 548 S.Ct. 684, 15 L.Ed.2d 545 (1966), and by the

F.2d 88, 93 (3d Cir. pt — Pegove Third Circuit ee — eae

tein’s Sons, Inc., dde

6,1 (8d Cir), cert. denied, 40 US, 27, 8 ain Git Ce: Wy, and Sicbewnal Athletic

S.Ct. 819, 34 L.Ed.2d 262 (1972). However, 17 (SF Cir. IST): Gym, Recreational &

the Willard patent's file history reveals no Athletic Equipment Corp., Inc., 546 F.2d

citation or other hes govong iy ee 530 (3d Cir. 1976), the defendant has failed

of the Payne paten

; invalidity.

: to make out its defense of patent inva ’

ixer Beca have determined that : aa that a patent is

‘aa ate art en erya the Payne patent § we 9 stateless

was highly pertinent to the art patented by inva i> ditteeneen taneen ths wide

Willard, the failure of the Patent Office to “if the di Se Ge be aaleinek oat tin

consider Se eee ore sian sclera oe such that the subject matter

* 3: te c

ee eae p ovat ip Prod - as a whole would have been obvious at

uminum :

argu f the defendant's theories of

alofthe 2. Indeed, on one of | nie

y beet mas res bes aan cn ee Patent invalidity of the Willard ~ot foyer it osc ase

Of anes Bl ys connection with the Willard have been —— to reg ats

eto ane the Payne patent. Even if inclu- nents of the rear-discharge cca cage

agg Pr tent in these sub-classes use at the time of the bape cones eo

mth Sages oss " constitute consideration tion, the rigiresn atthe eed em :

oo Patent Office of it for these purposes, only margi _——e ‘ —

pS idence of such inclusion on this nence of the prior a vee —

poaondy We tout conclude therefore that the with mixing drums of fix i

Patent Office did not consider the Payne patent

in its consideration of Willard’s application.

A-3l

SIMS v. MACK TRUCKS, INC. 1211

Clte as 459 F Supp. 1198 (1978)

the time the invention was made toa

person having ordinary skill in the art to

which the said subject matter pertains.”

The Supreme Court in Graham stated that

the ultimate question of obviousness or non-

obviousness is a matter of law but added

that in § 103 cases three factual determina-

tions must underlie that ultimate resolu-

tion: the scope and content of the prior art;

the differences between that prior art and

the claims of the patent in suit; and the

level of ordinary skill in the pertinent art.

It added that secondary considerations such

as the commercial success of the patented

construction and its fulfillment of long felt

and unresolved needs might be relevant to

the obviousness question. 383 U.S. at 17-

18, 86 S.Ct. at 693-694.

There is little room for disagreement as

to the scope of the prior art relevant to the

Willard patent or the differences between it

and the Willard patent. The only signifi-

cant contention advanced by the defendant

as to these factual matters with which I

disagree is the suggestion that the Payne

patent embodies the primary advantage of

the patent in suit: the discharge of con-

crete in th® view of the driver from the

truck to the point where it is to be applied,

with the greater efficiency and speed stem-

ming from that advantage. It is not clear

to what extent the driver of a Payne vehi-

cle would be able to observe from the cab

the discharge of ‘concrete and to vary the

point of discharge without assistance and

without leaving the cab. The description of

the Payne patent makes it clear, however,

that it does not contemplate the use of the

construction disclosed in it in that manner.

Rather, the Payne construction is to be used

in combination with a portable concrete dis-

tributor. The Payne mixer would be able

to be driven to the loading point of that

portable distributor without the driver hav-

ing to leave the cab, but the Payne patent

contemplates that the concrete be applied

to the work area not from the truck but

from the portable distributor, which would

be transported and operated by other work-

men. Hence the advantage disclosed in the

Willard patent of a one-person discharging

operation was not anticipated by this prior

art. This difference between the Payne

<

disclosure and the Willard patent does not

necessarily render the latter's subject mat-

ter patentable (i. e., non-obvious), but it is a

difference.

For the most part, however, the defend-

ant demonstrated that the prior art includ-

ed a front-discharge mixer employing an

old fashioned cylindrical drum, that rear-

discharge mixers operate in much the same

way as the construction of the patent in

suit and have the same component parts as

the patent in suit, and that the crucial

difference between the Willard patent and

this prior art was the rearrangement of

these components and extension of the mix-

ing drum so that concrete would be dis-

charged from the drum at a point above the

driver and from the discharging chute at a

point forward of the truck and in the vision

of the driver.

As to the third factual inquiry mandated

by Graham, the level of ordinary skill in the

pertinent art, the defendant's case was woe-

fully deficient, however. Before ascertain-

ing the level of skill in the pertinent art, a

factfinder must determine what the perti-

nent art is. In denying the defendant's

motion for summary judgment on the basis

of § 103 invalidity, I determined for pur-

poses of that motion that the hypothetical

person skilled in the pertinent art was the

designer of self-transit concrete mixing

trucks, i. e., “the mechanically skilled indi-

vidual familiar with the design of devices in

the industry”, Systematic Tool & Machine

Co. v. Walter Kidde & Co., Inc., 555 F.2d at

349 (citations omitted); see also Universal

Athletic Sales Co. v. American Gym, Recre-

ational & Athletic Equipment Corp., Inc.,

546 F.2d at 537, and I continue to look to

that art.

The defendant presented testimony that

designers of self-transit mixers in the 1950's

had sufficient skill that it would have been

obvious to them on the basis of the prior art

to produce the Willard construction. Such

evidence does not aid me very much in

resolving the third factual issue posed by

the Supreme Court in Graham. The pur-

pose of this inquiry is to discern what the

level of skill in the pertinent art was gener-

A-32.

1212 459 FEDERAL SUPPLEMENT

ally at the time of invention in order that I

be able to determine as a matter of law

whether the claims of the Willard patent

would have been obvious on the basis of the

prior art. Aside from the fact that I con-

sider the testimony presented by the de-

fendant as to the level of skill in this art

unreliable because it came from witnesses

either interested in the case or unfamiliar

with that art, there was insufficient evi-

dence of the general level of skill in that art

for me to make meaningful findings of

fact? This void in the record represents a

deficiency at least as great as that per-

ceived by the Third Circuit on this point in

Universal Athletic Sales Co. There that

court held:

“The trial judge suggested that the rec-

ord as to the level of ordinary skill in the

pertinent art was ‘deficient.’ Having so

indicated, he should have refused to in-

validate the challenged patent claims as

obvious.”

546 F.2d at 543.

Even reaching the legal question of obvi-

ousness in spite of this def -iency as to one

of its factual underpinnings, I conclude that

the defendant failed to establish that the

claims of the Willard patent would have

been obvious in 1955 to the designer of

self-transit concrete mixers possessed of or-

dinary skill. The defendant presented

three witnesses on the issue of obviousness

of the Willard patent. Exercising my

broad discretion as to whether to accept

expert testimony, Salem v. United States

Lines Co., 370 U.S. 31, 35, 82 S.Ct. 1119, 8

L.Ed.2d 313 (1962), I did not permit the

testimony of one of the expert witnesses

offered by the defendant, Irving M. Fogel.

Fogel was qualified as an expert in the use

of concrete, but his expertise in self-transit

mixers was limited to his use of them and

did not involve any familiarity with the

design of such vehicles. Consequently, he

demonstrated no qualifications to be an ex-

3. The plaintiffs produced some evidence to the

effect that designers of self-transit concrete

mixers of ordinary skill in the mid-1950's

lacked the skill necessary to solve the problems

which confronted the art at that time. 1 do not

consider this to be very useful evidence as to

the level of ordinary skill in the art generally,

pert as to the design of such vehicles. See

Universal Athletic Sales Co., 546 F.2d at

537.

A second expert witness presented by the

defendant, Richard B. Essex, was also quali-

fied primarily as a user of and an expert in

concrete and never designed self-transit

mixers or any comparable devices. Essex

did state that he had some familiarity with

the design of such mixers, however, and so I

received his testimony. Essex testified that

it would have been obvious in 1954 to him—

not to a designer of self-transit mixers—to |

produce the Willard construction if he were

told to produce a vehicle which discharged

concrete from its front end. In addition to

the fact that this misstates the ultimate

question in a § 103 case, which is whether

the patented device would have been obvi-

ous on the basis of prior art to one of

ordinary skill in the pertinent art, I am

unwilling to rely on the testimony of an

expert who was unfamiliar with the perti-

nent art and with the art of design general-

ly.

[3] The defendant has argued that the

testimony of Fogel ought to have been ad-

mitted and that that of Essex should be

given controlling weight on the authority of

Systematic Tool & Machine Co. v. Walter

Kidde & Co., Inc., 555 F.2d at 350 & n. 9.

There the Third Circuit, having determined

that the person of ordinary skill in the

pertinent art was a mechanic familiar with

the design of food slicing devices, stated

that the controlling evidence as to the ulti-

mate question of obviousness was the ex-

pert testimony of a mechanical engineer-de-

signer that the device of the patent in suit

would have been obvious to anyone with the

skills of an ordinary mechanic or designer.

The court held over Judge Rosenn’s dissent

that this testimony of obviousness to me-

chanics and designers was a fortiori evi-

but to the extent it is, it of course militates

toward a finding of non-obviousness.

4. Section 103 concerns obviousness “at the

time the invention was made.” The time of

invention of the Willard patent is determined

by the date the application for the patent was

filed, July 18, 1955.

A-3S

SIMS v. MACK TRUCKS, INC. 1213

Cite as 459 F.Supp. 1198 (1978)

dence of obviousness to designers of food

slicing devices.

I believe that this witness’ testimony dif-

fered from Essex’s in several important re-

spects. The a fortiori reasoning in System-

atic Tool was based on the presumption that

food slicing designers possess all the skills

of ordinary mechanics and designers, 555

F.2d at 350 n.9. I am unwilling to presume

that the designer of self-transit mixers of

ordinary skill possessed in 1954 all of the

skills and expertise of Essex, who was an

expert in concrete use and user of these

vehicles. The relationship presumed by the

Third Circuit to exist between mechanics or

designers in general and designers of food

slicing machines, i. e., that the latter would

possess all the skills and knowledge of the

former and more, cannot be presumed to

exist between users of self-transit mixers

with expertise in concrete use and designers

of self-transit mixers. Essex’s testimony

therefore more nearly resembles the testi-

mony of the expert in Universal Athletic

Sales Co., 546 F.2d at 587-38, a patent

lawyer unskilled in and only slightly famil-

iar with the pertinent art. There the Third

Circuit did- not invoke the presumption of

expertise applied in Systematic Tool, and it

regarded the expert's testimony as having

at best marginal value.

In addition, the expert in Systematic Tool

testified to a proper obviousness question

when he stated that the patent in suit

would have been obvious to any mechanic

or designer of ordinary skill on the basis of

the prior art. On the other hand, Essex

testified that it would have occurred to him

(not to a person of ordinary skill in any

defined art) to construct the vehicle dis-

closed in the Willard patent if a customer

had requested him to build a front-dis-

charge mixer. Thus Essex testified that

the patented device would have been obvi-

ous once the idea was derived of front

discharge employing conventional self-tran-

sit mixer components, rather than that the

Willard patent in its totality, including that

idea, was obvious on the basis of the prior

art.

In the final analysis I accept albeit with

reservation the applicability of the System-

atic Tool analysis to Essex's testimony.

A-

But I choose to give very limited weight to

that evidence in light of its indirect bearing

on the precise issue of whether the Willard

patent would have been cbvious to a design-

er of front-discharge mixers in 1955. Un-

like the plaintiff in Systematic Tool, which

allowed the expert testimony of the me-

chanical engineer to stand uncontradicted,

the plaintiffs here offered expert testimony

which, while imperfect, was more reliable

than that of Essex.

[4] Similarly, I am unable to conclude

that the patent was invalid on the basis of

the testimony of Robert W. Stieg, an em-

ployee of the defendant who was involved

in the design of self-transit mixers in 1955,

that it would have come to his mind imme-

diately in 1950 to construct a front-dis-

charge mixer like that disclosed by Willard

on the basis of the prior art. Again, the

question of obviousness vel non was impre-

cisely asked. More importantly, I cannot

give much weight to this testimony because

of Stieg’s interest in this litigation as an

executive of the defendant, the developer of

the HMM chassis and a participant in this

litigation throughout its long history. His

interest is at least as significant as that of

the expert in Universal Athletic Sales Co.,

who was an associate of the defendant's

counsel. There the Third Circuit held it

was error for the trial court to place heavy

reliance on the testimony of the interested

expert, 546 F.2d at 539. For the same

reason, the testimony of Walter M. May, an

executive vice-president of defendant who

studied the front-discharge mixer and con-

tacted the plaintiff R. W. Sims in 1963 and

who was involved in the HMM chassis’ de-

velopment, that any civil engineer and “pos-

sibly” even a mechanic could have designed

the Willard vehicle cannot be relied on.

Stieg and May were interested experts by

virtue of both their status as executives of

the defendant and their personal involve-

ment in this litigation.

I discount on similar grounds the testimo-

ny of R. W. Sims, the plaintiff trustee, that

the Willara construction was non-obvious

on the basis of the prior art. I am per-

suaded, however, by the testimony of the

-

1214 459 FEDERAL SUPPLEMENT

plaintiffs’ expert, Robert W. Fay, that the

Willard patent was not obvious on the basis

of the prior art. The greatest flaw in Fay’s

qualification as an expert is that he was not

involved in the design of self-transit mixers

until the late 1960's and hence his expertise

as to the state of the art in 1955 and what

would have been obvious to a person in that

art comes from indirect rather than direct

experience. Fay did testify, however, that

he knew about that art and the skill of

persons in it as a result of his involvement

in the art some years later and his experi-

ence then with the vehicles designed in the

1950's. I do not believe that experience in

the pertinent art at the time of invention is

the only way one can acquire familiarity

with the art at that time sufficient to make

him a reliable expert as to obviousness. In

fact, Fay was the only disinterested witness

who demonstrated knowledge of the level

of ordinary skill generally in the art at the

relevant time and of the problems confront-

ing that art. Accordingly, Fay was the

only expert witness as to obviousness whose

testimony merits controlling weight. At

the very least, his testimony balances out

the weak evidence of obviousness presented

by the defendant. Even if I could not deem

Fay’s testimony controlling, therefore, nei-

ther could I rely on the evidence of the

defendant, which bore the burden of proof

as to a § 103 defense.

The defendant has also suggested that a

conclusion of invalidity of the Willard pat-

ent based on obviousness is justified on the

ground that the factfinder would conclude a

reasonable person—i. ¢., himself—would

find it obvious at tue time of trial on the

basis of the prior art. This approach to a

§ 103 case seems to me impermissible in

that it ignores the mandate of Graham that

the ultimate § 103 determination cannot be

made in a vacuum but rather requires a

factual inquiry into the state of the perti-

5.: The significance of commercial success as

evidence of non-obviousness in this case is di-

minished by the fact that commercial success

came only after improvements were made to

the construction disclosed in the Willard patent

and depended in part on those improvements.

Where commercial acceptance is attributable

to properties other than those disclosed in the

patent, it does not demonstrate even secondari-

nent art. Asking the factfinder to look at

the patent in suit and determine whether it

was or was not obvious without reference to

the pertinent art or to time of invention

would invite a rough guess as to obvious-

ness, tempting the factfinder to exercise

hindsight and read the teachings of the

patent in suit into the prior art, Graham v.

John Deere Co., 383 U.S. at 36, 86 S.Ct. 684,

rather than the careful analysis mandated

by the Supreme Court in that case. In any

event, I conclude that the patent in suit is

not and was not in 1955 obvious to the

reasonable person.

[5] The Court recognized in Graham

that so-called “secondary considerations”

might be probative of the obviousness of

the patent. The following secondary con-

siderations weigh on the side of non-obvi-

ousness in this case: (1) the Willard con-

struction, as improved by various licensees

under the patent, enjoyed beginning in the

mid-1960’s considerable commercial suc-

cess;* (2) the gains in speed, efficiency and

safety in the operation of self-transit con-

crete mixers made possible under the Wil-

lard patent fulfilled a long-felt need in the

industry; and (3) the HMM chassis is a

close imitation of the Willard construction

based on samples obtained from licensees

under the Willard patent and does not re-

semble closely any of the prior art. The

last clement, imitation of the patented con-

struction by an infringer who relies on an

obviousness defense, has not been recog-

nized as a secondary consideration in this

circuit, but it has been so considered by the

Second Circuit, Shaw v. E. B. & A. C.

Whiting Co., 417 F.2d 1097, 1106 (2d Cir.

1969), cert. denied, 397 U.S. 1076, 90 S.Ct.

1518, 25 L.Ed.2d 811 (1970), quoting Kurtz

y. Belle Hat Lining Co., 280 F. 277, 281 (2d

Cir. 1922), and its status as an indicium of

non-obviousness does not appear to have

been rejected by any court.

ly non-obviousness. Douglas v. United States,

510 F.2d 364, 370, 206 CLCl. 96, cert. denied,

423 U.S. 825, 96 S.Ct. 40, 46 L.Ed.2d 41 (1975);

U. S. Expansion Bolt Co. v. Jordan Indus., Inc.,

488 F.2d at 572 n. 13. Here, however, because

the rearrangement of mixer components in the

Willard patent played a large role in these vehi-

cles’ eventual success, this factor is entitled to

some weight.

A=35

SIMS v. MACK TRUCKS, INC. 1215

Cite as 459 F.Supp. 1198 (1978)

[6] The fact that within several years of

one another three persons, Willard, Pritch-

ard and Sims, derived virtually the same

construction is a secondary characteristic

pointing towards obviousness, Reeves

Brothers, Inc. v. U. S. Laminating Corp.,

417 F.2d 869, 872 (2d Cir. 1969); Kaz Manu-

facturing Co., Inc. v. Northern Electric Co.,

412 F.Supp. 470, 482, 484 (S.D.N.Y.1976). I

believe that these secondary factors taken

together favor non-obviousness, but in light

of the limited weight they are entitled to in

this circuit, Tokyo Shibaura Electric Co.

Ltd. v. Zenith Radio Corp., 548 F.2d at

94-95, I place little reliance on this conclu-

sion.

The defendant argues that the Willard

patent is invalid under § 103 as a combina-

tion patent which does not have a synergis-

tic effect, while the plaintiffs have neither

disputed nor explicitly agreed with the

characterization of the patent in suit as a

combination patent. Discounting for the

moment the significance of extending the

mixing drum at the discharging end, I

agree with the defendant and several ex-

pert witnesses that the Willard patent is a

novel combination of self-transit mixer

components revealed in the prior art. Such

combination patents are valid only if the

familiar elements are put together in a

fashion which produces a synergistic effect,

“result{ing] in an effect greater than the

sum of the several effects [of the compo-

nents known in the prior art) taken sepa-

‘rately.” Sakraida v. Ag Pro, Inc., 425 U.S.

273, 282, 96 S.Ct. 1532, 1537, 47 L.Ed.2d 784

(1976), quoting Anderson's-Black Rock v.

Pavement Salvage Co., 396 U.S. 57, 61, 90

S.Ct. 305, 24 L.Ed.2d 258 (1969). While the

Supreme Court cases do not state clearly

the relationship between a synergistic ef-

fect and the normal § 103 obviousness in-

quiry, it appears that at Jeast in this circuit

the synergistic effect is but “one factor to

consider in determining obviousness,” Sys-

6. The analysis mandated by these Supreme

Court cases discredits or at least limits the rule

that the reversal of familiar components does

not produce a patentable device. See Conti-

nental Scale Corp. v. Harrison Wholesale Co.,

132 F.2d 463, 466 67 (7th Cir. 1942). See also

tematic Tool & Machine Co. v. Walter

Kidde & Co., Inc., 555 F.2d at 350.

In any event, I find that the rearrange-

ment of components in the Willard patent

produces a marked synergistic effect in that

two familiar elements, the mixing drum

and the discharging chute, are for the first

time place in a fashion such that concrete is

discharged in view of the driver sitting in

the cab of the vehicle, and less significantly

that the drum is arranged to afford more

even weight distribution. The Willard pat-

ent is not simply the rearrangement of “old

elements with each performing the same

function it had been known to perform,”

Sakraida v. Ag Pro, Inc., 425 U.S. at 282, 96

S.Ct. at 1537, i. e., the discharge of concrete

from some end of the mixer, but rather a

construction in which those elements per-

form a new and useful function, resulting

in greater overall efficiency. The Willard

patent deploys these components in a fash-

ion that produces an entirely new result,

not merely a “more striking” version of an

old one. Id. Cf. Systematic Tool & Machine

Co. v. Walter Kidde & Co., Inc., 555 F.2d at

350; U. S. Expansion Bolt Co. v. Jordan

Industries, Inc., 488 F.2d at 571-72. While

combination patents are as a general mat-

ter unlikely to be valid and therefore de-

mand close judicial scrutiny, Great Atlantic

& Pacific Tea Co. v. Supermarket Equip-

ment Corp., 340 U.S. 147, 152, 71 S.Ct. 127,

95 L.Ed. 162 (1950), because the Willard

patent produces a synergistic effect it is an

exception to this usual rule.*

Il. INFRINGEMENT:

There is no doubt that the complete

HMM mixer depicted by the defendant in

its promotional film and brochures infringes

the Willard patent. Every element present

in the Willard construction is incorporated

into the HMM mixer, with the exceptions

that in the latter the cab is directly above

rather than forward of the front axle, the

major part of the engine is alongside rather

Louis A. Grant, Inc. v. Keibler Indus., Inc., 377

F.Supp. 1069, 1083 (N.D.Ind.1973), appeal dis-

missed, 541 F.2d 284 (7th Cir. 1976), in which

the court limited the rule to situations in which

the reversal produces no new results.

A- 36

1216 459 FEDERAL SUPPLEMENT

than behind the cab, and the discharge

chute is controlled hydraulically. The other

differences pointed out by the defendant,

the absence of a cylindrical drum extension

in the HMM mixer and its use of a half-cab

with the discharging end of the mixer not

directly above it, do not disturb my conelu-

sion that Willard mixers’ and HMM mixers’

main components all perform “substantially

the same function in substantially the same

way to obtain the same result.” Graver

Tank & Manufacturing Co. v. Linde Air

Products Co., 339 U.S. 605, 608, 70 S.Ct. 854,

856, 94 L.Ed. 1097 (1950), quoting Sanitary

Refrigerator Co. v. Winters, 280 U.S. 30, 42,

50 S.Ct. 9, 74 L.Ed. 147 (1929). Thus, even

where the HMM mixer did not literally

infringe the Willard patent, there is in-

fringement under the doctrine of equiva-

lents set forth in Graver. Furthermore, it

is clear that the defendant cannot escape

liability for infringement by virtue of the

fact that its structure represents an im-

provement over the patented one. Temco

Electric Motor Co. v. Apco Manufacturing

Co., 275 U.S. 319, 328, 48 S.Ct. 170, 72 L.Ed.

298 (1928); Ziegler v. Phillips Petroleum

Co., 483 F.2d 858, 871 (5th Cir.), cert. de-

nied, 414 U.S. 1079, 94 S.Ct. 597, 38 L.Ed.2d

485 (1978).

Because the defendant was not authoriz-

ed to make, use or sell this infringing de-

vice, any sale or use by it of complete HMM

mixers before that patent expired on No-

vember 11, 1975, constitutes direct infringe-

ment under 35 U.S.C. § 271(a).? The de-

fendant is liable for direct infringement by

virtue of its use before that date of infring-

ing front-discharge mixers to promote sales

of its HMM chassis. There is also evidence

on this record, in the form of defendant's

answer in January 1977 to an interrogatory,

that it sold complete HMM mixers. This

evidence does not establish, however, how

many if any of those sales occurred before

the expiration of the patent on November

7. Section 27)(a) provides in part that “whoever

without authority makes, uses or sells any pat-

ented invention, within the United States dur-

ing the term of the patent therefor, infringes

the patent.”

8. Rule 8(c) requires that affirmative defenses

be pleaded. The case law establishes that the

11, 1975: The defendant argues that ]

should find as a result of this lack of speci-

ficity that there was no direct infringe.

ment. I believe that such a conclusion

would be inequitable in light of the bifur-

cated nature of this proceeding. The trial

thus far has determined the issues of patent

validity and infringement of the Willard

patent by the HMM mixer in the favor of

the plaintiffs. In the damages stage, at

which time the number of infringements

and the reasonable royalty for them will

have to be determined, see Trio Process

Corp. v. L. Goldstein's Sons, 533 F.2d 126,

129-30 (3d Cir. 1976), I will permit the

plaintiffs to establish the number of sales

(if any) by defendant of complete HMM

mixers before November 11, 1975.

The defendant is correct, however, in its

contention that on two related grounds the

manufacture or sale of an HMM chassis

does not make it liable as a direct infringer:

the Willard patent is not a patent for a

chassis and, as a combination patent, it is

protected “only against the operable assem-

bly of the whole and not the manufacture

of its parts.” Deepsouth Packing Co. v.

Laitram Corp., 406 U.S. 518, 528, 92 S.Ct.

1700, 1707, 32 L.Ed.2d 278 (1972). See also

Aro Manufacturing Co., Inc. v. Convertible

Top Replacement Co., Inc., 365 U.S. 336,

344, 81 S.Ct. 599, 603, 5 L.Ed.2d 592 (1961).

{7} The defendant asserts that it is not

liable for direct infringement in instances

of sale or use of complete vehicles where

the mixing drum was manufactured by rn

licensee under the Willard patent. Non-in-

fringement as a result of licensing is, how-

ever, a defense to an Cy ee

Grip Nut Co. v. Sharp, 124 » 815

(1th Cir. 1941); Talbot v. Quaker-State Oil

Refining Co., 104 F.2d 967, 967-68 (3d Cir.

1939), and therefore must be pleaded by the

defendant under 35 U.S.C. § 282 and, ap-

parently, F.R.Civ.P. Rule &c).*

existence of a license constitutes a defense to

an infringement. Whether it is an affirmative

defense is not clear from the cases and moot

since § 282 requires pleading of all defenses.

The Third Circuit in Trio Process Corp. v. L

Goldstein's Sons, Inc., 461 F.2d at 74, appears

to consider all § 282 defenses as affirmative

defenses, however.

A-37

SIMS v. MACK TRUCKS, INC. 1217

Cite as 459 F.Supp. 1198 (1978)

The defendant did not plead the existence

of a license as 2 defense in its answer and it

points to no other pleading of this defense.

Rather, it has taken the position that be-

cause § 271(a) makes liable as an infringer

anyone who makes, uses or sells a patented

device “without authority” the showing of

non-authority (i. e. non-existence of a

license) is an element of the plaintiffs’ in-

fringement case. The defendant cites no

authority for this proposition, and I have

been able to find none. It seems to me a

harsh result to hold that the defendant has

waived this defense when the record is un-

equivocal that licenses did exist and that at

least some of the defendant's sales and uses

incorporated mixing drums made by licen-

sees, but that is the result mandated by

§ 282 and the Third Circuit's analysis in

Trio Process Corp. v. L. Goldstein's Sons,

Inc., 461 F.2d at 74.

In determining whether the defendant is

liable for inducing infringement under 35

U.S.C. § 271(b),? I am faced with a problem

analogous to that posed by the direct in-

fringement claim in this case. Because

there must be a direct infringement in or-

der for tnere to be an inducement of it, Aro

Manufacturing Co., Inc. v. Convertible Top

Replacement Co., Inc., 365 U.S. at 341, 81

S.Ct. at 602, the defendant cannot be liable

for inducing infringement in instances where

HMM chassis it manufactured and sold

were not used to construct infringing front-

discharge mixers until after the expiration

of the Willard patent on November 11,

1975. Because I cannot yet conclude which

HMM chassis sold by defendant were used

in front-discharge self-transit concrete mix-

ers which directly infringed the Willard

patent (that is, those that were constructed

or sold before November 11, 1975), the

plaintiffs will have to establish this fact at

the damages phase of this proceeding."*

(8) I conclude that in each instance in

which an HMM chassis was used in the

construction of a front-discharge mixer, the

sale of the HMM chassis by the defendant

9%. Section 271(b) provides, “Whoever actively

induces infringement of a patent shall be liable

as an infrinyer.”

constituted an inducement of infringement.

The statute provides only that active in-

ducement is necessary for § 271(b) liability,

and the cases do not shed bright light on

what constitutes active inducement. It ap-

pears, however, that such inducement re-

quires acts which cause, urge, encourage or

aid another to infringe and knowledge by

the inducer that infringement is likely.

Fromberg, Inc. v. Thornhill, 315 F.2d 407,

411 (5th Cir. 1963); Ingersoll-Rand Co. v.

Rockwell International Corp., 420 F.Supp.

277, 281 (S.D.Fla.1976); Burlington Indus-

tries, Inc. v. Exxon Corp., 379 F.Supp. 754,

757 (.Md.1974). I conclude that the design

and engineering of the HMM chassis for the

specific purpose of accommodating front-

discharge mixing drums, the solicitation of

the HMM chassis depicted as part of a

front-discharge mixing unit, the promotion

of the advantages of such a unit and the

marketing and sales of the HMM chassis

constituted inducement of infringement in

each instance where an HMM chassis was

sold and later used to construct a front-dis-

charge mixer. Clearly, the entire thrust of

the development of this product by defend-

ant was to cause and encourage others to

produce front-discharge mixers. Just as

clearly, these efforts, apparently aimed by

defendant toward prospective vendees with-

out discriminating between licensees and

non-licensees under the Willard patent, de-

liberately rather than accidentally caused

infringements of the Willard patent, From-

berg, Inc. v. Thornhill, 315 F.2d at 411, and

were made with knowledge that infringe-

ment was likely.

The defendant asserts as it does with

respect to the direct infringement claim

that it cannot be liable for sales to parties

who were licensed under the patent. I

must reject that contention for the same

reason that bound me with respect to direct

infringement: a defense to an infringement

claim based upon the existence of a license

has been waived as a result of the defend-

ant’s failure to plead the defense. I can see

1@. Of course, there is no direct infringement by

anyone an.) hence no inducement of infringe-

ment in the cases of HMM chassis used in

vehicles other than front-discharge mixers.

A-38

1218 459 FEDERAL SUPPLEMENT

no way to distinguish for purposes of

§ 282's broad requirement that defenses be

pleaded between licenses as a defense to a

direct infringement claim and licenses of

vendees as a defense to an inducement of

infringement claim. Finally, the authori-

ties advanced by the defendant for the

proposition that § 271(b) does not apply to

mere solicitation are inapposite since I per-

ceive the defendant's conduct in this case as

including solicitation coupled with manufac-

ture and sale (as well as design and engi-

neering) of an infringing product. See, e.

g., Powerlock Floors, Inc. v. Robbins Floor-

ing Co., 327 F.Supp. 388, 390 (D.Del.1971),

aff'd per curiam, 464 F.2d 1022 (3d Cir.

1972); Hautau v. Kearney & Trecker Corp.,

179 F.Supp. 490, 492 (E.D.Mich.1959).

[9] With regard to contributory in-

fringement pursuant to 35 U.S.C. § 271(c),"

I conclude that the defendant is not liable

because the HMM chassis was a staple arti-

cle suitable for substantial non-infringing

uses. A contributory infringer is one who

sells a component of a patented device, as

the HMM chassis was with respect to front-

discharge mixers infringing the Willard

patent, with the conjunctive requirement

that the contributory infringer know (1)

that the component is made especially for

an infringing use and (2) that the compo-

nent is not a staple article of commerce

suitable for any substantial non-infringing

use. The evidence is clear that the defend-

ant designed, engineered and made the

HMM chassis by adapting another chassis

particularly for use in front-discharge self-

transit mixers, satisfying the first branch of

§ 271.

[10] Whether the HMM chassis was

suitable for substantial non-infringing use

is a close question. This is neither a case in

Il. Section 271(c) provides:

“Whoever sells a component of a patented

machine, manufacture, combination or com-

position . . . constituting a material

part of the invention, knowing the same to be

especially made or especially adapted for use

in an infringement of such a patent, and not a

staple article or commodity of commerce

suitable for substantial non-infringing use,

shall be liable as a contributory infringer.”

which the component manufactured by the

defendant can be flatly stated to have been

a staple article of commerce suitable for

substantial non-infringing use, see Ever

sharp, Inc. v. Philip Morris, Inc., 256

F.Supp. 778, 781, 786 (E.D.Va.1966), afta

per curiam, 374 F.2d 511 (4th Cir. 1970);

Haskell v. Lever Brothers Co., 243 F.Supp.

601, 607, 614 (S.D.N.Y.1965), nor one in

which the non-infringing uses have been

shown to be a “mere theoretical capability,”

Fromberg, Inc. v. Thornhill, 315 F.2d at 415,

or to be dangerous and significantly less

suitable uses of the component part, see

Bliss & Laughlin Industries, Inc. v. Bil-Jax,

Inc., 356 F.Supp. 577, 581 (N.D.Ohio 1972).

Here the defendant established that the

HMM chassis could be used in a number of

types of non-infringing vehicles. There is

no evidence on the record that any or all of

these uses were merely theoretical or that

the HMM chassis would not be efficient or

safe in these usages. The record reflects

further that three of the first Sixty-five

HMM chassis sold were incorporated into

Structures other than front-discharge mix-

ers.

While this hardly makes an overwhelm-

ing case for substantiality of non-infringing

use, neither have the plaintiffs made the

case that the HMM chassis was not suitable

for substantial non-infringing use, and the

burden is on them to make out this element

of § 271(c) liability. Were I to conclude the

HMM chassis was not suitable for substan-

tial non-infringing use, I would be doing so

primarily on the basis of the fact that this

component was especially adapted for the:

infringing use. That analysis would render

the conjunctive of § 271 a nullity.

12 Nor do I conclude that the plaintiffs have

made out a case that the HMM chassis was not

a “staple article or commodity of commerce.”

See Bliss v. Laughlin Indus., Inc. v. Bil-Jax,

Inc., 356 F.Supp. at 581, where the court deter-

mined on the basis of the dictionary definition

of staple that this language imposes a require-

ment that the component parts be produced ©

regularly or in large quantities. The plaintiffs

have produced insufficient evidence for me to

make the legal conclusion that the HMM chas-

sis was not a staple commodity.

A= a7

NS ARE PB A os me

SIMS v. MACK TRUCKS, INC. 1219

Cite as 459 F.Supp. 1198 (1978)

Ill. INTENTIONAL INFRINGEMENT:

Under 35 U.S.C. § 284 I am authorized to

increase the damages assessed against the

infringing defendant by up to three times

the amount which would compensate the

plaintiff for the infringement. The plain-

tiffs seek treble damages on the ground

that the defendant's infringement of the

Willard patent was knowing, deliberate,

wanton and willful. A finding of such con-

duct on the part of the defendant places the

increasing of damages within my discretion.

Blake v. Bassick Co., 392 F.2d 879, 883 (7th

Cir.), cert. denied, 393 U.S. 828, 89 S.Ct. 94,

21 L.Ed.2d 100 (1968); Jenn-Air Corp. v.

Penn Ventilator Co., Inc., 394 F.Supp. 665,

676 (E.D.Pa.1975). See also Trio Process

Corp. v. L. Goldstein’s Sons, Inc., 533 F.2d

at 131." Increased damages are to be

awarded sparingly and only in cases where

deliberate disregard of patent rights has

been shown clearly, American Safety Table

Co. v. Schreiber, 415 F.2d 373, 378 (2d Cir.

1969), cert. denied, 396 U.S. 1038, 90 S.Ct.

683, 24 L.Ed.2d 682 (1970).

Obviously, the defendant’s infringement

of the Willard patent was in no sense acci-

dental or inadvertent. The defendant had

known of the existence of the Willard pat-

ent and of the plaintiffs’ ownership of the

rights embodied in that patent since 1963.

When it decided to study, design, engineer,

produce, market and sell a chassis adapted

for use in a front-discharge mixer, the de-

fendant was aware of the possibility that

its conduct would make it liable for the

infringement of the Willard patent. In dis-

puting that any infringement by it was

wanton and willful, the defendant places

principal reliance on its consultation of pat-

ent counsel, its receipt of an opinion letter

13. The defendant asserts that the issue of wan-

ton and willful infringement is not properly

before me on the ground that such infringe-

ment was not pleaded. However, the amended

complaint alleges in Count Two (the unfair

competition claim, as to which I granted the

defendant's motion for summary judgment)

facts amounting to willful and wanton patent

infringement and in its prayer seeks the tre-

bling of damages. This amounts to a sufficient

ogee 8 of ere infringement, Copease

fg. v. American Phot Co.,

298 F.2d 772, 783 (7th Cir. spate me eae the

dated August 29, 1973, in which that coun-

sel stated that the Willard patent was in-

valid, and its alleged reliance on that letter.

[11] The defendant is correct in assert-

ing that it can demonstrate its good faith,

precluding the trebling of damages on the

basis of wanton and willful infringement,

by showing that it reasonably relied on the

advice of its patent counsel that the patent

in suit was invalid. See, e. g., Union Car-

bide Corp. v. Graver Tank & Manufacturing

Co., Inc., 282 F.2d 653, 660 (7th Cir. 1960);

Besly-Welles Corp. v. Balax, Inc, 291

F.Supp. 328, 344 (E.D.Wis.1968), aff’d in

part, rev'd in part on other grounds sub

nom. Bendix Corp. v. Balax, Inc., 421 F.2d

809 (7th Cir.), cert. denied, 399 U.S. 911, 90

S.Ct. 2203, 26 L.Ed.2d 562 (1970); Techno-

graph Printed Circuits, Ltd. v. Bendix Avia-

tion Corp., 218 F.Supp. 1, 57 (D.Md.1963),

aff'd per curiam, 327 F.2d 497 (4th Cir.),

cert. denied, 379 U.S. 826, 85 S.Ct. 53, 18

L.Ed.2d 36 (1964); University of IlIlinois

Foundation v. Block Drug Co., 133 F.Supp.

580, 591 (E.D.111.1955), aff'd, 241 F.2d 6 (7th

Cir.), cert. denied, 354 U.S. 922, 77 S.Ct.

1382, 1 L.Ed.2d 1437 (1957). The thrust of

these cases, however, is that good faith can

be made out if the infringer demonstrates

reasonable reliance on the advice of coun-

sel—that is, that it justifiably believed the

advice of invalidity and that it would not

have infringed the patent were it not for

the inaccurate opinion of its counsel. An

infringer’s consultation of patent counsel,

solicitation of a validity opinion and receipt

of an opinion of invalidity do not by them-

selves preclude a finding of wanton and

willful infringement justifying increased

damages. Duplate Corp. v. Triplex Safety

Glass Co. of North America, 81 F.2d 352,

absence of any requirement in § 282 or else-

where that reliance on § 284 for increased dam-

ages must be specifically pleaded by a plaintiff.

While some courts have reserved until after

damages have been calculated judgment as to

whether they should be increased under § 284,

e. g.. W. L. Gore & Assocs., Inc. v. Carlisle

Corp., 381 F.Supp. 680, 694 (D.Del.1974), aff'd

in part, rev'd in part on other grounds, 529 F.2d

614 (3d Cir. 1976), I see no reason to delay my

decision in that this issue has been fully tried

and briefed and neither party has requested

that its resolution be stayed.

A - 40

eT ee eee

1220 459 FEDERAL SUPPLEMENT

354 (3d Cir. 1935), .modified on other

grounds, 298 U.S. 448, 56 S.Ct. 792, 80 L.Ed.

1274 (1936); W. L. Gore & Associates, Inc.

v. Carlisle Corp., 381 F.Supp. 680, 694

(D.Del.1974), aff'd in part, rev'd in part on

other grounds, 529 F.2d 614 (3d Cir. 1976);

Hartford National Bank and Trust Co. v. E.

F. Drew & Co. 188 F.Supp. 353, 361 n.41

(D.Del.1960), aff'd per curiam, 290 F.2d 589

(3d Cir.), cert. denied, 368 U.S. 825, 82 S.Ct.

45, 7 LEd.2d 29 (1961).

{12} I find that the defendant had al-

ready decided, without regard for the valid-

ity of the Willard patent, to market the

HMM chassis without becoming a licensee

at the time it sought and received the Au-

gust 29, 1973 opinion letter. See McCulloch

Motors Corp. v. Oregon Saw Chain Corp.,

245 F.Supp. 851, 855 (S.D.Cal.1965), where

the court found the defendant “had already

‘aggressively’ proceeded to the design and

manufacture of, and to the plans for active

distribution of” the infringing product at

the time it requested an opinion from coun-

sel and concluded, on that and other

grounds, that the infringement was inten-

tional for § 284 purposes. I will summarize

only briefly the evidence pointing to this

conclusion here: (1) the great expenditure

of resources in the development of the prod-

uct before patent counsel was asked about

validity; (2) the fact that it was counsel,

and not the defendant itself, that suggested

a validity search be undertaken after it had

concluded that the defendant’s proposed

conduct would make it liable as an inducer;

(3) the assurances by an executive of de-

fendant that the patent problem was not a

problem before any opinion as to the inval-

idity of the Willard patent existed; (4) the

statement in August 1978 of another execu-

tive of the defendant that because the Wil-

lard patent would expire in 1975 the mar-

14. The defendant's contention that increased

damages cannot be assessed against it relies to

a lesser extent on the proposition that such

damages are not permitted where the infringer

had a colorable belief that the patent was inval-

id, Maclaren v. B-I-W Group Inc., 401 F.Supp.

283, 304-05 (S.D.N.Y.1975), rev'd on other

grounds, 535 F.2d 1367 (2d Cir.), cert. denied,

429 U.S. 1001, 97 S.Ct. 531, 50 LEd2d 612

(1976). To the extent that this case expands

the rule that reasonable reliance on an authori-

A -4!

keting of the HMM chassis would be benefi-

cial even if the Willard patent were valid

and infringed by the HMM mixer; (5) the

failure of the defendant to demonstrate

that the final decision of its new product

committee to produce the HMM chassis was

delayed because it was waiting for a validi-

ty opinion or was based on the receipt of

the August 29, 1973 letter, and the letter to

a distributor stating the contrary; and (6)

the apparent failure of May or any other

employee of defendant involved in this deci-

sion to analyze, question or discuss with

patent counsel the invalidity decision, al-

though it was known to the defendant that

patent counsel retained by another manu-

facturer had opined that the Willard patent

was valid. In light of this evidence, I have

concluded that the defendant did not rely

on the August 29 letter when it intentional-

ly infringed and induced infringement of

the Willard patent, and * will therefore

award increased damages.- Beeause the

mere existence of counsel's advice of inval-

idity “may be relevant” to increasing dam-

ages, W. L. Gore & Associates, Inc. v. Car-

lisle Corp., 381 F.Supp. at 694, and the

defendant may have relied in some minor

degree on this opinion, however, I will hold

defendant liable for damages double rather

than treble the reasonable royalty necessary

to compensate the plaintiffs for the in-

fringement of their rights.“

IV. ATTORNEY FEES:

{13} The plaintiffs maintain that this is

an “exceptional case” within the meaning

of 35 U.S.C. § 285, permitting me to award

reasonable counsel fees, on the grounds that

the defendant had far greater economic re-

sources than the plaintiffs and is guilty of

bad faith and fraud in its conduct of this

tative opinion of invalidity is necessary to dem-

onstrate good faith and holds that a belief of

invalidity appearing in retrospect to have an

arguable basis whatever its source and unrelat-

ed to the infringer’s action is sufficient, I reject

its authority. Where, as here, the close issue

of validity was of no particular importance to

an intentional infringer’s state of mind in decid-

ing to infringe, it is also irrelevant to the degree

of culpability and to the damage calculation

under § 284.

SIMS v. MACK TRUCKS, INC. 1221

Cite as 459 F.Supp. 1198 (1978)

infringement action, in particular because

the defense was a “mere mock-up.” Only

the showing of a losing party’s misconduct,

e. g., bad faith, fraud, or undue harassment,

makes a case “exceptional” in this circuit

and allows the prevailing party to be com-

pensated for monies spent in litigating it.

Chemical Construction Corp. v. Jones &

Laughlin Steel Corp., 311 F.2d 367, 374 (3d

Cir. 1962); W. L. Gore & Associates, Inc. v.

Oak Materials Group, Inc., 424 F.Supp. 700,

709 (D.Del.1976). While I find that the

defendant exercised bad faith in intention-

ally infringing the Willard patent, I con-

sider the defenses of patent invalidity and

non-infringement raised at trial to have

been colorable, non-frivolous ones, and I see

no proof of bad faith or other misconduct

by it in this defense.

CONCLUSIONS OF LAW

K This case arises under the patent laws

of the United States, Title 35 of the United

States Code, and I have jurisdiction over

the subject matter pursuant to 28 U.S.C.

§ 1338&a). I also have jurisdiction over the

parties.

2. ~Fhe date of invention for the Willard

patent is its date of filing, July 18, 1955.

3. The presumption of the validity of

the Willard patent is weakened by the Unit-

ed States Patent Office’s failure to consider

and cite the Payne patent, but the defend-

ant continues to bear the burden of proof as

to its invalidity defense with respect both to

going forward with the evidence and to

persuading the factfinder by a preponder-

ance of the evidence.

4. The subject matter disclosed in the

Willard patent would not have been obvious

in 1955 to a designer of self-transit concrete

mixers of ordinary skill on the basis of the

prior art, nor would it have been obvious to

a@ reasonable man then or in 1978.

5. The rearrangement of component

parts known in the prior art which the

Willard patent effects is synergistic in that

this combination of elements produces an

effect greater than the sum of the effects

of the component parts taken separately or

arranged in any manner revealed in the

prior art.

6. The Willard patent is valid under 35

U.S.C. § 103.

7. The Willard patent is valid under 35

U.S.C. § 112.

8. A front-discharge mixer mounted on

an HMM chassis and cab, as depicted by the

defendant in its advertising and promotion-

al film, infringes claims 5, 7, 8, 9 and 11 of

the Willard patent. That structure does

not infringe claims 1, 2 and 4 of the Willard

patent.

9. The defendant is liable for direct in-

fringement of the Willard patent under 35

U.S.C. § 271(a) on the basis of any complete

front-discharge mixers employing an HMM

chassis which it used or soid before Novem-

ber 11, 1975, the date of expiration of the

Willard patent.

10. Each manufacture, use or sale by

any person before November 11, 1975, of a

front-discharge mixer employing an HMM

chassis constituted a direct infringement by

that person of the Willard patent under 35

U.S.C. § 271(a).

ll. The defendant is liable for induce-

ment of infringement of the Willard patent

pursuant to 55 U.S.C. § 271(b) in the case of

each manufacture, use or sale by another

person before November 11, 1975, of a

front-discharge mixer employing an HMM

chassis sold by it.

12 Manufacture, use or sale of a front-

discharge mixer by any person on or after

November 11, 1975, does not constitute di-

rect infringement of the Willard patent. In

these instances, consequently, the defend-

ant is not liable for inducing infringement

pursuant to 35 U.S.C. § 271(b).

13. The HMM chassis was known by the

defendant to be especially adapted for use

in infringing front-discharge self-transit

mixers but was also known by it to be a

staple article of commerce suitable for oth-

er substantial uses. The defendant conse-

quently is not liable for contributory in-

fringement pursuant to 35 U.S.C. § 271(c).

14. The defendant intentionally and

willfully infringed the Willard patent by

selling front-discharge mixers, and it inten-

tionally and willfully induced others to in-

A -4l-|

1222 459 FEDERAL SUPPLEMENT

Nov. 11, 1958 J. J; WILLARD 2,059,949

r . MIXER

fringe the Willard patent by manufacturing ° FORWARD DISCHARGING TRANSIT CONCRETE :

and selling HMM chassis. The defendant we Filed July 18, 1955 :; 2 Sheots-Sheet

failed to demonstrate good faith and ree :

liance on the opinion of its patent counsel

rendered on August 29, 1975, that the Wil-

lard patent was invalid. Plaintiffs there-

fore are entitled pursuant to 35 U.S.C.

§ 284 to double the compensatory damages

to be calculated on the basis of a reasonable

royalty for each infringement or induce

ment of infringement by the defendant.

15. The defenses of invalidity of the

Willard patent on the ground of obvious.

ness and of non-infringement were not friv-

olous, nor was the defendant guilty of bad

faith in any other manner in this litigation.

The plaintiffs therefore are not entitled to

reasonable attorney's fees pursuant to 35

U.S.C. § 285.

INVENTOR.

A Mass HitsKeo

e «, e _/%

Batty: cat i an

AMaesornsy3

J. J. WILLARD 2,659,949

FORWARD DISCHARGING TRANSIT CONCRETE MIXER

2 Sheets-Shoet 2

Nov. 11, 1958

' Filed July 18, 1955

43 20

INVENTOR.

OC Saez ViittR2o

4

ip

a

/

BY C4 ihe tr by faz J

Attorn cys

A-44

I ‘ b -| ae - on] : << -

Waited Stetes Patent

P . iD

OcAce | 2,009,049

}

2,859,949

FORWARD DISCHARGING TRANSIT CONCRZTZ

MIXER

J. Jack Willard, Lynwood, Calif.

Application July 18, 1955, Serial No. 522,600

12 Claims. (Cl. 259-161)

This invention relates to transit conerete mixers. Such

concrete mixers comprise a vehicle, means for propelling

the vehicle, a mixer mounted on the vehicle, and means

for operating the mixer both while it is standing in place

and while it is in transit between locations, for example,

between a central concrete mixing plant and various job

locations. More particularly, this invention relates to

a transit concrete mixer with the mixing drum arranged

to rotate about a fixed axis inclincd upwardly toward the

forward end of the vehicle, and provided with one or

more internal helical blades adapted to discharge the con-

tents of the mixcr upwardly and toward the forward end

of the vehicle when said drum is rotated in a dircctioa

Opposite to that uscd for mixing. In its preferred form,

the invention employs a drum which diminishes in cross

section toward its forward end, and which is shaped in

its forward end to provide an elongated passage of re-

duced cross section passing over the driver's location and

adapted to discharge the mixed concrete from a point

above and forward of the driver's location. A further

feature of the invention in its preferred form is a de-

livery chute arrangement pivotally mounted immediately

forward of the driver's location and in full view of the

driver, and adapted to reccive concrete from said forward

discharge of said mixer drum and distribute it to vari-

ous points at the end of said chute in full vicw of the

driver; provision is made for retracting said chute and

its pivot mounting from the driver's view when the chute

is not being employed for concrete delivery. In another

preferred form, the engine and the power take-off for

driving the mixer drum are located over the front axle

and under the upwardly tilted forward end of the mixer

drum, and the driver's cab is carried in cantilever sus-

pension forward of the front axlic.

When large quantitics of concrete are to be used in

a construction job, it is more efficient to mix the wet con-

crete at a central mixing plant located near gravel and

sand pits than to mix it at the job site; also, the quality

of mix produced by a large central mixing plant is likely

to be better. The mixcd wet concrete is then hauled

in trucks to the construction jobs in which the concrete

is to be used, and there poured. During transit, it is

necessary that mixing action be continucd to prevent

segregation of the ingredient materials and undesirable

settling of the wet concrete during transit. It is standard

practice in the transit concrete mixer art to employ a

rotating mixing drum mounted on a truck and driven

by the truck engine or by an independent engine pro-

vided for the purpose. It is necessary, however, that

special clutches and gear boxes be provided if the truck

engine itsclf is to be usca for rotation of the drum in

transit, in order that the dgum may be maintained at a

constant Optimum rate of Sotation regardless of driving

speeds and conditions.

It has been siandard practice to mount the mixer drums

on the transporting vehicle with the charging and dis-

charging opening at the rear of the vehicle. It has not

appeared practical in the past, to attempt to discharge

10

16

20

40

50

70

cczercte over the top of the ¢river's cab and over tks

front hood. Also, many transit concrete mixcrs are ce-

signed to tilt the drum and discharge the conercie by

lowering the Cischarge opening below the level of the

main mixing ssciion. Such tilting and swiveling drums

have the visacvantacges that they require complex and

expensive mechanisms, and ihat tacy tead to be cumaged™

and Put out of comimissioa by the rough usaze in con-

sizuciioa work and by spilling of concrete into tkcir

working parts. The present investioa mskes uss of a

Crum mounicd On a rotary axis of fixed inclination sad

of such construction and design that raatcrisi in the

crum may be mixed by rotating the drum in one dircc-

tion, and said material may be discharged from the drum

without tilting the same by mercly counter-rotatins the

drura. Tais is.accomplished by one or more helicz! vlades

oa the interior surfaces of the drum leading up to its

discharge opening. A drum of this ¢;/3e, and the iaternal

fees helix used in connection with it, is disclosed and

described in United States Patent Reissue 23,320, re-

issucd January 2, 1951 to Carl L. Willard and.J. ‘Jack

Willard. : .

In transit concrete mixers of the type herctofors used,

both charging and discharging must be done at the rear

of the truck and it is necessary for the driver in the

cab at the forward cnd of the vehicle to back into ths

charging location. This is not as casily done with pre-

cision as would be possible if he were able to drive

his trick head on into charging location. Even more

scrious, however, is the problem of properly locating the

discharge opening at the construction job locaion. On

such jobs, the truck approaches are necessarily improvised

and shifted from point to point. The driver musi vest

into each new location with the accompanying difficulties

*of backward stccring and without an adequate view of

the discharge point. Also, because of poor visibility and

poor stccring control when backing up, the driver dares

not approach the discharge point as closcly as if he were

approaching it with the forward end of his vehicle. Tne

driver must exercise special care to avoid backiag onto

a surface too weak to support the truck, or backing com-

pletely over the cdge of the supporting ramp cand into

the construction forms. After pouring begins, the driver

cannot observe clearly all phases of the pouring opera-

tion from his cab, where the engine controls are located.

It is desirable in transit concrete mixers to have the

discharge opening located at a point beyond the wheels so

that discharge can be made over the work, and the reach

of the delivery chute may be extended. However, with

the conventional rear discharge mixer drum, ii is not

practical to extend a discharge rortion of the drum for

any length, as this would unduly increase the length o7

the truck. ;

In the rear discharge type of transit concreie mixcr,

the weight is heavily concentrated on the rear whecls

since it is generally most practical to locate the drura

‘with its largest portion over the rear wheel] arc its dis-

charge opening extended backward from the rear axle.

Such an arrangement not only locates most of the weight

over the rear axle, but locates the center of gravity of

the drum and its wet concrete conteat rather high of

the ground as compared with wiat is usually considsred

good truck leading practice.

Tae rear discharge mixing drum type of trazsit con-

ercts mixer Goes not utilize space wiithia the truck io

greatest cdvaatage. The upiilted end of the mixer drum

is reduced in cross section, but tre space under it is

back of the rear axle and in a location not coavenicntly

used, not only from a structural standpoiat, but also

because such space is ia a location vulnerable to damags

duriog pouring operations. For example, the eniire truck

A-45

2,359,029

= Zz

vy J L 2

chassis must be somewhat longer ia order to accommo- ent Reissue 23,320, and as now well known ia the smith-

date fuel tanks at a point back of the driver's cab, mixing art. 5 Fe te

It is an object of the present invention to provide a Mixed wet conercte is charged to ine iatcrior of drum

forward discharging transit concrete mixer capable of 16 at the central coneretc plant by way of forward open-

being steered head-on up to the point of charging or dis- § ing 27, and discharge from the same opening at the pour-

charging. In conneccticn with this object, it is also cn * iag location delivers concrete to hopper 20 and ince to

odject to make it possible for the driver to convenicnuy Cclivery chute 29 which is pivotaviy mounted at pivot 39

observe discharge of the concrete. 02 swinging supporting arm 31, which is hinge-mounted

Another object is to provide a forward discharge traa- at 52 to the frame of Griver’s cab i3. The lower end of

sit concrete mixcr with both discharge openings and driver 10 delivery chute 29 is suproricd by means of a chaia 33,

location in cantilever support forward of the front axlc, which is attached to a chain bracket 34 mounted on the

thus catcnding the reach of the discharge opening of the top of driver’s cab 13. It will be noted that hinge mount.

mixer drum and the delivery chute while at the same ~* ing 32 is located bclow the range of vision of the driver

time the driver is in his cab with the advantages of safety, through windshicld 35. This location for hinge 32 ‘pin-

full visibility of.the pouring opcration, and convenicnt 15 imizes obstruction of the driver's view but Decessitates

location of stecring cngine controls. removal cf depression of part of front hood 36 as indi-

It is a further object to provide a front discharge tran- cated at 37 in order to permit supporting arm 3i to swip

sit concrete mixer with the weight distributed with the to and from cement cischarge position. er -.

greater percentage on the forward axle than has usually The forward charging and discharging design illustrated

been possible in back discharge mixers, and with the ccn- 20 makes it practical to locate fucl tank <o at the rear of

ter of gravity located nearer the ground than is the casc the vehicle, the position usually preferred because it is

with similar backward discharging concrete mixezs. farthest removed from the driver's cab 13. Sem

Still another object is to provide a forward discharge Preferably, the receiving end of delivery chute :29 is

transit concrete mixer with the uptilted end of diminished __“ shaped in the form of a recciving pan 41 substantially

cross section arranged in a manner which makes it pos- 25 wider than the transverse width of the chute 29 so that

sible to use the space under it for the driver's cab, en- concrete can be discharged from the hopper 23 to recciv-

gine and power take-off, and fucl tanks. ing paa 41 without spilling, regardless of the horizontal

The present invention makes use of a forward discharg- angic through which the chute 29 is swung in the process

ing mixer drum of the fixed inclined axis type, employ- _ of concrete delivery. : te

ing internal helical blades to effect charging or discharg- 99 Figures 3 and 4 are side and front vicws of the transit

ing, depending upon the direction of rotation. concrete mixcr with the supporting arm 31 swung out of

The design and operation of the preferred specific em- the range of the driver's forward vision through wind-

bodiment of the invention will be described in connec- shicld 35, and the chute 29 moved into stowing position

tion with the accompanying drawings, in which: alongside the driver's cab 13, in which it is supported by

Figure 1 is a side clevational vicw of the transit con- means of a bracket 42 mounicd on the truck chassis just

crete mixer with the chute in position for forward dis- back of the driver's cab,

charge of concrete; In Figure 4, the end of internal helical blades 43 are

Figure 2 is a plan elevational view of the mixer as visible, These blades serve to mix the concrete during

shown in Figure 1; transit and, when counter-rotated, to discharge the con-

Figure 3 is a side elevational view of the forward dis- 40 crete from mixcr drum 14 in the manner of an Archimedes

charge transit concrete mixer with the chute retracted out —«-Scrcw, as previously mentioned in this specification, and,

of the driver's range of vision; as is well known in the prior art since the disclosure of

Figure 4 is a front elevational view of the transit con- United States Reissue Patent 23,320.

crete mixer showing the delivery chute in retracted po- Figures $ and 6 illustrate a simple and rugged latch for

sition; ; 45 locking supporting arm 31 in position for discharge of

Figure $ is a plan view of the supporting arm of the cement via delivery chute 29. The plan view of Figure

delivery chute showing it in two positions; and 5 shows the upper end of hinge 32, and, extending from

Figure 6 is a vertical sectional view, taken in the di- _ it, a catch plate 45, which is permanently fixed, as shown,

rection of the arrows 6—6 in Figure 5, showing a latch _ in a position diagonally across hood 36 in front of wind-

for locking the chute support in pouring position. shield 35, whose location is indicated in Figure S$ by

In Figure 1, the numeral 20 indicates a truck with the dashed line 46. As secn in Figure 6, catch plate 45 has

conventicnal front steering axle 11 and fixed rear axle © an_ overhanging lip 47 adapted to engage hook 48 on the

12. The driver's cab 13 is cantilever supported forward end of latch bar 49, which is pivoted to swing in a ver-

of front axle 11. A tilted mixer drum 14 is mounted 4, tical plane about pivot pin 50 mounted on the surface

with a fixed axis of rotation 15, being journaled at rear of supporting arm 31, which is shown in Pigures 5 and 6

bearing support 16 and having its forward end carried in position for cement delivery. When delivery chute 29

on bogie wheels 17, which contact the circumfercntial is stowed on bracket 42 as illustrated in Figures 3 and 4, .

track 18 encircling the forward part of mixer drum 14, _— supporting arm 31 is swung out of range of forward vision -

The mixer crum 14 is comprised of an enlarged mixing 60 of the driver as indicated by the dashed lincs 31A in

section 19, a frusto-conical discharge section 20, and a Figure 5.

discharge conduct section 21. While I have illustrated and described what I now Te-

Aa engine 22, secn in dashed lines in Figure 1, is pref- card as the preferred embodiment of my invention, the

erably located just over front axle 11 and under the coni- cozsiruction is, of course, subject to modificziions with-

cai section 29 cf the mixcr drum 14, is used to propel 65 Out ccpsrting from the spirit aad scope of my investioa.

truck 10 (ordinarily by rear wheel drive) and, by means 2, thercsore, do not wish to restrict snyself to the particu.

of a pewer take-off not shown, to engage a icrge sexr tar form of construction illusircied ace cescribed, dut

26 mounted en the rear end of mixer drum 14, and io. Cesire to avail myself of all modincations tsat may fall

drive mixer drum i4 in cither mixing or discharging di- Within the scope of the appended claims. ;

rections of rotationyby means of a power take-off 23, 79 aving ‘hus ceseridcd a saVveriion, what I claim and

shaft 24, chain 25, and large drive gear 26 mounted oa desire to sccuze by Letters Pstest is:

the rear end of mixing drum 14. Mixing and mixcr 1, in a transit concrete mixer of the type comprised

drum 14 and discharge therefrom are accomplished by of a transporting truck and a rotatable drum mounted on

internal helicss] blades and ssiccted by means of direction said truck with a fixed tilicd axis of rotation and in-

as fuily disclosed in the previously mentioned U. S. Pat- 75 ee

A-

£,550,0<9

; u

ia sic crum er discharee it from 22i3 Crusa coseading cross-section scar the rezr axle of said tracsit eines, a

upoa ta. diction of rotation, te cozbdincztion of: 2 cosicel Giscisarge sectioa forwara of said nizing coctioa

Sriver’s location suspended forwerd of tbe front cle of ond dimizishics in cress-cectica to pass over sid Csiver’s

csic rues; the micer Uzum as Ceseribed havirs its xis Iscatioa; engine mesns for said transit mixer lecsted 2t

Of roistion lossitccinal with reszect to said truck isd 6 least ia major part Sack of said dziver'’s lecation ane

Ulied uawerdiy towards the forward ead, said mixer drura uxcer said coaical discl.arge section; cnd removable chuzz

desing suproried in tized bearings in said truck end bciag tacans for continuously possins concrete from szidé vis

comprscd of a mixing section of enlsrsed transverse chazge of said mixing drum away frora ccid Criver’s loce-

C7083 Section locaicd near the rear axle of ssié fuck, a tion.

cosicsl uischarje sectioa forward of said mizizz ssctica 105. Za a transit cocerete mixes, the con:bination of: a

£aé Cisinisiia; ia transverse cross section to a poise truck chassis; a forwerd Criver’s iocsiion mounted on

meor said Criver's iccaiion, aad 2 discharse cocduit lence SaiG chassis ond ccaptcs to provics the driver with a field

iss trom Ge forward end of said conical discbcrse cece C2 sorware vision; a plurztity of drum-susportis3 deczinzs

toa over tis driver's location and openiag at = poiat mounted ia fixed positions oa said chassis behind seid

Sdove ond forward of the driver's location; raovadle chute 15 Gzivec's Icccitioa; a mixing Grum rotatably carried ia suid

&.cacs sor passing concrete from the forward discharzs bearings with a fixed axis of rotztion inclined upwarcly

cxd of said Crum to a location visible from said driver's toward the forward end of said chassis, said coum beiag

location; sad ergine means for said transit concrete acapied io be selectively rotated ia both directions ar¢*

raizer supported in the bed of said truck and located ct =aviag an internal helical blade adapted, while said drum

lezst in mzjor part under said conical discharge section. 20 is zctated in a given dircciion in said bearings, to dis-

2. Ia a transit concrete mixer, the combination of: a cherge concrete from a dischurse opening at the upper

raixer drum supported on said transit concrete mixer with forward end of said drum, said drum dcing comprised of

= fixed inclised axis of rotation longitudinal with respect = mixiag section of enlarged, transverse, cross-scctior

to ssid mixer end having its upper end toward the for- behind ssid driver's location, a conical section forward’ of

ward exd of said mixes, said drum being adapicd to be 25 szic mixing section and having a forward extension of

. Ssiectively rotated in both directions, and having a ieii- Giminished cross-scctioa extenciag over said driver's loca-

col blace thercia for charging, mixing, and cischar-ing, tion whea said drum is cerricd in said bearings as aiore-

ssi a discharge opening at the upper forward end of said; power mezns for rotating said drum, said power

said mixer crum; a driver’s housing at Icast partly csder racaas bcing mounted in fixed position on said chassis and

the upper forward end of said mixer drum, said driver’s 30 being reversible where>y to rotate said drum in onc cirec-

Bousiog providing the driver with a ficld of forward tion to discharge concrete therefrom as aforesaid, or

vision; engice mecns under said uptilted forward end of sclectively in the other direction to mix conerete in said

ssid czum, back of said driver's housing, engaging the crum; and removable chute means for continuously pass-

Tear exd of said drum to rotate the same; a supporting ins concrete from said discharge opening of said Grura

=m! counicd on said transit concrete mixer by mcazs 35 away from said driver's location.

of a bisse mousting, and adapted to swing to positions — 6. Ia 3 transit concrete mixer, the combination of: a

iz or out of said driver's ficid of forward, visioa; and 2 truck caassis; a forward driver's location mounted oa

coscrete delivery chute for receiving concrete from ths said chassis and adapted to provide the driver with a field

Ciseharge opening of szid mixer drum and delivering it of forward vision; a plurality of drum-supporting bear-

to the point of pour, said chute being supported at least 0 ings mouated in fixed positions on said chassis behind said

in part on said supportiag arm. Griver's location; a mixing drum retatably carried in said

3. in a transit concrete mixer, the combination of: a becrings with a fixed axis of rotation inclined upwardly

treck chassis; a mixer drum rotatably supported oa fixed toward the forward end of said chassis, said drum being

dsariscs in said chassis with a fixed axis of rotation adapted to be selectively rotated in both dircctions and

izciined upwardly toward the forward end of said chassis, 45 having an internal helical blade adapted, while said drum

ssid mixer drum having a mixer section of enlarged cross is rotated in a given direction in said bearings, to dis-

ssciioa ia its lower portion, and a discharge conduit scc- charge concrete from a discharge opening at the upper

tion of substactially smaller transverse cross section at forward end of said drum, said drum being comprised of

its forward end; a driver’s location on said chassis at a mixing section of enlarged, transverse, cross-section

Isast partly ucder said forward end of said drum; hop- 60 behing said driver's location, a conical section forward

per mcans adapted to reccive concrete from the discharge of said mixing section and having a forward extension of

' Opening at the forward end of said discharge conduit diminished cross-section extending over said driver's lo-

section; internal helical blades within said mixer drum cation when said drum is carried in said bearings as afore-

2dapied to carry concrete from said mixer section and said; power means for rotating said drum, said pow..

Gischarge it from the discharge opening of said discharge 55 means being mounted in fixed position on said chassis

conduit section to said hopper means, when said drum is _ and being reversible whereby to rotate said drum in one

rotated in a proper direction; engine means mounted in direction to discharge corcrete therefromn as aforesaid,

aixed position in said chassis and drivingly connected to or selectively in the other dircction to mix concrete in

said drum to rotate the same as aforesaid; a chute-sup- szid drum; and chute means carried oa said chassis on a

>orting arm disposed obliquely to the horizontal and 60 hinge mounting located forwardly and to one side of said

hiage-mounted at its lower end to said transit concrete driver's location, said chute means being adapted when

mixer; ard a concrete delivery chute supported at one in a discharge position to continuously pass concrete

. end oa the upper end of said supporting arm, and adapted from the discharge opening of said drum away from sziu

to receive cozcrete from said hopper means and discharge dziver's position and being swingadle ca said hinge mount-

said coscrese io any one of several Dour points. 65 izg to a transit position whereia said Scid of vision is

4. Im 3 teozsit concrete mixer, the combination of: 2 usobscured.

forwire driver's location adzpted to provide the criver 7. In a transit mixer, the combiaction of: a truc':

with a Ss! of forward visioa; s mixing drum mouzicd Chessis; 2 snixss asus segzetiec o3 sais . .u3’g 1.8

Od Sa:c irzsit coacreie mixer with a fixed axis of rois- fixed incline axis of roiacon longitudinas with respec: io

tion isclizeé upwardly toward the forward ead of said 70 suid chassis and aaving its upper end toward the forward

raixes, said drum being adapted to be selectively rotated eng Of ssid chassis, ssid drum being adapted to be se-

ia bows Circetioas aad haviag an internal helical blade leciively rotated in both directions and having a helical

ecapice to cischarge conercte from a discharge opexiaz blace thercin for charging, mixing, and discharging, and

&t the upper forward end of said drum, said drum being a discharge opening at the upper forward end of said

comprised of a mixing section of enlarged transverse 75 drum; a driver's housing mounted on said chassis and at

A-47

. 5,009,029

”?

lszst parily under ths upp<r forward end of said C222, 2/5

Eziver’s housing providing ths cziver with a feta o. scz-

ward vision; power means mounted on said chassis sc.

drivirgly engaging the recrword end of said dru=. .0 ro-

tate the same as aioresaid; 2 supporting arm mounicc on

said chassis by scars of a hings mounting, anc adapicd

to swing to positions in and out of said Griver’s ficld of

forward vision; and = conercte delivery chute for re-

ceiving concrete from the disch=rge opening of said drum

and delivering it to a point of pour, said chute being

supported st least ia part oa said supporting arm.

%. A tronsit concrete mixer, including: a truck having

a cab; a rotary mixin; drum, one end of which is o7==

to receive and discharges coacretc; means supposting ssid

drum in fixed positioa on the truck behind ssid cad snd

with the open end thereof disposed substantially at the

10

“~~

Ww

Ssscesé end Csssssfs seg rsseas Sxsd 03 t:s wuck fees

Totatias said C2uz3.

33. 4. transit cozercts rricer, iacluciss: s Gust: Sevins

2 Criver’s station at ons cad tierecs; a rotscy taizias crux,

o=e cad of which is opsa to receive sod Cisshs. s coa-

Crete; mesas supporting sais Escm in Gesc ys-i.iva ca

the truck wid ths open cad Stsrcot Cisposse ccusissticily

st ths sorse ond of was tevels cs is Gis Cives’s cusuiss es6

ot s itner elsvetica wcen safe esiver"s ce-.2.ss; Scans c=

the teuctz: fer sotatics seid Gruss &.. . 3 issuacS eSuss

fos conveying cossrete Cissussyed isom ssié Cum, said

_ huts whes ia onsrativs posucs, vsiss Jeswercty ex-

15

forward end of the cab; and micans fiaed oa the truck -

for rotating said crus.

9. A transit concrete mixer, including: a truc’: having

a driver's station at one cad thercof; a rocary mixing

drum, one end of which is open to receive aad dischargs

conerete; means supporting said drum in fixed posiiioa

on the' truck with the open crd thereos disposed sudsian-

tially at the same end of the truck as is the driver's siziioz;

mcans on the truck for rotating said drum; acc mec=s

for conveying concrets discharged from said drum cx-

tended, when in operative position, beyond said Crivez’s

station whereby an operator situated in the driver's st=iioa

may control the truck to position the conveyics mans

in a precise predetermined locatice. ;

10. A transit concrete mixcr, including: a truck having

a czb adjacest the front end thereof; a rotary a.izing

drum, onc end of which is open to reccive and dischsrgs

concrete; means supporting said drum in fixed position

* 6n the truck behind the cab with the rotary axis thercof

icclined upwardly and forwardly and with the open end

of the drum disposed above said cab substantially at the

texézd beyond said dsiver’s station wacreoy <a Czsretcr

situsicé in the drives’s statica msy coatro! ts trick to

zosicion the extended crd of said chuis is a precise pre-

determin: -. location.

12. A woasit conerete mixes, iaciuding: = tess havin:

a sd; a rGiasy mizing Crum, Ons 6x6 Of Woied is C723 to

recsive and Ciscikcorge cCacre‘s; mcaas supporuss cic

Grum in fixed position oa ube truck behice cic esd and

with tho opsa cad u:crsof Cispossa substantistly ct the

forward ene of the cab; means fixed oa the truce for

rotating said drum; an inclincd ckuts pivotally moust=d

On saic truck: in frost of said cab and haviag.a reistively:

igh proximal end positioned to recsive cozerete som Ws

ozen end of said .cum cad = relztively low Cistal cod

extending forwardiy of sé cod whsa in op<ctive po-

TrcSerenses Cu<2 $3 3 Ss of Sis accszs

UNITED STATES 24.7TENTES

_ 2,327,473 Wegner ct ol Aus 2, 22%

2,851,935 Willard ixe. &, 1545

2,672,327 Oury dfx 16, 3254

2,706,623 Styes Apz. 19, 1955

2,729,435 Sarbers ct al 7 sa. 5, 1955

.

:

.—.- a.

~¢,

“it

3 +

eo

In addition to resisting 35,.00-lo. stresses.

double-wall X-A-R drive wheel shruys off aora-

- A~44

Young:

Essex:

Young:

Essex:

"You have never been now, you.are not

now, and never have been, in the design

business. You are not an expert in the

design of front, of front discharge transit

mixers?"

"That is correct." (647A)

kkk

"I call your attention to the fact that in

your qualifications there is a section on

design, and throughout the application there

refers to the field of transit mixer trucks

making concrete, serving as a consultant,

and you put behind the reference to design,

zero time. That is correct, is it not,

that is your handwriting?" (1282A-1)

"That is correct." (648A)

a

“Did you ever undertake any study of any

documents testified to by any engineer

in the form of any documents that have

‘been marked? Did you ever take the trouble

to do that?"

“No, sir." (654A)

xk**¥*

"Have you ever purchased a front discharge

concrete mixer truck?"

“We, six.”

"Have you ever tested one?"

"No, sir." (653A)

kk *

"Now, these were all references that were

given you by an attorney, were they not?"

yo

Essex:

Young:

Essex:

Young:

Essex:

"That is correct."

"Tt is not the result of any search which

you did, is it?"

"No,Sir." (652A)

e& &

"Did you ever compare any opinion that

you might offer to the court today with

an opinion of an expert employed either

by Rexnord or by Mack Trucks?"

"No, Sir." (653A)

Considering the foregoing, it is apparent that Essex had

never been a designer of anything (much less concrete mixer trucks).

Essex had not even a perception of the problem of the art at the

time of the invention (744A), so how could he testify as to a solu-

tion? He failed to understand the advantages of a front discharge

mixer, unlike Mr. May, the Mack Vice President, who followed Richard

Essex to the stand (720A). Essex had never undertaken any studies

in connection with the lawsuit, confined himself to elements of

prior art selected by the defendant's counsel, had never even consulted

the technical tests and studies that Mack had which were contrary

- to his testimony, and had never even considered the interpretation

of the oxlox art given by the Patent Office (673A). Essex never

tested or, indeed, even examined the test results of Mack's front

discharge mixer, or even asked or took the trouble to ask for any

of their test results or examined their product (657A).

pate

As a matter of fact, Mack's witness, Essex, on cross-examination,

actually testified favorably about the revolutionary character

of the Willard invention. The record speaks clearly:

Young:

Essex:

Young:

Essex:

Young:

Essex:

Young:

Essex:

Young:

Essex:

This text is long and has been trimmed here. Open the source document for the complete record.