# Appendix — Sims v. Mack Trucks, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385006_1660%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1980 - **Citation:** 445 U.S. 930 ## Text 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. A-1 A- 2 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 A- 3 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 A4 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 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 | = e——_ = _—— = > . ie op 2 ~~ SS Ss SS : “= i. CARS, “13 SW J9 ' Se/= C/O J “Se 555, eS s zo cf S : g Js Ss = “0 53 F 52 an pe P-) 63 os | ti IS ; TF =| fi wie ff > 69 Ni - a = on SS T= 9 aw Wyott" 36 58 Fig. 2 459 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 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 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