Appendix — White v. Harrington Manufacturing Co.

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APPENDIX A

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF FLORIDA

TALLAHASSEE DIVISION

HARRINGTON MANUFACTURING _ )

CO., INC., )

) TALLAHASSEE CIVIL

Plaintiff, ) ACTION

)

VS. ) NO. 1443

)

IDAS B. WHITE, ) MEMORANDUM

) DECISION

)

Defendant. )

)

PRELIMINARY STATEMENT OF THE ACTION

Plaintiff, Harrington Manufacturing Co., Inc., is a North

Carolina Corporation and owner of the United States Patent

No. 3,327,745, issued on June 27, 1967. The defendant is a

resident of Florida. This is an action for damages to compensate

for an alleged infringement, an injunction against further

infringement and an award of costs and attorneys’ fees. The

answer of defendant denies infringement and asserts as an

additional defense the invalidity of Patent No. 3,327,745.

Additionally, by counterclaim the defendant asks that the

Court adjudge that the patent of plaintiff is invalid and that the

Court declare the right to defendant to continue his operations

without interference by or from plaintiff.

, On October 5, 1966, Fred W. Meece and Frank B. Dew

made application for a patent of a tree cutter device resulting in

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the issuance of the patent on June 27, 1967. The rights of the

inventors were assigned to the plaintiff. A copy of the patent

including the specifications, claims and drawings are attached

hereto. There are ten (10) claims set forth in the patent and it is

specifically alleged by plaintiff that claims 1, 2,5, 7 and 10 are

infringed by defendant. The claims 1 and 2 are “independent”

claims, whereas the remaining claims are ““dependent” claims.

FINDINGS OF FACT

{1] In mid-1965, Meece and Dew made a decision to

attempt to improve upon the art of felling trees. They contend

that they were unaware at this time that many other persons

and companies had already developed “tree shears” for cutting

down trees, though they were familiar with the many problems

of known tree cutting operations. Although Meece and Dew

claim that they were unaware of prior art, because of the

obvious similarity of the Meece-Dew shear head to shear heads

found in prior art, this Court finds that Meece and Dew were

familiar with prior art in the field.

[2] The Meece-Dew invention described in the patent in

suit involved a combination of structural components to create

a hydraulically operated tree shear for mounting on the front

end of a tractor or other vehicle. Meece and Dew do not claim

to have conceived the idea of providing a tractor mounted tree

shear inasmuch as the patent expressly states in Column 1:

“The basic idea of mounting hydraulically driven tree

shears on a tractor and using it to cut down trees is

now about thirty years old.”

The combination arrived at by Meece and Dew includes a “shear

head” consisting of a fixed jaw having a shearing blade pivotally

mounted adjacent to the jaw for movement toward and away

from the fixed jaw under the control of hydraulic cylinders.

The “shear head” is mounted on the front end of the tractor.

The front end mounting of the shear head is accomplished by

the use of a “C-frame” consisting of two parallel supporting

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arms rigidly interconnected to one another at their front ends

by an elongated horizontally disposed beam that extends

completely across the front end of the tractor. Each of the

parallel supporting arms is pivotally attached to the tractor at

its rear end and the “C-frame” is adapted to be moved up and

down under the control of a hydraulic cylinder. The shear head

is also pivotable being connected to the horizontally disposed

beam by pivotable members. This pivotable interconnection

between the shear head and the elongated beam is claimed to be

an important feature of the novelty of the invention permitting

the arrangement to achieve the “basic concept” which is

described as a means for varying the angle of the plane of the

jaw members with respect to the beam. Great emphasis is placed

upon this “basic concept” and it is said to be adjusted through

cooperation between the pivotal interconnection and the

“flexible interconnection means.” In the drawings contained in

the patent, the“flexible interconnection means” are shown to

be a cable and a chain. Other alternative flexible inter-

connection means are described in the specifications and the

claims. It is noted that in claim 10 of the patent, hereinafter

referred to as the “Meece patent”, that one of the alternative

means “comprises an adjustable hydraulic cylinder.”

[3] The claims in suit constitute two independent

claims! and three dependent claims.? The independent claims

contemplate combinations of structures comprising a particular

type of shear head, i.e., having a pair of fixed jaw members, a

cutting blade pivotally mounted with respect to the fixed jaw

members and a blade for moving the cutting blade relative to

the jaw members. In addition, the claimed combinations of

structure include a special front mounting assembly as was more

fully described in paragraph 2 of the Findings of Fact. The

claims in suit in addition to defining in some detail the special

shear and special mounting arrangement employed, further

' Claims 1 and 2

2Claims 5,7 and 10

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define a particular structural arrangement for interconnecting

the defined shear head to the defined mounting structure. This

system functions as the result of interaction between the pivotal

connections and the “flexible interconnection means.”

[4] The combinations recited in claims 1 and 2 are

defined in further detail in claims 5, 7 and 10:

(a) Claim 5, which depends from claim 2, states that the

means for raising and lowering the beam comprises a hydraulic

cylinder and piston.

(b) Claim 7, which also depends from claim 2, states that

the “flexible interconnection means” includes an upstanding

post and that “a flexible element” extends between this

upstanding post and the fixed jaw of the shear head.

(c) Claim 10 depends from claim 1 and says that the

“flexible interconnection means” comprises ‘an adjustable

hydraulic cylinder.”

[5] It is plaintiff's position that the combination of

elements defined in each of claims 1 and 2 and the more

detailed combinations of claims 5, 7 and 10 are embodied in the

accused White tree shears.

[6] In the late summer of 1965, Meece and Dew began

building a tree shear device in an attempt to find an effective

means of cutting down trees. By September, 1965, they had

completed and had in use two tree shears. This initial device

included a conventional cutter head or shear head in which the

cutting blade was hydraulically [sic] pivoted with respect to a

pair of fixed jows. Additionally, the shear head was pivotally

attached to a cross-beam between a pair of parallel arms in the

form of a C-frame and was supported off the ground by a chain.

[7] Meece explained at trial that when he and Dew

adopted the chain as the support linkage for the shear head in

their tree shear, they did not want a rigid connection. They

wanted a support linkage which would “give”. The “flexible

interconnection means” of the Meece patent tree shear was

designed to perform at least two functions: to permit free

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pivotal movement of the shear head and to serve to limit the

downwardmost position of the arc through which the shear’

head could move.

[8] Meece and Dew had by December, 1965, built a

third tree shear which closely resembled the initially built

device except that the chain supporting linkage was replaced by

a combination cable and steel bar with adjustment holes.

Plaintiff, having learned of the Meece-Dew shear, entered into a

contract in February, 1966, with Meece and Dew whereby

plaintiff would manufacture and sell this device and attempt to

patent it. By April, 1966, plaintiff commenced the manufacture

and sale of the tree shear which was substantially identical to

the Meece-Dew machine and included the combination cable

and steel bar with adjustment holes as the supporting linkage

between the shear head and mounting assembly to provide a

floating arrangement for the shear head.

[2] After manufacture of the shear had been commen-

ced in February, 1966, plaintiff by April and May, 1966, began

shipment and delivery of actual equipment. In June, 1966, the

shear had reached northwest Florida and was displayed in

Panama City, Florida.

[10] For many years defendant White, a machine shop

operator in Blountstown, Florida, had designed and built for

the logging industry numerous pieces of equipment including

hydraulically operated equipment.

[11] In May, 1966, defendant met with certain third

parties who requested that he build several hydraulically

operated tree shears which could be mounted on the front end

of tractors. Defendant then started designing and building the

requested hydraulically operated tree shear which was field-

tested on July 30, 1966. Simultaneously with construction of

this tree shear defendant was building another device which was

demonstrated in Macon, Georgia, in late August, 1966. These

devices were soon followed by a third device in September,

1966, which was sold by defendant to John Davis who accepted

on behalf of his company, Georgia Timberlands.

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{12] The defendant’s tree shear included a conventional

shear head which was pivotally mounted to the tractor C-frame.

Although his first unit included three chain links as part of the

support linkage, defendant, upon field-testing the machine,

found the chain links unsatisfactory and eliminated the flexible

component in the support linkage and replaced it with a rigid

interconnection established by a double acting hydraulic cylin-

der as the sole element of the support linkage.

[13] As constructed the tree shear of the defendant White

is approximately one half the weight of the tree shear of the

plaintiff.

[14] Defendant gave four reasons for his adopting a

double acting hydraulic cylinder as the sole element of the

supporting linkage. First, he wanted a complete power con-

trolled machine which could apply power to any part of the

tree shear unit and be controlled from the vehicle cab.

’ Secondly, he wanted the tree shear to fold up and make the

entire vehicle shorter in length for increased maneuverability.

Next, he wanted to be able to apply a downward pressure to the

shear head in order to crush brush, snow, etc. around the tree

trunk so that the tree could be sheared as close to the earth’s

surface as possible. Lastly, he wanted to provide means to move

readily the center of gravity of the entire machine as far back as

possible for travelling purposes.

[15] The defendant’s tree shear was also equipped with

“toter brackets” which are objects welded on the C-frame and

serve to limit the downwardmost position of the arc through

which the shear head can pivot. The shear head is designed to

engage the “toter” or stop brackets before the piston head

bottoms in the support cylinder. This arrangement insures that

the shear head is locked when in its downwardmost position by

reason of the downward force to the shear head applied by the

support cylinder against the brackets; too, it provides a safety

feature in that the weight of the shear head is carried by the

“toter brackets” and not by the double acting hydraulic

cylinder.

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[16] After the first field demonstration of the White tree

shear in late July, 1966, Joseph Harrington, President of

plaintiff corporation, learned of defendant’s development work

and in the following month he visited defendant’s shop in

Blountstown, Florida. During this visit defendant explained his

tree shear to Harrington who in turn requested defendant to

build hydraulic cylinders to be used by plaintiff to actuate the

blade in its tree shear. Both parties stated their intention to

secure patent rights on their respective tree shear machines.

[17] During this time plaintiff had photographs taken of

the first White tree shear and one of plaintiff's agents observed

the construction of some of defendant’s first tree shear

machines. The application which issued into the Meece patent

was not filed until some forty days after the first Harrington-

White meeting and some time after Harrington had full

disclosure of defendant’s tree shear.

[18] Contact between plaintiff and defendant did not

cease with the August, 1966, meeting. Other meetings culmi-

nated in plaintiffs attempt to purchase the White invention and

patent rights.

[19] In 1968, White sold his invention and patent rights

to Timberjack Machines, Ltd. At the time the White contract

was negotiated and signed, Timberjack was aware of and had

evaluated the Meece patent in suit.

[20] In the fall of 1968, plaintiff learned that defendant

had sold his invention and patent rights to another company.

Plaintiff then filed this lawsuit and for the first time began

building a tree shear which included a double acting hydraulic

cylinder in place of the flexible cable for the supporting linkage.

[21] The Examiner in the United States Patent Office

who considered and approved the Meece patent application also

considered and approved the White patent application. The

Meece patent was considered by the Patent Office Examiner

before he granted the White patent.

[22] The two Busch patents and the two McFaull patents

were before the Examiner during the prosecution of the Meece

patent application. The Examiner found that the claims in suit

were not anticipated by or rendered obvious to any of these

patents taken alone or in any logical combination with one

another.

[23] In tree-cutting systems constituting the prior art at

the time the Meece invention was conceived, there was no

combination of shear head, mounting structure and _ inter-

connection of the two which achieved the same operative result

with the degree of simplicity, efficiency and commercial success

as did the patent in suit. In short, none of the arrangements

contained in those patents either disclosed as prior art to the

Patent Examiner or cited as references by him contemplate a

pivotal mounting of the shear head used in interation with a

‘flexible interconnection means” as used in the Meece

patent.

[24] The defendant tree shear employs a double acting

hydraulic cylinder as the sole element of the supporting linkage

between the shear head and mounting assembly. The testimony

of the qualified expert witnesses establishes by a preponderance

of the evidence that the double acting hydraulic cylinder and

circuit as used in the White tree shear is a rigid and not a

flexible interconnection. One of plaintiff's own experts admit-

ted that a double acting hydraulic cylinder in a properly

designed circuit is “locked in position.”

[25] Even though such factors as cavitation and entrained

air may be involved in double acting hydraulic cylinders and

circuits, the preponderance of the evidence established that the

presence of these factors is undesirable and is avoided in

properly designed hydraulic systems. The Court finds that the

small degree of movement which might be encountered as a

result of these factors in the double acting hydraulic cylinder

support linkage of defendant’s tree shear would be insufficient

to allow the shear head to “‘freely move” or “‘give” as required

for the “flexible” support linkage of the Meece patent and the

Meece patent claims.

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[26] Plaintiff claimed that defendant copied the Harring-

ton TF-1 tree shear. Even if White did copy the work of Meece

and Dew in White’s first two shears, the White shear as finally

developed has a rigid connecting member. The earlier White

shear was not patented by White.

CONCLUSIONS OF LAW

VALIDITY

{1} This Court has jurisdiction of the subject matter in

suit and over the parties. Title 35, United States Code, Section

281; Title 28, United States Code. Sections 1338(a) and

1400(b).

[2] The plaintiff, Harrington Manufacturing Company,

Inc., is.the owner of the entire right, title and interest in and to

the patent in suit and has the right to maintain suits for

infringement of such patent.

[3] The paramount issues for decision by tbe Court in

this case are simply whether United States Patent No.

3,327,745, owned by palintiff is valid; and if valid, if it has been

infringed by the tree shear made and sold by defendant. It has )

come to be recognized, however, that of the two questions,

validity has the greater public importance. Sinclair and Carroll i

Co., Inc. v. Interchemical Corp., 325 U.S. 327 (1945). For this j

reason this Court considers initially the issue of validity.

[4] In Beckman Instruments y. Chemtronics, 428 F. 2d

555, 561 (Sth Cir. 1970), cert. denied, U.S. (1970),

the Court stated:

“The three germinal tests of patent validity are

utility, novelty, and nonobviousness. ***. Section

102, which pertains to novelty, requires that the f

patentee be the original inventor of the object :

claimed in his patent, and also that the invention not i

have been known or used by others before his

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discovery of it. Thus one obviously cannot be the

original inventor if someone else had described or

used the subject matter of the claims before the

earliest moment to which he can trace his in-

vention. ***. Furthermore the prior art is to be

considered as covering all uses to which it could have

been put. Thus a patent claiming a device that has

already been put to use, albeit in a different manner,

is invalid; in order to be valid over the prior art, it

must claim not novel use, but novel con-

ception. ***.”

[5S] Under Title 35, United States Code, Section 282,

the patent in suit is presumed to be valid. In the absence of

clear and convincing evidence to the contrary, the law presumes

that the Patent Office correctly issued the patents. The

Spee-Flo Mfg. Corp. v. Braniff Airways, Inc., 430 F. 2d 74 (Sth

Cir. 1970); Stamicarbon N. V. v. Escambia Chemicals, 430 F.

2d 930 (Sth Cir. 1970); Hunt Industries, Inc. v. Fibra Boats,

Inc., 299 F. Supp. 1145 (S.D. Fla. 1969).

{6] The burden of invalidity rests on the party asserting

it. Title 35, United States Code, Section 282:Hunt Tool Co. v.

Lawrence, 242 F. 2d 347, 351 (Sth Cir. 1957).

[7] In The Spee-Flo Mfg. Co., supra, at 81, it was said

that:

“fu niess the subject matter of a patent involves both

; novelty and invention, the patent is invalid, for mere

L novelty without invention is insufficient.”

{8} The patent in suit is not anticipated by the prior art.

In this litigation the most pertinent prior art includes the Busch

patents, Nos. 2,876,816 and 3,059,677, the McFaull patents,

Nos. 2,697,459 and 2,565,252, the Burke patent, No. 638,553

and the French patent, No. 1,313,995. All of these patents were

before the Examiner in the United States Patent Office during

the prosecution of the Meece application. The Examiner in his

allowance of the claims was of the view that the claims in suit

were distinct from these four references and that they were not

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anticipated by or rendered obvious by any of these patents. In

this light, the presumption of validity is strengthened where it

appears that the Patent Office fully considered and distin-

guished the prior art patents principally relied upon as

anticipation. Jeoffroy Mfg. Inc. v. Graham, 219 F. 2d 511 (Sth

Cir. 1955).

[9] Defendant has failed to overcome the presumption

of validity by clear-and convincing evidence to the contrary.

[10] It should be emphasized that the invention in this

suit involves a combination of structures. “‘It is well settled that

a combination is patentable, though each of its constituent

elements was well known in the prior art, if the combination

produces a new and useful result and would not have been

obvious at the time of the invention to a person having ordinary

skill in the art... .” Williams Bit and Tool Co. v. Christensen

Diamond Produce Co., 399 F. 2d 628, 632 (Sth Cir. 1968).

[11] In examining patent claims the Court should “‘con-

strue them narrowly so as to avoid the prior art if such a

construction can reasonably be adopted.” Beckman Instru-

ments, supra, at 561.

[12] Although certain constituent elements of the Meece

patent were known in the prior art, the flexible interconnection

means of the Meece patent produced a new and useful result

and did not anticipate the prior art. It is this act of selection

and arrangement of elements which, if it overcomes defects in

the prior art, produces the invention and renders it novel. B. G.

Corp. v. Walter Kidde & Co., 79 F. 2d 20 (2d Cir. 1935).

[13] The Court in Johns-Manville vy. Cement Products,

428 F. 2d 1381, 1385 (Sth Cir. 1970), in reaching its

determination that the patent in suit was rendered obvious by

the prior art said:

“In Graham v. John Deere Co., 1966, 383 U.S. 1, ***

the Court construed the language of 35 U.S.C.A.

§103 to mean that a patent may not be obtained.

although the invention has not been identically

disclosed in the prior art, when the differences

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between the patent and the prior art are such that

they would have been obvious to a person having

ordinary skill in the art to which the subject matter

pertains. ***.

“In determining the legal question of the validity or

invalidity of a patent due to obviousness Graham

requires that the Court establish the scope and

content of the prior art, the differences between the

prior art and the claims at issue, and the level of

ordinary skill in the pertinent art at the time of the

invention under attack.”

[14] The Meece invention at the time of its inception

exceeded the level of ordinary skill in the pertinent art and was

an unobvious advancement in the art. When compared to the

prior art the Meece invention experienced greater commercial

success than any of its forerunners had enjoyed. The Court may

consider this circumstance in its determination of whether the

patent in suit is rendered invalid as obvious. Graham v. John

Deere, supra; Kardulas v. Florida Machines Products Co. et al,

___ F, 24 ___.,, 5th Cir. 1971 [Slip No. 29514, February 9,

1971).

[15] This Court concludes that the Meece patent is valid

and is neither anticipated by nor rendered obvious by the prior

art.

INFRINGEMENT

[16] The tree shear disclosed in the Meece patent

incorporates a supporting linkage which interconnects the shear

head and the mounting assembly. As illustrated in the Meece

patent drawings, this supporting linkage can be either (1) a

chain or (2) a cable and bar combination. The claims of the

Meece patent in subsection (f) of claim 1 and subsection (d) of

Claim 2 define this supporting linkage as a “flexible inter-

connection means” and then recite specific functions to be

performed by the supporting linkage in the claimed

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combination. Accordingly, ‘the first inquiry on the issue of

infringement is whether the word “flexible” in the phrase

“flexible interconnection means” should be given its normal

and customary meaning and thereby preclude the Meece patent

claims from encompassing a rigid supporting linkage, such as a

double acting hydraulic cylinder as used in the White tree shear.

A second inquiry, independent of the first, is whether the

double acting hydraulic folding cylinder of the White tree shear

performs the specific functions required by 1(f) and 2(d) of the

Meece patent claims for the supporting linkage.

[17] The issue of patent infringement is a question of

fact. Sterner Lighting, Inc. et al v. Allied Electric Supply, Inc.,

431 F. 2d 539 (Sth Cir. 1970); U. S. Industries, Inc. v. Otis

Engineering Corp. 254 F. 2d 198 (Sth Cir. 1958). The burden

of proof in connection with the issue of patent infringement

rests upon the patent owner to establish that the accused

structure falls within the scope of the patent claims. Phillips

Petroleum Co. v. Sid Richardson Carbon & Gasoline Co. et al.

416 F. 2d 10 (Sth Cir. 1969); Corning Glass Works v. Federal

Glass Co., 239 F. 2d 674 (6th Cir. 1956): Marvin Glass &

Associates v. Sears Roebuck & Company, ___ F. ae

167 USPQ 33(S.D. Tex. 1970).

[18] In order for there to be infringement of a combina-

tion patent claim, such as the Meece patent claims in suit. the

accused structure must include each and every element or its

equivalent described in the patent claim. Reed v. Parrack. 276

F. 2d 784 (Sth Cir. 1960): Stewart-Warner Corp. v. Lone Star

Gas Company et al., 195 F. 2d 645 (Sth Cir. 1952).

[19] A patent which has no pioneer status but is at most

an improvement patent in a crowded art is entitled to

Protection only within the narrowest limits. Stewart-Warner

Corp. v. Lone Star Gas Co., supra. See also Big “G”’ Distributing

Co. v. Air Cleaner Service Co., 179 F. 2d 122 (Sth Cir. 1950).

[20] Patents in a crowded art are limited ones and the

claims thereof must be narrowly construed. Sterner Lighting,

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Inc. v. Allied Electric Supply, Inc., et al., supra, at 544; Texas

Pit Service, Inc. v. Brackett, 272 F. 2d 882 (Sth Cir. 1959);

Stewart-Warner Corp. v. Lone Star Gas Company, supra. The

Meece patent being in a crowded art must be narrowly

construed.

[21] Patents on simple combinations are not easily

infringed. Foster Cathead Co. v. Hasha, 382 F. 2d 761 (Sth Cir.

1967); Texstream Corp. V. Blanchard, 352 F. 2d 983, 986 (Sth

Cir. 1965), cert den. 387 U.S. 936 (1967); Stewart-Warner

Corp. v. Lone Star Gas Company, supra.

[22] Words used in a patent should be given their

ordinary and accustomed meaning unless it specifically appears

from the patent that the inventor attached some different

specific meaning to the word or words. Universal Oil Products

Co. v. Globe Oil Refining Co., 137 F. 2d 3 (7th Cir. 1943), affd.

211 U.S. 471 (1944); Aircraftsmen, Inc. v. Aircraft Equipment

Company, 247 F. Supp. 469, 477-478, affd. per curiam 383 F.

2d 988 (5th Cir. 1967); Godfrey L. Cabot, Inc. v. J. M. Huber

Corporation, 127 F. 2d 805, 807 (Sth Cir. 1942). The Court

concludes that the word “flexible” as appears in the Meece

patent and as included in the pharase “flexible interconnection

means” should be given its ordinary and accustomed meaning.

Accordingly, the Meece patent claims in suit all describe three

shears in which the support linkage is flexible or allow the shear

head to freely move. The claims are not broad enough to

include three shears in which the support linkage is substantially

rigid.

[23] Patent claims should be interpreted so as to describe

the embodiments of the patented subject matter illustrated in

the patent drawings rather than to describe subject matter not

illustrated. Bocciarelli v. Huffman, 232 F. 2d 647(CCPA 1956);

Rule 83, Patent Office Rules of Practice. The fact that the

Meece patent drawings do not include an illustration of a

double acting hydraulic cylinder as the support linkage is an

indication that the Meece claims were never intended to include

such structure.

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[24] The word “comprises”, when used in a patent claim

such as the Meece patent claim 10, is synonomous with the

word “includes” and does not preclude the presence of other

elements as part of the described structure. Jn Re Horwitz, 168

F. 2d 522 (CCPA 1948); In Re Cone, 121 F. 2d 470 (CCPA

1941). See also Robie v. Carlton, 171 F. 2d 310 (CCPA 1948).

[25] The rules of the United States Patent Office have the

force of law to the extent they are not inconsistent with the

express provision of the patent statutes, and failure to comply

with the rules is unlawful. Potter Instrument Co., Inc. v.

Mohawk Data Science Corp., 309 F. Supp. 866 (S.D.N.Y.

1970); See also Piel v. Falkner, F. 2d ____ , 165 USPQ

708 (CCPA 1970); Land v. Dreyer, 155 F. 2d 383 (CCPA

1946). Rule 83, Patent Office Rules of Practice requires that

the patent drawings show every feature specified in the claims.

Since the ‘adjustable hydraulic cylinder” recited in Meece

patent claim 10 is not illustrated in the patent drawings, claim

10 must be invalid unless interpreted to include a flexible

element in combination with the hydraulic cylinder as the

support linkage.

[26] The claims of a patent should be construed in light

of the Patent Office prosecution of the application which

matured into the patent. Graham v. John Deere Co. of Kansas

City, supra; Waldon, Inc. v. Alexander Mfg. Co., 423 F.2d 91

(Sth Cir. 1970); Bros. Inc. v. W. E. Grace Mfg. Co., 351 F. 2d

208, 213 (Sth Cir. 1965).

[27] Patents should be construed by the courts to be

valid, if possible. In order to do so, a court may construe the

patent claims narrowly so as to avoid the prior art. Sterner

Lighting, Inc. v. Allied Electric Supply, Inc., supra; Beckman

Instruments, Inc. et al v. Chemtronics, Inc., et al, supra; Marvin

Glass & Associates v. Sears Roebuck & Company, supra. But in

so doing, a patent claim cannot be twisted one way to avoid the

prior art and another way to establish infringement. White v.

Dunbar, 119 U.S. 47, 30 L. Ed. 303 (1886); Permo, Inc. vy.

Hudson-Ross, Inc., 179 F. 2d 386 (7th Cir. 1950); Sterner

Lighting, Inc. v. Allied Electric Supply, Inc., supra.

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[28] A patent specification cannot expand the scope of

the patent claims. McClain v. Ortmayer, 141 U.S. 419, 424

(1891). Accordingly, the reference to a “hydraulic cylinder” at

column 4, lines 72-74 of the Meece patent specification cannot

be relied upon to expand the scope of the phrase “flexible

interconnection means” to include a rigid interconnection such

as a double acting hydraulic cylinder.

{29] The Court concludes that when considering the

evidence at the trial, the prior art, the prosecution history of

the Meece patent and the antithetical qualities of rigidity and

flexibility, a double acting hydraulic cylinder is a rigid and not a

flexible connection. Schriber-Schroth Co. v. Cleveland: Trust

Co., 305 U.S. 47, 58 (1938); Baldwin-Lima-Hamilton Corp. v.

Hi-Way Equipment Co., 250 F. Supp. 574 (S.D. Tex. 1965).

[30] Where a patentee elects to define an element of his

claimed combination in terms of a “means” plus a function (as

in the Meece claims “flexible interconnection means”) it is

essential for infringement that the corresponding means of the

accused structure perform the same function in the same way to

obtain substantially the same result. Foster Cathead Co. v.

Hasha, supra; McCutchen v. Singer Co., 386 F. 2d 82 (5th Cir.

1967); Up-Right, Inc. v. Safeway Products, Inc., 315 F. 2d 23

(Sth Cir. 1953). The Court concludes that the White cylinder

does not perform the functions required for the “flexible

interconnection means” of the Meece patent claims.

[31] The double acting hydraulic cylinder in the White

tree shear structure is not equivalent to the “flexible inter-

connection means” of the Meece patented tree shear and,

therefore, there can be no infringement. General Steel Products

Company v. Lorenz. 204 F. Supp. 518, 531-533 (S.D. Fila.

1962) affd. 337 F. 2d 726 (Sth Cir. 1964); McCutchen v. Singer

Company, supra; Signal Mfg. Co. v. Kilgore Mfg. Co., 198 F. 2d

667 (9th Cir. 1952). See also Baldwin-Lima-Hamilton Corp. v.

Hi-Way Equipment Co., supra.

[32] The grant of a subsequent patent carries weight in

determining non-equivalence and raises a presumption of

17a

non-equivalence. Kokomo Fence Machine Co. v. Kitselman, 189

U.S. 8, 23 (1902); Edwards v. Johnston Formation Testing

Corp., 44 F. 2d 607, 614 (S.D. Tex. 1930) (Judge Hutcheson),

affd. 56 F. 2d 49 (Sth Cir. 1932). See also Walker on Patents

(Deller’s Ed. 1937), §506, pp. 1758-1764.

[33] This Court concludes that the tree shear patented by

defendant White has not infringed any of the Meece patent

claims 1, 2, 5, 7 and 10. The accused machines lack that

identity of means and identity of operation which must be

combined with identity of result to constitute infringement.

Kokomo Fence Machine Co., supra at 24.

[34] Defendant is entitled to a judgment holding there

has been no infringement by him of the Meece patent and

judgment will be entered accordingly. Costs will be taxed upon

application.

The Court finds it unnecessary to rule upon the counter-

claim of defendant.

DONE and ORDERED in Chambers in Tallahassee,

Florida, this 23rd day of February, 1971.

/s/ David L. Middlebrooks

David L. Middlebrooks

United States District Judge

CERTIFIED A TRUE COPY

Marvin S. Waits, Clerk

By

Deputy Clerk

remeens$ NORRIE) ec

ORR SoS et 7

18a .

APPENDIX B a a

IN THE LP

United States Court of Appeals *~

FOR THE FIFTH CIRCUIT |

No. 71-2032

HARRINGTON MANUFACTURING CO., INC.,

Plaintiff-Appellant-

Cross Appellee,

versus

IDAS B. WHITE,

Defendant-Appellee-

Cross Appellant.

Appeals from the United States District Court for the

Northern District of Florida

(March 13, 1973)

Before BROWN, Chief Judge, GOLDBERG and

MORGAN, Circuit Judges.

BROWN, Chief Judge: On June 27, 1967, the United

States Patent Office issued Patent No. 3,327,745,

to Fred W. Meece and Frank B. Dew, both of

Plymouth, North Carolina. The patent covered a hy-

draulically powered “tree cutter device”. On October

19a

2 HARRINGTON MFG. CO., INC. v. I. B. WHITE

2, 1968, this lawsuit was filed by Meece and Dew’s

assignee, the Harrington Manufacturing Company,

seeking damages and appropriate injunctive relief

from Idas B. White for the latter’s alleged infringe-

ment of the Meece-Dew patent. In addition to deny-

ing infringement, White asserted the invalidity of the

Meece-Dew patent as a positive defense. Upon the con-

clusion of the non-jury trial, the District J udge entered

a memorandum order and opinion upholding the valid-

ity of the Meece-Dew patent, but finding no infringe-

ment. Both parties appeal.

Our review of the case convinces us that the Court

below properly upheld the validity of the Meece-Dew

patent. Upon a close examination of his holding with

respect to infringement, however, we are compelled

to reverse. It all boils down to the question of how

to construe three little words in the patent claims —

“flexible interconnection means”. The trial court ap-

plied a common meaning, common sense construction

and held that the patent, by expressly contemplating

the use of a “flexible interconnection means”, did not

envision — and hence would not protect — the use

of an interconnection means, like a double acting hy-

draulic cylinder, which could be locked rigidly in place.

But this ignores the basic purpose, the prosecution his-

tory, and — most importantly — the actual wording

of the claims.' Giving appropriate consideration to

1Since the claims of a patent establish, es would a deed @n estate in

land, the metes and bounds of the grant, Motion Picture Patents

Co. v. Universal Film Manufacturing Co., 1917, 243 U.S. 502,

510, 37 S.Ct. 416, , 61 L.Ed. 871, 876, we set them out in

full for a!l to read who will:

PRD TAGES bn PS

20a

HARRINGTON MFG. CO., INC. v. I. B. WHITE 3

1. An improved tree cutting device including:

(a) a cutting blade.

(b) one end of said cutting blade being pivotably

mounted with respect to a pair of fixed jaw mem-

bers.

(c) fluid operated cylinder and piston means in-

terconnecting said pair of jaw members and said

cutting blade,

(da) two generally parallel supporting arms having

their rear ends adapted to be pivotably attached

to a vehicle,

(c) pivot means for pivotally interconnecting said

two generally parallel supporting arms and said

pair of fixed jaw members, so that said pair of

fixed jaws can have limited pivotal movement

about a horizontal axis,

(f) flexible interconnection means interconnected

between said two generally parallel supporting

arms and said pair of fixed jaw members which

serves to limit the pivotal arc through which the

fixed jaw members can pivot.

2. An improved tree cutting device including:

(a) a cutting blade.

(b) one end of said cutting blade being pivotably

mounted with respect to a pair of fixed jaw mem-

bers,

(c) fluid operated cviinder and piston means inter-

connecting said pair of jaw members and said

cutting biade,

(d) said fixed jaw members being mounted for

vertical pivotal movement about an elongated

horizontally disposed beam, and said fixed jaw

members being additionally connected to said

elongated horizontally disposed beam by flexible

interconnection means so that said fixed jaw

members are free to move through a limited

pivotal arc.

(e) two generally parallel supporting arms having

their front ends attached to said beam and having

their rear ends adapted to be pivotably attached

to a vehicle, and

(f) means for raising and lowering said beam.

3. An improved tree cutting device according to

claim 2, wherein said flexible interconnection means

comprises a cable.

4. An improved tree cutting device according to

claim 2, wherein said flexible interconnection means

2la 5

4 HARRINGTON MFG. CO., INC. v. L. B. WHITE

these factors, we are convinced that these three little

words sufficiently described the inventive concept of

the patent, and in turn, that that concept is invaded

by Defendant’s device. The reading which we give to

these three little words thus both sustains the trial

court’s holding of validity and requires us to reverse

his holding of non-infringement.

I. Woodman, Don’t Spare That Tree!

Modern civilization requires vast quantities of lum-

ber and pulpwood for its progress. Originally man sat-

isfied his need for timber by hacking down trees with

crudely fashioned hand tools. As his need and sloth

comprises a chain.

5. A tree cutting device according to claim 2,

wherein said means for raising and lowering said

beam comprises a hydraulic cylinder and piston.

6. A tree cutting device according to claim 2,

wherein said jaw members are provided with a

plurality of teeth.

7. An improved tree cutting device according to

claim 2, wherein said flexible interconnection means

includes an upstanding post on said beam, a connec-

tion means on the top of said jaws, and a flexible

element interconnecting said upstanding post and

said connecticn means.

8. An improved tree cutting device according to

claim 7, where'n said flexib'e element comprises a

chain.

9. An improved tree cutting device according to

claim 7, wherein said fiexible element comprises

a cable.

10. A tree cutting device according to claim 1,

wherein said f:exible interconnection means comprises

an adjustable hydraulic cylinder.

Plaintiff alleges that defendant White’s shear infringes Claims

1, 2, 5, 7 and 10. He Specifically points to the very precise

wording of Claim 10 in terizs of a hydraulic cylinder.

te Pa A ie

22a

HARRINGTON MFG. CO., INC. v. I. B. WHITE 5

increased man invented the saw to cut through the

wood more rapidly and efficiently. i:ven this innova-

tion did not satiate society’s appetite, however, and

about twenty-five years ago man began using small

gasoline powered chain saws. But even these paragons

of technological advance had their problems — among

them the fact that tired aching backs refused to wield

them at ground level. Thus, by cutting the trees higher

than ground level lumberjacks left a considerable a-

mount of wood unused. These uncut stumps also |

marred the beauty of the landscape and impeded the

progress of log removal from the forest.

Meece and Dew

In 1965 Meece and Dew bent their creative ingenuity

towards rectifying these problems. They started by

constructing the cutting device. It consisted of a fixed

jaw, which would press against the backside of the

tree, a blade to do the actual cutting, and a pair of

hydraulic cylinders to close the blade. They called the

whole assembly a “shear head”. (See Figures A and

B depicting the shear head in both the open and closed

positions.)

FIG. A.

23a

6 HARRINGTON MFG. CO., INC. v. I. B. WHITE

FIG. B.

A REE Te tac

Meece and Dew then designed a “C” frame to be

used to attach the shear head to the tractor. It consist-

ed principally of two parallel arms which were to be

mounted to the sides of the tractor with movable joints.

Across the front of these arms they welded a support

beam. This beam was horizontal with the ground. In

order to be able to elevate the entire shear head an-

other hydraulic cylinder was mounted onto the front

of the tractor and attached to the support beam.

The inventors then attached the shear head assembly

to the support beam of the “C” assembly by means

of several pivotal connections. This would allow the

angle of the shear head to be adjusted according to

the plane of the ground. This angular adjustment of

the shear head was the “basic concept” of the Meece-

Dew invention. It was the innovation calculated 7

to solve the problems of stumpage which Meece and

Dew had in mind. It was the Meece-Dew shear’s

“raison d’étre”.

Only one thing remained. Meece and Dew needed

some element which would stabilize the shear head

_

OPEL TSN I

HARRINGTON MFG. CO., INC. v.I1.B. WHITE 7

in the angle of the plane of the ground. They conceived

of several possible means to accomplish this end. But

when they built their first model, Meece and Dew chose

the means which appeared to be the most rugged, the

éasiest to put in place, the easiest to repair, and the

least expensive, ie. they used a chain, which was at-

tached at one end to the shear head and at the other

to a supporting post welded perpendicular to the beam.

(See Figure C.)* In describing the various elements

which could perform this task the patentees subse-

quently applied the fated nomenclature “flexible inter-

connection means”.

Tractor

2None of the hydraulic cylinders shown in this figure were the

subject of this controversy. The White shear

acting hydraulic cylinder in place of the chain and post

at point 1 in Figure C.

2 ee ee ee Ae

puss --

£2 +o TIS MSIE ee ee we

25a

8 HARRINGTON MFG. CO., INC. v. I. B. WHITE

Meece and Dew demonstrated their tree shear to

Several interested parties in December 1965. By Febru-

ary 1966, the Plaintiff Harrington Manufacturing Com-

pany had acquired exclusive rights to the invention

in exchange for an agreement to prosecute the patent

application in Meece and Dew’s behalf and make con-

tinuing royalty payments to them. By May 1966, Har-

rington was manufacturing the Meece-Dew shear and

distributing it to its customers.

White

Meanwhile (that is in May, 1966) in Blountstown,

Florida, the defendant Idas B. White was contacted

by several unnamed individuals who requested that

he build hydraulically operated tree shears for them.

The resultant shear was field tested by White on J uly

30, 1966. The White shear was substantially identical

to the Meece-Dew design, including the adjustable cut-

ting head. Significantly, on first testing his shear White

used a chain linkage support element. On finding this

unsatisfactory he resorted to hydraulic cylinders.

Harrington-White Interaction

As assignee of the Meece-Dew patent rights Harring-

ton was more than normally curious when he heard

that someone in Blountstown, Florida, was building

a tree shear similar to the Meece-Dew model which

his company was then marketing. In August 1966,

Joseph J. Harrington, Plaintiff's president, stopped to

meet with White en route to Panama City, Florida,

where the Harrington version of the Meece-Dew shear

OO Ty ta em pte.

26a

HARRINGTON MFG. CO., INC. v. 1. B. WHITE 9

had been displayed since June 1966. The trial court

found that Harrington made a suggestion that White

might manufacture hydraulic cylinders for use on the

Meece-Dew shear head (see Figures A and B, supra),

that both parties voiced their intentions to seek pat-

ents, that Harrington had the opportunity to observe

a photograph of the White shear, and ultimately that

Harrington offered to purchase White’s patent rights.®

Negotiations stalled and this suit followed. As first pat-

entee of this design, Harrington has the paramount

right to manufacture the Meece-Dew shear. Southern

Implement Manufacturing Co. v. McLemore, 5 Cir.,

1965, 350 F.2d 244, 248. Unless White can prove that

the Meece-Dew patent was invalid, Harrington is en-

titled to relief if he proves that White’s shear infringed

the patent.

II. Up A Tree: Validity

Patents are a favored exception to the antitrust poli-

cies of the United States. While many patent advocates

argue passionately that since they promote disclosure

to society rather than exclusion from society that the

term “monopoly” should not be applied patents, the

better-reasoned view is that they are monopolies in

the sense that they are governmentally protected rights

to exclude others from the manufacture or sale of the

patented article. Although the seventeen year duration

is a built-in safeguard against extended abuse of the

patent concession, society demands additional restric-

30n July 10, 1967, the Patent Office issued Patent No. 3.382.899

to Idas B. White covering his shear. Neither the validity nor

the construction of that patent is at issue in this litigation.

SE A Fe ee a

ares ON TDK nC SOL TP a ee te

27a

10 HARRINGTON MFG. CO., INC. v. L B. WHITE

tions. One such restriction is the availability of judicial

review of the patent. Thus, the Supreme Court of the

United States has held:

There has been a tendency among the lower

Federal courts in infringement suits to dispose

of them where possible on the ground of non-

infringement without going into the question of

validity of the patent. It has come to be recog-

nized, however, that of the two questions, va-

lidity has the greater public importance, and

the District Court in this case followed what

will usually be the better practice by inquiring

fully into the validity of this patent.

Sinclair & Carroll Co. v. Interchemical Corp., 1944,

325 U.S. 327, 330, 65 S.Ct. 1143, ___., 89 L.Ed. 1644, 1646

(citations omitted). See also Beckman Instruments,

Inc. v. Chemtronics, Inc., 5 Cir., 1970, 428 F.2d 555,

557; Sterner Lighting Inc. v. Allied Electrical Supply,

Inc., 5 Cir., 1970, 431 F.2d 539. Finding the Meece-Dew

tree shear patent to be one involving deep public inter-

est, we carefully review the trial court’s decision up-

holding the validity of the patent.

We start from the proposition that a lawfully issued

patent is presumed to be valid. 35 US.CA. § 282;

Railex Corp. v. Speed Check Co., 5 Cir., 1972, 457 F.2d

1040, 1043; Beckman Instruments, supra at 560; Foster

Cathead Co. v. Hasha, 5 Cir., 1967, 382 F.2d 761, 764.

Thus, the “burden of establishing invalidity of a patent

shall rest on a party asserting it.” 35 U.S.CA. § 282.

“rere remedies epoie

iene |

. ‘atoll ‘ ”

HARRINGTON MFG. CO., INC. v. I. B. White 11

The presumption of patent validity is rebut-

table. 35 U.S.C. § 282; Radio Corp. of Ameri-

ca v. Radio Engineering Laboratories, 1934,

293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163. The courts,

however, have not distinguished themselves

for consistency in their determination of the

quantum of proof necessary to rebut the pre-

sumption. For instance, this Court has em-

ployed varying statements of the necessary

quantum of proof. See, e. g., Kardulas v. Flori-

da Machine Products Co., 5 Cir. 1971, 438 F.2d

1118 (“clear and convincing * * * a mere

preponderance of the evidence is insufficient

*** beyond a reasonable doubt”); V & S

Ice Machine Co. v. Eastex Poultry Co., 5 Cir.

1971, 437 F.2d 422 (“competent evidence”);

Stamicarbon, N. V. v. Escambia Chemical

Corp., 5 Cir. 1970, 430 F.2d 920 (reviewing all

the standards and approving the use of the be-

yond-a-reasonable-doubt standard); Kiva

Corp. v. Baker Oil Tools, 5 Cir. 1969, 412 F.2d

546 (“beyond a reasonable doubt *** clear

and convincing”); Metal Arts Co. v. Fuller

Co., 5 Cir. 1968, 389 F.2d 319 (“clear, satisfac-

tory, and, by some it is said beyond a reason-

able doubt”); Zero Mfg. Co. v. Mississippi

Milk Producers Assoc., 5 Cir. 1966, 358 F.2d 853

(“strong rebuttal”); Southern Implement

Mfg. Co. v. McLemore, 5 Cir. 1965, 350 F.2d 244

(“beyond a reasonable doubt”): Samuelson v.

Bethlehem Steel Co., 5 Cir. 1963, 323 F.2d 944

(“Any reasonable doubt will be resolved a-

gainst the party alleging the invalidity of a pat-

ee en

ls TS, a a oe

29a

12 HARRINGTON MFG. CO., INC. v. I. B. WHITE

ent”); Fairchild v. Poe, 5 Cir. 1958, 259 F.2d

329 (“beyond a reasonable doubt”); Zachos v.

Sherwin-Williams Co., 5 Cir. 1949, 177 F.2d 762

(“beyond a reasonable doubt”). We do not at-

tempt to resolve this apparent inconsistency.

Rather, we state that the presumption of pat-

ent validity may be rebutted only by a quan-

tum of proof — whether it be called clear and

convincing or beyond a reasonable doubt —

which is greater than a mere preponderance

of the evidence. One who seeks to rebut the

presumption bears a heavy burden. Cf. Radio

Corp. of America v. Radio Engineering Lab-

oratories, 1934, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed.

163.3

Hobbs v. United States, 5 Cir., 1971, 451 F.2d 849, 856.

See Railex, supra at 1043-44.

There are essentially three tests for natentability:

utility, novelty, and non-obviousness. 35 U.S.C.A.

ۤ 101, 102, 103; Beckman, sunra at 561: Hokhbs, svvra

at 855. It is clear that the constitutionally required ele-

ment “to promote the useful arts ard scisrces” is satis-

fied by the Meece-Dew invention. Likewise, cur review

of the case satisfies us that the statuterily prticulated

requirement‘ of non-obviousness is met. In this recard

4Section 103 of the Patent Act of 1952 added this criterion. In

John Deere, supra. the Sunreme Court held that it wa: mere'lv

a codification of pre-1°52 case law.

The test for obviousness under § 103 is whether the desien

of the patentee would have been a clear extension cf nre-

viously existing principles to one possessing ordinary skill in

the relevant prior art. See Ingersoll-Rand Co. v. Prunner &

HARRINGTON MFG. CO., INC. v. Il. B. WHITE 13

we note that the Meece-Dew shear solved the plaguing

problems of the industry with great commercial suc-

cess. See Graham v. John Deere Co., 1966, 383 U.S.

1, 17-18, 86 S.Ct. 684, ___., 15 L.Ed.2d 545, 556.

The issue of novelty, or phrased in another way —

whether the invention was anticipated by the prior art,

is quite another thing. Brandishing prior patents,

White strenuously contends that the Meece-Dew con-

cept was anticipated by the relevant prior art. Of the

six prior patents listed by the Court and parties as

being the relevant prior art it is undisputed that four

were before the examiner in the Patent Office. White

has clearly not introduced a whit of evidence to rebut

the presumption of validity with respect to these pat-

ents.

But, in spite of the District Court’s finding of fact

to the contrary, White urges that the French Patent

No. 1, 313, 995 and the Burke Patent U.S. No. 638,553,

were not before the examiner. Of course the statutory

presumption of validity, 35 U.S.C.A. § 282, is diluted

when the patent was not issued after a consideration

of the prior art. American Seating Co. v. Southeastern

Metals Co., 5 Cir., 1969, 412 F.2d 756, 760. Even a cur-

sory examination of these patents, however, dispels

the specter of anticipation.

Lay, Inc.. 5 Cir., 1973, F.2d ____._ [No. 72-2026, Febru-

ary 20, 1973]. The trial judge here specifically found that no

prior inventor had conceived the notion of mounting the

cutting head of a shear so that it could pivot to parallel the

plane of the ground. The Judge also held that the great com-

mercial success which the Meece-Dew shear enjoyed was in-

dicative of its non-obviousness. While not to be given con-

trolling weight, this is certainly a permissible factor. John

Deere, supra; Ingersoll-Rand, supra.

3la

14 HARRINGTON MFG. CO., INC. v. I. B. WHITE

The French Patent consists of a shear head similar

to the Meece-Dew design but mounted on a Single, e-

longated, telescopic tubular arm extending from the

front of the tractor. It adds nothing to the prior art

of record. The ancient 1899 Burke Patent consisted of

a@emim poweted circular saw. Its only potential re-

semblance to the Meece-Dew design was the presence

of a means to limit the downward motion of the cut-

ting head. When one recalls the fact that the major

innovation of Meece and Dew was the angular adjust-

ment it becomes apparent that the Burke Patent’s con-

nection with the Meece-Dew patent is severely atten-

uated, if, indeed, it exists at all. In making this argu-

ment White is not cnly far-afield — he is out of the

forest:

In a last ditch effort to salvage something from his

invalidity argument White contends that even if the

independent claims of the Meece-Dew patent are valid,

that Claim 10, which specifically names a hydraulic

cylinder as an alternative “flexible interconnection

means”, is invelid because either (i) the drawings in

the patent application failed to disclose it, or (ii) White

was a prior inventor with respect to this element.

A patent application does not have to graphically

depict every conceivable element of the invention as

long as it details the essential factors. “A rejection

of the claim for lack of showing in the drawing alone

is not tenable.” Ex parte Taylor, Patent Office Board

of Appeals, 1944, 66 U.S.P.Q. 366, 367. 4 Walker on Pat-

ents (2d ed. Deller 1965) § 247. Cf. Up-Right, Inc. v.

' Safway Products, Inc., 5 Cir., 1963, 315 F.2d 23, 27.

32a

HARRINGTON MFG. CO., INC. v. I. B. WHITE 15

Concerning White’s argument that he was a prior

inventor we only say that a patentee does not have

to manufacture the full range of possible equivalents

to his patent to satisy the 35 U.S.C.A. § 102(g) re-

quirement of reasonable diligence to reduce to prac-

tice. If his basic ingenuity is fully disclosed and if he

takes expedient steps to utilize his concept, a patentee

will be allowed the protection of the law to the extent

of his ful] range of equivalents.

III. Out On A Limb: Infringement

The major premise of the tria] court’s holding that

the White shear did not infringe the Meece-Dew patent,

was his conclusion of law that “the word ‘flexible’ as

appears in the Meece patent and as included in the

phrase ‘flexible interconnection means’ should be

given its ordinary and accustomed meaning. Accord-

ingly, the Meece patent claims in suit all describe tree

shears in which the support linkage is flexible or allow

the shear head to freely move. The claims are not

broad enough to include tree shears in which the sup-

port linkage is substantially rigid.”

His minor premise was a finding of fact: “The de-

fendant tree shear employs a double acting hydraulic

cylinder as the sole element of the supporting linkage

between the shear head and mounting assembly. The

testimony of the qualified expert witnesses establishes

by a preponderance of the evidence that the double

acting hydraulic cylinder and circuit as used in the

White tree shear is a rigid and not a flexible intercon-

nection.”

{Sr

Sele oan]

(tig 9 NN dL A Sih ethan te

33a

16 HARRINGTON MFG. CO., INC. v. I. B. WHITE

Thus, from these two premises his obvious conclu-

sion was “the double acting hydraulic cylinder in

the White shear structure is not equivalent to the ‘flex-

ible interconnection means’ of the Meece patented tree

shear and, therefore, there can be no infringement.”

A patent is infringed only if there is substantial iden-

lity between the accused device and the patented in-

vention as to means, operation, and result. Stewart-

Warner Corp. v. Lone Star Gas Co., 5 Cir., 1952, 195

F.2d 645, 648; Beckman Instruments, Inc. v. Chemtron-

ics, Inc., 5 Cir., 1970, 428 F.2d 555, 563; Sterner Light-

ing, Inc. v. Allied Electrical Supply, Inc., 5 Cir., 1970,

431 F.2d 539, 543; U.S. Industries v. Otis Engineering

Corp., 5 Cir., 1958, 254 F.2d 198; McCutchen v. Singer

Co., 5 Cir., 1967, 386 F.2d 82. Normally this poses a

question of fact to be resolved by a jury or Judge sit-

ting as fact-finder under F.R.Civ.P. 52(a), Hughes Tool

Co. v. Varel Manufacturing Co., 5 Cir., 1964, 336 F.2d

61; Walker, supra at § 511.

In the present case, our review of the case convinces

us that the tria] Judge misconstrued the claims of the

Meece-Dew patent in formulating his major premise.

Thus, we reverse without contesting the correctness

of his findings of fact. See Sterner Lighting, supra at

543.

It is axiomatic patent law that improvement patents

in a crowded art are to be construed narrowly. Since

the frequently-asserted “anticipation” ground of inva-

. lidity calls for a factual determination, Inglett & Co.

v. Everglades Fertilizer Co., 5 Cir., 1958, 255 F.2d 342,

HARRINGTON MFG. CO., INC. v. I. B. WHITE 17

345; Sterner Lighting, supra at 541; the patentee’s nar-

row contentions in the validity context often dovetail

unwelcomed into his broad contentions -with respect

to infringement. But a “patent may not, like a ‘nose

of wax’, be twisted one way to avoid anticipation and

another to find infringement.” Sterner Lighting, supra

at 544, citing White v. Dunbar, 1886, 119 U.S. 47, 51,

7 S.Ct. 72, 74, 30 L.Ed. 303; Permo, Inc. ». Hudson-

Ross, Inc., 7 Cir., 1950, 179 F.2d 386.

Concerning the validity of the patent in suit, the Dis-

trict Court assessed the prior art and determined that

Although certain constituent elements of the

Meece patent were known in the prior art, the

flexible interconnection means of the Meece

patent produced a new and useful result and

did not anticipate the prior art. It is this act of

selection and arrangement of elements which,

if it overcomes defects in the prior art, pro-

duces the invention and renders it novel.

Distilled to its essence, this statement indicates that

the district court held that by designing the cutting

jaws to pivot axially with respect to the horizontal sup-

port beam, Meece and Dew had made a patentable

improvement on the prior art of tree-felling. Curiously,

it is at this very point of novelty that the alleged in-

fringement took place. But White seeks to distinguish

his model from the Meece-Dew shear in two important

respects: (i) the Meece-Dew patent specifically calls

for a flexible interconnection means while the inter-

connection means in the White model is rigid, and (ii)

PLR PTS PTE GA Oe

35a

18 HARRINGTON MFG. Co., INC. v. I. B. WHITE

the functions performed by the double acting hydraulic

cylinder on the White shear were beyond the realm

of Meece-Dew inventiveness. We take them up in this

order.

Lexicographic License

The central] determinant of the infringement issue

is whether the use of a hydraulic cylinder to vary the

angle of the cutting blade in the White shear consti-

tutes the requisite identity of means to the Meece-Dew

patent. Contending that it does not, White directs our

attention to the fact that the Meece-Dew patent calls

for a “flexible interconnection means” to accomplish

this function. He parrots the syllogistic reasoning

which the trial Court articulated in its opinion: (i) Ac-

cording to the very words of the Meece-Dew patent

only a means which is “flexible” would be an infring-

ing copy; (ii) Once the pgsition of a hydraulic cylinder

is set it is rigid; and Therefore, the hydraulic

cylinder cannot possibly be an infringing means.

ay Bh ea Aye

Harrington counters by strongly urging that the term

“flexible interconnection means” means what they

choose it to mean, and, accordingly, they are entitled

to the mesnes. In support of this argument they cite

the handy apothegm that a “patentee may be his own

lexicographer and... his own grammarian.”® Inglett

SThe great treatise, in expounding the proper test for infringement,

has specifically realized the efficacy of interpreting patent

claims in accordance with the purpose and intent of the pa-

tentee rather than the common denotations of his choice of

words:

“To allow literality alone to satisfy the infringement

36a

HARRINGTON MFG. CO., INC. v. I. B. WHITE 19

& Co. v. Everglades Fertilizer Co., 5 Cir., 1958, 255

F.2d 342, 347. See Thurber Corp. v. Fairchild Motor

Corp., 5 Cir., 1959, 269 F.2d 841, 850; Thermo King Corp.

v. White’s Trucking Service, Inc., 5 Cir., 1961, 292 F.2d

668, 675; Chicago Steel Foundry Co. v. Burnside Steel

Foundry Co., 7 Cir., 1943, 132 F.2d 812, 814; Sockman

v. Switzer, 1967, 55 C.C.P.A. ___, 379 F.2d 996, 1002;

Burrett v. United States, Ct. Cl.. 1968, 405 F.2d 502,

507.¢

test would force patent law to reward literary skill

not the inventor’s creativity. Since the law is intend-

ed to benefit the inventor’s genius and not the scriv-

ener’s talent, the structures must do the same work

in substantially the same way and accomplish sub-

stantially the same result...”

7 Walker on Patents (2d ed. Deller 1972) § 531 at 307.

The Court of Claims, in first accepting this rule, explained the

difficulty which¥ Court faces when the inventor’s chosen

terminology does not adequately embrace the totality of his

concept. Thus, the Court in a fascinating opinion by Judge

Durfee concluded that resort must often be had to factors

beyond the plain meaning of the chosen term:

Courts occasionally have confined themselves to

the language of the claims. When claims have been

found clear and unambiguous, courts have not gone

beyond them to determine their content. Keystone

Bridge Co. v. Phoenix Iron Co., supra, 95 U.S. at 278,

24 L.Ed. 344; Borg-Warner Corp. v. Mall Tool Co.,

217 F.2d 850 (7th Cir. 1954); Zonolite Co. and In-

sulating Concrete Corp. v. United States, 149 F.Supp.

953, 138 Ct.Cl. 114 (1957). Courts have also held

that the fact that claims are free from ambiguity is

no reason for limiting the material which may be in-

spected for the purpose of better understanding the

meaning of claims. Warner & Swasey Co. v. Univer-

sal Marion Corp., supra, 237 F.Supp. at 737.

We find both approaches to be hypothetical. Claims

cannot be clear and unambiguous on their face. A

comparison must exist. The lucidity of a claim is de-

termined in light of what ideas it is trying to convey.

Only by knowing the idea, can one decide how much

NERS BM

37a

20 HARRINGTON MFG. CO., INC. v. I. B. WHITE

shadow encumbers the reality.

The very nature of words would make a clear and

unambiguous claim a rare occurrence. Writing on

statutory interpretation, Justice Frankfurter comment-

ed on the inexactitude of words:

They are symbols of meaning. But unlike mathe-

matical *symbols, the phrasing of a document,

{ especially a complicated enactment, seldom at-

4 tains more than approximate precision. If in-

7 dividual words are inexact symbols, with shifting

variables, their configuration can hardly achieve

invariant meaning or assured definiteness.

{ Frankfurter, Some Reflections on the Reading of

:

Statutes, 47 Col.L.Rev. 527, 528 (1947). See, also, A

Re-Evalution of the Use of Legislative History in the

Federal Courts, 52 Col.L.Rev. 125 (1952).

The inability of words to achieve precision is none

the less extant with patent claims than it is with

statutes. The problem is likely more acute with claims.

* Statutes by definition are the reduction of ideas to

print. Since the ability to verbalize is crucial in statu-

tory enactment, legislators develop a facility with

words not equally developed in inventors. An inven-

tion exists most importantly as a tangible structure or

a series of drawings. A verbal portrayal! is usual!y an

afterthought written to Satisfy the requirements of

patent law. This conversion of machine to words al-

lows for unintended idea gaps which cannot be satis-

factorily filled. Often the invention is novel and words

do not exist to describe it. The dictionary does not

always keep abreast of the inventor. It cannot. Things

are not made for the sake of words, but words for

things. To overcome this lag, patent law allows the

inventor to be his own lexicographer. Chicago Steel

’ 812 (7th Cir. 1943): Stuart Oxygen Co. Ltd. v. Joseph-

ian, 162 F.2d 857 (9th Cir. 1947); Universal Oil Prod-

ucts Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th

Cir. 1943), aff’d 322 US. 471, 64 S.Ct. 1110, 88 L.Ed.

1399 (1944). :

Allowing the patentee verbal license only aug-

ments the difficulty of understanding the claims. The

sanction of new words or hybrids from old ones not

only leaves one unsure what a rose is, but also un-

sure whether a rose is a rose. Thus we find that a

claim cannot be interpreted without going beyond the

HARRINGTON MFG. CO., INC. v. I. B. WHITE 21

Because there was no extant generic phrase which

would encompass all of the possible means to vary

the angle of the cutting head, Meece and Dew’s patent

solicitor employed the phrase “flexible interconnec-

tion means”. Reading the claims in light of the purpose

and function to be served by the “interconnection

means” we conclude that the term includes the use

of a hydraulic cylinder.

The basic concept of the Meece-Dew patent — in-

deed, the major innovation which enabled their inven-

tion to pass the obviousness and novelty tests of validi-

ty — was that the plane of the shear’s cutting head

could be angularly adjusted. Perhaps the term “ad-

claim itself. No matter how clear a claim appears

; to be, lurking in the background are documents that

‘ may completely disrupt initial views on its mean-

ing.¢

[4] The necessity for a sensible and systematic ap-

proach to claim interpretation is axiomatic. The Alice-

in-Wonderland view that something means whatever

i one chooses it to mean makes for enjoyable reading,

i but bad law. Claims are best construed in connec-

tion with the other parts of the patent instrument and

with the circumstances surrounding the inception of

the patent application. Doble Engineering Co. v. Leeds

& Northrup Co., 134 F.2d 78 (ist Cir. 1943). In utiliz-

ing all the patent documents, one should not sacrifice

the value of these references by the “unimaginative

adherence to well-worn professional phrases.” Frank-

furter, supra, at 529. Patent law is replete with

maior canons of construction of minor value which

have seidom provided useful guidance in the unravel-

ing of complex claims. Instead, these canons have

only added confusion to the problem of claim inter-

pretation. Dobie Engineering Co. v. Leeds & Northrup,

supra, at 84.

Autogiro Company of America v. United States, Ct. Cl., 1967,

384 F.2d 391, 396-97 (footnotes omitted).

aie

Tr

PIM ere oF Pn Ly Merny enrol YP eS ea eC

pivot “3 < -

39a

22 HARRINGTON MFG. CO., INC. v. I. B. WHITE

justable interconnection means” would have more apt-

ly described the means in terms of the end. But it

is not the duty of this Court to rewrite the patent claims

for Meece and Dew. Their able counsel, in choosing

the term “flexible interconnection means” sought to

convey the thought that the means could accomplish

the end, ie., variance of the angle of the cutting head.

Viewed in the light of the basic concept of the Meece-

Dew invention, the prosecution history, and the spe-

cific wording of Claim 10, the term necessarily includes

the use of a hydraulic cylinder.

White has made much on this appeal about the fact

that the Meece-Dew design required some “give” in

the interconnection means to withstand the pressure

from the natural reaction when the cut is completed

and the tree falls. But a careful reading of the specifi-

cations reveals that the only time “give” is used in

the patent is where the patentee described that quality

which would allow the blade to be angularly adjusted

so that it would rest on the ground and transmit most

of the shock from the falling tree to the ground. Al-

though the patentee clearly extolled the virtues of

“give”, it is manifest that “give” or “flexibility” in

the sense of a self-adjustment to withstand shock was

only an incidental benefit of the design. The basic con-

cept of the Meece-Dew patent was one of adjustability.

Thus, a hydraulic cylinder which could be adjusted

to vary the angle of the shear head could function as

a “flexible interconnection means” within the purview

of the patent claims.

Our conclusion in this regard is compelled by the

specific words of Claim 10 that in addition to the chain

ari ipmernemmminmmnecenaes

a) rae |

Aston aint

vid nS eM Se PST he

HARRINGTON MFG. CO., INC. v. I. B. WHITE 23

and the cable which they had previously used as the

interconnection means, a hydraulic cylinder might be

used. Thus, Claim 10 specifically delineates as a part

of the Meece-Dew invention the very thing which

White’s shear uses. This, of course, is in keeping with

the basic concept of the patent as explained by the

specifications:

“Also, whereas a cable has been shown in FIG-

URES 1-5, a chain in FIGURE 6, and a chain or

cable in FIGURES 7 and 8, the basic concept

is that of having a means for varying the angle

of the plane of the jaw members with respect

to the beam. Consequently, no invention would

be involved in replacing flexible cable or chain

with an obvious equivalent,” such as a hydrau-

lic cylinder ....” (Emphasis added).

This explication of the basic purpose of the invention

puts the three little words — “flexible interconnection

means” — in perspective. And given this perspective,

we hold that the patentee/lexicographer intended to

connote the adjustability of the shear head via

7Our disposition on the explicit wording of Claim 10 precludes

any foray into the range of protection which might be afford-

ed to Harrington under the doctrine of equivalents. 35 U.S.C.A.

§ 112. In the past, we have held that “an inventor, with respect

to his patent, is entitled to a range of equivalents commensurate

with the scope of his invention.” Up-Right, Inc. v. Safway

Products, Inc., 5 Cir., 1965 315 F.2d 23, 27. See Bryan v. Sid

W. Richardson, Inc., 5 Cir., 1958, 254 F.2d 191, 194; Southern

Saw Service v. Pittsburgh-Erie Saw Corp., 5 Cir., 1956, 239

F.2d 339; Rosen v. Kahlenberg, 5 Cir., 1973 F.2d

(Part II) [No. 71-3529, February 20, 1973]. They could have

merely shown the chain and the cable in the drawings and

thereafter relied on the courts to interpret what was an equi-

valent.

|

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Saar eat - ete owe

4la

24 HARRINGTON MFG. CO., INC. v. L B. WHITE

the “flexible interconnection means”.®

The Cylindrical Argument

White makes much ado about the peculiar nature

of the hydraulic cylinder. Specifically, he argues that

a double acting hydraulic cylinder, because of its capa-

bility of rigidity, could not conceivably be the equiva-

lent of a “flexible interconnection means”. Thus, the

argument goes, the Meece-Dew patent cannot be con-

Strued to “cover a double acting hydraulic cylinder

as the sole element of the Support linkage”.

Contrasting the concepts of “rigidity” and “flexibili-

ty”, the tria] court found this line of reasoning to be

persuasive. This is Particularly so, according to the

Court, where the double acting hydraulic cylinder on

the White shear possesses attributes not heretofore

proclaimed by Meece and Dew, e.g. the fact that the

®So often the lexicographic license has been abused. In Thurber

Corp. v. Fairchild Motor Corp., supre. we gave tribute to the

prolixity of patent solicitors by setting forth

334 word unpunctuated sentence used in a patent claim. 269

F.2d at 850 n.7. Later. in Thermo King Corp. v. White’s Truck-

Pauses and explanatory indentations. 292 F.2d at 675 n.2.

Juxtaposed with the claims of our past experience the Meece-

Dew application is a mode! of clarity. It specif‘caliv states

the claims in terms of means to accomplish ends. i.e. function.

In the particular regard with which we are now cencerned, it

explicitly deciares that-

“Said fixed jaw members being additionally cen-

nected to said elongated horizontally disposed beam

by flexible interconnection means so that said fixed

jaw members are freely moved through a limited Piv-

otal are.” Claim 2(d).

2 el tg BI ATS

42a

HARRINGTON MFG. CO., INC. v. I. B. WHITE 25

force of the cylinder can be used to crush brush, snow,

or other debris from the base of the tree in order to

cut the tree at the lowest possible point. But if the

original patentee possessed the novelty of conception,

the infringer may not claim non-infringement merely

because he put the patented means to a novel use.

Beckman Instruments, Inc. v. Chemtronics, Inc.,

5 Cir., 1970, 428 F.2d 555, 561; Walker, supra at § 563.

The District Court stated the identity of means test

of infringement as follows:

Where a patentee elects to define an element

3 of his claimed combination in terms of 4

“means” plus a function (as in the Meece

claims “flexible interconnection means”) it is

4 essential for infringement that the correspond-

q ing means of the accused structure perform

the same function in the same way to obtain

substantially the same results.

The. trial court then found two functions which the

interconnection means in the Meece-Dew shear

served: [i] to permit free pivotal movement of the

shear head, and [ii] to serve to limit the downward-

most position of the arc through which the shear head

e could move. [(Finding 7)]. In the White shear the

pressure of the cylinder against “toter brackets” per-

formed the latter task. Thus, the result was not ob-

tained solely by the hydraulic cylinder. [(Finding

15)].

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WEE ASO ee TITS PENS FE IEE POET

43a

26 HARRINGTON MFG. Co., INC. v. I. B. WHITE

It was in the former function, however, that the trial

Judge found the crucial distinction between the Meece-

Dew shear and the accused White shear. The Judge’s

interpretation of the Meece-Dew shear was that the

interconnection means left the shear head “flexible”.

The White shear was “rigid”. Given the antithetical

quality of the words “flexible” and “rigid” the trial

Judge concluded that there was no infringement as

& matter of law. [(Conclusion 29) ].

But what was needed was a temporal perspective.

Both shear heads were “flexible” at some point

in time. Basic to the entire Superstructure was the

fact that the shear head could be elevated or depressed

to attain the proper cutting angle or to maneuver the

tractor with the shear assembly. Likewise, both shear

heads could be “rigid” when mounted with a hydraulic

cylinder and locked into position. The crucial factor

for the means was that it could attain the end of “ad-

justability”. This was the crux of the Meece-Dew de-

Sign.

This functional approach to patent claim construc-

tion is a legacy of Hotchkiss vy. Greenwood, 1851, 52

US. (11 How.) 248, 13 L.Ed. 683; See Graham v. John

Deere Co., 1966, 383 US. 1, 12, 86 S.Ct. 684, scien

L.Ed.2d 545, 553; Foster Cathead Co. v. Hasha, 5 Cir.,

1967, 382 F.2d 761. We recognized the validity of de-

scribing elements of a patent in terms of “means”

and function in Bryan v. Sid W. Richardson, Inc., 5

Cir., 1958, 254 F.2d 191, 194, where we observed:

The word “means” is no shibboleth. To be

_ Sure, it, or its equivalent Synonyms, cannot be

CRAG VBA SE

44a

HARRINGTON MFG. CO., INC. v. I. B. WHITE 27

used to describe the invention at the very point

of novelty for to do so would then be to define

invention in terms of the result. But where the

novelty of the combination ... is adequately

disclosed with definable limitations, other and

well-known elements need not be described in

structural detail.

We have carefully weighed the arguments of both

parties over the meaning of the term “hydraulic cylin-

der”. Harrington contends that the term is a short-

hand expression for “double acting hydraulic cylin-

der”. White, on the other hand, points out the fact that

a two-way push can be obtained from a double acting

hydraulic cylinder, whereas only a one way action re-

sults from a single acting cylinder. This fact has ob-

vious incidental benefits, e.g., the shear head can be

both raised and lowered by hydraulic power, the force

of the cylinder can crush any brush which surrounds

the tree, etc. But the crucial property of the Meece-

Dew shear was adjustability. And whatever its other

benefits, the White double acting hydraulic cylinder

accomplishes this function. Regardless of whether the

hydraulic cylinder used as an interconnection means

acts singly or doubly, it was contemplated by Meece

end Dew as an alternative means to the original chain

or cable and specifically delineated in Claim 10.

It is also helpful to consider the manner in which

the patentees used the term “hydraulic cylinder”. It

appears rot only in Claim 10 with respect to the “flexi-

ble interconnection means”, but also in Claims 1(c),

2(c), and 5. Claim 5 is illustrative. There the patentees

Fe eS

£9 SRSA EASES

45a

28 HARRINGTON MFG. CO., INC. v. L B. WHITE

claim a device which employs a hydraulic cylinder

to beth raise and lower the beam. (See Figure C, a

WHR supra.) Thus, it is evident that the patentees

contemplated by the use of the words “hydraulic cylin-

der” a cylinder which could push two ways.

Therefore, whether single or double, the use by White

of any hydraulic cylinder which could vary the angle

of the cutting head with respect to the plane of the

ground constitutes an infringement in derogation of

the patent rights of Harrington.

IV. Can’t See The Trees For The Forest

Letter patents serve to foster the constitutional man-

date to promote the arts and sciences. If courts under-

mine the rights of patentees, not by a narrow construc-

tion of the scope of the invention, but rather on the

basis of semantica] facades, then the utility of a pat-

ent as a stimulus for greater public disclosure of pri-

vate inventiveness will be greatly minimized and more

inventors will resort to whatever protection the trade

secrecy law may afford. Cf. United States v. Dubilier

Condenser Corp., 1933, 289 U.S. 178, 53 S.Ct. 554, 77

L.Ed. 1114: Sears, Roebuck & Co. v. Stiffel Co., 1964,

376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661: Compco Corp.

v. Day-Brite Lighting, Inc., 1964, 376 U.S. 234, 84 S.Ct.

779, 11 L.Ed.2q 669. The main thesis of our patent sys-

tem is that public disclosure is a worthy goal.

Meece and Dew designed the first tree shear to em-

Ploy an angularly adjustable cutting head. This inven-

tion presented a Signifi

cant and patentable improve-

Sith RbOE GR bai apts

HARRINGTON MFG. CO., INC. v. I. B. WHITE 29

ment over the prior art in that it allowed the tree to

be cut parallel to the ground at its lowest point. Not

only did this provide more useable wood per tree, but

it also reduced the logistical problems of reseeding

and — for that band of hardy conservationists now

tramping the woods in search of nature, the red-

cheeked warbler, see Allison v. Froehlke, 5 Cir., 1973,

F.2d ____ [No. 72-2219], a pure environment, and

possible class actions — it enhanced the aesthetic

quality of a now-stumpless forest.

By marketing a shear employing this basic concept

of the Meece-Dew design without a license from the

patent owner, the defendant White has infringed on

the dominant patent of the Plaintiff. Accordingly, this

case is reversed and remanded to the District Court

for imposition of the appropriate remedies.

REVERSED AND REMANDED.

Adm. Office, U.S. Courts—Scofields’ Quality Printers, Inc., N. O., La

CY AIR ee TEN EM FSET

je RIS ea See

47a :

APPENDIX C

United Staies Court of Appeals

FOR THE FIFTH Circuit

October Term, 19 72

‘ No. 71-2032

—_-_ll

D. C. Docket No. 1443

HARRINGTON MANUFACTURING CO., INC.,

Plaintiff-Appellant-Cross Appellee,

versus

IDAS B, WHITE,

Defendant-Appellee-Cross Appellant,

Appeal from the United States District Court for the

Northern District of Florida

Before BROWN, Chief Judge, GOLDBERG and MORGAN, Circuit Judges,

TUDGMENT

This cause came on to be heard on the transoript of the

record from the United States District Court for the Northern

District of Florida, and was argued by counsel;

ON CONSIDERATION WHEREOF, It is now here ordered and adjcdged

by this Court that the judgment of the said District Court in this

cause be, and the same is hereby, reversed;

and that this cause be,

and the same

is hereby remanded to the said District Court with

directions in accordance with the opinion of this Court;

It ig further ordered that defendant-appellee-cross appellant

pay to plaintiff-appellant-cross appellee the

taxed by the Clerk of this Court,

costs on appeal to be

March 13, 1973

Issued as Mandate: JUN 15 1873

Se ea oe ee

LBS JO

48a

United States Court of Appeals

No. 71-2032

HARRINGTON MANUFACTURING CO., INC.,

Plaintiff-Appellant-

Cross Appellee,

versus

IDAS B. WHITE,

Defendant-Appellee-

Cross Appellant.

Appeals from the United States District Court for the

Northern District of Florida

ON PETITION FOR REHEARING AND PETITION

FOR REHEARING EN BANC

(Opinion March 13, 1973, 5 Cir., 1973, .__. F.2d ___).

(June 7, 1973)

Before BROWN, Chief Judge, GOLDBERG and

MORGAN, Circuit Judges.

PER CURIAM: The Petition for Rehearing is DE-

NIED and no member ot this panel nor Judge in regu-

5

3

q

49a

2 HARRINGTON MFG. CO., INC. v. IDAS B. WHITE

lar active service on the Court having requested that

the Court be polled on rehearing en banc, (Rule 35

Federal Rules of Appellate Procedure; Local Fifth Cir-

cuit Rule 12) the Petition for Rehearing En Banc is

DENIED. y

Adm. Office, U.S. Courts—Scofields’ Quality Printers, Inc., N. O., La

RP rr PATRI OY OIE ARORA AF ROMO I HMMS TR ANE PIN

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50a

APPENDIX E

F. W. MEECE ETAL 3,327,745

1967

June 27,

TREE CUTTER DEVICE

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TREE CUTTER DEVICE

Filed Oct. ., 1966 3 Sheets-Sheet :

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TREE CUTTER DEVICE

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United States Patent Office

3,327,745

Patented June 27, 1967

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The lumber and pulpwood industries require large

quantities of logs each day order to maintain coa-

tinuous operation. At one time all of these logs were 10

supplied by crews of men with axes and saws workine

their way through a tract of woodland. Within the last

. twenty years, chain saws operated by small gasoline mo-

tors were introduced and this greatly reduced the actual

physical labor involved in felling a tree. Althouch a 15

great number of chain saws are still in use by lumber-

men, the diminishing supply of labor and its increasing

cost have forced the lumber and pulpwood industries to

look for other means for felling trees at less cost and 20

ercater speed. The trend now clearly seems to be toward

cutting devices mounted on tractors or other vehicles, and

powered by one or more hydraulic pistons. One such

tractor-mounted cutting device can do the work of many

men equipped with chain saws. The following patents are 25

representative of those that have issued since 1940 on

tree cutting devices mounted on tractors or similar vchi-

cles: 2,214,334, 2,228,635, 2,493,696, 2,529,934, 2.565.-

252, 2.697.459, 2,751,943, 2,820,493, 2.845.101, 2.876,-

816, 2.955.631. 2.981.301, 3.059.677, 3.122.184, 3.183.- 30

949, 3.183.952. 3.183.983, 3,183,954, 3,196,726, 3,196.-

YUL, and 3,230,988.

Devices of the above type have the advantage that (a)

the tractor can move through heavy underbrush more

quickly and easily than men with chain saws. (b) tree

felling is less at the mercy of unfavorable weather and

soil conditions, (c) the comparatively delicate and

erratic performance of chain saws is avoided, and (d)

the movement of the tractor through a wooded area in

the normal course of its trce felling operations automati 40

cally smooths the way for subsequent log removing op-

: erations by crushing down the heavy undetbrush which

: often surrounds the trees.

Since the basic idea of mounting hydraulically driven

shears on a tractor and using it to cut dewn trees is now

S4a

about thirty years old (see Knight Patent 2.214.334), the 45

inventors in this field have primarily directed their at-

tention toward solving certain problems associated with

this basic operation.

Cre problem which has not beea selved thus far is

the problem of being able to cut trees se that the «tum: 50

vill fotfow the ceateur of the croun! vy. fies

en an unhiil sic,< or on a downhill slope. This problem

hos probably escaped the attention cf many inventors be-

couse so many logging operations are carricd out on

essentially level ground. However, the problem is an im-

portant one since with the increasing use of wheeled or

tracked vehicles to remove logs after they are felled.

every precaution must be taken not to leave stumps that

will obstruct or disable the wheels or tracks of such

vehicles. When the wheel or track of a log hauling vehicle 60

is disabled by a protruding stump, the entire logging op-

eration is often halted, which is both expensive and wasie-

ful of machines and manpower.

Furthermore. even groun! which seems to be quite

level. is not really level insofar as a tractor is concerned 65

because the presence of fallen trees, stump holes, old

stumps and heavy brush in the area where the tractor is

to cut timber in effect makes the ground quite unlevel.

In fact, due to the presence of fallen trees, stump holes, _

old stumps and heavy brush, the tractor is probably not ad

level 50% of the time.

ba

The present invention relatzs to an arrangement for

use primarily on tractors whereby, through the use of

fluid operated shears, it becomes possible to station the

shears at any desired point near the lower part of a tree

7 and thereafter operate the shears to cut through the trees

at or very near the level of the ground so that the top

surface of the remaining stump can be made substantially

parallel to the ground regardless of the contour of the

ground and regardless of the presence of fallen trees,

19 stump holes, old stumps and. heavy brush. The cutting

device of this invention permits better adjustment of the

cuttine blades, anstc both before and during the cutting

operation. Tiess may be cut or sheared closer to the

ground tian by aor other means. This results in more

15 wood utilization and a better quality of wood.

When a tractor equipped with the tree-cutting device

of this invention is also equipped with a heater or an air-

conditioner, tree cutting work can be carried on during the

entire year at peak efficiency, regardless of the weather,

20 enabling an operator to cut many times as much, even

in heavy underbrush, as his walking chain-saw-carrying

counterpart. There is no necd to postpone tree cutting

operations until the underbrush is cleared out. The pres-

ent invention takes most of the physical labor out of

RPM RL TSP SS BEET

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| resceding equipment which is later used over the cut f

: device of this invention delivers many times the produc-

35 A primary object of this invention is to provide a

mounting for a timber shezr device v. Lich is adjustable

to position the bade of the timber shear device parallel

12 the eround, reeurdless of the slope of the ground.

A fariner = djcct is to previde a timber shear device.

40." 4 may bo ated oth as to the heicht and the

Stor’ af the ero al.

trees and cuid> elements to control the direction or fall

of trees and eliminate or reduce the risk of damage to

the vehicle or injury to its operator.

Suil ancther ebject of this invention is to provide 2

5 _ cuter of the wpe described, which 3s simole in Operation,

: cconomical of manufacture and sufficicntly rugged to

: “wehsaad the severe conJitioas resulting from its field of

: ene ment.

With the foreeoine and 2nd other objects in view, al!

53 ©! which will become clearer as the description pro-

cee. the invention comix. of certain novel details of

com truction aed combinations of parts hereinafter morc

fully doseribet ord poimted out in the claims, it being

tcahesteed that Shanges may be made in construction aad

Gy tase ment of she party without departing from the spirit

et the invention ay cleimed.

in the accenagvayioz drawings preferre! forms of the

im ciea have been shown. in which:

FIGURE FT sews a perspective view of our improved

63 tunber shear mowing structure:

Pik.) RE > a partial plan view ticreof with the blade

epen:

PMGOURE 3 iy a partial plan view. thereof showing the

Ihasie ch- wel: o

SO ERGLKES 4 and 5 ase sue elevstions along 4 -4 and

S— 5 tespectively of DKGURE 3;

ete 8 6h) ae

e

3

. FIGURE 6 is a side elevation of another embodiment

of the invention; and

FIGURES 7 and 8 are side elevations showing how the

timber shear of this inveation would work or. inclined

slopes. 5

ee ee ee

56a

shearing device of this invention is mounted.

The main element of the shearing device is an elon-

gated blade member 7 that is preferably gencrally L-

shaped in overall plan view, although the precise

is not critical, One end of (i.e. the inner end) said blade

member 7 is mounted on a pivot pin 6 so that the blade

can be pivoted through a limited arc. The pivot pin 6

is securely fixed between two fixed jaw members 3 and 4

that may be considered as generally L-shaped. The jaw

members 3 and 4 are preferably provided with teeth to

assist in gripping the tree that ix to be cut.

The jaw members 3 and 4 are disposed in a generally

parallel relationship to each other and are held apart a

fixed distance by one or more spacer means 5 of the

ly

jaw members 3 and 4 by means of pins 11 and also pivot-

ally connected to an extension 8 welded on the outer

end of the blade member 7 by means of pins 9. If desired,

a single cylinder and piston means can be used rather

than the two shown. In operation, the cylinder and pis-

ton means 10 (when supplied with fluid pressure) move

the blade 7 toward and to a limiied extent between fixed

jaws 3 and 4 to thereby cut through a tree trunk.

Referring now to the support arrangement, it will be

noted that two generally parallel supporting arms 15

and 15° have their front ends attached to a beam 14 at

spaced apart points and the rear ends supporting arms

15 and 15’ are adapted to be pivotably attached to suit-

able pivot points 16 and 16’ located on the sides of ve-

hicle 1.

A lifting means in the form of a hydraulic cylinder

19 is provided so that by having its upper end connectcd

tw the vehicle 1 and its lower end connected to the beam

14, the beam can be suitably raiscd or lowered. FIGURE

6 shows another arranzement wherein the beam 14 can

he positioned at any desired level by a cylinder 28 mounted

at an angle to the horizontal and which is secured by a

bolt 29 to the sidc of the tractor body, and by pins 30 to

the beam 14.

An important feature of novelty of this invention is the <

putichar way iv siich we jw memirer, are connecied

to tae beam 14. We have discovered that these jaw medi-

ber shoulu sirst of all be mounted for vertical pivoial

movement with respect to the elongated horizontally dis-

posed beam 14, preferably by means of a pluraiity of ©

pivot members 13. In addition to said pivetal mountin:.

there should be a flexitic interconresiing ivy Foiveen

sald jaW MEMUSTS APG ews besr: i4, such feiss inter-

connectiag means ‘2rvirg to ectabiivh the srosi cum ore

through which the jow iat ber can Desly tors Us -

re-pect .¢ the be:.m 14.

40

45

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57a '

One form of a suitable flexible interconnecting means

is shown in FIGURES 1-5, and is seen to consist of an

upstanding post member 25 located on beam 14. c.:ble

** ><a bar 23 (having a plurality of holes 24 ihesci.:) 635

stct extend between post member 25, and a lug 21 lo-

cated on the upper fixed jaw 3. The holes 24 in bar 23

and a series of holes 40 in post member 25 can be aligned

2nd a bolt 27 inserted therethrough so as to establish

the maximum extent to which the fixcd jaws 3 and 4 70

can pivot about the beam 14.

FIGURE 6 shows another flexible interconnecting

means comprising an upstanding post 31 located on beam

14 that has a tubular bar 32 extending therefrom. Onc

end of chin 4 is connected to car 34 on the upper jaw

4

member 3, and at the other end is brought over the tubu-

lar member 32. The end of the chain has a hook 35

which may be connected to any desired link. The maxi-

mum extent to which jaw members may pivot with re-

5 spect to the beam 14 may be adjusted by unhooking the

chain at hook 35, setting the jaws to the desired position

and then pulling the chain taut and hooking it.

. With the above described arrangements, an operator

usually first adjusts the level of the shear blade with re-

10 spect to the ground by first supplying fluid pressure to

cylinder 19 so as to raise or lower the beam 14 to the

desired level. The operator then checks to make sure that

the cable 22 (or chain 33) has enough slack in it so that

that jaws and blade can rest cither on the ground near

15 the base of the tree or only a shoit distance above ie

tound and parallel to it. If the jaws and biade do net

rest in the aforesaid desired Positions, then the operator

should adjust the cable or chain until there is sufficient

slack to permit these positions. As a general rule, the oper-

20 ator can orerate over a considerable portion of a wooded

tract by providing sufficient slack so that the plane of the

fixed jaws can drop freely to the position shown in FIG-

URE 7 (i.e. up to about 45°) or raise to about 45° as

is shown in FIGURE 8.

25 ~—siIt is thus seen that the blade is able to cut off a tree

so that the surface of the remaining stump conforms to

the contour of the ground and does not project above the

sround to a sufficient degree to present an obstacle to the

movement of other vehicles.

30 The aforesaid flexible interconnecting means of this

invention not only permits the blade and jaws to follow

the contour of woodlands with an undulating surface, but

it also affords a measure of protection to the jaws and

blade after the tree is cut and is falling. In other words,

35 falling trees topple until the top of the tree hits the

ground, but when the top of the tree hits the ground,

the severed trunk portion often momentarily is fulcrumed

into the air by virtue of the branches on the tree, and

immediately thereafier the raised severed trunk portion

45 trenk could casily break the blade and/or jaws. Our ar-

rangement provides some “give” so that cven if the sev-

ered trunk slams down on the jaws and blade, this ferce

is lareely transmitted to or absorbed by the cround uron

which the jaws and blade are resting by virtue of the

59 pivotal connection to beam 14 and the Aicxibe intercon-

necting means. Our invention is therefore quite valuavie

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tration, the blade 8 and the piston 10 are shown raised

slightly above the ground.) In FIGURE 7 the chain or

cable 22’ is shown as being slack and in FIGURE 8 taut.

63 However, it would also be possible to have the chain or

6, and a chain or cable in FIGURES 7 and 8, the b.-'c

70 concept is that of having a means for varying tic 2-2

of the plane of the jaw members with respect to the besia

13. Consequently, no invention would be involved is r--

placing flexible cable 22 or chain 33 with an obvious

equivalent. such as a hydraulic cylirder or in using a

75 catc or chain in conjunction with a flexible cylinder or

heavy spring. or in wing a chain or cable ia cone ctien

with a turnbuckle, or 2 pete witty or bre eta

his thes scen hse the pic ont bocce preratos a

hydraulically operated tree-cutting device which can cas-

ily be mounted on the front end of a crawler-ivpe tractor

and which can utilize the existing hydraulic system ef the

tractor for both moving the blade and positioning the

% blade with respect to the tree to be cut. The special way

in which this cutting unit is mounted permit. the operator

to approach very closely to a tree and to cut cff the tree jpg

cleanly at virtually ground level regardies< of the incline

of the ground.

While the invention has been particularly described in

connection with trees, it will be understood that it is 2!so

applicable to heavy brush and foliage that are not exactly 75

classified as trees. Also, whereas the invention has been

u

Pd iyecPud ds Men nest ce

59a

Particularly described in relation to tractois, the invention

could just as well be used with a number of other types

of vehicles that are not strictly characterized as tractors.

In conclusion, while there has been illustrated and de. .

scribed some preferred embodiments of our invention. it

is to be understood that since the various details of con-

struction may obviously be varied considerably without

really departing from the basic principles and teachings ct

this invention. we do not limit ourselves to the precise

constructions herein disclosed and the right is specifically

reserved to encompass all changes and modifications com-

ing within the scope of the invention as defined in the

appended claims. Having thus described our invention.

what we now claim :s new und desire to secure a United

Siates Letiers Patent on is set forth in the following

chai es.

cal is Claimed is:

\n improved tree cutting device including:

‘4t) a Cutting blade.

(h) one end of said cutting blade being pivotably

mounted with respect to a pair of fixed iaw mem-

hers.

(co? Maid operated evlinder and piston mean. ietercon

eecting said pair of jaw members and st cuttin:

Whude.

“ 4d) two reonerally parallel supportun aim. havin

their rear ends adapted to be pivetably attached to

a vehicle,

(c) pivot means for pivotally interconnecting said two

generally parallel supporting arms and said pair of

fixed jaw members. so that said pair of fixed jaws

can have limited pivotal movement about a hori

zontal axis.

fi) @-sihle inte ee 9» cans interconnected b-

tween sud two cencrally parallel supporting stm,

and said pair of fixed jaw members which cers + +

limit tte usta ett re thromeh which ii - '

ou

ss

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ot

45

vn uaproved tree cutting device including: 55

(a) a cutting blade,

(b) one end of said cutting blade being pivotably

mounted with respect to a pair of fixed jaw members,

(c) fluid operated cylinder and piston means intercon-

blade,

5 necting said pair of jaw members and said cutting

id) said fixed jaw members being mounted for ver-

lical pivotal movement about an elongated horizon-

tally disposed beam, and said fixed jaw members be-

lo ing addilionally connected to said elongated hori-

zontally disposed beam by ficxible interconnection

means so that said fixed jaw members are free to

move through a limited pivotal arc,

‘¢€) two generally parallel supporting arms having their

oxapheapetsinaterd

i

60a

3 front ends attached to said beam and having their

rear ends adapted to be pivotably attached to a ve-

hicle, and

“+ means for raising and lowering said beam.

’. An improved tree cutting device according to claim

-bercin said flexible interconnection means comprises

a cable.

s» improved tree cutting device according to claim

s herein said flexible interconnection means comprises

esi.

25 «. .\ tree culting device according to claim 2, wherein

: means for raising and lowering said beam com-

p *:s a hydraulic cylinder and piston.

*. A tree cutting device according to claim 2, wherein

* 47 jaw members are provided with a plurality of teeth.

30 = 7. An improved tree cutting device according to claim

2. wherein said flexible interconnection means includes

an upstanding post on said beam, a connection means on

the top of said jaws, and a flexible element interconnect-

‘ns ssid upstanding post and said connection means.

35 8. An improved tree cutting device according to claim

7. »-erein said flexible clement comprises a chain.

%. An improved trec cutting device according to claim

7. wierein said flexible clement comprises a cable.

“10 A tree cutting device according to claim 1. wherein

20

%: Lid

fy cand flevible jaterconnection means comme oc claps

ceoh Uys Peceeabeg cs depen.

References Cited

Pa UNITED STATES PATENTS

35

Seeasoe «6 SD aie... 144—34

2.529,934 1' i950 Gracey et al. _.....__- 144—34

2,565,252 8, 1951 McFaull -..-..._.___ 144—34

2,697,459 12/1954 McFaull -_..-_______ 144—34

60 3.057.599 10/1962 Clatterbuck -..______ 144—34

3,110,477 11/1963 Campbell

WILLIAM W. DYER, Jr., Primary Examiner.

W. D. BROVY, Assistant Examiner.

LE Reid Heri tw * PPPS AONE OES

So yen OO Lali