Appendix — Graham v. John Deere Co. of Kansas City

Supreme Court brief1966

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United States Court of Appeals

FOR THE EIGHTH CIRCUIT.

No. 17,441.

CIVIL.

JOHN DEERE COMPANY OF KANSAS CITY,

a Corporation and DEERE & COMPANY,

a Corporation,

Appellants,

vs.

WILLIAM T. GRAHAM, and GRAHAM PLOW, INC.,

Appellees.

APPEAL FROM THE DISTRICT COURT OF THE UNITED STATES

FOR THE WESTERN DISTRICT OF MISSOURI,

WESTERN DIVISION.

INDEX

Volume I

Complaint 1

Defendant’s Second Amended Answer 3

Plaintiffs’ Reply to Defendant’s First Amended Counter Claim

in Its Second Amended Answer 7

Interrogatories under Rule 33 of the Federal Rules of Civil

ure

Defendant’s Objections to Certain of Plaintiffs’ Interrogatories 1

Ir INDEX

Memorandum and Order on Defendant’s Objections to Certain

of Plaintiffs’ Interrogatories 13

Defendant’s Answers to Certain of Plaintiffs’ Interrogatories 13

Stipulation aur ae

Stipulation 16

Amended Memorandum Opinion, Findings of Fact, and Con-

clusion of Law 17

Judgment 33

Motion for New Trial 34

Order Denying Defendants’ Motion for New Trial _............_ 37

Notice of Appeal ne 39

Stipulation As to Supersedeas Bond and Stay of Judgment

Pending Appeal 39

Supersedéas Bond 40

Order Staying Judgment Pending Appeal 42

Defendants’ Statement of Points on Appeal 43

Defendants’ Designation of Record on Appeal 44

Order for Transmittal of Original Exhibits to the Court of

Appeals 46

Order Extending Time for Filing Record and Docketing Appeal 47

Plaintiffs’ Designation of Record on Appeal 48

Docket Entries 49

Transcript of Proceedings 52

Plaintiffs’ Case—

Charles Theodore Parker—

Direct Exarnination 53

Cross-Examination ___- 86

George Dwight Hunter—

Direct Examination 87

Cross-Examination 116

Re-Direct Examination 118

F. C. Fernton—

Direct Examination 120

Cross-Examination 150

Re-Direct Examination 221

Re-Cross-Examination 233

Defendanis’ Case—

William T. Graham—

Direct Examinaticn _ 239

Clarence T. Fishleigh—

Direct Examination

257

INDEX

Volume II

Clarence T. Fishleigh—

Direct Examination (Continued)

Cross-Examination

Re-Direct Examination

Re-Cross-Examination

Re-Direct Examination _.

Re-Cross-Examination

Re-Direct Examination .

Re-Cross-Examination ....

George Dwight Hunter—

Plaintiffs Case in Rebuttal

Direct Examination ___._.

Cross-Examination

F. C. Fenton, Recalled—

Re-Direct Examination

Re-Cross-Examination

Re-Direct Examination

Re-Cross-Examination _

Re-Direct Examination

Volume III—Exhibits

Plaintiffs’ Exhibit A, Graham Patent No. 2,627,798

Plaintiffs’ Exhibit K, Pamphlet of the Deere 900 Series _

Plaintiffs’ Exhibit O, File Wrapper and Contents of Patent

2,739,518 Granted March 27, 1956, to Elmer A. Rolf _

Static Position —

Plaintiffs’ Exhibit S, 798 Clamp at the Full Deflection Posi-

tion of the Spring

Plaintiffs’ Exhibit T, Showing Deflection of the Shank Be-

tween the Two Points of Support by Dotted Line Drawn

Down Below the Bottom of the Shank and at Top of Shank

Plaintiffs’ Exhibit U, Sectional View of the Changed 798

Clamp with the Hinged Member Inverted _

Plaintiffs’ Exhibit V, Clamp under Stress Position and Fully

Depressed

Plaintiffs’ Exhibit W, Dotted Line Showing the ee of the

Shank

Plaintiffs’ Exhibit P, Soft Copy of the Rolf Patent No. 2, 739, 518

Plaintiffs’ Exhibit Q, Opinion Letter of Judge Jus. B. Dooley,

Order, Findings of Fact, Conclusions of Law and Judgment

Plaintiffs’ Exhibit R, Sectional View of the 798 Clamp in the

IV INDEX

Defendants’ Exhibit 1-A, Colored Drawing of the Cockshutt

Clamp 655

Defendants’ Exhibit 1-B, Colored Drawing of the Cockshutt

Clamp .. 657

Defendants’ Exhibit 4, File History of the Patent 798 __...._. 659

Defendants’ Exhibit 5, Book of Prior Art Patents __..._.. 705

Defendants’ Exhibit 7, Hypothetical General Claim — ~~... 795

Defendants’ Exhibit 8A, Claim 1 from 798 File Wrapper .___. 796

Defendants’ Exhibit 8D, Claim 7 from the 798 File History _. 797

Volume IV—Exhibits

Defendants’ Exhibit 30, “No. 600 Tool Carrier Survey” by E. H.

Lee, March, 1953, Product Research Department Copy .._... 799

Defendants’ Exhibit 31, “No. 660 Tool Carrier Survey” by

E. H. Lee, April, 1953, Product Research Department Copy 823

Defendants’ Exhibit 32, Correspondence Produced During the

Taking of Depositions of the Employees at Moline, Illinois,

of Deere & Company - __... 844

Defendants’ Exhibit 33-A, ‘Drawing XCA- 318-N _ lean ee

Defendants’ Exhibit 33-B, Drawing XCA-318 __.. >=” 879

Defendants’ Exhibit 34-A, Drawing Attached to Letter of

October 23, 1953, Part of Correspondence with Exhibit 32 _ 881

Defendants’ Exhibit 34-B, Another Drawing Attached to Same

Letter Se ic, <n iaiainncs!

Defendants’ Exhibit 38, Drawing XCL-134-N . OTT

Defendants’ Exhibit 39, Drawing XCL-135-N _ cae eh Le ee 887

Defendants’ Exhibit 41, Drawing Attached to Letter in Cor-

respondence, Letter Being Dated December 8, 1953 _..... 889

Defendants’ Exhibit 44, Copy of the Hunter Patent, No.

2,777,378 891i

Defendants’ Exhibit No. 45-A, Drawing ‘of ‘the Fixed Member 895

Defendants’ Exhibit No. 45-B, Drawing of the Pivoted Member 897

Defendants’ Exhibit 46, Wiha of Final Production Model

of the 100 Series - 899

Defendants’ Exhibit 52-A, “Photograph ae a Part of os: Test

Setup . are 901

Defendants’ Exhibit 52-B, Photograph ‘of 2 a . Part of the Test

Setup _... 901

Defendants’ Exhibit 52-C, Photograph of a Part of the Test

Setup _ 903

Defendants’ Exhibit 52-D, Photograph of a Part of the Test

Setup 903

Defendants’ Exhibit 53, Judge Dooley’s Letter Opinion Dated

September 9, 1953, in Civil Action No. 1469 in the United

States District Court for the Northern District of Texas,

Amariilo Division, Styled Jeoffroy Manufacturing, Inc., v.

Graham 905

Defendants’ Exhibit 54, Judge Dooley’s Letter a t to

Counsel in the Same Case Dated December 18, 1953 _____

. 916

Proceedings in the United

for the Eighth Cirenit tates Court of Appeals

Opinion, Matthes, J. —— TRADE ee 923

WO cs nna 923

Petition for rehearing === —t—«=«é

pr denying petition for rehearing. 937

erk’s certificate (omitted in printing) ~~

- Order allowing certiorari

-~E~wae —--- Se ee enantio 945

WILLIAM T. GRAHAM AND GRA- }

HAM PLOW, INC., a corporation, Civil Action No.

Plaintiffs, 12,538-2

vs. > Infringement of

JOHN DEERE COMPANY OF KAN- Letters Patent

SAS CITY, a corporation, No. 2,627,798

Defendant. )

COMPLAINT.

(Filed September 24, 1959.)

Now come the Plaintiffs, WILLIAM T. GRAHAM and

GRAHAM PLOW, INC., and for their complaint against

Defendant, JOHN DEERE COMPANY OF KANSAS CITY,

state as follows:

1. This is a suit for infringement of Letters Patent aris-

ing under the Patent Laws of the United States.

2. Plaintiff, WILLIAM T. GRAHAM, is a citizen of the

United States and a resident of Amarillo, County of Potter,

State of Texas. Plaintiff, GRAHAM PLOW, INC. , is a pri-

vate corporation and duly organized under the laws of

the State of Texas, with a principal place of business at

Amarillo, County of Potter, State of Texas.

3. Defendant, John Deere Company of Kansas City, is

a corporation organized and existing under and by virtue

of the laws of the State of Missouri, having a principal

place of business at Kansas City, Jackson County, Missouri,

within the Western District, Western Division, of Missouri.

4. Plaintiff, William T. Graham, has been and now is

the owner of Letters Patent of the United States No. 2,627,-

798, issued February 10, 1953, for “Clamp for Vibrating

Shank Plows”, which were duly and legally issued to him

by the United States Patent Office. By the grant of said

Letters Patent there was secured to the grantee, his heirs,

legal representatives and assigns, for the full term of seven-

Original Print

—_ ~~

teen years, from.and after the date of issuance of said

Letters Patent, the exclusive right and liberty of making,

using or vending to others to be used the said invention

throughout the United States and territories thereof, as

will more fully and at large appear in and by said Letters

Patent or duly certified copies thereof which will be in

court produced as may be required.

5. Plaintiff, Graham Plow, Inc., has been duly author-

ized by Plaintiff, William T. Graham, to manufacture, use

and sell devices embodying the inventions disclosed and

claimed in the Letters Patent aforesaid.

6. Plaintiffs have been and now are engaged in the busi-

ness of manufacturing and selling deep chisel plows and

equipment used in connection therewith, and have ex-

pended large sums of money in the manufacture, sale and

advertising of such devices and have built up a large and

substantial business in such manufacture and sale of said

devices.

7. Said Letters Patent of the United States No. 2,627,798

have been held valid and infringed by the Court of Appeals

for the Fifth Circuit (Jeoffroy Mfg., Inc., v. William T.

Graham, William T. Graham v. Jeoffroy Mfg., Inc., 219

F.2d 511; 256 F.2d 360), and again held valid by said Court

(William T. Graham and Graham-Hoeme Plow Co., Inc.,

v. Cockshutt Farm Equipment, Inc., 256 F.2d 358).

8. Defendant, John Deere Company of Kansas City, in

wilful infringement of said Letters Patent No. 2,627,798,

has manufactured, sold and used apparatus embodying the

inventions disclosed and claimed in said Letters Patent

No. 2,627,798 and will continue to manufacture, sell and

use said apparatus unless enjoined by this Court.

9. That said acts of infringement have been committed

within the past six years and have been and are now being

committed in Kansas City, Jackson County, Missouri,

within the Western District, Western Division, of Missouri,

and elsewhere in the United States of America.

10. Defendant has had notice of Plaintiffs’ said Let-

ters Patent No. 2,627,798, and Defendant has continued to

manufacture, sell and use said apparatus embodying the

inventions disclosed and claimed in said Letters Patent in

infringement thereof.

WHEREFORE, Plaintiffs demand a preliminary and final

injunction against further infringement by Defendant, and

those affiliated with or controlled by Defendant; an ac-

counting for profits and damages; that the amount of such

damages be increased to a sum not ex ing three times

the amount of such damages; an assessment of costs and

attorney’s fees against Defendant, and for such other and

further relief as the Court may deed equitable and just.

Fishburn and Gold

1217 Commerce Trust Building

Kansas City 6, Missouri

By /s/ Claude A. Fishburn

/s/ Orville O. Gold

DATED this 24th day of September, 1959

DEFENDANT’S SECOND AMENDED ANSWER

(Filed December 21, 1961)

Defendant, JOHN DEERE COMPANY OF KANSAS

CITY, with leave of Court, files this its Second Amended

Answer in response to Plaintiffs’ Original Complaint,

respectfully alleging as follows:

1. The allegations of paragraph 1 of the Complaint are

admitted, but Defendant denies that it has infringed the

patent in suit.

2. The allegations of paragraph 2 are admitted.

3. The allegations of paragraph 3 are admitted.

4. Answering paragraph 4 Defendant admits that U. S.

Patent No. 2,627,798 was issued on February 10, 1953, te

Plaintiff, William T. Graham, and that he is the owner

thereof. All other allegations of paragraph 4 are denied.

7. The cases cited in paragraph 7 of the Complaint

speak for themselves, but the allegations of said paragraph

are-admitted, except that it is denied that the issue of

validity was litigated or decided in Jeoffroy Mfg. v.

Graham, 256 F.2d 360. Defendant would further show

the Court that in Graham v. Cockshutt, 256 F.2d 358, the

Court held that the patent was not infringed. Regardless

of what the holdings were in said cases, they are in no way

binding upon this Defendant in this cause.

8. The allegations of paragraph 8 are denied.

9. The allegations of paragraph 9 are denied.

10. The allegations of paragraph 10 are denied. De-

fendant further says that it was first notified of Plaintiffs’

charge of infringement when it was served with summons

in this cause.

Additional Defenses

By way of further defense Defendant alleges as follows:

11. Patent No. 2,627,798 is invalid and void for lack

of novelty and invention.

12. Said patent is invalid and void because the inven-

tion, if any, therein disclosed and claimed, or its equiva-

lent, was known or used by others in this country before

the alleged invention thereof by the applicant, William T.

Graham. Persons having such knowledge or making such

use were, among others, Glencoe Manufacturing Co.,

Glencoe, Minnesota, its employees, Elmer A. Rolf and

Howard A. Hoefer, Glencoe, Minnesota, and its customers.

1%. Said patent is invalid and void because the inven-

tion, if any, therein disclosed and claimed, or its equiva-

lent, was in public use or on sale in this country more than

one year prior to the date of the application for such patent

in the United States. Persons making such public use or

sale were Glencoe Manufacturing Co., Glencoe, Minnesota,

its employees and its customers.

14. Said patent is invalid and void because the inven-

tion, if any, disclosed and claimed therein, or its equiva-

lent, was made in this country by another person or persons

who had not abandoned, suppressed, or concealed it, such

other persons being Elmer A. Rolf and/or Howard A.

Hoefer, Glencoe, Minnesota, employees cf Glencoe Manu-

facturing Co.

15. Said patent is invalid and void because the differ-

ences between the subject matter sought to be patented

and the prior art are such that the subject matter as a

whole would have been obvious at the time the invention,

if any, was made to a person having ordinary skill in the

art to which said subject matter pertains.

Defendant cites the following patents and devices as

showing the state of the prior art:

- United States Letters Patent

Patent Date of Issue Patentee

211,003 Dec. 17, 1878 Dunbar

231,268 Aug. 17, 1880 Carter

284,278 Sept. 4, 1883 Cobb

287,965 Nov. 6, 1883 Rix

417,775 Dec. 24, 1889 Drader, et al.

503,288 Aug. 15, 1893 Moore

1,141,804 June 1, 1915 Lamprell et al.

1,805,599 May 29, 1931 Roberts

1,982,862 Dec. 4, 1934 Erdman

2,029,249 Jan. 28, 1936 Nell, et al

2,493,811 Jan. 10, 1950 Graham

Foreign Patents

Australian

1,056 March 19, 1926 Prior

111,910 Nov. 8, 1940 Traeger

Danish

57,391 Mar. 18, 1940 Petersen

Prior Devices

A spring clamp devised, manufactured and marketed by

Jeoffroy Mfg., Inc., Amarillo, Texas, as early as January

1949, such clamp being known as the Jeoffroy SC-580

spring clamp.

A spring clamp devised, manufactured and sold by Glen-

coe Manufacturing Co., Glencoe, Minnesota, said clamp

having been made and tested as early as August 1949,

offered for sale as early as March 1950, and actually sold

and delivered as early as May 1950.

16. By reason of the proceedings in the United States

Patent Office in the prosecution of the application for

Patent No. 2,627,798 Plaintiffs are estopped from maintain-

ing the claims of such patent in such scope as to cover or

embrace any device manufactured, used or sold by De-

fendant.

WHEREFORE, Defendant prays that all relief sought by

Plaintiffs be denied, that the Complaint be dismissed, and

that Defendant be discharged from all liability and recover

its costs and such other relief to which it may be entitled.

FIRST AMENDED COUNTERCLAIM

For its First Amended Counterclaim against Plaintiffs,

the Defendant, JOHN DEERE COMPANY OF KANSAS

CITY, alleges as follows:

1. This counterclaim involves an action for declaratory

judgment and for further relief in a case of actual con-

troversy involving the validity and alleged infringement

of United States Letters Patent No. 2,627,798 and juris-

diction of this Court arises under 28 U.S. C. §2201 and also

under the Patent Laws of the United States.

2. Defendant, JOHN DEERE COMPANY OF KANSAS

CITY, is a corporation of the State of Missouri, having a

principal place of business at Kansas City, Missouri, within

the Western District, Western Division of Missouri.

3. Plaintiff, WILLIAM T. GRAHAM, represents that he

is a citizen of the United States and a resident of Amarillo,

County of Potter, State of Texas and that he is the owner

of United States Letters Patent No. 2,627,798. Plaintiff, ~—

Graham Plow, Inc., represents that it is a private corpora-

tion and duly organized under the laws of the State of

Texas, with a principal place of business at Amarillo,

County of Potter, State of Texas and that it has been duly

authorized by Plaintiff, William T. Graham, to manu-

facture, use and sell devices embodying the inventions dis-

closed and claimed in said Letters Patent No. 2,627,798.

4. Defendant avers that said United States Letters’

Patent No. 2,627,798 are invalid and void and without any

force and effect and are not infringed by Defendant for the

reasons set forth in paragraphs 11 through 16 of Defend-

ant’s foregoing Second Amended Answer, and Defendant

reavers and reaffirms the averments of said paragraphs as

if herein fully set forth.

5. Defendant avers that Plaintiffs have asserted and are

now asserting in this action that said United States Letters

Patent No. 2,627,798 have been and are now being infringed

by this Defendant and Defendant denies that it has in-

fringed said patent. An actual controversy therefore exists

between Plaintiffs and Defendant.

WHEREFORE, Defendant prays:

1. That the Court declare that said United States

Letters Patent No. 2,627,798 are invalid and void and

without any force or effect.

2. That the Court declare that Defendant has not in-

fringed in any way upon the aforesaid United States

Letters Patent No. 2,627,798.

3. That Defendant have judgment for its costs in this

suit and such other and further relief as may be proper.

Gibson, Ochsner, Harlan, Kinney & Morris

630 Amariiio Building

Amarillo, Texas

By /s/ S. Tom Morris

Of Counsel

Scofield, Kokjer, Scofield & Lowe

1325 Rialto Building

Kansas City, Missouri

By /s/ Thos. E. Scofield

Of Counsel

Attorneys for Defendant

PLAINTIFFS’ REPLY TO DEFENDAN‘’S FIRST

AMENDED COUNTER CLAIM IN ITS

SECOND AMENDED ANSWER

(Filed December 27, 1961)

Plaintiffs for their reply to Defendant’s Counterclaim

state as follows:

1. In reply to. paragraph 1 of Defendant’s Counter-

claim, Plaintiffs state that the question of validity and in-

fringement of the Letters Patent in suit No. 2,627,798 is

the issue under the Complaint and Second Amended

Answer and it is immaterial whether or not an action for

a declaratory judgment is involved.

2. Plaintiffs admit the allegations of paragraphs 2, 3 and

5 of Defendant’s First Amended Counterclaim.

3. Plaintiffs deny the allegations of paragraph 4 of De-

fendant’s First Amended Counterclaim and state that said

Letters Patent No. 2,627,798 are valid and have been and

are being infringed by Defendant.

WHEREFORE, the Plaintiffs deny that Defendant is

entitled to the relief prayed for in the Defendant’s First

Amended Counterclaim or to any relief whatsoever, and

pray that Defendant’s First Amended Counterclaim be dis-

missed and that Plaintiffs be granted in all respects the

relief prayed for in the prayer of their complaint herein.

Fishburn and Gold

By /s/ Claude A. Fishburn

Attorneys for Plaintiffs

December 26, 1961

INTERROGATORIES UNDER RULE 33 OF THE

FEDERAL RULES OF CIVIL PROCEDURE

(Filed December 4, 1959)

Now come the plaintiffs in the above-entitled cause and

propound the following interrogatories to the defendant,

John Deere Company of Kansas City, under Rule 33 of the

Federal Rules of Civil Procedure, to be answered by an

officer of the defendant having knowledge of the facts:

* * *

Interrogatory No. 2

State which of said patents and printed publications,

if any, listed in paragraph 11 of the Amended Answer

herein, discloses a mounting as set forth in Interrogatory

No. 1 having all of the following parts listed in the left-

hand column herein below, such parts being capable of the

corresponding functions listed in the right-hand column

herein below:

PARTS

(1) A fixed member

(or bracket)

(2) Ears

(3) A shank attaching

member between

the shank and the

fixed member for

attaching the

shank to the fixed

member

(4) Connecting means

(5) A pin

FUNCTION

(1) which is fixed to the trans-

(2)

(3)

(4)

(5)

verse member of the frame

and terminates forwardly of

the transverse member or

beam of the plow whereby

the shank of the ground

working tool may be secured

to the fixed member.

on the fixed member having

openings for attaching a

plate (shank attaching mem-

ber.)

having an elongated plate

portion provided with an

upper face and having a

longitudinally extending un-

derface in engagement with

the corresponding upper face

of the shank.

for connecting the plate por-

tion of the shank attaching

member to the shank for

maintaining the upper face

of the shank in contact with

the underface of the plate

portion of the shank attach-

ing member.

extending transversely

through the shank attaching

member and engaging in the

ears of the fixed member for

pivotally connecting the

shank attaching member to

the fixed member whereon

the shank attaching member

pivots upon rocking move-

ment of the shank.

(6) A coil spring (6) having one end seated on the

forward end of the fixed

member and extending up-

wardly therefrom.

(7) Connecting means (7) for connecting the forward

end of the shank with the

upper end of the coil spring

so that the spring will ex-

ert pressure on and yieldably

maintain the plate or shank

attaching member in contact

with the fixed member to

maintain the normal plowing

depth of the ground working

tool.

Interrogatory No. 31

State whether or not there is any flexing of the shank

(spring cultivator tooth) in defendant’s accused device

during a plowing operation.

Interrogatory No. 32

State what portion of the length of the shank will flex

during a plowing operation.

Interrogatory No. 33

State what portion of the length of the shank will not

flex during a plowing operation.

Interrogatory No. 38

State whether or nct the alleged Glencoe prior use device

included a mounting (spring clamp) as set out in Inter-

rogatory No. 37 and embodied the following parts and

performed the functions set forth herein below:

PARTS

(1) A fixed member (1)

(or bracket)

(2) Ears (2)

(3) A shank attaching (3)

member between

the shank and the

fixed member for

attaching the

shank to the fixed

member

(4) Connecting means

(4)

(5) A pin

(5)

FUNCTION

which is fixed to the trans-

verse member of the frame

and terminates forwardly of

the transverse member or

beam of the plow whereby

the shank of the ground

working tool may be secured

to the fixed member.

on the fixed member having

openings for attaching a

plate (shank attaching mem-

ber).

having an elongated plate

portion provided with an

upper face and having a

longitudinally extending un-

derface in engagement with

the corresponding upper face

of the shank.

for connecting the plate por-

tion of the shank attaching

member to the shank for

maintaining the upper face

of the shank in contact with

the underface of the plate

portion of the shank attach-

ing member.

extending transversely

through the shank attaching

member and engaging in the

ears of the fixed member for

pivotally connecting the

shank attaching member to

the fixed member whereon

the shank attaching member

pivots upon rocking move-

ment of the shank.

(6) A coil spring (6) having one end seated on the

forward end of the fixed

member and extending up-

wardly therefrom.

(7) Connecting means (7) for connecting the forward

end of the shank with the

upper end of the coil spring

so that the spring will ex-

- ert pressure on and yieldably

maintain the plate or shank

attaching member in contact

with the fixed member to

maintain the normal plowing

depth of the ground working

tool.

* * x

Fishburn and Gold

By: /s/ Claude A. Fishburn

DATED December 4, 1959

DEFENDANT'S OBJECTIONS TO CERTAIN OF

PLAINTIFFS’ INTERROGATORIES

(Filed January 11, 1960)

* * *

Interrogatories Nos. 31 to 33

Defendant objects to Plaintiffs’ Interrogatcries 31 to 33

inclusive, on the grounds that they are not relevant to the

subject matter of the action. These interrogatories ask

for information as to the flexing of the shank in defendant’s

accused device. There is nothing in the patent in suit,

neither in the claims or in the specification, about flexing

of the shank of the device of the patent in suit.

/s/ Thos. E. Scofield

Attorney for Defendant

MEMORANDUM AND ORDER ON DEFENDANT'S

OBJECTIONS TO CERTAIN OF PLAINTIFFS’

INTERROGATORIES

(Filed March 1, 1960)

s* * *

Defendant’s Objections to Interrogatories 31, 32 and 33

are sustained. These interrogatories relate to a flexing of

the shank of the accused device, and appear irrelevant since

such a flexing is not a claim of the patent in suit and Plain-

tiffs do not undertake to otherwise demonstrate the

relevancy of such inquiry.

* *

/s/ Albert A. Ridge

Judge

Dated at Kansas City, Missouri, this lst day of March,

1960.

DEFENDANT’S ANSWERS TO CERTAIN OF

PLAINTIFFS’ INTERROGATORIES

(Filed March 31, 1960)

s * *

Answer to Interrogatory No. 2

No single one of the patents and printed publications

listed in the aforesaid paragraph 11 of the Amended

Answer, standing alone, discloses the specific subject

matter of Interrogatory No. 2.

* * *

Answer to Interrogatory No. 38

In answer to Interrogatory No. 38, the Glencoe prior

use device does not embody the particular structure and

relation of parts as expressed in the specific language of

Interrogatory No. 38.

* +. e

/s/ C. R. Carlson, Jr.

Vice President, John Deere

Company of Kansas City

STATE OF ILLINOIS )

) ss

COUNTY OF ROCK ISLAND )

C. R. CARLSON, Jr., having been duly sworn on oath

deposes and says that he is Vice President of John Deere

Company of Kansas City, defendant in the above action,

that he has read the foregoing answers and that to the best

of his knowledge, information and belief they are true and

correct.

/s/ C. R. Carlson, Jr.

SUBSCRIBED AND SWORN TO BEFORE ME this 29th

day of March, 1960.

/s/ Mary E. Denkhoff

Notary Public

STIPULATION

(Filed May 2, 1962)

The parties by their attorneys hereby stipulate as follows:

i. William T. Graham is the owner of United States

Patent No. 2,627,798, the patent here in suit.

2. Graham. Plow, Inc., is a licensee under said patent,

the terms of its license being as shown by the minutes of

Graham Plow, Inc., and its corporate predecessors, copies

of which minutes are identified as Plaintiffs’ Exhibits B

(letter June 1, 1946, granting corporation use of Graham

patents), B-1 through B-10, for the years 1946, 1948, 1949,

1950, 1953, 1958, and 1959, respectively.

3. Spring clamps in accordance with United States

Patent No. 2,627,798 have never been manufactured or

sold by William T. Graham, Graham Plow, Inc., or its

corporate predecessors.

_4. A spring clamp manufactured and sold by Jeoffroy

Mfg., Inc., known as the Jeoffroy HT-5 spring clamp, one

of which clamps is identified as Plaintiffs’ Exhibit C, was

commercially successful. Said clamp was held to infringe

United States Patent No. 2,627,798 in Jeoffroy Mfg., Inc., v.

Graham, 219 F.2d 511 (5th Cir., 1955).

5. Jeoffroy Mfg., Inc., was held in contempt in the case

of Jeoffroy Mfg., Inc., v. Graham, (5th Cir.) 256 F.2d 369,

by reason of manufacture and sale of spring clamps in

violation of the Court’s decree and order in which United

States Patent No. 2,627,798 was held valid and infringed

by the Jeoffroy HT-5 spring ciamp (Plt. Ex. C). Among

the spring clamps held in contempt were the Jeoffroy

HT-5-A, one of which clamps is identified as Plaintiffs’

Exhibit D, and the Jeoffroy HT-6-AD, one of which clamps

is identified as Plaintiffs’ Exhibit E.

6. Rose Proctor, an employee of Graham Plow, Inc.,

if called as a witness, would testify that the first drawing

of the Graham 798 structure, a copy of which drawing

is identified as Plaintiffs’ Exhibit F, was made by her at

the direction of and pursuant to the instructions of Wil-

liam T. Graham, and that said drawing was completed on

March 19, 1950, that further drawings, identified as Plain-

tiffs’ Exhibits G and H were made by her at the direction

of and pursuant to the instructions of William T. Graham

and were completed respectively on May 16, 1951 and

May 19, 1951.

7. All of the prior patents and prior devices cited and

relied upon by Defendant herein, except the Rix Patent No.

287,965, the Roberts Patent No. 1,805,599 and the Glencoe

clamp, were before the District Court and the Appellate

Court in Jeoffroy Mfg., Inc., v. Graham, 219 F.2d 511 (5th

Cir., 1955), wherein Patent No. 2,627,798 was held to be

valid and infringed, and all of the prior art herein cited

and relied upon by Defendant was before the District and

Appellate Courts in Graham v. Cockshutt, 256 F.2d 358

(5th Cir., 1958), wherein Patent No. 2,627,798 was held

valid but not infringed by the Cockshutt spring clamp there

in issue, one of which spring clamps is identified as De-

fendant’s Exhibit No. 1.

8. The John Deere 650 spring clamp, one of which is

identified as Plaintiffs’ Exhibit I, and the John Deere 100

spring clamp, one of which is identified as Plaintiffs’ Ex-

hibit J, have been sold by Defendant, JOHN DEERE COM-

PANY OF KANSAS CITY, and both of said spring clamps

are in issue in this suit. Plaintiffs charge that the John

Deere 650 spring clamp infringes claim 1 of Patent No.

2,627,798 and that the John Deere 100 spring clamp in-

fringes both claims ! and 2 of Patent No. 2,627,798.

9. The Jeoffroy SC-580 spring clamp, one of which is

identified as Defendant’s Exhibit No. 2, was manufactured

and sold in substantial quantities by Jeoffroy Mfg., Inc.,

as early as January, 1949.

10. Glencoe Manufacturing Co., Glencoe, Minnesota,

first made and tested a spring clamp as early as August,

1949, at which time it was exhibited to the public and

photographed. Commercial manufacture of such clamp

was commenced as early as December, 1949, and said

clamp was offered for sale and actual orders were taken

as early as March 14, 1950. It was advertised for sale in

a printed publication in the United States in April, 1950.

Actual sale and delivery thereof was made as early as May

22, 1950, and other sales were made prior to August 27,

1950. The Glencoe device is exemplified by Defendant's

Exhibit No. 3.

Dated May 1, 1962.

Fishburn and Gold

Attorneys for Plaintiffs

/s/ Claude A. Fishburn

By /s/ Orville O. Gold

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

Attorneys for Defendant

By /s/ S. Tom Morris

Of Counsel

STIPULATION

(Filed May 11, 1962)

It is stipulated by and between the parties to the above-

entitled cause that Deere & Company, a Delaware corpora-

tion, voluntarily appears as a party Defendant in this

action and subjects itself to the jurisdiction of this Court;

That Plaintiffs’ pleading shall apply to Deere & Company

the same as John Deere Company of Kansas City, and that

a a

Deere & Company as a party Defendant in this suit adopts

the answer and other pleadings of the Defendant, John

Deere of Kansas City, and otherwise subjects itself to the

pleadings in this case, the same as if it had been joined as

a party at the beginning of this action.

Fishburn and Gold

/s/ Orville O. Gold

/s/ Claude A. Fishburn

Attorneys for Plaintiffs

/s/ Thos. E. Scofield

/s/ S..Tom Morris

Attorneys for Defendants

May 2, 1962

AMENDED MEMORANDUM OPINION, FINDINGS OF

FACT, AND CONCLUSIONS OF LAW

(Filed March 18, 1963)

On February 8, 1963, this Court entered its Memorandum

Opinion, Findings of Fact, and Conclusions of Law in this

cause. At that time the parties were granted ten days in

which to suggest any proposed changes or modifications

in the said opinion and findings. The suggested changes

and modifications were duly filed by both parties, and

duly considered by the Court, and certain changes and

modifications were considered necessary by the Court.

Therefore, the Memorandum Opinion, Findings of Fact, and

Conclusions of Law entered herein on February 8, 1963,

are hereby set aside and the following Amended Memo-

randum Opinion, Findings of Fact, and Conclusions of Law

are entered in their place:

This: is an action for infringement of United States

Letters Patent Number 2,627,798, which was issued to

plaintiff William T. Graham on February 10, 1953. The

patent was issued for a “Clamp for Vibrating Shank Plows,”

and will hereinafter be referred to as the “798” patent.

Plaintiffs seek a permanent injunction, an accounting, and

damages. Defendants contend that the 798 patent was

void or invalid because of lack of novelty or invention,

because of anticipation, because of a prior use more than

one year prior to the date of the application for such patent,

and further because the subject matter of the patent would

have been obvious to a person of ordinary skill in the art

due to the status of the prior art. Defendants also assert

the claim of “file wrapper estoppel,” that is, that because

of certain proceedings in the patent office during the

processing of the 798 patent, plaintiffs are estopped to

assert infringement by defendants. Defendants also con-

tend that, if the patent is valid, it has not been infringed

and defendants have filed a counterclaim seeking a declara-

tory judgment to the effect that the 798 patent is void and

invalid.

Defendants rely on the prior patents and devices as show-

ing the state of the prior art as follows:

United States Patent

Patent Date of Issue Patentee

211,003 Dec. 17, 1878 Dunbar

231,268 Aug. 17, 1880 Carter

284,278 Sept. 4, 1883 Cobb

287,965 Nov. 6, 1883 Rix

417,775 Dec. 24, 1889 Drader, et al.

503,288 Aug. 15, 1893 Moore

1,141,804 June 1, 1915 Lamprell, et al.

1,805,599 May 19, 1931 Roberts

1,982,862 Dec. 4, 1934 Erdman

2,029,249 Jan. 28, 1936 Noell, et al.

2,493,811 Jan. 10, 1950 Graham

(Plaintiff)

Foreign Patents

Australian

1,056 Mar. 19, 1926 Prior

111,910 Nov. 8, 1940 Traeger

Danish

57,391 Mar. 18, 1940 Petersen

Prior Devices

1. A-spring clamp devised, manufactured and marketed

by Jeoffroy Mfg., Inc., Amarillo, Texas, as early as Janu-

ary 1948, such clamp being known as the Jeoffroy SC-580

spring clamp.

2. A spring clamp devised, manufactured and sold by

Glencoe Manufacturing Co., Glencoe, Minnesota, said

clamp having been made and tested as early as August

1949, offered for sale as early as March 1950, and actually

sold and delivered as early as May 1950.

United States Letters Patent Number 2,493,811 was

issued to plaintiff Graham for a previous similar device,

and this patent will be referred to frequently in this

opinion, although it is not directly in issue here. It will be

referred to simply as the “811” Patent.

The 798 Patent has been the subject of litigation on sev-

eral previous occasions. In Jeoffroy Mfg. Co., Inc., v.

Graham, 219 F.2d 511, the 798 Patent was held valid and

infringed by the United States Court of Appeals for the

5th Circuit, reversing the decision of the trial court that

the patent was invalid. In Jeoffroy Mfg. Co., Inc., v.

Graham, 256 F.2d 360, the 5th Circuit again held the 78

Patent infringed, affirming the findings of the trial court.

And in Graham v. Cockshutt Farm Equipment, Inc., 256

I’.2d 358, the 5th Circuit again found the 798 Patent valid.

but not infringed, affirming the findings of the trial court.

It appears by stipulation that all of the prior patents and

prior devices cited and relied upon by the defendants in

the case at bar, except the Rix Patent Number 287,965,

the Roberts Patent Number 1,805,599, and the Glencoe

clamp device, were before the District Court and the Ap-

pellate Court‘in the first Jeoffroy case and all the prior

art relied upon by defendants in the case at bar was before

the District and Appellate Courts in the Cockshutt case.

The record shows that, of the prior patents and devices

cited and relied upon by defendants in the case at bar, only

the following patents were of record in the Patent Office

proceedings on the 798 Patent:

lanai ate —~

United States Patents

417,775 Dec. 24, 1889 Drader, et al.

2,014,451 Sept. 17, 1935 Pfeifer

2,493,811 Jan. 10, 1950 Graham

Danish Patent

57,391 Mar. 18, 1940 Petersen

Australian Patent

111,910 Nov. 8, 1940 Traeger

None of the other patents relied on by defendants are of

récord in the Patent Office file with reference to the 798

Pateni, nor are any prior devices on record in the Patent

Office file. It should be noted that the United States

Pfeifer patent, although of record in the Patent Office file,

has not been cited by defendants in this case.

The Patent Office file wrapper in the 798 Patent dis-

closes that Graham originally submitted his application

with twelve claims. These claims were all rejected by

the Patent Office, partially on the grounds that some of

the claims failed to patentably distinguish from the 811

Patent, and partially on the grounds of lack of invention.

Claims 13 and 14, which eventually issued as claims 1 and

2 of the 798 Patent, were then submitted by Graham to

be substituted for the original twelve claims. These two

claims, as finally issued, are as follows:

“1. In a plow having a frame and a ground working

tool provided with a shank adapted to rock relatively to

the frame when the p is in operation in a forward

direction, a mounting for) pivotally attaching and sup-

porting the shank o: ground working tool to a trans-

verse member of the frame, the mounting including a

fixed member adapted to be fixed to the transverse mem-

ber of the frame and having a longitudinally extending

underface terminating forwardly of the transverse

member to which said mounting is adapted to be fixed,

the fixed member having ears extending rearwardly

from said underface at the sides thereof, a shank attach-

ing member having an elongated plate portion provided

_——

with an upper face corresponding with and normally in

contact with said underface of the fixed member and pro-

vided with a longitudinally extending underface in en-

gagement with a corresponding upper face of the shank

whereby the plate portion of the shan’x attaching mem-

ber is between the shank and the fixed member, means

connecting the elongated plate portion with the shank

for maintaining the upper face of the shank in constant

continuous contact with the underface of said plate por-

tion of the shank attaching member, a transverse pin

pivotally connecting the shank attaching member to the

fixed member at the rear ends of said normally contact-

ing faces and whereon the shank attaching member

pivots upon rocking movement of the shank, a coil spring

having one end seated on the forward end of the fixed

member, and means having connection with the forward

end of the shank and with the other end of the coil

spring whereby the spring yieldably maintains said nor-

mal contact of the upper face of the plate portion of the

shank attaching member with the underface of the fixed

member to maintain the normal plowing depth of the

ground working tool.

“2. In a plow having a frame and a ground working

tool provided with a shank adapted to rock relatively to

the frame when the plow is in operation in a forward

direction, a mounting for pivotally attaching and support-

ing the shank of the ground working tool to a transverse

member of the frame, the mounting including a fixed

member adapted to be fixed to the transverse member

of the frame and having a longitudinally extending un-

derface terminating forwardly of the transverse mem-

ber to which said mounting is adapted to be fixed, the

fixed member having ears extending rearwardly from

said underface at the sides thereof, a shank attaching

member having an elongated plate portion provided with

an upper face corresponding with and normally in con-

tact with said underface of the fixed member and pro-

vided with a longitudinally extending underface in en-

gagement with a corresponding upper face of the shank

whereby the plate portion of the shank attaching mem-

ber is between the shank and the fixed member, said

shank attaching member having a lug extending up-

wardly between said ears of the fixed member and dis-

posed at the rear end of the plate portion and above the

plane of the underface of the fixed member, said shank

attaching member having depending means embracing

- the shank at the rear end of said plaie portion, a bolt

connecting the forward end of the plate portion with the

forward end of the shank and cooperating with the

shank embracing means in maintaining the upper face of

the shank in constant continuous contact with the un-

derface of said plate portion, a pivot pin extending trans-

versely throug. said lug and carried by the ears with the

axis thereof above the plane of the underface of the fixed

member whereby the normally contacting face of the

shank attaching member immediately moves out of con-

tact with and away from the face of the fixed member

when the shank attaching member pivots upon rocking

movement of the shank, 2 coil spring having one end

seated on the forward end of the fixed member, and

means having connection with the forward end of the

shank and with the other end of the coil spring whereby

the spring yieldably maintains said normal contact of

the upper face of the plate portion of the shank attach-

ing member with the underface of the fixed member.”

There are actually two devices of defendants involved

in this action. One is the “Deere 650” model, which plain-

tiffs contend infringes upon Claim One of the 798 Patent,

and the other is the “Deere 100” model, which plaintiffs

claim infringes upon both Claims one and Two of the 798

Patent.

The above-entitled cause came on regularly for trial and

the Court having duly considered the evidence and being

fully advised in the premises now finds the following:

FINDINGS OF FACT

‘The plaintiff, William T. Graham, resides at Amarillo,

Texas, and is a citizen of the United States. The plaintiff,

Graham Plow, Inc., is a corporation organized under the

laws of the state of Texas, with a principal place of busi-

ness at Amarillo, Texas. The defendant, John Deere Com-

pany of Kansas City, is a corporation organized under the

laws of the state of Missouri, with a place of business at

Kansas City, Missouri. The defendant, Deere & Company,

is a corporation organized under the laws of the state of

Delaware, with a principal place of business in Moline, Il-

linois.

II.

On February 16, 1953, Letters Patent No. 2,627,798 was

issued to William T. Graham on an application filed August

27, 1951, for an invention on “Clamp for Vibrating Shank

Plows.” William T. Graham is the owner of said patent,

and Graham Plow, Inc., is a licensee under said Letters

Patent.

III.

This is a suit under the Patent Laws of the United

States for infringement of U. S. Letters Patent No.

2,627,798, and this Court has jurisdiction of the parties and

the subject matter of this suit.

IV.

In the description and drawings of the Graham patent

in suit, there is disclosed what is called a “spring clamp”

to connect the upper forward end of a resilient shank to a

beam with the lower end of said shank carrying a ground-

working tool such as a chisel and the like for plowing or

other ground-working operations. The clamp includes a

body portion removably attached to the beam with a rear-

ward portion having a pivot pin on which is pivotally

mounted a movable part with a plate portion extending

forwardly or longitudinally of the normal direction of

travel of the plow. The upper forward portion of the

shank extends through a stirrup or loop element at the

rear of the movable part and longitudinally beneath the

plate portion of the mcvable part and is connected to the

plate at the forward end thereof at a substantial distance

from the pivot pin, whereby the shank and movable part

pivot together about the axis of the pivot pin. A coil

spring is arranged at the forward end of the body and,

through a nut, washer and spring rod, acts on the shank

and plate member to resiliently urge the forward end of

the shank and plate upwardly toward the body of the

clamp to a stop engagement therewith to nermally hold

the shank in normal position. In plowing operations, forces

are exerted rearwardly and upwardly on the ground-work-

ing tool, and when sufficient to overcome the forces ap-

plied by the spring the shank and movable part will pivot

on the pivot pin with the forward end of the shank and

plate moving downwardly against the tension of the spring.

Forces in plowing hold the shank against the rear of the

plate of the movable part and when said forces are re-

moved or lessened, or the ground-working tool removed

from the ground, the shank at the rear of the movable part

is supported by a stirrup or loop that embraces the shank

adjacent the pivot of the movable part. In plowing opera-

tions, if the ground-working tool strikes a rock or other

obstruction, substantial shock and forces are applied to the

shank, pivoting the shank and movable member about the

pivot pin, tending to compress the spring and permitting

upward movement of the ground-working tool whereby it

can pass over the rock or obstruction and, as it passes

ever such obstruction, the stirrup or loop on the movable

part supports the shank against excessive rebound. While

the stirrup supports the shank at the rear of the movable

part, it does so in a manner that permits movement of the

shank, thereby retaining the flexibility of the structure

and reducing shock.

Prior to the invention in the Graham patent in suit,

Graham Plow, Inc.’s predecessor marufactured and sold

chisel plows wherein the upper forward portion of the

shank was rigidly fixed to the plow beam by a rigid

clamp. Said plaintiff corporation’s predecessors started

selling such chisel plows in the rocky country, but the

chisels in striking rocks caused such shocks to be imparted

to the equipment that the parts of the plows were bent

and broken so that the structures were not satisfactory.

In endeavoring to overcome the problems of plowing in

the rocky country, Graham devised a spring clamp struc-

ture, and on January 10, 1950, was issued Patent No.

2,493,811 entitled “Vibrating Plow and Mounting There-

for,’ which wes prior to the Graham patent in suit.

Plaintiff, Graham Plow, Inc., has continued to manufac-

ture and sell plows with spring clamps which embody the

principle of the structure of the 811 patent, but neither

William T. Graham, the Graham companies, nor any

licensee under them has ever manufactured or sold a

clamp embodying the 798 structure.

VI.

Prior to defendants putting their John Deere 650 series

spring clamp on the market, their only product having

a support with any spring action for chisels in plowing was

a type having a coil in the shank used on both their 600

and 900 series tools, such shanks having coils of approxi-

mately two turns intermediate the ends and rearwardly

of the frame. Early in 1953, defendants sent a represen-

tative in the field to make a survey to deter:nine if the 600

tool carrier was the right design to compete with Graham

and Jeoffroy, the survey reports being defendants’ Ex-

hibits 30 dated March 30, 1953, and 31 dated April 17, 1953.

Defendants’ engineer, Mr. Hunter, who designed the John

Deere 650 spring clamp had previously made trips into

the field and had seen Graham’s spring clamp plows of

the 811 type and Jeoffroy’s spring clamp plows. It was

defendants’ practice to obtain copies of patents on farm

implements and maintain a library of such copies for the

engineers in the factory and also in the defendants’

Patent Department, so that when Mr. Hunter was given

the assignment of designing a new tillage tool clamp in

the spring of 1953, the Graham patent in suit and both of

the survey reports (def. Exs. 30 and 31) were available to

him. Mr. Hunter designed a clamp and two drawings

thereof (defs. Exs. 33-A and 33-B) were sent to the

Patent Department of Deere & Company, and said Patent

Department, by letter of October 23, 1953 (def. Ex. 32)

advised that the proposed spring clamp design infringed

claim 1 of the Graham 798 Patent. In that structure, an

upper face of the plate of the movable member engaged

a lower face of the body or member fixed to the beam,

but in a revised design shown in drawings (defs. Exs. 38

and 39), the forward end of the plate was cut off to ex-

pose the extreme forward end of the shank and a lug on

the body was extended down to engage the upper face of

the shank when said shank was in normal position. The

revised design with minor changes became the defendants’

commercial device, the John Deere 650 spring clamp (plt.

Ex. I), but that structure had the same plowing action

as the structure shown in the design (def. Ex. 33-B).

VII.

In 1958, Mr. Hunter was given the project of developing

a lighter machine, which project.ended in the placing of

the John Deere 100 series spring clamp on the market.

Mr. Hunter made a preliminary design, drawings of which

(def. Exs. 45-A and 45-B) were sent to the Deere Patent

Department, which, by letter dated May 7, 1958 (def. Ex.

32) advised that such design would be an infringment of

claim 1 of the Graham 798 patent. The preliminary design

had a forward end of the pivoted member engaging a for-

ward portion of the body of the fixed member to form a

stop when the springs held the pivoted member and shank

in normal position. The preliminary design was revised

by removal of material on the forward end of the pivoted

member and adding some material to the plate portion

under the beam which was exposed between body parts

secured on the beam so that the plate portion would con-

tact the beam to form the stop when the pivoted member

and shank were in normal position, but this change did

not change the function or positioning of the shank.

Vill.

The following patents were made of record during the

prosecution of the application for the Graham Patent in

suit:

417,775 Drader et al.

2,014,451 Pfeifer

2,493,811 Graham

57,391 Petersen (Danish)

111,910 Traeger (Australian)

These patents are relied upon by defendants as part of

the prior art in this case.

TX,

Defendants have also cited by way of defense, in addi-

tion to the file wrapper patents, the following patents:

211,003 Dunbar

231,268 Carter

284,278 Cobb

287,965 Rix

503,288 Moore

1,141,804 Lamprell et al.

1,805,599 Roberts

1,982,862 Erdman

2,029,249 Noell et al.

1056/26 Prior (Australian)

Defendants have also cited by way of defense the fol-

lowing prior devices:

Jeoffroy SC-580 spring clamp (def. Ex. 2) manufac-

tured and marketed by Jeoffroy Mfg. Inc., Amarillo,

Texas;

Glencoe spring clamp (def. Ex. 3) manufactured and

sold by the Glencoe Manufacturing Co., Glencoe, Min-

nesota.

XI.

Defendants place principal reliance upon the prior art

patents to Cobb 284,278 and Rix 287,965 and the prior de-

vice of Glencoe, and contend that the usual presumption

of validity does not apply because the Patent Office failed

to consider these patents and device, as well as the other

additionally cited prior art. All of the prior art cited by

defendants was before the Court in the Fifth Circuit in

Graham v. Cockshutt, wherein the decision, 256 F.2d 358,

held the Graham patent valid, but not infringed. The dis-

closures of the prior art not cited by the Patent Office, and

particularly the Cobb and Rix patents and the Glencoe

device, are similar to some of the patents relied upon by

the Patent Office Examiner, as for example the Danish

patent of Petersen. Hence, the statutory presumption of

validity of the Graham patent in suit is not weakened or

destroyed.

XII.

The prior art as a whole in one form or another contains

all of the mechanical elements of the Graham 798 struc-

ture, and in a broad sense all of the elements are found

in one single reference, the Glencoe clamp. However, the

particular arrangement of the elements disclosed by 798

is not present in any single reference or as a whole.

XIil.

An improved functional result is obtained by the Graham

798 structure and the main improvement is due to the par-

ticular arrangement of the shank in relation to the pivoted

member and spring member which reflects in downward

flexing of the shank st the forward portion thereof along-

side the plate norton of the pivoted member and does

lessen we*. and tear to some parts of the clamp.

XIV.

The G'encoe structure uses a rotating pivot which pre-

vents rubbing contact of the shank with the fixed member

of the clamp and means for attaching the shank to the

pivoted member which permits flexibility of the shank

posteriorly to the rear of the pivoted member equal in mag-

nitude to that which would be expected in the Graham 798

patent structure. However, the flexing of the shank is

different in direction and location relative to the pivoted

member than that which occurs in the Graharn 798 struc-

ture. The Graham 798 patent is an improvement patent

and, while the individual mechanical elements may be

found in the prior art, taken as a whole the Graham 798

structure is sufficiently different in the operative relation-

ship of the shank and pivoted member with a slight but

significant difference in the flexing of the forward portion

of the shank that is not found in the prior art, so that the

Graham 798 patent involves invention.

XV.

The differences between the Graham 798 patent and the

prior art are such that the Graham 798 structure, as cov-

ered by claims 1 and 2 thereof, would not have been obvious

at the time Graham made his invention to a person having

ordinary skill in the art of agricultural implements and

other related arts. It would not have been obvious to a

man having ordinary skill in the art to have taken certain

components of the prior art and to have combined them

in the manner disclosed and claimed in the Graham patent.

Even with the full benefit of hindsight, it cannot be said

that the Graham structure represents no more than skilled

craftsmanship.

XVI.

All of the evidence taken together establishes that de-

fendants, with knowledge of the Graham 798 patent, made

designs that infringed the Graham patent and then made

minor changes which were differences in degree and not

in fact in their commercial structures to provide substan-

tially the same structure and operating substantially in the

frame manner and providing substantially the same results

te actualiy employ the essence of the Graham invention.

XVII.

It demanded invention of the quality required by the

Patent Statutes, Title 35, U.S.C., to produce the structure

of the Graham 798 patent. Defendants have failed to sus-

tain the burden imposed by §282, Title 35, U.S.C.

XVII.

No evidence was introduced to show that defendants’

structures were derived from the prior art, from inde-

pendent experiment,'’or from any source other than the

patented structure itself. In view of this, it is a fair infer-

ence that the accused structures had their origin in the

Graham 798 patented structure.

XIX

Defendants have contended that the accused John Deere

650 spring clamp avoids claim 1 of the Graham 798 patent

because said accused structure does not have a longitu-

dinally extending underface of the fixed member engaged

by the upper face of the plate of the pivoted member. The

Court finds, however, that the fixed member does have

an underface, that due to shortening of the plate of the

pivoted member, is engaged by an upper face of the shank

to provide the same result.

XX.

Defendants have contended that the accused John Deere

100 spring clamp avoids claims 1 and 2 of the Graham 798

patent because an upper face of the plate of the pivoted

member engages an underface of the beam instead of the

fixed member. The Court finds, however, that in actual

use, the engaging faces are equivalent and provide the

same result.

XXII.

Defendants assert the “doctrine of File Wrapper Estop-

pel,” i.e., that in the prosecution of his patent within the

Patent Office, Graham canceled certain rejected claims,

accepted narrower claims in their stead, and is now es-

topped from obtaining a breadth of construction as broad as

that contained in the claims voluntarily canceled. Defend-

ants urge that in this case the patent claims require the

stop contact faces of the devices must be the upper face

of the plate ef the movable member and a lower face of the

fixed member and that such faces rnust have substantial

longitudinal length. While claims 1 and 2 of the patent

specify the faces as longitudinally extending, they do not

specify any extent of longitudinal length, and the loca-

tion of the faces forwardly of the pivot pin is different from

the location of the beak adjacent the pivot pin in the Dan-

ish patent of Petersen. The original clairns 1 to 12 inclu-

sive in the Graham application as filed were broad in re-

gard to the relative position of the shank and plate of the

movable member, and the patent claims are narrower in

that the shank is specified as being below the plate of the

movable member. The relative locstion of the parts of the

Graham 1798 device as specified in the patented claims,

when the operative conditions and forces are considered,

is not shown in any of the prior art relied on by defend-

ants. Therefore, the Court finds that there is no file wrap-

per estoppel to a construction of the claims that would

preclude a finding of infringement by the accused Deere

structures.

XXiI.

The defendants’ John Deere 650 spring clamp has all of

the elements or the equivalents thereof of claim 1 of the

patented structure and performs the same *anction in the

same way as the corresponding element of the patented

structure. Defendants’ said spring clamp responds to the

equivalents of the elements of claim 1 of the Graham pat-

ent, and this claim has been infringed by defendants’ manu-

facture and sale of the accused John Deere 650 clamp.

XXIII.

The defendants’ John Deere 100 spring clamp has all of

the elements or the equivalents thereof of claims 1 and 2

of the patented structure and performs the same function

in the same way as the corresponding element of the pat-

ented structure. Defendants’ said spring clamp responds

to the equivalents of the elements of claims 1 and 2 of the

Graham patent, and these claims have been infringed by

defendants’ manufacture and sale of the accused John Deere

100 spring clamp.

XXIV.

All changes or variations in design made by the defend-

ants in its structures 650 and 100 apparently serve no pur-

pose or introduce any different operating principle other

than effecting a consciously patterned variation in an at-

tempt to avoid infringement of the plaintiffs’ 798 device.

This does not necessarily mean that the defendants’ ac-

tions were in bad faith, as they have a right to construct

spring clamp plows so long as their devices do not infringe

upon others’ patents. But it appears that defendants have

definitely used the basic structure and principle of the

plaintiffs’ patent 798 within the reasonable scope of the

coverage of plaintiffs’ patent.

XXV.

Defendant’s contention on “longitudinally extending

underface” as being an essential and restrictive description

of plaintiffs’ 798 Patent, is too literal and narrow. Each

design of the defendants which literally avoids this de-

scription performs exactly the same function and purpose

with identical results.

CONCLUSIONS OF LAW

The Court has jurisdiction over the subject matter of

this action and the said parties.

Claims 1 and 2 of the Graham patent No. 2,627,798 are

valid.

Claim 1 of the Graham patent No. 2,627,798 has been

infringed by defendants’ John Deere 650 spring clamp as

exemplified by plaintiffs’ Exhibit I.

Claims 1 and 2 of the Graharn patent No. 2,627,798 have

been infringed by defendants’ John Deere 100 spring clamp

as exemplified by plaintiffs’ Exhibit J.

Defendants are jointly and severally liable for damages

resulting.from infringement of the Graham patent No. 2,-

627,798 and also for the costs in this action.

Plaintiffs are entitled to a permanent injunction against

the defendants in respect to claims 1 and 2 of said Graham

patent No. 2,627,798 and to an accounting for compensatory

damages, as well as any further recovery authorized by

law and awarded in the discretion of the Court.

/s/ Floyd R. Gibson

Judge

Kansas City, Missouri,

March 11, 1963

JUDGMENT

(Filed March 25, 1963)

The above-entitled action having come on for trial as to

the issue of liability before the Court without a jury; the

parties having each offered testimony and other evidence,

filed briefs and presented oral argument of counsel; and the

Court having considered the matter and filed its Memo-

randum Opinion including findings of fact and conclusions

of law:

It is hereby Ordered, Adjudged and Decreed that:

1. The Court has jurisdiction of the parties to and the

subject matter of the action.

2. Plaintiff, William T. Graham, is the lawful owner

of the entire right, title and interest in U. S. Letters

Patent No. 2,627,798, except for a license under said patent

granted to plaintiff, Graham Plow, Inc.

5. Claims 1 and 2 of U.S. Letters Patent No. 2,627,798

are each valid.

4. Claims 1 and 2 of U. S. Letters Patent No. 2,627,798

have each been infringed by defendants, John Deere of

Kansas,City, and Deere and Company.

5. Defendants, John Deere Company of Kansas City,

and Deere and Company, their successors, officers,

agents, attorneys, associates, employees, and all persons

acting in conjunction with said defendants, are hereby

enjoined from further infringement of either claims 1

or 2 of said U. S. Letters Patent No. 2,627,798, and in par-

ticular, from further using, making, or selling any Model

650 series, Model 100 series, or equivalent models of

spring clamp plows manufactured by defendants, during

the remaining term of said patent.

6. Plaintiffs shall have judgment against defendants

for damages determined in accordance with Title 35,

United States Code, §284, the amount of said damages

to be hereafter determined upon further proceedings, for

which purpose the Court retains jurisdiction.

7. On the counterclaim of defendants for declaratory

judgment, the Court finds the issues in favor of the

plaintiffs end against the defendants.

8. Plaintiffs shall have judgment for their costs in

this action, to be hereafter taxed in accordance with

Rule 54(c), Federal Rules of Civil Procedure.

Enter:

/s/ Floyd R. Gibson

Judge

March 25, 1963

MOTION FOR NEW TRIAL

(Filed April 3, 1963)

Pursuant to Rule 59 of the Federal Rules of Civil Pro-

cedure Defendants move the Court to set aside the Find-

ings of Fact and Conclusions of Law entered on March 11,

1963, and the Judgment entered on March 25, 1963, and to

grant a new trial upon the following grounds:

The Court has erred in holding that Patent No. 2,627,798

is valid for the following reasons:

A. The Court has failed to give proper consideration

and effect to the rule that the presumption of validity is

weakened when pertinent prior art was not considered

by the Patent Office and the Court’s Finding No. XI that

the presumption of validity of the 798 patent is not weak-

ened by the fact that pertinent prior art was not consid-

ered by the Patent Office is clearly wrong.

B. The Court has applied an incorrect test of invention

as shown by the following:

1. The established rule of the Supreme Court and of

the Eighth Circuit Court is that a combination of old ele-

ments does not amount to invention unless the combina-

tion produces some new, surprising or unexpected result

and that mere improvement of function, efficiency or econ-

omy is not enough.

2. The Court has found that the 798 structure is a com-

bination of old elements. The Court has not found any

new, surprising or unexpected resuit, but on the contrary

has found only an improved functional result and a reduc-

tion of wear to some parts of the clamp. Those findings

do not meet the test and are insufficient to support a find-

ing of invention.

C. The Court’s finding of improved functional result

reflected mainly in a downward flexing of the 798 shank

in the forward portion thereof alongside the plate portion

of the pivoted member (Finding No. XIII) and a significant

difference in the flexing of the forward end of the shank

(Finding No. XIV) are clearly wrong in that: (1) the un-

disputed evidence is that there was substantially similar

flexing in the forward portion of the shank in the Graham

811, Jeoffroy SC-580 and Glencoe prior use devices, the

only differences being a slight difference in distribution

of the flex and a difference in direction relative to the plate

portion of the pivoted member, and (2) the undisputed evi-

dence is that the small amount of flex in the forward por-

tion of the 798 shank is insignificant and unimportant to

the function and operation of the device.

D. Such flexing in the forward end of the shank, even

if it were significant, was not mentioned or claimed in the

patent or the File Wrapper history and therefore does not

support a finding of invention.

E. The Court’s finding that the Graham 796 arrange-

ment reduces wear and tear to some parts of the clamp

(Finding No. XIII) is clearly wrong in that it disregards

the Glencoe clamp and the evidence with respect thereto.

It is conceded that the 798 arrangement would reduce wear

and tear to some parts of the clamp as compared to the

Graham 811 clamp, but the undisputed evidence is that

the 798 clamp affects no improvement in that respect as

compared to the Glencoe clamp.

F. The Court’s Finding No. XV that the Graham 798

structure would not have been obvious to a person having

ordinary skill in the art is clearly wrong in that: (1) there

is no evidence to support such finding; (2) the evidence is

insufficient to support such finding; and (3) such find-

ing is contrary to the weight and preponderance of the evi-

dence.

Il.

The Court has erred in holding that the Deere 650 clamp

infringes Claim 1 of the patent and in holding that the

Deere 100 clamp infringes Claims 1 and 2 of the patent

for the following reasons:

A. The Court has construed and applied the claims

broadly rather than narrowly as required by the language

of the claims, the context of the patent, the prior art and

the File Wrapper history.

B. The Court’s Findings XVI, XIX, XX, XXII, XXIII,

XXIV and XXV to the effect that the Deere 650 clamp is

the equivalent of Claim 1, that the Deere 100 clamp is the

equivalent of Claims 1 and 2 and that both Deere clamps

have used the basic structure, principle and essence of

the Graham invention are clearly wrong in that: (1) there

is no evidence to support such findings; (2) the evidence

is wholly insufficient to support such findings; (3) such

findings are clearly contrary to the weight and preponder-

ance of the evidence, and (4) the Court has applied an in-

correct test and range of equivalence.

' C. The Court’s Finding No. XXI that the doctri: of

File Wrapper Estoppel does not limit the scope of the claims

of the 798 patent so as to preclude their application to the

Deere 650 and 100 clamps is clearly wrong in that: (1)

there is no evidence to support such finding; (2) the evi-

dence is insufficient to support such finding; (3) such find-

ing is clearly against the weight and preponderance of the

evidence, and (4) the Court has applied an incorrect rule

of File Wrapper Estoppel.

D. If the 798 patent is valid and if, as the Court has

found, a significant feature thereof is a flex in the forward

portion of the shank downwardly from the plate portion

of the pivoted member, then the Court’s implied finding

that the Deere 650 and 100 clamps so function is clearly

wrong in that: (1) there is no evidence to support such

finding; (2) the evidence is insufficient to support such

finding; and (3) such finding is clearly contrary to the

weight and preponderance of the evidence.

WHEREFORE, Defendants pray that this motion be

sustained and that a new trial be granted.

Respectfully submitted,

Scofield, Kokjer, Scofield & Lowe

Gibson, Ochsner, Harlan, Kinney & Morris

Attorneys for Defendants

By: /s/ S. Tom Morris

Of Counsel

ORDER DENYING DEFENDANTS’ MOTION FOR NEW

TRIAL

(Filed June 26, 1963)

This is an action for patent infringement. The case has

been tried, and on March 18, 1963, the Court filed its final

Amended Memorandum Opinion, Findings of Fact, and

Conclusions of Law, holding the patent in question valid

and infringed. Judgment against defendants was entered

on March 25, 1963. On April 5, 1963, judgment was stayed,

pending disposition of defendants’ motion for a new trial,

which was filed on April 3, 1963. On June 4, 1963, a hear-

ing of oral arguments was had on defendants’ motion for a

new trial.

Defendants’ motion raises several points, most of which

were covered to a large extent in the final opinion rend-

ered in this case, and the Court will not dwell on these

points. One point, however, will be treated here. This

is the defense of “file wrapper estoppel” raised by defend-

ant.

The patent application was originally filed in twelve

claims. Admittedly, these claims were so broad that no

patent could have been granted thereon, as they would

probably have covered all similar devices operating on the

same principle which had theretofore been invented or

which thereafter might have been.

The claims were then amended by plaintiff to two much

narrower claims. Defendants now assert that, plaintiff

having narrowed his claims to secure the issuance of his

patent, he cannot now have the claims construed to give

broad enough coverage so that defendants’ devices may

be interpreted as infringing.

The principle restrictive terms »dded to the amended

claims refer mainly to the form and location of the parts

of the plow and the physical form and appearance of the

plow was not changed. The essence of defendants’ conten-

tion is that the restrictions as to form and location which

were added to the amended claims should be read literally,

or nearly so, and that the doctrine of equivalents shculd

not be applied to hold defendants’ devices as infringing.

The defendants’ devices do not literally read upon the

claims in the patent. This is admitted by all parties. How-

ever, it is the opinion of the Court that defendants’ devices

do perform substantially the same function, using sub-

stantially the same means, in substantially the same man-

ner, as the device described in plaintiffs’ patent. In the

opinion of the Ccurt, the fact that one of defendants’ de-

vices uses a lug contacting the shank of the plow as a

stop instead of a full longitudinal contact between the

pivoted member and the fixed member is not enough of a

distinction, when the doctrine of equivalents is applied,

to take defendants’ device out of the realm of infringement.

Also, the fact that, in a sezond device of defendants’, the

fixed I beam of the frame takes the place of the longitudi-

nally extended underface of the fixed member in acting

as a stop, is not enough to escape infringement, under the

doctrine of equivalents.

It is the opinion of the Court that it is not an improper

extension of the doctrine of equivalents, as applied to the

defense of file wrapper estoppel, to state that defendants’

devices are functionally equivalent to that described in

plaintiffs’ patent. The basic functional parts of plaintiffs’

device are all present in those of defendants, and the rela-

tive position and form of these parts are substantially the

same in each of the devices. Any differences result simply

from a shifting of points of contact or pressure, or the

functional substitution of a part of one element for that of

another, when this substitution actually results in a func-

tiona! assimilation by one element of the other.

Defendants’ motion for a new trial is denied.

IT IS SO ORDERED.

/s/ Fleyd R. Gibson

Judge

Kansas City, Missouri,

June 26, 1963

NOTICE OF APPEAL

(Filed July 17, 1963)

Notice is hereby given that JOHN DEERE COMPANY

OF KANSAS CITY, a corporation, and DEERE & COM-

PANY, a corporation, Defendants, hereby appeal to the

United States Court of Appeals for the Eighth Circuit from

the Judgment entered in the above cause on March 25, 1963,

and from the Order Denying Motion tor New Trial entered

in said cause on June 26, 1963.

Scofield, Kokjer, Scofield & Lowe

By /s/ Thos. E. Scofield

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

Attorneys for Defendants

By /s/ S. Tom Morris

Of Counsel

STIPULATION AS TO SUPERSEDEAS BOND AND STAY

OF JUDGMENT PENDING APPEAL

(Filed July 17, 1963)

Defendants having filed notice of appeal in this cause

and desiring to supersede the judgment herein pending

final determination on appeal, it is agreed and stipulated

between the parties that the amount of the supersedeas

bond shall be TVO HUNDRED THOUSAND AND NO/100

($200,000.00) DOLLARS, and that upon the filing of such

bond by Defendants and the approval thereof by the Court,

the Judgment entered herein on March 25, 1963, shall be

in all things stayed until the final determination of this

cause on appeal.

It is further agreed and stipulated that this agreement as

to the amount of the bond shall not in any manner deter-

mine or have any bearing upon the amount of damages, if

any, to which Plaintiffs might ultimately be entitled

DATED this 17 day of July, 1963.

Fishburn and Gold

Attorneys for Plaintiffs

By /s/ Claude A. Fishburn

Of Counsel

Scofield, Kokjer, Scofield & Lowe

Attorneys for Defendants

By /s/ Thos. E. Scofield

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

Attorneys for Defendants

By /s/ S. Tom Morris

Of Counsel

SUPERSEDEAS BOND

KNOW ALL MEN BY THESE PRESENTS, that we,

JOHN DEERE COMPANY OF KANSAS CITY, a corpora-

tien, and DEERE & COMPANY, a corporation, as Princi-

pals; and FEDERAL INSURANCE COMPANY, as

Surety, are held and firmly bound unto WILLIAM T. GRA-

HAM and GRAHAM PLOW, INC., in the sum of TWO

HUNDRED THOUSAND AND NO/1i00 ($200,000.00) DOL-

LARS to be paid to the said WILLIAM T. GRAHAM and

GRAHAM PLOW, INC., their attorneys, successors, ex-

ecutors, administrators or assigns, to which payment to be

well and truly made we bind ourselves, our heirs, executors,

administrators, successors and assigns, jointly and sev-

erally by these presents.

Sealed with our seals and dated this 17th day of July,

1963.

WHEREAS, on March 25, 1963, a judgment was ren-

dered in the above-entitled action in favor of the above

named obligees, and on June 26, 1963, an order was entered

in said action denying the motion for new trial of JOHN

DEERE COMPANY OF KANSAS CITY and DEERE &

COMPANY, and the said JOHN DEERE COMPANY OF

KANSAS CITY and DEERE & COMPANY have duly filed

a notice of appeal from said judgment and order to the

Court of Appeals for the Eighth Circuit; and

WHEREAS, the said JOHN DEERE COMPANY OF

KANSAS CITY and DEERE & COMPANY desire a stay

of all proceedings in the above-entitled cause until the de-

termination of the said appeal,

NOW, THEREFORE, the condition of this bond is such

that if the said JOHN DEERE COMPANY OF KANSAS

CITY and DEERE & COMPANY, as Appellants, shall

prosecute their appeal with effect and shall satisfy the said

judgment in full together with costs, interest and damage

for said delay if said appeal is dismissed or if the judg-

ment is affirmed, and shall satisfy in full such modifica-

tion of the judgment and costs, interest and damages as

may be adjudged and awarded by the Court of Appeals,

then this obligation to be void, otherwise to remain in full

force and effect.

John Deere Company of Kansas City

By: /s/ M. K. Hubbard

Vice President

Deere & Company

By: /s/ Lewis D. Wiison

Vice President

Principals

Federal Insurance Company

By /s/ Albert E. Hart, Jr.

Attorney-i Fact

Surety

The foregoing bond is hereby approved this i7th day

of July, 1963, to stand as a supersedeas until the final de-

termination of the appeal.

/s/ Floyd R. Gibson

United States District Judge

ORDER STAYING JUDGMENT PENDING APPEAL

(Filed July 17, 1963)

It being shown to the Court that Defendants have duly

filed notice of appeal, that the parties have stipulated as

to the amount of the supersedeas bond and a stay of judg-

ment pending appeal, and that Defendants have filed super-

sedeas bond in accordance with said stipulation;

IT IS THEREFORE ORDERED that the judgment of this

Court entered in this cause on March 25, 1963, be and the

same is hereby in all things stayed pending final determi-

nation of this cause upon appeal.

DATED this 17th day of July, 1963.

/s/ Floyd R. Gibson

United States District Judge

Approved:

Fishburn and Gold

Attorneys for Plaintiffs

By /s/ Claude A. Fishburn

Of Counsel

Scofield, Kokjer, Scofield & Lowe

Attorneys for Defendants

By /s/ Thos. E. Scofield

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

Attorneys for Defendants

By /s/ S. Tom Morris

Of Counsel

DEFENDANTS’ STATEMENT OF POINTS ON APPEAL

(Filed July 31, 1963)

Pursuant to Rule 75(d) of the Federal Rules of Civil

Procedure Defendants make the following statement of

points upon which they intend to rely on appeal:

The District Court erred in holding United States Patent

No. 2,627,798 valid for the following reasons:

A. The Court failed to give proper consideration and

effect to the rule that the presumption of validity is weak-

ened when pertinent prior art was not considered by the

Patent Office, and the Court’s finding that the presump-

tion of validity in this case is not weakened by the fact

that pertinent prior art was not considered by the Patent

Office is clearly wrong.

B. The Court applied an incorrect and improper test

of invention.

C. The Court’s finding that Patent No. 2,627,798 ex-

hibits invention and would not have been obvious to a

person having ordinary skill in the art is clearly wrong.

II.

The District Court erred in holding that the Deere 650

clamp infringes claim 1 of the patent and in holding that

the Deere 100 clamp infringes claims 1 and 2 of the patent,

for the following reasons:

A. The Court construed and applied the claims of the

patent broadly rather than narrowly as required by the

language of the claims, the context of the patent, the prior

art and the File Wrapper history.

B. The Court applied an incorrect and improper test

and range of equivalence.

C. The Court’s finding that the Deere 650 clamp is the

equivalent of and infringes claim 1 of the patent is clearly

wrong.

D. The Court’s finding that the Deere iU0 clamp is the

equivalent of and infringes claims 1 and 2 of the patent

is clearly wrong.

E. The Court’s finding that the doctrine of File Wrap-

per Estoppel does not limit the scope of the claims so as

to preclude their application to the Deere 650 and 100

clamp is clearly wrong.

Respectfully submitted,

Scofield, Kokjer, Scofield & Lowe

1325 Rialto Building

Kansas City, Missouri

By /s/ Thos. M. Scofield

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

630 Amarillo Building

Amarillo, Texas

By /s/ S. Tom Morris

Of Counsel

Attorneys for Defendants

DEFENDANTS’ DESIGNATION OF RECORD ON

APPEAL

(Filed July 31, 1963)

Pursuant to Rule 75 of the Federal Rules of Civil Pro-

cedure Defendants hereby designate the following portions

of the record, proceedings, and evidence to be contained

in the record on their appeal in this cause:

1. The Complaint.

2. Defendants’ Second Amended Answer and First

Amended Counterclaim.

3. Plaintiffs’ Reply to Defendants’ First Amended

Counterclaim.

4. The following portion of Plaintiffs’ Interrogatories

dated December 4, 1959, to-wit: the introductory para-

graph and Interrogatories 31, 32, and 33.

5. The following portion of Defendants’ Objections to

Certain of Plaintiffs’ Interrogatories, to-wit: the objec-

tion to Interrogatories Nos. 31 to 33.

6. The following portions of the Court’s Memorandum

and Order on Defendants’ Objections to Certain of Plain-

tiffs’ Interrogatories, to-wit: The Court’s ruling with re-

spect to Defendants’ Objections to Interrogatories 31, 32

and 33 which reads as follows:

“Defendants’ Objections to Interrogatories 31, 32 and

33 are sustained. These interrogatories relate to a flex-

ing of the shank of the accused device, and appear irrele-

vant since such a flexing is not a claim of the patent in

suit and Plaintiffs do not undertake to otherwise demon-

strate the relevancy of such inquiry.”

7. Stipulation between the parties dated May 1, 1962.

8. Stipulation between the parties for the voluntary

appearance of Deere & Company as a party Defendant,

dated May 2, 1962.

9. The Reporter’s Complete Original Transcript of pro-

ceedings had at the trial, including all of Plaintiffs’ Ex-

hibits except B. 1-10, F., G., H., X., and Y., and all of De-

fendants’ Exhibits except Exhibits 49 and 50.

10. The Court’s Amended Memorandum Opinion, Find-

ings of Fact and Conclusions of Law dated March 11, 1963.

11. The Court’s Judgment dated March 25, 1963.

12. Defendants’ Motion for New Trial.

13. The Court’s Order Denying Defendants’ Motion for

New Trial, dated June 26, 1963.

14. Defendants’ Notice of Appeal.

15. Stipulation as to Supersedeas Bond and Stay of

Judgment pending appeal.

16. Supersedeas Bond.

17. Order Staying Judgment Pending Appeal.

18. Defendants’ Statement of Points on Appeal.

19. Defendants’ Designation of Record for their appeal.

- 20. Any Orders to transmit original exhibits to the

Court of Appeals.

21. Any Orders extending time for filing record and

docketing appeal.

22. Clerk’s Certificate.

Respectfully submitted,

Scofield, Kokjer, Scofield & Lowe

By /s/ Thos. M. Scofield

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

By /s/ S. Tom Morris

Of Counsel

Attorneys for Defendants

ORDER FOR TRANSMITTAL OF ORIGINAL EXHIBITS

_ TO THE COURT OF APPEALS

(Filed August 26, 1963.)

Upon agreement of the parties, and it appearing to the

Court that it would be beneficial for the Court of Appeals

to inspect certain of the original exhibits in this cause,

IT IS ORDERED that the following original exhibits

be transmitted to the United States Court of Appeals for

the Eighth Circuit in connection with Defendants’ appeal,

to-wit:

Plaintiffs’ Exhibits C, D, D-1, E, E-1, I, J, L, M, N, and

X. ‘

Defendants’ Exhibits 1, 2, 3, 3-A, 6, 11, 12, 13, 14A, 14B,

14C, 15, 16, 17, 17-A, 18, 19, 20, 21-A, 21-B, 21-C, 21-D,

22, 23, 24, 25, 26, 26-A, 27, 27-A, 28, 29, 30, 31, 33-A,

33-B, 34-A, 34-B, 38, 39, 41, 42-A, 42-B, 42-C, 42-D, 42-E,

42-F, 42-G, 42-H, 42-I, 45-A, 45-B, 46, 49, 52-A, 52-B,

52-C, and 52-D.

DATED August 26th, 1963.

/s/ Floyd Gibson

United States District Judge

Approved:

Fishburn & Gold

Attorneys for Plaintiffs

By /s/ Claude A. Fishburn

Of Counsel

Scofield, Kokjer, Scofield & Lowe

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

By /s/ S. Tom Morris

Of Counsel

Attorneys for Defendants

ORDER EXTENDING TIME FOR FILING RECORD AND

DOCKETING APPEAL

(Filed August 16, 1963.)

Upon agreement of the parties it is ordered that the

time for filing the record and docketing the appeal of this

cause in the United States Court of Appeals for the Eighth

Circuit be and it is hereby extended to September 26, 1963,

Oe I

which date is within the time as authorized by Rule 73(g)

of the Federal Rules of Civil Procedure.

DATED this 16th day of August, 1963.

/s/ John W. Oliver

United States District Judge

Approved:

Fishburn and Gold

Attorneys for Plaintiffs

By /s/ Claude A. Fishburn

Of Counsel

Scofield, Kokjer, Scofield & Lowe

By /s/ Carter H. Kokjer

Of Counsel

Gibson, Ochsner, Harlan, Kinney & Morris

By /s/ S. Tom Morris

Of Counsel

Attorneys for Defendants

PLAINTIFFS’ DESIGNATION OF RECORD ON APPEAL

(Filed August 8, 1963)

Plaintiffs designate for inclusion in the record on appeal

in the above-entitled cause Plaintiffs’ Interrogatories num-

bered 2 and 38 and Defendants’ Answers thereto.

* * *

Plaintiffs also designate (physical exhibits) Plaintiffs’

Exhibit X and Defendants’ Exhibit 49 (offered by Plain-

tiffs).

Plaintiffs’ Designation of Record on Appeal.

Dated: August 7, 1963.

Fishburn and Gold

By /s/ Claude A. Fishburn

Attorneys for Plaintiffs

—

Sept.

Nov.

Jan.

Apr.

May

DOCKET ENTRIES

Filings—Proceedings

24, raed Complaint filed.

13,

30,

21,

1960

“cc

“

1961

1962

“c

Answer & Counter-claim filed.

Plaintiffs’ reply to defendant’s Counter-

claim filed.

Defendant’s Amended Answer and Coun-

terclaim filed.

Plaintifis’ Interrogatories to defendant

filed.

Plaintifis’ Reply to defendant’s counter-

claim in its amended answer filed.

Defendant’s Objections to certain of Plain-

tiffs’ Interrogatories and brief in support

thereof filed,

Defendant’s answers to certain of plaintiffs’

Interrogatories filed.

Memorandum and Order on defendant’s ob-

jections to certain of plaintiffs’ interroga-

tories filed. (overruled in part and sus-

tained in part)

Defendant’s answers to certain of Plain-

tiffs’ Interrogatories filed.

Defendant’s Second Amended Answer and

First Amended Counterclaim filed.

Plaintiffs’ Reply to Defendant’s First

Amended Counterclaim filed.

Pre-Trial Memorandum and Order filed.

(Defendant granted leave to amend its an-

swer—Parties to file stipulation of agreed

facts.)

Modification of Pre-Trial Order and Memo-

randum of January 3, 1962, filed.

Motion of Plaintiffs to add Deere and Com-

pany as Party defendant with suggestions

in support filed.

Order sustaining motion to add party de-

fendant filed.

Oct.

Feb.

29,

“cc

1963

Parties appear by counsel and announce

ready for trial. Trial is to the Court. Stipu-

lation filed. Opening statements are made

by respective counsel. Plaintiffs present

evidence; said evidence not completed at

the hour of adjournment, further proceed-

ings postponed until May 3, 1962.

Trial resumed. Plaintiffs continue evidence.

Trial resumed. Plaintiffs continue evidence

and rest. Defendants introduce testimony.

Further proceedings postponed until May

7, 1962.

Trial resumed. Defendants continue evi-

dence.

Trial resumed. Defendants continue evi-

dence. ;

Trial resumed. Defendants continue evi-

dence.

Trial resumed. Defendants complete evi-

dence and rest. Plaintiffs introduce evi-

dence in rebuttal.

Trial resumed. Plaintiffs complete ecvi-

dence in rebuttal and rest. Case submitted

and taken under advisement. Parties to

file briefs and suggested findings of fact

and conclusions of law simultaneously

thirty days after receipt of transcript of

record. Reply briefs to be filed 15 days

thereafter.

Transcript of Proceedings filed. (3 vol-

umes)

Memorandum Opinion, Findings of Fact

and Conclusions of Law filed. Letter from

Judge Gibson granting counsel 10 days in

which to submit any suggested amend-

ments to Memorandum Opinion filed here-

in.)

Letter from defendants’ counsel suggesting

amendments filed.

Feb. 20, “ Letter from Plaintiffs’ counsel suggesting

amendments filed. _

Mar. 18, “ | Amended Memorandum Opinion, Findings

of Fact, and Conclusions of law filed. Judge

Floyd R. Gibson.

Mar. 25, “ JUDGMENT FILED. (Plaintiff William T.

Graham lawful owner U. S. Letters Patent

No. 2,627,798. Claims 1 and 2 of said patent

are valid. Claims 1 and 2 have been in-

fringed by defendants. Defendants en-

joined from infringing of claims 1 and 2

of said patent. Plaintiffs shall have judg-

ment for damages against defendants in ac-

cordance with Title 35, U.S.C., Sec. 284.

Issues in favor of Plaintiffs and against de-

fendants on defendants’ Counterclaim.

Costs are assessed against defendants. )

Apr. 3, “ Motion for New Trial with suggestions in

support filed.

Apr. 5, “ Order staying Judgment pending Motion

for New Trial filed.

June 4, “ Respective parties appear by counsel for

hearing on defendants’ Motion for New

Trial. Arguments are made and the Mo-

tion submitted and taken under advise-

ment.

Jun. 26, “ Order denying defendants’ Motion for New

Trial filed,

July 17 “ Defendants’ NOTICE OF APPEAL FILED.

Copies mailed to Counsel for Plaintiffs.

Order staying Judgment pending Appeal

filed.

Stipulation as to Supersedeas Bond and

stay of Judgment pending appeal filed.

Supersedeas Bond approved and filed.

Jul. 31, “ Defendants’ Designation of Record on Ap-

peal filed.

Defendants’ Statement of Points on Appeal

filed.

Plaintiffs’ Designation of Record on Appeal

filed. .

Exhibits filed.

Order extending to September 26, 1963, to

docket the appeal filed.

Order for transmittal of original Exhibits

to the Court of Appeals filed.

[1]* IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF MISSOURI

WESTERN DIVISION

WILLIAM T. GRAHAM and GRAHAM )

PLOW, INC.,

Plaintiffs,

vs. Civil Action

JOHN DEERE COMPANY OF KANSAS r No. 12538-2

CITY, a corporation, and DEERE &

COMPANY, a corporation,

Defendants. :

TRANSCRIPT OF PROCEEDINGS

_ On Wednesday, May 2, 1962, the above-entitled cause

came on for hearing before the Honorable FLOYD R.

GIBSON, one of the Judges of said court, at Kansas City,

The Plaintiffs were represented by their counsel, Messrs.

Claude A. Fishburn and Orville O. Gold.

The Defendants were represented by their counsel,

Gibson, Ochsner, Harlan, Kinney & Morris, by Mr. S. Tom

Morris, and Scofield, Kokjer, Scofield & Lowe, by Thomas

B. Scofield.

The following proceedings were had and entered of

record:

*Refers to page of the typewritten transcript of proceedings.

[42] Mr. Fishburn: Now at this time plaintiff has

about a 20-minute film showing these plows in operation,

the background, the history, the reason for developing this

type of plowing.

* * s

[43] Mr. Morris: Might I inquire what the subject mat-

ter of the film is?

Mr. Fishburn: You have seen it, Mr. Morris, part of it.

It is the subject of the saving of the soil and is part of

that film down in Arkansas and a few other instances of

the rigid clamp and the spring clamp both.

Mr. Morris: It might be helpful to the Court, might be

interesting.

The Court: Very well.

*_ * *

[44] (Film shown.)

We are ready to start our case, Your Honor.

PLAINTIFFS’ CASE

CHARLES THEODORE PARKER, called as a witness on

behalf of the plaintiffs, was duly sworn and testified

as follows:

Direct Examination by Mr. Gold.

Q. Will you give your name and address. A. Charles

Theodore Parker, 2434 12th Street, Moline, Illinois.

Q. By whom are you employed? A. Deere & Com-

pany.

Q. Is that the Deere & Company who have the office in

[45] Moline, Illinois? A. Yes.

Q. That would be the parent company, we might say?

A. Yes.

Q. That is now a corporation of Delaware, is it not?

A. Yes.

Q. Your employer is the wholly—owns all of the stock

of the John Deere Company of Kansas City? A. Yes.

- Q. Is your employment full time employment? -A.. It

is,

' Q. What is your position? A. General patent attor-

ney.

Q. What are your duties? A. Well, I am the manager

of the patent department and have charge of matters per-

taining to the patents, trademarks and copyrights.

_Q. Are you familiar with the operations of Deere &

Company? A. Generally.

Q. Are you familiar with the product that Deere &

Company manufactures and sells? A. Yes.

Q. Are you an officer of the company? A. No.

Q. You say you are a patent attorney. You.are an at-

torney [46] at law, are you not? A. Yes.

Q. Registered to practice before the Patent Office? A.

Yes.

Q. Do you receive your salary from Deere & Company?

A. Yes.

Q. Do any of the branches or subsidiaries of Deere &

Company have a patent department? A. No. ;

Q. Your patent department serves all of the branches

or subsidiaries as to any patent matters they might have?

A. Yes.

Q. Where are plows manufactured by the ete &

Company? A. Which kind of plows?

Q. The chisel type plows. A. John Deere Des Moines

Works, Des Moines, Iowa.

Q. That is a manufacturing plant of the parent com-

pany? A. Yes.

Q. At the time—well, say in the years 1953 and 1954,

how was the Des Moines Works eonnected with Deere &

Company? A. It was owned by a subsidiary, wholly

owned by Deere & Company. The name of it was Deere

Manufacturing Company.

Q. That was an Iowa corporation? A. Yes.

Q. And the plant itself was owned by the Iowa corpo-

ration [47] and the Iowa corporation was a wholly-owned

subsidiary of Deere & Company? A. Right.

ee eee

Q. Approximately how many employees do you have

in your patent department? A. 11.

Q. Can you give us the categories of their work? A.

Well, there are five attorneys, three draftsmen, and three

girls.

Q. And when you say there are five attorneys, #:e

those each lawyers? A. Yes, they are all admitted to the

bar.

Q. And are they all admitted to practice before the

United States Patent Office? A. Yes.

Q. Are the attorneys in your department on a full time

employment? A. Yes. Pardon me, our youngest attor-

ney has passed the bar examination, but he is not—I don’t

believe—I don’t know just what date he will be admitted,

but it is just a little technicality there.

Q. At the times ihat we are going to have reference to

relative to some correspondence, any of the attorneys that

would have signed the correspondence would have been

lawyers? [48] A. That is right, they are attorneys.

Q. What are the duties of your attorneys in your of-

fice? A. Well, in the first place, they should study every

new implement that we design or new improvement in

our—the implements in our line to be sure that they do

not infringe other people’s patents. We consider that

the most important duty. They should also investigate

each of the new implements or new improvements in old

implements to see if they contain patentable subject mat-

ter that we might obtain some patent protection on. Those

are the two main duties of our attorneys.

Q. Do they visit your various manufacturing plants?

A. Yes.

Q. And engineering departments? A. Yes.

Q. And is that one manner in which they keep advised

of new designs and new equipment? A. Yes, they visit

plants and they sometimes go out in the field to see imple-

ments perform, and we correspond with the engineers by

mail quite a bit. They send us drawings, photographs.

Q. Any new designs that might be devised by a manu-

facturing plant would-be sent to your department for con-

sideration? A. Yes.

Q. I understand thet your department also applies for

the [49] patents that you might be able to obtain on your

products? A. Yes.

Q. Do you also make patent searches to see whether

or not a device was novei and patentable, as well as in-

fringement searches? A. That is right.

Q. Where would those searches be made? A. In our

office we have a library of all farm implement patents and

patents relating to tractors and internal combustion en-

gines of various kinds and industrial line of earth moving

equipment.

Q. You take the official Patent Ojifice Gazette? A.

Yes.

Q. That is a publication by United States Patent Office,

is it not? A. Yes.

Q. Is this all of the patents that issue each week, is

that correct? A. Yes.

Q. Poes one of your employees go through the Patent

Office Gazette and pick out the patents that you might be

interested in having in your library? A. Yes. We order

two copies of each one, one for our library and one for the

engineers in the factory that [50] is most closely associ-

ated with that type of implement.

Q. And the plant that would be building plows, particu-

larly chisel plows, would have a duplicate of your portion

of your library and patent copies of patents relating to

chisel plows? A. Yes.

Q. Does the manufacturing plant maintain a library of

copies of patents? A. Yes.

Q. So they are always available to the engineers? A.

They keep the copies that we send them and in some or-

der, in books or boxes.

Q. And they are always available to the engineers in

the plant? A. Yes.

Q. Do you supervise the making of searches? A. Yes.

Q. How long have you been head of the patent depart-

rent of Deere and Company? A. 15 years next month.

Q. And what were your duties prior to the time you

became the manager? A. I was assistant manager.

Q. And how long have you been with Deere & Com-

pany in their patent department? [51] A. 26 years.

Q. Do you prosecute applications for patents yourself

for the company? A. Yes.

Q. When you file an application for a patent in the

Patent Office, what is the procedure in the Patent Office,

do you know? A. Well, a patent application is given a

number and assigned to a certain division of the Patent Of-

fice that handles that type of invention, and assigned to

one of the examiners; there are several examiners in each

division. The examiner makes his own search and lists

the number of patents that he finds that are most perti-

nent. He then—

Q. Just a minute, Mr. Parker. Of course the applica-

tion may lay there for some time before it reaches its

turn for examination, is that correct? A. Yes. After it

is given the serial number it probably is there anywhere

from six months to more than a year at the present time.

It used to be even longer.

Q. Then when the examiner reaches the application

for action he would first read the application, would he

not? A. He would read it, get an understanding of what

the invention is, look at the drawings, and then he would

[521 make his search.

Q. And where would he make this search? A. In the

patent files of the Patent Office. He probably has a stack

of patents of his own that apply to his particular sub-class

of inventions.

Q. Each division has a large number of cases with what

they call shoes of patents, do they not? A. Yes.

Q. Those patents which relate to the art they are han-

dling? A. That is right.

Q. And that art would be classified and sub-classified

so as to aid in finding it? A. Yes.

Q. Does the examiner search through many patents

when he makes his search? A. Yes, I would say several

hundred.

Q. Ordinarily even though he searched through several

hundred how many might he cite in an action? A. Oh,

anywhere from one to perhaps a dozen or so.

Q. But he would have considered all those he searched,

wouldn’t he, the several hundred? A. Yes.

Q. If he found two or three patents that were similar

as far as being applied to the application he was search-

ing, he would probably only cite one of those [53] sim-

ilar patents, would he not? A. That might be true. I

don't know whether I would say probably. He usually

cites more than one, cites several. He would only cite one

if it showed exactly what you were claiming.

@. But he wouldn’t cite a cumulative group of patents

all for the same purpose of showing one element of the

claim, or something like that, would he? A. He would

cite enough of them to be representative. It would de-

pend on how the element is used in combination with other

elernents as to how pertinent the patent is.

Q. Did you have some patent attorneys in your depart-

ment in 1953 and ’54 that worked particularly with the

Des Moines plant? A. Yes.

Q. Could you give me their names? A. Roger C.

Johnson and William A. Murray.

Mr. Morris: If you are searching for that file of cor-

respondence, Mr. Gold, here is the original file in chrono-

logical order.

Mr. Gold: Thank you. That is fine.

Your Honor, we have different exhibits here. The de-

fendant has identified a number of them and no need of

having duplications. Since they have a number [54] on

them I am going to use some of the defendants’ exhibits.

The Court: I assume that is agreeable with defendant?

Mr. Morris: Entirely satisfactory. We had numbered

them in anticipation of use in our case, and one number

is sufficient.

Q. (By Mr. Gold) Mr. Parker, I have handed you a

number of papers that have been identified, I believe, or

have identification number of Defendants’ Exhibit No. 32,

is that correct? A. Yes.

Q. Do you recognize those papers? A. Yes.

Q. That is a group of papers that you produced at the

time of taking your deposition in Moline, Illinois, about

March 27th, is that correct? A. Yes.

Q. March 27, 1962. Can you turn to those papers and

tell me what is the first item in the group. A. The first

item is a letter to the Deere & Company patent depart-

ment, addressed to my attention, from E. C. Bopf, B-o-p-f,

the chief product engineer of our John Deere Des Moines

Works. This letter explains that his department is in the

process of redesigning [55] a tool carrier and proposing

to offer as optional equipment a flat spring standard. It

goes on to describe it.

* * +

[56] Q. (By Mr. Gold) Mr. Parker, that letter referred

to “a flat spring standard 1 X 2 in cross section identical

to that which Graham-Hoeme furnishes as regular equip-

ment.” When they use the word standard, is that the same

as what we have been referring to as shanks? A. Yes,

that is just the shank, the 1 X 2-inch curved shank that

is supported on a frame at the upper end and carries the

tool at the lower end.

Q. This is smaller than one of the others, but this

curved part back here, that is what you refer to? A.

That is the shank, yes.

Q. Either as standard or shank? The words are equiva-

lent? A. Yes.

Q. I believe that that letter referred to a drawing, did

[57] it not? A. Yes, XCA-318.

Mr. Gold: Your Honor, a similar situation exists rel-

ative to drawings. The defendant had the originals, we

had copies. We are going to use theirs and use their

identifications.

Q. (By Mr. Gold) I hand you two drawings that have

been marked Defendants’ Exhibits 33-A and 33-B. Do you

recognize those drawings? A. Yes.

Q. Were those the drawings that were attached to the

letter that you have been referring to, the first letter in

the Defendants’ Exhibit 32? A. Yes. These drawings

showed their first attempt to design a spring clamp.

Q. Can you tell me generally the difference between

the drawings, Defendants’ Exhibit 33-A and 33-B? A. 33-

A is the welded assembly of the fixed member of the

clamp element. It is made up of several welded plates at

angles, welded together.

;

—

33-B is an assembly drawing, showing other parts of the

clamp and showing how the flat spring standard is secured

to the clamp.

Q. In other words, Defendants’ Exhibit 33-A would be

a detail dimensional drawing of the one fixed piece, is

[58] that it? A. Yes.

Q. Makes up a part of the assembly that is shown in

Defendants’ Exhibit 33-B? A. Yes.

Q. What happened after you received the letter and

drawings from Mr. Bopf? A. Well, we made an infringe-

ment search and we were particularly warned by Mr. *

Bopf’s statement that this was similar to the clamp that

Graham-Hoeme furnishes. We always ask our engineers

to let us know if they know of anything that is similar

because that is what we pay particular attention to, to de-

termine whether there is any infringement or not.

Now, after making the search we found that the 798

patent, now in litigation, was—while this was not a copy

of it, it did have the elements closely enough to what was

claimed that we decided that it was an infringement of

the 798 patent and we told the engineers of that fact.

Later a ietter.

Q. Now, this device that was shown in those drawings,

Defendants’ Exhibit 33-A and 33-B, was the forerunner of

the spring clamp later called the 650 series? A. Yes, 650.

This clamp they built up one or two of them b2fovc we

had a chance to tell them about the (59] infringement,

the likelihood of infringement, and they tested it and that

is as far as they went with this one.

Q. But that was the forerunner of this clamp here that

T am now holding up? Can you see it, Mr. Parker? A.

I believe that is right. That looks like the 650.

Mr. Gold: And this clamp has been identified, in ac-

cordance with the stipulation, Your Honor, as Plaintiffs’

Exhibit I.

The Court: That drawing is Defendants’ Exhibit 33—

' Mr. Gold: 33-A and 33-B, sir. There are two drawings.

The letters, group of letters, are Defendants’ Exhibit 32.

Q. (By Mr. Gold) Mr. Parker, was there a letter

written to the Des Moines Works giving the opinion of

your patent department? A. Yes.

Q. And is that letter in Defendants’ Exhibit 32? A.

Yes. That is the next letter that is in the Exhibit 32.

* * #8

[60] The Court: We will be in recess until 2 o’clock.

(Noon recess.)

[61] AFTERNOON SESSION, WEDNESDAY,

MAY 2, 1962

CHARLES THEODORE PARKER, resumed the stand

and testified further as follows:

Direct Examination (Continued) by Mr. Gold.

Q. Mr. Parker, I believe at the time we recessed for

noon you were referring to a reply that was made by your

office to Mr. Bopf. Is that correct? A. Yes.

Q. Will you identify the letter by date and also the ma-

terial that is attached to it. A. October 23, 1953, from

Roger C. Johnson, patent attorney, to E. C. Bopf. He at-

tached to it a search report.

Q. Then there were four pages went with that letter,

or that letter was two pages and two pages of the report?

A. Yes.

Q. I believe on the letter there is 2 reference number,

is there not? A. Reference to the Graham patent.

Q. No, I mean the reference number E-2518-J. To

what does that number refer? A. That refers to a file

that was opened at the time we first heard about this par-

ticular machine. When a [62] factory starts work on de-

signing a machine or approving it, we start an “E” file;

“E” probably stands for experimental.

Q. But that number didn’t appear on the drawings, did

it, sir? A. Oh, no, that is just the patent department ref-

erence number.

Q. And I believe you stated this morning that in that

letter you advised Mr. Bopf that the structure shown in

the drawing. Defendants’ Exhibits 33-A and 33-B, would

infringe the Graham 798 patent, is that correct? A. Yes.

Q. Were any pencil drawings returned to Mr. Bopf with

that letter? A. Yes. He sent us two copies of each draw-

ing and Mr. Johnson marked up drawings in a couple of

places and used them to illustrate his opinion.

Q. i now hand you two drawings which have been

marked for identification Defendants’ Exhibits 34-A and

34-B. Would those be the drawings that were attached to

Mr. Johnson’s reply to Mr. Bopf? A. Yes.

Q. Will you tell us what would be different in these

drawings than the drawings, Defendants’ Exhibit 33-A and

33-B? [63] A. In 34-A there are some green underline

marks and a few shading marks on this top here marked

in green.

Q. When you say the shading marks marked in green,

that would be the portions in the upper figure that would

be to the right of that figure? A. Yes.

Q. And the parts marked in green on the other figures

would be lower surfaces of those same portions? A. That

is right.

Q. Now, I am holding Defendants’ Exhibit 34-B up here

and you have Defendants’ Exhibit 33-B before you. Can

you point out the differences in those drawings? A. Well,

this in brown is iilustrated—this brow:: crayon illustrated

a pipe spacer that—the purpose of which—well, the purpose

of all these marks was to show what appeared to be the—

what the patent claims emphasized, and what distinguished

the patent claims mainly from the prior art, and so Mr.

Johnson was showing him what seemed to be the Graham

invention there and told them that that is what they would

have to avoid in order not to copy Graham’s invention. The

pipe spacer was just one suggestion. He wasn’t trying to

design something practical, but to illustrate how the de-

sign could be revised so as not to use the Graham inven-

tion.

Q. Actually what he was doing was trying to make

some [64] arrangement whereby the plate member above

the shank would not contact the fixed member to form a

stop, is that correct? A. That is right. The patent claims

emphasized the coming together of two surfaces on the

hinged member on the one hand and the fixed member of

the clamp on the other hand, and those two surfaces, the

description of those in the claim took up several lines,

which indicated that that was one of the important parts

of the claim.

Q. So Mr. Johnson was suggesting the variation in the

stop, but it would still serve the same function, is that cor-

rect? A. Well, of course all spring clamps have to have

a stop, and when the spring brings the parts together all

clamps in the prior art and any new clamp that is designed

has to stop it in a definite location so that the bottom point

of the tool, the lower end of the shank, will be in

the proper position relative to the ground. The pipe

spacer was one way of setting a limit to the action of the

pivoted clamp member in a different manner than is de-

scribed in the claim.

Q. The two abutting faces in the Graham 798 patent

structure were also intended to position the tool in the

right angle according to the ground it was plowing? A.

Yes.

[65] Q. Am I correct in saying that you want the cor-

rect angle to get what they call suction? A. That is

right, suction or penetration of the tool into the ground.

Q. That suction would be so that as you are plowing

the tool will tend to stay in the ground rather than be

pushed back up, is that right? A. Yes. That is mainly

the case of the sweep rather than the spike or the chisel.

The sweep must go under the ground at an angle in order

that it will penetrate.

Q. When you refer to a sweep you are referring to a

tool like this (indicating)? A. That is right. The point

of the sweep is slightly higher than the rear part of it or

it would never go into the ground, it would just slide along

the surface.

Q. Now, will you turn to the next letter in Defend-

ants’ Exhibit 32 and tell us what that is. A. It is just

a letter of transmittal from R. C. Johnson to E. C. Bopf,

dated November 4, 1953. It is transmitting some drawings

of prior art patents, three foreign patents.

Q. That might be said to be an extension or further

citation of patents in his search report? A. Yes. These

are the three foreign patents that were [66] cited in the

Graham patent application that matured into patent 798.

Q. Now will you turn to the next letter and tell us

what that is. A. That is an order from our patent de-

partment to the United States Patent Office in Washing-

ton, asking or ordering a photostat copy of the complete

file in the 798 Graham patent.

Q. And that was dated November 9, 1953? A. Novem-

ber 9, 1953.

Q. You were ordering what would be called a file

wrapper? A. File wrapper, yes.

Q. Now turn to the next letter, please, and tell us what

that is. A. It is a letter dated November 10, 1953, from

Mr. Bopf to Mr. Johnson again, sending a print of another

drawing, CL-134-N, and in this drawing he shows a new

design that has been made with the idea of avoiding the

use of Mr. Graham’s invention. He asks the opinion of the

patent department, of Mr. Johnson, as to whether that was

an infringement of the Graham patent. The same letter

also transmits another drawing, CL-135-N, which is

another print of the same drawing, I believe, except that

he has marked in in pencil an adjustable stop device by

which the angle of penetration of a sweep [67] can be ad-

justed.

Q. Now I show you drawing that has been marked

Defendants’ Exhibit 38. Is that the first drawing that you

had reference to that was attached to the letter of Mr.

Bopf of November 10, 1953? A. Yes.

Q. I now show you a drawing which has been marked

for identification Defendants’ Exhibit 39. Is that the other

drawing that you had reference to? A. Yes, that is XCL-

35, showing in pencil this adjustable stop member.

Q. That adjustable stop is a bolt, is it not? A. Yes.

He has used a bolt for that stop and his question there

was whether perhaps that would constitute invention on

the part of our engineers. He says that if Mr. Johnson

sees fit to file a patent application on that variation or that

variation of the structure, that Dwight Hunter is the in-

ventor of that particular detail.

Q. Now, what is the next letter in Defendants’ Exhibit

32? A. It is a letter from Roger Johnson to E. C. Bopf,

dated November 13, 1953, telling him that these two

prints were sent, that we just received, were in his opinion

, 6

not infringements of the Graham 798 patent and that we

could—he felt that we could safely adopt [68] that design.

Q. He then said that the patent ability of those designs

was rather doubtful, did he not? A. Yes. It is a very

specific little detail there that he wasn’t sure whether we

could get a patent on it or not.

Q. Will you read the last paragraph of the letter of

November 13, 1953, read it aloud, please. A. “However,

it might, nevertheless, be advisable to file a patent ap-

plication so that, if allowed, it could be used to convince

Graham that our design is different from his.”

Q. Do you subscribe to the idea that if you got a patent

on that structure that that would indicate it would not in-

fringe the earlier patent?

Mr. Morris: Your Honor, I believe that is a matter of

law and calls for opinion as to a question of law, which

is not proper examination of this witness.

The Court: Yes, I think it is asking for a legal con-

clusion. Sustained.

Q. (By Mr. Gold) Was there a memorandum attached

to the letter of November 13, 1953? A. I don’t see any

evidence that there was. The letter doesn’t mention any.

The next , n the file is a [69] memorandum that is

dated December 1, 1953.

Q. That is a 2-page memorandum? A. Yes, but it

would not seem that that went with this letter of November

15th.

Q. And the date on that memorandum is on the second

page under Mr. Johnson’s name? A. Yes, December Ist.

Q. Generally what is the subject of the memorandum?

A. The subject is the Graham patent 798, and it was

evidently written soon after receiving the file history of

the Graham patent, after Mr. Johnson studied that file

history, which is rather a customary way to obtain an in-

terpretation of what the inventor considered his invention,

and at the time he applied for the patent.

Q. Now, what is the next letter in the Defendants’ Ex-

hibit 32? Would that be the letter of transmittal of the

memorandum? A. That is the one that transmitted the

memorandum I do believe. It doesn’t say so, but I believe

that a copy of the memorandum was sent along with this

letter in which Mr. Johnson inquires about some photo-

graphs that show a spring clamp that was very—-that ap-

peared to be the same as the original welded construction

shown in the first drawing in this group of exhibits.

[70] Q. That would be like shown in the drawings

Defendants’ Exhibits 33-A and 33-B, is that correct? A.

Yes, I think that is right. In this letter—he had just seen

these photographs come through from our advertising de-

partment and he wanted to know whether they were

following that design because it appeared to be the design

that he had told our engineers was an infringement.

These photographs were taken just to preserve the design

in the file, but they had already abandoned the use of

them.

Q. It wouldn’t have been very practical to have made

the device out of fabricated steel, would it? You would

make it out of a casting anyway, would you not? A.

Well, casting is the way that type clamp has always been

made, so the weld design was for—was because that was

easier to make a test model.

Q. What was the nature of the next letter in the group,

Defendants’ Exhibit 32? A. I might just correct my

last—one of my last statements. This letter of December

lst does mention that it is transmitting a copy of the

memorandum. Then the next letter is a letter from Mr.

Bopf to Roger Johnson, dated December 8, ’53, explaining

that the spring clamps that are shown in these photographs

are not the design we are putting into production. This

[71] letter also is a letter of transmittal of the print, CL-

136.

Q. I believe there is a pencil notation on the letter of

December 8, 1953. Do you note those notations? A. Yes.

Mr. Bopf is referring to a conclusion of Mr. Johnson’s.

This pencil notation is in my handwriting. I put it in

there. It reads, “In the memo of 12-1,” in other words,

I was—

Q. You put it in there for your own identification? A.

My own identification as to where I can find this conclu-

sion, because the conclusion was not in Johnson’s letter of

December Ist. So when I couldn’t find it there, I read the

memorandum and found it and made this note so I could

refer to it easily again if I ever wanted to.

Q. I now show you a drawing marked for identification

Defendants’ Exhibit 41. Is that the drawing that accom-

panied Mr. Bopf’s letter of December 8, 1953? A. Yes,

that is the one.

. This drawing has some pencil marks and letters on

it. That has been added subsequently, has it not? A.

That was during Mr. Hunter’s deposition last month.

Q. Were there any other drawings sent to you with

that letter of December 8, 1953? A. No, I think not.

[72] Q. What is the next letter in Defendants’ Exhibit

32? A. Letter from Mr. Jchnson to Mr. Bopf, dated

December llth. It is an answer to Mr. Bopf’s letter of

December 8th.

Q. He also commented on the possibility of filing appli-

cations for patent on Mr. Hunter’s structure? A. Yes.

He refers to the fact that this XCL-136 is their proposed

production design, and notes that there is no adjustable

stop on this design, and asks Mr. Bopf if he thinks it would

be worth applying for a patent.

Q. On the second page of that letter I believe there is

a pencil notation. In whose handwriting is that? A. That

is mine.

Q. Now will you turn to the next letter in Defendants’

Exhibit 32 and tell us what that is. A. It is a letter dated

December 16th from Mr. Bopf to Mr. Johnson.

Q. That letter also has a pencil notation on it, I believe.

Is that your identification? A. That is right. In this

letter Mr. Bopf is suggesting what might be considered a

patentable irnprovement in this design over any of the

prior art.

Q. Will you read the third sentence in the first para-

graph of that letter. A. “We know no advantage in this

design insofar as it [73] differs from that shown in the

Graham patent 2,627,798 except that it avoids the claims

of this patent.” Then he goes on to explain what might

be considered an advantage, though, which is somewhat

contradiction of that statement.

Q. Now, will you turn to the next letter, please, and

tell us what that is. A. A letter from Roger Johnson to

E. C. Bopf, dated December 20th, in which Mr. Johnson

decides that the advantage stated by Mr. Bopf, that this

particular design of stop lug could be made more accu-

rately than any of the previous designs, or then the prior

art, that that advantage would make it worth while to file

a patent application and see if we couldn’t get a claim on

it. So he tells Mr. Bopf he has decided to file a patent

application and asked for some other prints, detailed parts,

to help him make up the patent copies.

Q. Now, will you turn to the next letter and tell us

what that is. A. A letter from Bopf to Johnson, dated

January 4th.

Q. Is that a letter of transmittal of some detail draw-

ings? A. And states that he presumes we will show both

the production drawing with the fixed stop lug and also

the other modification in which an adjustable stop plug

is [74] used, show those in the same application and

attempt to get some claims on both embodiments.

Q. Mr. Parker, I show you a drawing that has been

marked Defendants’ Exhibit 42-A. Is that one of the draw-

ings that was sent to you in Mr. Popf’s letter of January

4, 1954? A. Well, it could have been. I can’t substantiate

that. It is a detailed part of the clamp.

Q. Caf you tell us what part of the clamp is shown

on that drawing? A. That is the fixed half of the clamp

on the tool bar.

Q. Can you give us the number here, Deere & Company

number of the drawing? A. Drawing number is C-21-N.

Q. That is in what we might call the name box at the

lower right-hand corner of the drawing? A. Yes.

The Court: What exhibit number is that?

Mr. Gold: Defendants’ Exhibit 42-A, sir.

Q. (By Mr. Gold) Mr. Parker, I have a clamp here.

It has a tag on it, marked Defendants’ Exhibit 26-A. Can

you point to the part that is shown in the drawing,

Defendants’ Exhibit 42-A? [75] A. That is this part

here (indicating).

Q. That is the part that is below the square bar? A.

Yes, below the square bar through which the other parts

extend. It is a box-like casting.

Q. Now, this clamp has a cap member over the square

bar, does it not? A. Yes.

Q. That is fastened to the lower part by bolts? A. Yes.

Q. And the cap, the bolts in the lower member that

you referred to could all be called the fixed member? A.

Yes, that is a fixed member as contrasted with this

pivoted member that is attached to the shank.

Q. The square bar would be part of the frame. would

it not? A. Yes.

Q. Now I show you the drawing that has been marked

for identification Defendants’ Exhibit 42-B. Can you tell

us what that is? A. That is the pivot part of the clamp.

That is the part to which the shank is connected.

Q. Can you point out on this clamp, Defendants’ Ex-

hibit 26-A, that pivoted part? A. Yes, right here. It is

this part that is pivoted—here is the back of it here.

* * *

[76] The Court: Which is the pivoted part?

A. It is pivoted here to the fixed member and at the

front end it is bolted to the front end of this tool shank.

There is the front end of the pivoted member right there

(indicating).

Q. (By Mr. Gold) Would that be a plate lying on the

top of the shank? A. Yes.

Q. (By Mr. Gold) Now I show you drawing, Defend-

ants’ Exhibit 42-C. Can you tell what that is? A. Well,

that is the casting that the coil spring rests upon.

Q. Might be said to be like a washer at the lower end

of the coil spring? A. Yes.

Q. And I have another drawing, Defendants’ Exhibit

42-D. Is that the washer at the upper end of the spring?

A. Yes, it is called cap spring.

[77] Q. Defendants’ Exhibit 42-E, is that the coil

spring? A. That is the coil spring itself, yes.

| | NC ae

Q. And Defendants’ Exhibit 42-F, what is that? A. U-

bolt over which the springs are mounted.

Q. You might call it a spring bolt? A. Yes. The

drawing calls it a clip, but I would call it a U-bolt myself.

Q. Now I have a drawing, Defendants’ Exhibit 42-G.

Is that the shank? A. That is the shank or what our en-

gineers refer to as the flat spring standard, curved shank

the tool is mounted on.

Q. Like the one I held up earlier that had the curved

member? A. Yes.

Q. On which the tool was fastened to the lower end of?

A. Yes.

Q. Now I have Defendants’ Exhibit 42-H. Will you

tell me what that is. A. That is a retainer clip. I could

describe it better if I saw the machine.

Q. Here is Defendants’ Exhibit 42-I. Can you tell me

what that is? A. It is just a pivot pin drawing.

Q. Mr. Parker, we have now dismantled the clamp,

[78] Defendants’ Exhibit 26-A, and I would like for you

to step over to the table and help us identify each of the

parts accordir.g to how they correspond with the numbers

of the drawings that we have talked about. A. Defend-

ants’ Exhibit 42-A shows the lower casting in the fixed

part of the clamp, and that is this part (indicating).

Q. That is this large casting under the square bar? A.

Yes.

Q. “And that casting is held to the square frame bar or

tool bar by the top cap and two bolts, is that correct? A.

That is right.

The Court: Is that a single piece casting there?

Mr. Gold: This lower part is, sir. The upper part is a

separate casting, and the two bolts, and this is the frame

member.

Q. (By Mr. Gold) Mr. Parker, awhile ago we had dif-

ficulty showing the fixed member or plate. Now, holding

the fixed member inverted, does that member go inside of

the channel? A. Yes, in there like that (indicating),

pivoted by this pivot pin, so it is pivoted to the fixed part

(demonstrating).

Q. Now I have Defendants’ Exhibit 42-G, which you

said [79] was the shank. A. This is the shank with most

of it cut off. This is just the top part of the shank shown

here where it bolts to the pivoted member of clamp.

All the bottom curved part has been cut off.

The Court: What is that cailed, the flat spring stand-

ard?

A. Yes.

Q. (By Mr. Gold) And we also refer to it as the shank.

The part we have here is primarily the part in the

clamp, is it not? A. That is right.

The Court: What is the part called that fits into the

lower casting there that pivots?

A. Well, I call it the pivoted portion of the shank—

pivoted portion of the clamp.

The Court: That is in drawing 42-B?

Mr. Morris: That is correct, Your Honor.

A. The drawing is called the hinge standard.

Q. (By Mr. Gold) And that is on Defendants’ Exhibit

42-B? A. 42-B.

The Court: You called that first the pivoted part of the

shank or the clamp.

A. Of the clamp. I made a mistake there.

[80] Mr. Morris: From time to time that part and a

similar part of other devices may be called a hinge mem-

ber, a fulcrum plate, a pivoted member or a shank attach-

ing member. Those four names are used from time to

time in various phases of this matter.

Q. (By Mr. Gold) I show you Defendants’ Exhibit

42-H. Can you show us that part? A. Retainer clip, that

is this (indicating).

Q. Now can you tell us where that clip is fastened?

A. The retainer clip is mounted on the same bolt that

holds the upper end of the tool shank to the pivoted mem-

ber of the clamp. The retainer clip is just a small angle

member that holds the U-bolt that is connected to—the

two legs of which go up through the two coil springs to

the connection at the top.

Q. U-bolt is shown on which drawing? A. Defend-

ants’ Exhibit 42-F.

Q. Now, would the U-bolt go under the shank at the

end and under the clip as I am holding it now? A. Un-

der the clip, yes. The clip turns down to prevent the U-bolt

from sliding away from the front end of the shank.

Q. And that would be at the forward end of the shank

or remote from the pivot hole, is that correct? A. Yes.

[81] Q. Now, you referred to the member I hold in my

hand now—which drawing is that shown on? A. 42-C.

Q. And you call that what? A. That is Defendants’

Exhibit 42-C. That is called the base for the spring.

Q. I now refer to drawing, Defendants’ Exhibit 42-B,

and what is shcwn on that?

The Court: Did you say that is the base for the spring?

A. Yes. The bottom end of the spring rests on this base

and the surface of the base is shaped so that it fits the

end of the spring which curves around here like this

(demonstrating).

Q. Mr. Parker, maybe it might be helpful if we would

put the base on the fixed member.

The Court: Was that referred to as a washer before?

A. That is the lower or base washer, Your Honor.

Q. (By Mr. Gold) Now, do I have the lower base

washer resting on the fixed member with the spring on

the washer in about its proper position? A. Yes.

Q. Now, I notice on the base washer there are two de-

pending rounded portions on each side of the hole, and then

[82] laterally to that there is a lug that extends down.

Where would that lug be positioned when it is mounted

on the clip? A. The position behind the spring, which is

in the direction toward the pivot. It bears on the top of

the fixed part of the clamp for the purpose of preventing

the spring frora tipping backwards in the operation.

Q. Now, the spring is shown on which drawing, please?

A. Defendants’ Exhibit 42-E.

Q. Now, in order for the Court to visualize, maybe we

can put this in here. Now then, we had another drawing

of a pin, I believe you said. That was this drawing? A.

Defendants’ Exhibit 42-I. That is the pivot pin, it is in-

serted in this hole through the lower—

Q. That pin goes through the hole in this link member

or pivoted member as we referred to it also? A. Yes.

Q. That series of drawings that we have been referring

to were the prints that were attached to Mr. Bopf’s letter

of January 4, 1954, is that correct? A. I presume that is

correct, yes.

Q. Now, will you turn to the next letter in Defend-

ants’ Exhibit 32 and tell what that is. A. Letter dated

January 28, 1954, from Mr. Johnson to Mr. Bopf, trans-

mitting the patent application which was [83] drawn on

our design which we have been discussing.

Q. Now, the next sheet in Defendants’ Exhibit 32. A.

The reason for transmitting it, the application, was te have

it signed by the inventor.

The next sheet is a record of invention, we call it,

which gives the various dates on which the invention was

conceived and first drawn up in a sketch, first written up

in a description, to whom it was first explained, and the

description of it, date of the first field test and the first

photographs and the first model, the first full sized device.

Now, this is a form that we send along with each patent

application and ask the inventor to fill it out, so that in

case we ever need to know these various dates in the fu-

ture we will have them all on one piece of paper.

Q. You did file an application for a patent on Mr.

Hunter’s design? A. Yes.

Q. Any patent issued on that application? A. Yes, It

was No. 2,777,378.

Q. Mr. Parker, I hand you now a soft copy of the

Hunter patent which has been marked as Defendants’ Ex-

hibit 44. Is that the patent that matured from the applica-

tion that you filed? [84] A. Yes.

Q. Now, will you turn to the next item in the Defend-

ants’ Exhibit 32 and tell what that is. A. It is a letter

of transmittal from Mr. Bopf to Mr. Johnson dated Janu-

ary 29th, returning the application duly executed.

Q. Tell us what is the next letter in Defendants’ Ex-

hibit 32, Mr. Parker. A. Letter from Mr. Johnson to the

Commissioner of Patents in Washington transmitting the

application, patent application of Mr. Hunter.

Q. And the next item? A. The next item is a letter

from Mr. Johnson to Mr. Kirby, the cashier of Deere &

Company, asking for a check for $33 to send to the Com-

missioner of Patents with the application.

Q. And the next item? A. The next letter is a copy

of Mr. Johnson’s letter to the Commissioner of Patents.

We send a copy of that letter to go along with the assign-

ment of the invention and the application 1» Deere & Com-

pany, because the Patent Office requires a separate letter

of transmittal with every paper that is filed in the Patent

Office.

The next is a receipt—

* * *

[85] A. This is a receipt by the Patent Office of the as-

signment. Yes, it is of the assignment itself.

Q. (By Mr. Gold) And the next item? A. It isa

letter dated February 12th from Mr. Johnson to Mr. Bopf,

transmitting a copy of the Hunter patent application.

Q. The next item I believe was included in the group

that we made copies of at the deposition, and in that depo-

sition was identified as Parker Exhibit 2-J, is that correct?

A. Yes.

Q. Tell us what that is. A. This is a memorandum

that was made after one of the executives of the

Jeoffroy Manufacturing Company had, in a conversa-

tion with Mr. Ralph Mason, one of our executives,

indicated that his attorney could tell us why he thinks

that our clamp construction infringes this Graham

patent. This is rather a mystery because we have never

been able to find out who that attorney was and the only

one that it could be is Mr. Morris [86] here, but he didn’t

say anything, so I think it may have just been Mr. Jeof-

froy’s opinion rather than some attorney’s opinion. But

the purpose of the memorandum was—I asked Mr. John-

son to review all of his notes and opinions as to validity

and see if he sees any reason to change his mind as to

the question of infringement. He studied the matter over

from start to finish and his conclusion was that our de-

sign of clamp did not infringe the Graham patent, there-

fore he thought it must be some other patent that was pos-

sibly referred to, and such as the Graham No. 811 patent,

which was held valid and infringed in the Jeoffroy suit, the

suit against Jeoffroy. So then he studied the $11 patent

again to review his analysis, and he decides tha‘ that is not

infringed either. So we just decided that there must be

some mistake either as to the patent or the structure that

was rumored to infringe this Graham patent.

Q. He didn’t say in that memorandum that he had de-

cided there must be some mistake there? A. No.

I said that. Let’s see, I don’t know. Maybe he did.

I was just giving that as my opinion, based on the

recollection of the facts at the time. We were so con-

fident of that opinion that we didn’t even trv to follow up

to find out who it was that made the [87] statement in the

first place, if there was any. You see, this came third-or

fourth-hand, somebody told Jeoffroy in talking with Ralph

Mason who told Mr. Bopf about it, and Mr. Bopf just men-

tioned it to me in a conversation, and—well, I was always

very much interested in avoiding other people’s inventions,

we don’t want to infringe them, and their patents, so if there

is ever any doubt about it we give it our most careful at-

tention.

Q. And here you were indicating in this memorandum

you were relying entirely on the difference in the stop

contacting faces to distinguish and see that there was

no infringement, is that right? A. Well, not entirely.

There is over a page of opinion here. It might be difficult

to sum it up in just a few words, but the paper is in evidence

here, so unless you ask me to I wil! just let it go at that.

Q. Regardless of the memorandum, relating to the Gra-

ham 811 at the top? A. Yes, the bottom two paragraphs.

Q. Turn to the next item in Exhibit No. 32 and tell us

what that is. A. It is a letter dated July 12, 1954, from

Roger Johnson to Ed Bopf. At that time we were wonder-

ing whether it would be worthwhile to file a Canadian

patent [88] application corresponding to this United States

Hunter patent application.

Q. And the next letter 1: Defendants’ Exhibit 32? A.

Letter from Bopf back to Johnson, dated July 14th.

Q. Also relating to the Hunter application? A. Yes,

but he advises filing a Canadian application.

Q. And the next letter in the exhibit? A. That is

a letter from Mr. Johnson to Mr. Dawson, the

manager of our factory at Welland, Ontario, in which it

was customary for us to notify our factory up in Canada

as to whether or not we decided to file a patent applica-

tion in Canada corresponding to each United States patent

application. In some cases we did file it and we told them

that we were going to, and in other cases we told them

why we did not intend to file one and give him an op-

portunity to suggest a different course of action.

Q. ‘Tell us what the next letter is. Is that just a consent

to Mr. Dawson— A. Consent to Mr. Dawson to file the

application in Canada.

Q. Dated July 21, 1954? A. Yes.

Q. And the next item? A. The next item is a mem-

orandum from Mr. Johnson, dated [89] July 27, 1955, re-

garding a telephone call from a Mr. Ray Dowdall of Min-

neapolis-Moline Company, asking whether or not we had

a Canadian patent on this clamp.

Q. And the next letter? A. November 21, 1956, from

me to Mr. Kirby, our cashier, asking him for a check to

the Commissioner of Patents to pay the final fees on four

applications which had been allowed, one of them being the

Hunter application on the spring cushioned clamp.

Then we have the receipt from the Patent Office giv-

ing us the number of the patent that was to issue, and the

date on which it would issue. They sent us that after they

received the final fee from us.

Q. The next letter? A. The next letter is dated Feb-

ruary 18, 1957, from Mr. Bopf to Mr. Murray.

Q. That is relitive to the marking— A. The patent

marking.

Q. Of the Hunter patent? A. Yes.

Q. Now we have gone through the letters that related

to the design and opinions relative to the Deere 650 spring

clamp, is that correct? A. Yes.

Q. Mr. Parker, I show you Defendants’ Exhibit 34-A. I

[90] believe that is the drawing that you said Mr. Johnson

placed some green markings on the surface, is that correct?

A. Yes.

Sr SS

Q. I show you assembly drawing, Defendants’ Exhibit

33-D. That was the assembly drawing of the original

spring clamp that was submitted for opinion, was it not?

A. Y2s.

Q. There was a plate member over the shank and the

plate member was pivoted? A. Yes.

Q. That plate member is desigrated with the numeral

25? A. Yes. That is the pivoted member that I have re-

ferred to before.

_ Q. And when this pivoted member was urged upwardly

by the coi] springs, that plate member contacted the face,

the lower face of the fixed member and that lower face

would be marked green on Defendants’ Exhibit 34-A, is

that right? A. Yes.

@. And that served as a stop to position the lower end

of the chisel or the tool, so it would have the proper suc-

tion? A. Yes, that is right.

Q. And the suggested change that was made actually

[91] consisted of what, if you were going to apply it to

this drawing, Defendants’ Exhibit 34-A? A. Well, it was

to move the stop to some other position. This is what we

considered covered by the patent, Graham patent, the

lower face of the fixed clamp member contacting the face

of the pivoted member. Se we just moved the siop so

that it would net—not only wouldn’t contact between those

two faces, but it wouldn’t even contact between those

two members.

Q. You actually cut the end of the plate off a little bit

and put a lug on the fixed member se the lug would

engage the frame of the shank to form the stop, is that

right? A. Yes, put the stop between the top of the tool

shank itself and the fixed member.

at when it was urged upwardly by the spring

the forward end of the shank would have the same posi-

tion as it had when it was used with a structure such as

was shown in Defendants’ Exhibit 34-A, is that right? A.

Well, yes, all spring clamps have stops. We considered

this patent just to cover the particular arrangement

that was shown in the patent.

_Q. So your entire distinction in the opinions you were

relying on later was the fact that you cut off the end of

this plate, of this hinge member right here so as to

[92] expose the upper face of the shank and put a lug on

the fixed member to engage that shank? A. Well, that

was one of the points of distinction, yes.

Q. Were there any other points of distinction? A.

Yes, there was something—there was another limitation

in the claim about the stirrup member back of the—

Q. There wasn’t such a limitation in Claim 1 of the

798 patent, was there? A. No, perhaps that was in Claim

Q. Claim 2 is not asserted by the plaintiff in this ac-

tion, is it? A. No, not as against the 650.

Q That is right, as to this structure Claim 2 is not as-

serted as to this one? A. No.

Q. The lug you placed on the fixed member is the lug

at the forward end that I have my “finger on, is it not?

A. Yes.

Q. And that extends down in front of the hinge zrember

and contacts the end of the shank? A. Yes. It doesn’t

touch the pivoted member at all.

Q. In making that change you didn’t alter the normal

position of the shank at all, when it is moved upwardly

by the springs and comes to its stopped position, is that

right? [93] A. Well, I would say that it is an improve-

ment.

Q. Does it change the position of the shank? A. It

changes it in that there isn’t the amount of variation that

there would be if the two cast faces came together, or that

there could be, that is, gauging right on the tool shank it-

self, which is a piece of smooth steel.

Q. The stop is a cast— A. The stop is a relatively

small area which can be made much more accurately than

the complete top face of a pivoted member, yes.

Q. Do you machine the stop to an accurate dimension?

A. No, I don’t beiieve it is ordinarily necessary. It can

be cast accurately enough to—

Q. You don’t have any difficulty casting it accurately

at all, do you? A. Well, I don’t know.

Q. Now, Mr. Parker, after a few years there was an-

other design of clamp submitted to your office, was there

not? A. Yes. That was submitted with this letter of

April 29, 1958, from Mr. Bopf to Mr. W. A. Murray, of our

department.

Q. And some additional drawings were submitted with

that letter? [94] A. He sent us a drawing and asked

if that avoided infringement of the Graham patent.

Q. If I am not mistaken, weren’t there two drawings

submitted with the letter, Mr. Parker, and would they be

Defendants’ Exhibit 45-A and 45-B? A. Yes.

Q. Will you tell us what is shown on those respective

exhibits? A. 45-A is a—that is a drawing of the fixed

member. Well, it is just half of the fixed member. It is

the part on which the springs are mounted in this case,

this clamp is for a larger frame beam. It is a hollow—

square hollow beam rather than a solid frame, and the

fixed part of the clamp is in several parts rather than

just two parts as in the 650.

Now, Defendants’ Exhibit 45-B is the pivoted member

of the clamp.

Q. These are the drawings that were submitted to you

for an opinion and this is similar to the structure that later

was manufactured under the designation of Deere 100

series spring clamp? A. Yes.

Q. Mr. Parker, I have now placed on the table a clamp

that has been identified as Defendants’ Exhibit 27-A.

That is the commercial product that resulted from the

[95] original work and design that was submitted on your

drawings, Defendants’ Exhibits 45-A and 45-B, after the

device was modified? A. Yes, after it was cleared—after

we cleared it for production and decided that it would not

infringe the patent:

Q. Now, as to the structure shown in Defendants’ Ex-

hibit 45-A, you say that shows the forward half of the

fixed member. That is the portion on which the springs

are sitting? A. Yes.

Q. Now, at the other end, other side of the square tube

frame is a part clamped to that forward portion and they

together with the bolts make up the fixed member? A.

That is right.

Q. There was no change made in the rear portion of

the fixed member, was there? A. No change from

what?

Q. From what was originally designed, it is not shown

on either one of those drawings? A. No, I don’t recall

that there was.

Q. You were concerned primarily with what was in

the forward part of the clamp, weren’t you? A. Yes.

Q. Now, when you received those drawings, what was

done? [96] Did you give an opinion? A. Yes. We re-

ceived the drawings with this letter from Mr. Bopf, but

he had already modified the drawings in pencil, because

he anticipated that we would be concerned with the in-

fringement of the Graham patent the way it stood—the

way it was originally drawn, because we had pointed out

to him that we should not use the type of stop or even

we should not use the type of stop claimed in the drawing,

nor should we have a stop between the same two mem-

bers that were used by Mr. Graham in his design. There-

fore, while the stop shown in the drawing was quite dif-

ferent than Mr. Graham’s design, it still contacted be-

tween the pivoted member of the clamp and the fixed

member of the clamp, in a way that could be considered

an infringement, and Mr. Bopf recognized that himself and

so in his letter he pointed out that he himself had sug-

gested these changes to place the stop between the hinge

member of the clamp and the frame bar, rather than be-

tween the hinged and fixed members of the clamp.

“ Q. Did Mr. Murray of your office write an opinion in

response to that letter? A. Yes, he wrote an opinion dated

the 7th, in answer to Mr. Bopf.

[97] Q. Did he attach a memorandum to that letter? A.

Yes, he did.

Q. The memorandum consists of two pages and also a

third page listing some other patents, is that right? A.

Yes.

Q. Now, referring to Defendants’ Exhibit 45-B, the

pencil marks that you say were made by Mr. Bopf was to

remove a little material from the forward end of this

hinge member and place a little material on the intermedi-

ate part, is that right? A. Yes. By so doing he changed

the stop members—

Mr. Fishburn: Just a moment. I think the witness

should answer the question.

Q. (By Mr. Gold) Now then, that is exactly what was

done and in making the clamp that is shown on Defend-

ants’ Exhibit 46? A. Yes.

Q. The metal that was removed, according to Mr.

Bopf’s suggestion, was_at the forward end of the hinge

member so it would not cofitact-the part of the fixed mem-

ber under the springs, is that right? “A:-~That is right.

Q. And the metal that was added was added inimedi-

ately under the box frame so the hinge member would con-

tact the box spring? [98] A. Yes.

Q. This fixed clamp that you refer to is rigidly fas-

tened to the box frame by three bolts, is it not? A. Let’s

see, I think it is three. Yes.

Q. Two bolts underneath the box frame and one on

top? A. Yes.

Q. So that the fixed menber is just—when we call it a

fixed member, we mean it is tight and remains stationary

to the frame? A. Yes.

Q. So your change from what Mr. Murray said would

be an infringement was to move the contact between the

two faces that were fixed—I mean between a face of the

hinge member and a face of this fixed member, to another

face of the hinge member and to a part that was fixed to

the fixed member? A. That is right, that is what was con-

sidered not an infringement.

Q. And your intention in making that change was still

to keep the same position of the shank when it was up in

its upper or normal position, urged upwardly so the top

faces were in cortact, was it not? A. Well, yes. All

clamps, Mr. Graham’s and everybody else’s design, have

stop members and our point was to not use Mr. Graham’s

design or anything that would [99] infringe his patent.

Q. And making that change of taking the metal off at

the forward end of the hinge member and putting it down

under the frame did not change the location of the shank

at all when it was in its upper position, isn’t that right?

That shank remained the same in both instances? A. Oh,

yes.

Q. Mr. Parker, the Patent Office Gazette each week

carries notices relative te any patent litigation that is

pending or that has been determined in some way, it car-

ries notices of all patent litigation, does it not? A. It is

supposed to. I have found there are instances where I

haven’t seen any notice, but there has been a suit. But

that is the way it is supposed to work.

Q. In most instances when a patent suit is filed there

is a notice within a few months in the Patent Office

Gazette, is that right, sir? A. Yes.

Q. And when there is a decision in any patent litiga-

tion, it is usually reported in what they call United States

Patent Quarterlies, is it not? A. Yes.

Q. That is a reporter system similar to the Federal Re-

porter? A. That is right.

[100] Q. Your patent department has received copies of a

Patent Quarterly? A. Yes, we subscribe to that.

Q. And the advance sheets? A. Yes.

Q. Do your attorneys read those advance sheets? A.

Yes, we all try to read them. I don’t say we have time

to read all of them, but we would like to.

Q. If you note a decision relative to an agricultural im-

plement, you would probably note it and everyone would

read it, would they not? A. We wceuld be more interested

in that than we would in any other kind, of course.

Q. You knew about the Graham and Jeoffroy litigation?

A. Yes.

Q. In fact, you knew about it back about the time that

Mr. Hunter first started working on the design that we

have been referring to that accumulated into the 650 suit,

is that right? A. Yes, we knew about it almost from the

time it started.

Q. And you particularly noted it when the Graham 798

patent was held out as infringed by the Court of Appeals

of the Fifth Circuit? A. Yes.

Q. Mr. Parker, when Deere & Company start to be in-

terested [101] in producing some equipment or changing

their equipment, do they have an investigation made in the

field, some kind of a survey? A. Usually do.

Q. Are those surveys sent to you? A. No.

Q. You don’t receive copies of them? A. No. They

are making—well, some of them are not formal surveys.

The demand for any particular implement or improvement

usually comes in the form of either complaints or sugges-

tions from our customers that they want ceriain things

and they make those to their dealers and the dealers for-

ward them to the branch house and the branch houses for-

ward them on to the factories. Then we have a product

research department that follows—several members of

that department that follow the conventions, the meetings

on various agricultural subjects and go to the experimental

stations of the government, the universities, to keep ap-

prised of any new ideas that are coming out and so some-

times a suggestion that we need a certain implement

would come from the product research department, some-

times from the sales department------__.____

Q. If it is new equipment of a competitor that is oper-

ating in the field, do you have people go out and observe it

[102] to find out what it will do? A. Yes, both our en-

gineers and our product research men are always inter-

ested in seeing any competitive equipment either on the

dealer’s floor or in the field.

Q. Do you know what type of chisel plow Deere &

Company was selling in South Dakota and Montana prior

to the 650 series? A. Yes, we had a number 600 series

and a 900 series, which had other forms of springs be-

tween the tools and che frame.

Q. Is that spring a coil in the shank itself that we

might call a pigtail? A. Yes.

Q. That is the only spring that you would have as far

as any spring between the tool and the frame, prior to the

650 series? A. Yes.

Q. Is the term pigtail a proper, well known name de-

scribing the type of spring shanks that you were using in

your 600 series or 900 series? A. It is one term you can

use. I hadn’t heard of that particular term until lately,

but I presume that the engineers would have known about

it.

Q. The shank comes back from the frame and then

makes two turns, then comes down to the lower end of the

tool [103] it is mounted on? A. Yes.

Q. And the forward end of that shank is fixed tight to

the spring by some clamp, there is no spring in the clamp

at all? A. Yes.

Q. (By Mr. Gold) Mr. Parker, when we took the

depositions in Moline, we had some surveys produced,

Did you receive copies of those surveys? A. Yes.

Q. Did you receive them back at the time they were

made? A. No. No, those were surveys made by the

product research department, and I hadn’t seen them until

just recently.

Q. Until about the time of the depositions? A. Yes.

Q. Mr. Hunter brought those with him? A. No, they

were found in the product research files.

Q. In Moline? A. In Moline, yes.

Mr. Gold: If Your Honor please, these are the originals

of the exhibits that were in the Hunter [104] deposition,

Hunter Exhibits 1 and 2.

Q. Mr. Parker, I hand you a document which has been

marked for identification as Defendants’ Exhibit 30. I

believe on that it shows “Hunter Exhibit 1,” is that cor-

rect? A. Yes.

Q. Can you tell me what that is? A. It is entitled

“Tool Carriers Survey” by E. H. Lee, March 1953, Product

Research Department copy.

Q. Is that a survey made by the Deere & Company em-

ployees for the employees of their subsidiaries? A. Mr.

Lee is a Deere & Company employee in the Product Re-

search Department at Moline.

Q. And this document came from the files of the Deere

& Company in Moline? A. Yes.

Q. Can you tell us when that survey was made? A.

Well, the survey, the trip that was reported by this report

was made by Mr. Lee March 9th to 19th, 1953, and he

wrote up the report on March 30th of 1953.

Q. I believe the survey shows that he traveled with

some other people from the Kansas City branch, is that

correct? A. Yes.

Q. Those people—I believe it is Mr. Sheier, Mr. Waln,

[105] and Mr. Wilson. Were they employees of Deere &

Company or the John Deere Company of Kansas City?

A. John Deere Company of Kansas City.

Q. A subsidiary of Deere & Company? A. Yes.

Q. Now, if you will look at the other survey, I believe

it has been marked as Defendants’ Exhibit 31. Will you

tell us when that was made and by whom? A. That is

another tool carrier survey made by the same man, Ever-

ett H. Lee, in the Product Research "epartment, was made

April 6th to 16, 1953, and this report wa» written April 17th.

Q. That report also came from tlie files of Deere &

Company in Moline? A. Yes.

@. Were both of those surveys relative to what we

would call chisel plows? A. Yes, that is one of the sub-

jects covered. The tool carrier as a whole is covered.

Q. Going back to the Deere clamp, Exhibit 27-A, that

is the Deere 100 series, I believe, is it not? A. Yes.

Q. I notice that at the rear of the hinge member there

is a plate and some bolts with the plate underneath the

shank, is that correct? [106] A. Yes.

Q. The bolts and the plate, with the portion of the

hinge member over the shank, embraces the shank, does

it not? A. Yes.

Q. You are familiar with the Jeoffroy clamp, are you :;

not? A. Yes, to some extent, I will add.

Q. Mr. Parker, I show you now what has been marked

as Plaintiffs Exhibit E. Do you know whether or not that

is a Jeoffroy clamp? You may step over here. A. I think

it is a Jeoffroy clamp.

Mr. Fishburn: It is so stipulated in the stipulation,

Your Honor.

Mr. Morris: No question about it, Your Honor.

Mr. Gold: I want to be sure that this witness knows

it is a Jeoffroy clamp, Your Honor, of his own knowledge.

Q. (By Mr. Gold) You have seen such clamps as this,

Mr. Parker? A. Yes.

Q. Now, if you will look, is there a plate and bolts un-

der the shank so that the plate and bolts and the portion

of the hinge member immediately above embrace the shank

at the rear of the frame? A. Yes.

Q. Do you know that this device was held in contempt

in [107] the contempt action, Graham versus Jeoffroy? A,

One was. I am not familiar enough with the details to

be able to pick out which is which.

Q. I show you what has been identified as Plaintiffs’

Exhibit D. Do you know that that is a hinge member and

a portion of a shank from a Jeoffroy clamp? A. I pre-

sume it is. It is so marked.

Q. It has a loop portion around the shank at the rear

of the hinge member with a set screw, does it not? A.

Yes.

Q. Do you know that that was also a clamp that was

held to be under the claims in the contempt action in

Graham versus Jeoffroy? A. I know that there was one

so held.

Q. I now show you what has been marked as Plaintiffs’

Exhibit C. Do you know that that is also a Jeoffroy

clamp? A. Yes, I think it is.

Q. It has a loop portion under the shank at the rear of

the clamp, does it not? A. Yes.

Q. This tag shows it is HT-5 Jeoffroy clamp, does it not?

A. Yes.

Q. Do you know that that was the clamp held to in-

fringe the Graham 798 patent in the suit upon that patent?

[108] A. I can’t distinguish between them. I have read

the opinions of the Court in each case, but the opinion does

not show the details—there is no drawing in the opinion

and I have a rather sketchy knowledge, not enough to tes-

tify to under oath.

[110] Plaintiffs Exhibits D-1 and E-1 marked.

{111] Cross-Examination by Mr. Morris.

Q. Mr. Parker, I may be the only one in the court-

room that missed this awhile ago, but I didn’t hear any

testimony as to the drawing, Defendants’ Exhibit 46. Is

that drawing a blueprint of the final production model

of the Deere 100 series spring clamp? A. Yes. At least

that shows the model that we first went into production on.

Q. All right. Was that the device after the modifica-

tions had been made upon the structure as shown in De-

fendants’ Exhibits 45-A and 45-B? A. Yes, the new

drawing includes those changes.

Q. The new drawing, Defendants’ Exhibit 46, includes

the suggested changes as shown in pencil on Defendants’

Exhibit 45, which was the original drawing? A. Yes.

Q. All right. I believe that is all the questions I will

ask of this witness at this point.

I may recall him as a witness on defendants’ case.

(Witness excused.)

[112] GEORGE DWIGHT HUNTER, called as a witness

on behalf of the plaintiffs, was duly sworn and testi-

fied as follows:

Direct Examination by Mr. Goid.

Q. Mr. Hunter, will you state your name, please. A.

George Dwight Hunter.

Q. How 0’. are you? A. 45.

Q. What is your address? A. 1531 70th Street, Des

Moines, Iowa.

Q. What is your occupation? A. Products engineer.

Q. By whom are you employed? A. John Deere Des

Moines Works.

Q. That is a manfacturing plant of Deere & Company?

A. Yes.

Q. What are your duties in connection with your posi-

tion? A. I am supervisor of a group of men that are en-

gaged in the design and development of tillage tools.

Q. When you refer to tillage tools what do you mean?

A. Specifically, we are engaged in the design and de-

velopment of tool carriers, tool bars, row crop cultivators.

Q. And chisel plows? A. The term chisel plow is I

believe what we call a tool [113] carrier.

@. How long have you had ycur position as supervisor

of » ur group? A. Since November 1, 1961.

Q. And your position prior to that time? A. I was a

project engineer.

Q. When you say a project engineer, will you tell us a

little more specifically what you mean. A. As project

engineer I was supervisor of a smaller group of men en-

gaged in much the same kind of work but in a smaller

scope.

Q. What is your educational background? A. I ama

graduate engineer from Iowa State College, and I have a

liberal arts degree from the University of Iowa.

Q. In what year did you get your engineering degree?

A. 1950.

Q. And for whom did you go to work after you gradu-

ated? A. John Deere Des Moine

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