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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1966
- **Citation:** 383 U.S. 1

## Text

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
8
2

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, 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.

3

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

4

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

6

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

7

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-

11

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.

12

(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

13

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

14

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).

15

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.

16

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

17

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

18

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

19
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 —~

20
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-

21

22

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

I.

‘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

23

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

24

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.

V.

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-

a

25

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-

a

26

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.

27

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)

X.
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.

28

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

29

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

30

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

31

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

32
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

1

The Court has jurisdiction over the subject matter of
this action and the said parties.

2

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

3.
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.

4

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.

5

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.

6.

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.

34

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:

I.

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

35

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.

36

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.

37

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

38

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,

40

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.

41

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

43

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:

I

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.

44

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.

45

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.

46

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. ‘

47

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

By
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

48
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.
Nov.

a.

Jan.

Jan.

Jan.

Jan.

Apr.

May

DOCKET ENTRIES
Filings—Proceedings

24, raed Complaint filed.

13,
30,

21,

4,

1960

“cc

“

1961

cc

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.

Feb.

29,

6

“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.

51

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.

53

[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.

54

- 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.

56

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.

57

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.

58

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.

59

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.

;

—

60

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.

61

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.

62

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

63

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.

64

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

66

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

67

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.

68

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).

69

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

70

Q. And Defendants’ Exhibit 42-F, what is that? A. U-
bolt over

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386411_0210%3A01. Public record. Not legal advice.