W. F. & John Barnes Co. v. International Harvester Co.

BARNES, District Judge.

This consolidated cause came on for hearing on two amended complaints, both filed on February 16, 1942, one by W. F. . & John Barnes Company and Odin Corporation against International Harvester Company and Ex-Cell-O Corporation, and the other by John S. Barnes Corporation and Odin Corporation against the same defendants, and on an amended answer thereto, filed June 19, 1942, and two amendments to said amended answer filed, respectively, on July 2, 1942, and August 29, 1942.

The amended complaints charge infringement of eleven United States patents on certain machine tools, hydraulic systems used in machine tools, and valves for directing the flow of fluid in such systems.

The patents involved are:

1. Svenson 1,924,422, for a “Valve Construction,” issued August 29, 1933, on an application filed November 16, 1929, and containing 43 claims, of which 16 are in suit;

2. Svenson 1,986,862, for a “Fluid Controlling Means,” issued January 8, 1935, on an application filed November 16, 1929, and containing 29 claims, of which 22 are in suit;

3. Svenson 2,036,162 for a “Machine Tool Unit,” issued March 31, 1936, on an application filed September 13, 1930, and

*258

containing 28 claims, of which 11 are in suit;

4. Svenson 2,178,364 for a “Material Working Apparatus,” issued October 31, 1939, on an application filed September 13, 1930, and containing 15 claims, of which 3 are in suit;

5. Svenson 2,174,850, for an “Hydraulic Control and Actuator Mechanism,” issued October 3, 1939, on an application filed December 21, 1931, and containing 37 claims, of which 2 are in suit (two were dismissed out during the trial) ;

6. Barnes, Guiri & Johnson 2,098,220 for a “Material Working Apparatus,” issued November 9, 1937, on an application filed August 12, 1932, and containing 48 claims, of which 7 are in suit;

7. Svenson 2,078,695 for an “Automobile Lathe and Fluid Circuit,” issued April 27, 1937, on an application filed March 27,

1930, and containing 219 claims, of which 18 are in suit;

8. Svenson 2,215,257 for a “Material Working Apparatus and Control Therefor,” issued September 17, 1940, on an application filed August 11, 1933, and containing 90 claims, of which 13 are in suit;

9. Barnes & Guiri 2,020,868 for a “Boripg Machine and the Like,” issued November 12, 1935, on an application filed January 18, 1930, and containing 35 claims, of which 21 are in suit;

10. Walker 1,493,301 for a “Power Control for Boring Machines,” issued May 6, 1924, on an application filed July 30, 1921, and containing 43 claims, of which 6 are in suit; and

11. Barnes & Guiri 2,042,379 for a “Metalworking Apparatus,” issued May 26, 1936, on an application filed February 14, 1931, and containing 44 claims, of which 10 are in suit.

The principal subject of study during the trial has been the hydraulic systems used in machine tools. A hydraulic system may be a volumetric system or a constant pressure system. A volumetric system is one in which all the fluid that is pumped by the pump goes to the actuator or actuators, and in such a system the speed of the actuator may be controlled by means of a variable delivery pump. Figure 1, hereinafter set forth, illustrates a simple volumetric system.

A constant pressure system is one in which a certain maximum pressure is not permitted to be exceeded. This result is accomplished by placing in the system between the pump and the actuator a working pressure relief valve set to let liquid pass out of the system at the predetermined maximum pressure. In such a system the speed of the actuator may be controlled by means of a restricted orifice and the working pressure relief valve. The restricted orifice may be in the flow line, as in Figure 2 hereinafter set forth.

The restricted orifice may be in the return line, as in Figure 3, hereinafter set forth:

A simple hydraulic system comprises a sump or tank, a pump, and (in the jargon of the machine tool trade) an actuator, which may be a cylinder and piston, together with the pipes or conduits connecting all of the foregoing. A slightly less simple system might include (in addition to the foregoing) a reversing valve to direct the fluid to one end or the other of the actuator. A slightly less simple system might include (in addition to the foregoing) a restricted orifice in the flow line either between the pump and the reversing valve, or between the reversing valve and the actuator, or in the return line either between the actuator and the reversing valve, or between the reversing valve and the sump, and a “working pressure relief valve.” A less simple

system

might include (in addition to the foregoing) a selector valve for cutting the restricted orifice into or out of the system. A less simple system.

*259

might include (in addition to the foregoing) a larger or smaller orifice (so as to provide two feed rates) and a selector valve to cut one or the other of them in and out of the system. The system may be made somewhat more complicated by using two pumps —a large volume, low pressure pump and a small volume, high pressure pump — the former for the purpose principally of supplying a large quantity of liquid at low pressure for moving the tool head in so-called “rapid forward traverse” or “rapid reverse traverse,” and the latter for the purpose principally of supplying a small quantity of liquid at high pressure for moving the tool head in “feed forward” or “feed reverse.” The relationship of the flows of the two pumps may vary in respect of volume, pressure, and particularly, source of supply and time of flow. Different systems may have different so-called “cycles” and a given system may be so devised that its “cycle” may be changed. A simple cycle might have the following sequence: Neutral, rapid forward traverse, feed forward, rapid reverse traverse, and neutral. A single actuator may advance .and retract the tool head in a machine having a single tool head. A system may be greatly complicated by adding one or more additional actuators. Many actuators may each advance and retract a tool head in machines having many tool heads. An actuator may advance and retract the platen holding the work piece (jargon for the material to be worked). The relationship of the movements of the tool head to the movements of the platen holding the work piece may be varied in many particulars.

With so many elements which may be put together, it is obvious that the possible combinations or aggregations which may be assembled are innumerable.

Many of the questions of validity in the case at bar are questions as to whether or not the putting together in one system or machine of a few or many of the foregoing elements involved invention at the time the patentee put them together and claimed them in the patents in suit.

Of the Effect as Estoppels or Otherwise of Certain Interference Proceedings in the Patent Office.

On the facts next hereinafter set forth, plaintiffs contend that the defendant Ex-Cell-0 Corporation suffers the constraints and embarrassments of (a) inconsistency, (b) admissions, and (c) estoppel in its arguments as to validity and infringement of Svenson 1,924,422 and 1,986,862.

Svenson 1,924,422 issued August 22, 1933, on an application filed November 16, 1929. Svenson 1,986,862, issued January 8, 1935, on an application filed November 16, 1929. Alden application Ser. No. 690,525, was filed September 22, 1933, as a division of Alden 2,000,553, filed March 17, 1932, and issued May 7, 1935. The filing date of each of the Svenson patents is, therefore, prior to the effective filing date of Alden, namely, March 17, 1932. The Svenson patents were assigned to John S. Barnes Corporation, one of the parties, and were owned by that corporation during all of the interference and until recently, when they were assigned to Odin Corporation, another of the plaintiffs. The Alden application was assigned to Ex-Cell-0 Corporation, one of the defendants. The Alden application in interference makes substantially the same disclosure as does Alden 2,000,553, the parent. Generally speaking, the unissued application makes claims to hydraulic features, while the issued patent claims mechanical features. Alden 2,000,553 is conceded by the defendants to be a correct representation of their so-called First Senior System. So far as infringement of Svenson 1,986,862 is concerned, there is no substantial difference between the First Senior System and other structures accused under that patent.

An interference, No. 71,653, was declared by the Patent Office between Svenson 1.924.422, on the one hand, and the Alden application 690,525, on the other. The record in that interference has been made, briefed, and was argued on May 26, 1942, but no decision by the Primary Examiner has been rendered. Svenson 1,924,422 was cited against the Alden application on December 12, 1933, four months after the Svenson patent issued. On June 18, 1934, Alden filed an affidavit under Rule 75 of the Patent Office to swear back of Svenson’s filing date. In its action of May 27, 1935, the Patent Office again cited Svenson 1.924.422, stating that reference could not be overcome by affidavit under Rule 75 because certain claims of Svenson 1,924,422 were readable upon the disclosure of the Alden application. Alden was given until June 27, 1935, to make the claims of Sven-son if he desired to contest the issue of priority. On June 22, 1935, and again on July 8, 1935, Alden filed request for extension of time, and, after three months’ extension of time, on September 17, 1935, an amendment was filed copying Svenson 1.924.422, claims 5,' 33, 38 and 40 to secure a declaration of interference. The defend

*260

ant, Ex-Cell-O Corporation, has taken no steps to change its position on this matter, in the Patent Office. As to Svenson 1,986,-862, Alden and. his assignee, Ex-Cell-0 Corporation, copied claims 1, 2, 3, 4, 6, 7, 8, 12, IS and 16 on April 27, 1936. In Svenson l,92f,422, an interference was suggested to Alden and Ex-Cell-O Corporation, but Alden and Ex-Cell-O Corporation sought the interference as to Svenson 1,986,862. When the claims were copied from Svenson 1,986,862, there was added to the Alden application Fig. 4-A to show specifically the structure of the relief valve 120, which theretofore had been shown only by a conventional rectangle. The reason assigned for adding the figure was so that the in-, ternal structure of the relief valve might be shown.

Under the Patent Office rules, when claims are copied to provide an interference at the initiation of the copier, that applicant must apply the copied claims to his disclosure. This Alden and Ex-Cell-0 Corporation did. There has been no decision in the Patent Office.

In August, 1941, an answer was filed in the suit at bar denying validity and infringement of Svenson 1,924,422 and 1,986,-862.

On the facts above set forth, the plaintiffs contend:

(1) That the inconsistency of attempts to secure a patent and later pleading invalidity of the patent which a junior in-' ventor secures is an evidentiary fact which courts consider, that which is equitable or inequitable being determined on the facts of each case (citing: Hutchins Car Roofing Co. v. Standard Ry. Equipment Co., 7 Cir., 259 F. 226, 228 ; Cutler-Hammer Mfg. Co. v. General Electric Co., 7 Cir., 6 F.2d 376, 377 ; Russell v. J. P. Seeburg Corp., 7 Cir., 123 F.2d 509, 511 ; and Penn Electric Switch Co. v. United States Gauge Co., 7 Cir., 129 F.2d 166, 169 );

(2) That the naked fact of inconsistency on the question of validity does not pursue the offender to afford a basis for estoppel at some later date (citing: Paramount Publix Corporation v. American Tri-Ergon Corp., 294 U.S. 464, 476 , 55 S.Ct. 449 , 79 L.Ed. 997 ); and

(3) That a party is estopped to shift position in respect of infringement (citing: Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959, 962 ; Jones v. Morehead, 68 U.S. 155, 158 , 1 Wall. 155 , 17 L.Ed. 662 ; Cheatham Electric Switching Device Co. v. Brooklyn Rapid Transit Co., 2 Cir., 238 F. 172, 175 ; and Overland Motor Co. v. Packard Motor Car Co., 7 Cir., 30 F.2d 497 ). The plaintiffs contend that the foregoing, principles bind the defendant, Ex-Cell-O Corporation, the assignee of Alden.

The Ex-Cell-O Corporation says that it is not estopped to deny either validity or infringement of Svenson 1,924,422 and 1,986,862, and it denies that any word or act of it or of its assignor in the Patent Office interferences should be held here to be an admission of either validity or infringement.

It is well settled, as the Ex-Cell-0 Corporation contends, and as the plaintiffs concede, that, under the circumstances here disclosed, Ex-Cell-0 Corporation is not estopped to deny validity. Paramount-Publix Corporation v. American Tri-Ergon Corp., 294 U.S. 464, 477 , 55 S.Ct. 449 , 79 L.Ed. 997 ; Haughey v. Lee, 151 U.S. 282, 285 , 14 S.Ct. 331 , 38 L.Ed. 162 ; and Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959 -961.

In order to determine the effect here, by way of admission, of what the Ex-Cell-O Corporation did in the Patent Office, it will be well to determine, with some accuracy, what it could do there and what it did do. Svenson 1,924,422 had issued when the Patent Office declared an interference between it and the Alden application, and Svenson 1,986,862 likewise had issued when Alden and his assignee Ex-Cell-O Corporation copied claims from it. The only issue that there could be in the interference was as to priority of invention (Sec. 52, 35 U.S.C.A.; United States ex rel. Lowry v. Allen, 203 U.S. 476 , 27 S.Ct. 141 , 51 L.Ed. 281 ; Hendrickson & Nelson v. Ronning & Ronning, 76 F.2d 137, 140 , 22 C.C.P.A., Patents, 1040; McElrath v. Industrial Rayon Corp., D.C., 35 F.Supp. 198, 209, 210 , affirmed 4 Cir., 123 F.2d 627 ; Campbell v. Dyson v. Dunham, 1917C.D. 56, 58; Dunkley Co. v. Central Cal. Canneries, 9 Cir., 7 F.2d 972, 977 ; Westinghouse v. Hien, 7 Cir., 159 F. 936, 941 , 24 L.R.A.,N.S., 948; Hillard v. Remington Typewriter Co., 2 Cir., 186 F. 334 ; Dooley Improvements v. Motor Improvements, D.C., 18 F.Supp. 340 ), and the question of validity of the claims in interference over the prior art could not be put in issue (Patterson v. Neher, 1913 C.D. 143; Campbell v. Dyson v. Dunham, 1917 C.D. 56, 58). In the last mentioned case, it is said: “An interference is not a proceeding to determine whether the parties have a right to

*261

a patent. It starts with the assumption that both parties have a clear right to a patent except for the simultaneous claim of the other. Each party is presumed to have a right to the patent otherwise, but to be barred by the claim of the other. The contest is therefore as to which of two inventors, each with a clear right, was the first to invent. * * * ”

When the Patent Office declared the interference between Svenson 1,924,422 and the Alden application, Alden and his assignee were confronted with the necessity either of conceding priority to Sven-son or of joining in the interference. The plaintiffs suggest that some sort of moral turpitude attaches' to Alden and his assignee Ex-Cell-O Corporation because they chose to contest priority in the interference and because they did not there concede priority and await suit for patent infringement. The court cannot find bad morals there. And it is suggested that a greater degree of moral turpitude attaches to Alden and his assignee because of their action as regards Svenson 1,986,-862 since they there sought the interference. But they were already involved in a law suit not of their seeking involving patent claims on devices used in hydraulic systems on machine tools, which devices included orifices, and the claims of Svenson 1,986,862 which they copied described devices of that general class. The court cannot find moral turpitude in those facts. Having been forced into a law suit, it was but natural that Alden and his assignee Ex-Cell-0 Corporation should desire to have all like issues between the parties to that law suit decided in that law suit. However, the plaintiffs say that the interference proceeding in the Patent Office cost them a large sum of money, and that they are now having to fight this (another) law suit. The court can well believe that the interference proceeding cost each side large sums of money. Litigation usually costs money. But why the plaintiffs should complain of this law suit, the court cannot understand. They started it. Had they refrained from suing here and awaited the action of the Patent Office they would doubtless, in the course of time, have had a decision of the issues submitted to the Patent Office and would, in that way, have received consideration for the money they spent in fighting the interference. The court does not mean to infer that the plaintiffs have done wrong by filing and prosecuting this law suit. They were at liberty to do so, but, doing so, they indulge in the luxury of two law suits. So far as morals are concerned in the matters now under consideration, the parties are on the same plane. They are rival manufacturers, competing with each other by means of patent claims and patent litigation, each seeking to establish and maintain the monopolies which patents grant and to prevent its rival from establishing and maintaining like monopolies. The court certainly cannot say that the defendants have been more active in these respects than the plaintiffs.

It is well to remember the sort of alleged admissions that are by the plaintiffs said to have been made by Alden and Ex-Cell-) Corporation and that are relied on by the plaintiffs. The alleged admissions of validity are not direct admissions of validity; on the contrary, they are a sort of implied admissions which are claimed to have arisen out of the failure of the defendants, when interferences were declared, to concede priority and await suit for infringement. Likewise, the alleged admissions of infringement are not direct admissions of infringement; on the contrary, they are a sort of implied admissions which are claimed to have arisen out of the application by the defendants of claims of Svenson 1,986,862 to the disclosure of the Alden application, coupled with evidence here that the defendants’ First Senior System is an exemplification of the disclosure of the Alden application and that, so far as infringement of Svenson 1,986,862 is concerned, there is no substantial difference between the First Senior System and other structures accused under this patent. These are both rather long journeys which the plaintiffs are compelled to take to spell out admissions. Furthermore, the alleged admissions are as to the validity of patent claims for complicated devices and machines and as to infringement of certain of those claims. When one says that any one of those claims is either valid or invalid, or that it is or is not infringed, he expresses a conclusion, which, if it be a considered conclusion, has been arrived at only after a consideration of many, many facts which it has taken expert counsel many weeks to put before this court, and which conclusion will be at odds with the opinion of an expert on one side or the other. Questions as to the validity of patent claims are questions of fact (Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 447 , 44 S.Ct. 533 , 68 L.Ed. 1098 ; Williams Mfg. Co. v. United Shoe Machinery Corp., 316

*262

U.S. 364, 62 S.Ct. 1179 , 86 L.Ed. 1537 ; Sturtevant Co. v. Massachusetts Hair & Felt Co., 1 Cir., 122 F.2d 900, 906 ; Gilchrist v. F. B. Mallory Co., D.C., 281 F. 350, 352 ), and questions as to the infringement of patent claims are likewise questions of fact (Stilz v. United States, 269 U.S. 144, 147 , 46 S.Ct. 37 , 70 L.Ed. 202 ; Aluminum Co. v. Thompson Products, 6 Cir., 122 F.2d 796, 799 ; Wilson v. Haber Bros., 2 Cir., 275 F. 346 ; Laclede Christy Clay Products Co. v. St. Louis, D.C., 270 F. 338 ), and one may, of course, make admissions of fact. But an expression of validity or invalidity or of infringement or non-infringement of any one of the patent claims now under consideration is a conclusion of fact, based upon many, and some conflicting, evidentiary facts. And, accordingly, it seems to the court that, aside from all authority, except some fundamental authority, which points out the reason for permitting the use of admissions in evidence and the limitations upon such use, admissions, if they are admissions such as those now under consideration, should be permitted to be relied on only with great caution,

One authority which may be regarded as fundamental is Greenleaf’s Evidence. There, in Vol. I, 15th Ed., Section 204, it is said: “With regard, then, to the conclusiveness of admissions, it is first to be considered, that the genius and policy of the law favor the investigation of truth by all expedient and convenient methods; and that the doctrine of estoppels, by which further investigation is precluded, being an exception to the general rule, founded on convenience, and for the prevention of fraud, is not to be extended beyond the reasons on which it is founded.” The “convenience” there referred to, whether it be that of the court or of counsel or of both, cannot be served here. Counsel have put in all of the evidence bearing on the issues of both validity and infringement and the court has heard it all. No time will be saved by recourse to admissions. The court has expressed the opinion that the conduct of the defendants has not involved bad morals, and, accordingly, there can be no fraud to warrant recourse to admissions by the defendants. In this connection, if there has been any inequitable, as distinguished from fraudulent, conduct on the part of either side, it has been on the part of the plaintiffs in failing to await the decision of the Patent Office on the issue of priority and in instituting and prosecuting this suit without awaiting the decision of the Patent Office. Had the plaintiffs awaited the action of the Patent Office on the issue of priority and had they won on that issue, then when they sued the defendants for making, using or selling machines made in accordance with the disclosures of defendants’ application which had been in interference one could come nearer figuring out a reason why (the rights of the public being disregarded) the defendants should be estopped to deny both validity and infringement. But when the plaintiffs refuse to await the action of the Patent Office on the issue of priority and bring suit as they have here, prior to the decision of the Patent Office, then they have refused to pay the consideration for the implied admissions of the defendants which they rely upon.

Furthermore, the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c', seem to the court to indicate a policy against extending the doctrine of estoppel by reason of mere pleadings and admissions in testimony in another law suit which has never been determined. The rules which should be considered in this connection are:

Rule 8(e) (2), which provides that “A party may * * * state as many separate claims or defenses as he has regardless of consistency * *

Rule 15(a), which provides that leave to amend pleadings “shall be freely given when justice so requires;” and

Rule 15(b), which provides: “If evidence is objected to at the trial on the ground that it is not within the issues made by the pleadings, the court may allow the pleadings to be amended and shall do so freely when the presentation of the merits of the action will be subserved thereby and the objecting party fails to satisfy the court that the admission of such evidence would prejudice him in maintaining his action or defense upon the merits. The court may grant a continuance to enable the objecting party to meet such evidence.”

The question whether a party should be estopped to shift position in respect of infringement is an interesting one. It will probably be conceded that, with the exception of the question of interest or lack of interest by the public in the question, the question of infringement is much like the question of validity so far as estoppels and admissions are concerned. The public is said to have an interest in the question of validity, so that a person who has

*263

sought a patent on a device which is covered by a patent issued to another is not estopped to deny validity of the other’s patent. Haughey v. Lee, 151 U.S. 282, 285 , 14 S.Ct. 331 , 38 L.Ed. 162 ; Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474 , 55 S.Ct. 449 , 79 L.Ed. 997 ; Allbright-Nell Co. v. Autosteam Process Co., 7 Cir, 70 F.2d 959 ; Kellogg Switchboard & Supply Co. v. Michigan Bell Tel. Co., 6 Cir, 99 F.2d 203, 205 ; McElrath v. Industrial Rayon Corp., 4 Cir., 123 F.2d 627, 629 . But there remains the exceedingly interesting question as to whether or not the public has an interest in the question of infringement.

When one is considering the question of validity of a patent claim from the viewpoint of anticipation or invention, one compares the claim with the pertinent prior art, and when one is considering the question of infringment of a patent claim one compares the accused machine with the patent claim after .first determining the breadth of the claim by a consideration of the pertinent prior art. It is difficult to see why the public should be more interested in striking down an invalid patent claim as invalid than it should be in having a patent claim, which in the light of the pertinent prior art is narrow in scope, adjudged to be narrow in scope. From the viewpoint of the public, exactly the samei principles are applicable in both cases. The public is interested in seeing that a monopoly not based on an invention is destroyed, and it should be interested in seeing that a monopoly is no broader than the invention. If the court did not feel itself bound by precedent in this circuit, it would be inclined to hold that the public has an interest in the question of infringement so that one may not be estopped to deny infringement (consider the analogy of Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342 , 45 S.Ct. 117 , 69 L.Ed. 316 ).

However, in considering the questions of infringement of Svenson 1,986,862, the court will bear in mind the rule, announced in Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959 , that a party may be estopped to shift position in respect of infringement, and what appears to be an exception to the rule, expressed by Judge Baker in L. P. Larson, Jr., Co. v. William Wrigley, Jr., 7 Cir., 253 F. 914, 918 , as follows: “ * * * unless the court can find an absolute demonstration from other evidence in the case or from facts within judicial notice, like the laws of physics, etc, that under no circumstances could the averments and admissions be true.”

In considering the question of alleged estoppels and admissions arising out of interferences, the court has not ascended into the rarified atmosphere that seems to be ncessary for the consideration of the alleged differences in construction of patent claims in interferences and in infringement suits. The defendants' contend that there are such differences. The plaintiffs have not argued the subject. The court contents itself with observing that, if there are the differences as contended by the defendants, then there is an additional reason why the defendants should not be bound by alleged estoppels and admissions.

Since writing the foregoing on the question of estoppels, the court has read Gilbert v. General Motors Corp., 2 Cir., 133 F.2d 997 , at page 1002, decided February 23, 1943, where it is said (Italics supplied): “Although the foregoing would ordinarily require the affirmance of the decree the plaintiff insists that in the interference proceedings Dyer, whose application was then owned by the defendant, admitted that his invention was identical with that of the plaintiff. For the purposes of those proceedings the adoption by Dyer of a claim identical with that of the plaintiff was an admission that their conceptions were the same. Ewing v. United States ex rel. Fowler Car Co., 244 U.S. 1 , 37 S.Ct. 494 , 61 L.Ed. 955 . But in those proceedings the sole issue was priority of invention. United States ex rel. Lowry v. Allen, 203 U.S. 476 , 27 S.Ct. 141 , 51 L.Ed. 281 ; Ewing v. United States ex rel. Fowler Car Co., supra. Neither Dyer nor the plaintiff prevailed and

no authority has been called to our attention, and we have found none, to the effect that either was thereby estopped from later asserting as against the other such rights as might be his on the actual facts under the law.”

Of the Status, as Prior Art, of Patents Issued on Earlier Filed Applications Co-pending with That of a Patent in Suit.

An issue in the case has been the question as to the status, as prior art, of patents issued on earlier filed applications co-pending with that of a patent in suit. Plaintiffs’ position is “that a patent resulting from an earlier filed but co-pending application with that of a patent in suit is not prior art, cannot be considered as showing the state of the art, and cannot be con

*264

sidered in combination with prior art or other co-pending applications;” and that “such an application is relevant only on the question of prior invention.” Defendants’ position is that “plaintiffs’ contention must be rejected in so far as it attempts to set up any different standard for appraisal of a co-pending reference as prior art, as distinguished from any other prior art patent.”

A leading case on this general subject is Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390 , 46 S.Ct. 324 , 70 L.Ed.

651.

There, the defendants relied upon a patent of Clifford to defeat a patent of Whitford, the Clifford patent having been issued upon an application filed earlier than that of Whitford. The court said Clifford’s application gave a complete and adequate description of the thing patented to Whitford, but did not claim it. The court held the later filed Whitford patent invalid, and said, at page 401 of 270 U.S., at page 325 of 46 S.Ct. (Italics supplied):

“The delays of the patent office ought not to cut down the effect of what has been done. The description shows that Whitford was not the first inventor. Clifford had done all that he could do to make his description public. He had taken steps that would make it public as soon as the Patent Office did its work, although, of course, amendments might be required of him before the end could be reached. We see no reason in the words or policy of the law for allowing Whitford to profit by the delay and make himself out to be the first inventor when he was not so in fact, when Clifford had shown knowledge inconsistent with the allowance of Whitford’s claim, (Webster) Loom Co. v. Higgins, 105 U.S. 580 , 26 L.Ed. 1177 , and when otherwise the publication of his patent would abandon the thing described to the public unless it already was old. McClain v. Ortmayer, 141 U.S. 419, 424 , 12 S.Ct. 76 , 35 L.Ed. 800 ; Underwood v. Gerber, 149 U.S. 224, 230 , 13 S.Ct. 854 , 37 L.Ed. 710 .

"The question is not whether Clifford showed himself by the description to be the first inventor.

By putting it in that form it is comparatively easy to take the next step and say that he is not an inventor in the sense of the statute unless he makes a claim.

The question is whether Clifford’s disclosure made it impossible for Whitford to claim the invention at a later date.

The disclosure would have had the same effect as at present if Clifford had added to his description a statement that he did not claim the thing described because he abandoned it or because he believed it to be old.

It is not necessary to show who did invent the thing in order to show that Whitford did not.

%

sjc if;

“As to the analogies relied upon below, the disregard of abandoned patent applications however explained cannot be taken to establish a principle beyond the rule as actually applied. As an empirical rule it no doubt is convenient if not necessary to the Patent Office, and we are not disposed to disturb it, although we infer that originally the practice of the Office was different. The policy of the statute as to foreign inventions obviously stands on its own footing and cannot be applied to domestic affairs. The fundamental rule we repeat is that the patentee must be the first inventor. The qualifications in aid of a wish to encourage improvements or to avoid laborious investigations do not prevent the rule from applying here.”

The Milburn case decided that a patent issued on a co-pending earlier filed application was prior art, as of its filing date, despite the failure of the earlier applicant to claim the subject matter in question. It has been contended, and is contended at bar, that the Milburn case left open the question as to whether or not the disclosure of the earlier filed application may be supplemented by reference to the general state of the art in the manner customary in construing other prior art patents, and particularly left open the question as to whether the doctrine of equivalents may be applied in considering the effect of the earlier filed but co-pending application upon the later filed application. In Minnesota, etc., Co. v. Coe, 100 F.2d 429, 431 , 69 App.D.C. 256 certiorari denied 306 U.S. 662 , 59 S.Ct. 788 , 83 L.Ed. 1059 , it was contended that patents issued on earlier filed but co-pending applications could not be. combined with each other and with other references to defeat the claimed invention, and that the Milburn case is authority solely for the proposition that a co-pending reference may be relied upon to defeat a claim of first invention, only, when it, alone, gives a “complete and adequate description” of the thing for which the later applicant seeks a patent. The United States Court of Appeals for the District of Columbia, 69 App. D.C. at pages 258 and 259, 100 F.2d at pages 431 and 432, said:

“ * * * But such a conclusion cannot properly be drawn from that case, even though it chanced that the application there

*265

in did give a complete and adequate description of the thing patented to the later applicant. The important consideration was that the co-pending application disclosed knowledge upon the part of the earlier applicant inconsistent with the allowance of the later applicant’s claim.

* * *

* *

“Whether or not the co-pending applications could properly be considered, therefore, to show the prior art in the technical sense, they were properly considered to determine whether they disclosed knowledge upon the part of the prior applicants inconsistent with appellant’s claim of first invention. Stelos Co., Inc., v. Hosiery Motor-Mend Corp., 2 Cir., 72 F.2d 405 , affirmed 295 U.S. 237 , 55 S.Ct. 746 , 79 L.Ed. 1414 ; In re Youker, 77 F.2d 624 [22 C.C.P.A., Patents, 1294], They did disclose such knowledge and, hence, Brown and Klein were not the first inventors.

* * * # * *

“The question has been considered and decided adversely to appellant’s contention, also, by the United States Court of Customs and Patent Appeals in Re Youker, supra; by the Circuit Court of Appeals for the Sixth Circuit in Ottinger v. Ferro Stamping & Mfg. Co., 59 F.2d 640, 643 ; by the Circuit Court of Appeals for the Second Circuit in Hazeltine Corp. v. Abrams, 79 F.2d 329 ; and by the Circuit Court of Appeals for the Fourth Circuit in Denaro v. Maryland Baking Co., 50 F.2d 1074 , which adopted the opinion of the lower court reported in, D. C., 40 F.2d 513, 515, 516 .”

The same court, in 1941, in the case of Dyer v. Coe, 75 U.S.App.D.C. 125 , at page 129, 125 F.2d 192 , at page 196, adhered to its earlier holding, and said: “ * * * We think it can- be regarded as settled law that co-pending applications which, either singly, or in combination with previous patents or other co-pending applications, or both, disclose knowledge inconsistent with a claim of first invention, are available as references.”

The Court of Customs and Patent Appeals, in Re Youker, 1935, 77 F.2d 624 , 22 C.C.P.A., Patents, 1294, the Circuit Court of Appeals for the Sixth Circuit in Ottinger v. Ferro Stamping & Mfg. Co., 1932, 59 F.2d 640, 643 , and the Circuit Court of Appeals for the Fourth Circuit in Denaro v. Maryland Baking Co., 1931, 50 F.2d 1074 (affirming and adopting opinion of the court in Denaro v. Maryland Baking Co., D.C., 40 F.2d 513 ) have all made decisions in accord with the decision in Minnesota, etc., Co. v. Coe, supra.

Two cases have been decided by the Circuit Court of Appeals for the Second Circuit which refer to the question now under discussion. The first of these cases is Stelos Co. v. Hosiery Motor-Mend Corp., 72 F.2d 405 . The other is Penmac Corp. v. Esterbrook, etc., Co., 108 F.2d 695, 696 . The references to the principle under discussion are both said, with reason, to be obiter. The obiter in the Stelos case favors the contention of the plaintiffs, and that case was followed by some of the trial courts in the Second Circuit whose opinions are cited by the plaintiffs, but the Pen-mac case indicates that Court’s adherence to the view that has now been adopted by a considerable number of courts.

The plaintiffs cite three cases (Farmers’ Handy Wagon Co. v. Beaver Silo & Box Mfg. Co., 7 Cir., 1916, 236 F. 731 ; Hamilton Beach Mfg. Co. v. P. A. Geier Co, 7 Cir., 1916, 230 F. 430 ; and Camp Bros. & Co. v. Portable Wagon Dump & Elevator Co., 7 Cir., 1918, 251 F. 603 ), all decided in the Circuit Court of Appeals for this circuit prior to the decision by the Supreme Court of the Milburn case, supra. The plaintiffs say that these cases hold that a prior co-pending application is not prior art and is pertinent on prior invention only as to subject matter actually claimed therein. The plaintiffs also say that the Milburn case goes no further than to hold that an earlier filed co-pending application is pertinent on prior invention if the subject matter is completely disclosed though not claimed, that the law of the Seventh Circuit is clear, and that it is claimed by them.

The defendants finally say that in at least three recent cases the Circuit Court of Appeals for this circuit has considered, on the issue of lack of invention, patents issued on earlier filed but co-pending applications. These cases are: Ajax Hand Brake Co. v. Superior Hand Brake Co., 132 F.2d 606 decided January 6, 1943; Triplett v. Line Material Co., 133 F.2d 533 , decided February 8, 1943; and Curtis Companies, Inc., v. Master Metal Strip Service, Inc., 125 F.2d 690 , decided February 16, 1942.

The court is of the opinion that the statutes of the United States declare a public policy, which has been recognized by the Supreme Court in the Milburn case and by

*266

the Circuit Court of Appeals of this circuit in its recent decisions, and which requires that the disclosures of the earlier filed application may be supplemented by reference to the general state of the art in the manner customary in construing other prior art patents, and which requires that the doctrine of equivalents may be applied in considering the effect of the earlier filed but co-pending applications upon the later filed application.

Of Facts, Establishing Personal Knowledge by the Patentee of Prior Public Uses of Machines Which Constitute Statutory Bars to the Validity of Claims, Giving Rise to the Necessity for Disclaiming.

The defendants contend that Sven-son 1,924,422, Barnes, Guiri & Johnson 2.098.220, Svenson 2,215,257 and Barnes & Guiri

2,042,379,

are void for failure to disclaim. The defendants say that the circumstances giving rise to the necessity for disclaiming in the cases of the four patents referred to are facts establishing personal knowledge by the patentee of •prior public uses of machines which constitute statutory bars to the validity of claims of each of the four patents referred to.

The defendants say in respect of Sven-son 1,924,422, that claims 23 and 25 read squarely in terms and in substance on the prior Oilgear QRlx2 valve or system, which was known to and used by Svenson before his alleged invention disclosed in this patent; and that Svenson’s own alleged conception drawing, Exhibit A-72, makes acknowledgment in the title block of the Oilgear QR system. The plaintiffs say that claims 23 and 25 do not read on the QR, that in that system the gear pump is so directed that part of the fluid is used to charge the plunger pump, that because of this connection from the gear pump to the plunger pump in the QR there is never delivered to the actuator any more fluid than that pumped from the reservoir to the gear pump, and that, therefore, the QR system does not meet the requirement of claims 23 and 25 that in one position of the valve the combined delivery of a plurality of pumps is dispatched to the actuator.

In respect of Barnes, Guiri & Johnson 2.098.220, the defendants say claims 1, 2, 3, 4, 7, 11 and 12 are completely anticipated by a machine admittedly manufactured in part by W. F. and John Barnes Company and sold to Universal Products Co. more than two years prior to the filing date of this patent, and that these facts were known to John S. Barnes, one of the joint patentees, who visited the Universal Products plant and doubtless saw the entire machine, including those portions which were supplied by H. R. Krueger & Co. The plaintiffs say that unless, as a matter of law, a claim is invalid in covering the making of a machine and providing the controls therefor to do automatically what had theretofore been done manually, the disclaimer issue should be decided in favor of the plaintiffs.

Concerning Svenson 2,2.15,257, the defendants say claim 67 reads squarely in terms and in substance on the Oilgear QRlx2 system and is, therefore, plainly invalid. Additionally, it is asserted that all of the claims of this patent are invalid because claims 55 and 56 read upon Barnes & Guiri 2,042,379 and that the patentee knew that the claims so read. The plaintiffs say that the Oilgear QR does not meet the requirement of the last element of claim 67 which calls for shifting of the actuator by the action of fluid from two sources of supply and which further calls for the positive continued movement of the actuator under the influence of fluid from only one of said sources. The plaintiffs further say, referring particularly to claims 55 and 56, that Barnes & Guiri 2,042,379 and Svenson 2,215,257 are not for the same invention; that generally speaking, so far as similarity of subject matter is concerned, the former relates to spindle indexing, and the latter to sudden stopping of the spindle, that plugging a motor is neither disclosed nor claimed in Barnes & Guiri 2,042,379, and that it is required in claims 55 and 56 of Svenson 2,215,257.

Concerning Barnes & Guiri 2,042,379, the defendants say claims 18, 20, 43 and 44, for example, are clearly anticipated by the Barnes Company’s own machines admittedly sold to the Paige and Reo automobile companies more than two years prior to the filing of the application for this patent. The plaintiffs say that the claims and the “means” elements thereof are directed to an automatic machine which needs only to be supplied with a workpiece and energized by an electric current; that for the many steps performed by hand in the machines sold, including indexing of the spindle and shifting of the workpiece, automatic means are provided; that these “means” cannot be

*267

an operator’s hand; and that the “means” provided are permanently functioning elements of the combinations claimed.

As- authority for the proposition that personal knowledge by the patentee of prior public uses of machines which constitute statutory bars to the validity of claims gives rise to the necessity for disclaiming the defendants cite three cases. They are: Marconi Wireless Telegraph Co. v. United States, 81 Ct.Cl. 671 ; Holzhauer Products Corporation v. Zaiger, D. C., 15 F.Supp. 1006 ; and Bresnick et al. v. United States Vitamin Corporation, D.C., 47 F.Supp. 993 . In Marconi Wireless Telegraph Co. v. United States, supra, the patentee had given a public lecture some fifteen years before his patent in which he disclosed as public knowledge the “feature” set forth “in his patent specifications as new and patentable.” The patentee, therefore, did know, as the court said he did, that he was claiming something which could not be sustained. In Holzhauer Products Corporation v. Zaiger, supra, the patentee on April 6, 1931, filed an application for reissue stating under oath that certain claims were too broad and that he was not the original and first inventor thereof. The reissue was denied. He did not file a disclaimer for more than two and a half years. Here, there was a specific admission under oath of invalidity. The sole question involved, as far as disclaimer went, was whether there had been undue delay in filing. In Bresnick v. United States Vitamin Corp., supra, the plaintiffs and patentee had admitted through the medium of a corresponding British patent that all substantial parts of the composition of the claims sued upon were old.

It may be inferred from a consideration of the statute and the foregoing cases that the obligation to disclaim arises only through positive knowledge of facts giving rise without doubt to the conclusion of invalidity. In none of the instances in which the defendants say that disclaimer was required is there established definite and certain knowledge of invalidity on the part of the patentee or plaintiffs. Accordingly, there was no duty to disclaim.

Before proceeding with an expression of views on the individual patents, it may perhaps be permissible to state some reasons that move the court to express, in respect of each patent, conclusions both as to infringement and validity.

Logically, there is very little difference between the question of the breadth of a claim (matters of mere grammar and terminology being disregarded) and questions of anticipation and lack of invention. A determination that a particular claim is anticipated is, in a sense, a determination that it has no breadth, because something in the prior art has appropriated the place which it would occupy. A determination that a claim does not disclose invention over the. prior art, is, in a sense, a determination that it has no breadth, because something in the prior art has so nearly appropriated the place which it would occupy that it cannot be said that there is any invention disclosed in the claim. A determination that a claim is entitled to a narrow construction is a determination that the prior art is such that the claim must be narrowly construed, otherwise it would include a portion of the prior art. A determination that a claim is entitled to a broad construction is a determination that it may be given a broad construction without including portions of the prior art. The questions are closely related, require consideration of the same facts, and the court can see no good reason for trying to segregate them.

The parties have, by evidence and argument, in the case of each patent in suit contested the question of invalidity by reason of anticipation or lack of invention or both. In the cases of only a few of the 129 claims in suit have the defendants conceded infringement. Accordingly, it has been necessary in most cases to determine the breadth of the claim and then to determine the question of infringement. In the cases of all of the claims in suit the court has accordingly considered the prior art on the question of validity (including anticipation and lack of invention) and in the cases of most of the claims in suit the court has considered the same prior art on the question of the breadth of the claims. Evidence has been received and arguments have been heard and both have been considered on each issue, — that of validity and that of infringement. Conclusions have been reached on these issues, and there does not seem to be any compelling reason why they should not be expressed, particularly in view of the fact that reviewing courts frequently arrive at conclusions different from those of the trial court, and, if the trial court has expressed conclusions

*268

on both issues, infringement and validity, there is no occasion for sending the case back for an expression by the trial court on either of those issues and the waste of' time, effort and expense in a second trial and second appeal is prevented. From the viewpoint of one who desires the speedy and efficient administration of justice, there is much to be said for the view which would permit a trial court to make findings in respect of both infringement and validity, regardless of whether or not it finds the patent infringed or not infringed, or whether it finds it valid or invalid. This opinion is ventured after a consideration of: Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241 , 59 S.Ct. 860 , 83 L.Ed. 1263 ; Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 , 62 S.Ct. 513 , 86 L.Ed. 736 ; Altvater v. Freeman, 63 S. Ct. 1115 , 87 L.Ed.-; Cover v. Schwartz, 2 Cir., 133 F.2d 541 ; Aero Spark Plug Co. v. B. G. Corp., 2 Cir., 130 F.2d 290 ; Richard Irvin & Co. v. Westinghouse Air Brake Co., 2 Cir., 121 F.2d 429 .

1. Svenson 1,924,422, for a “Valve Construction," Issued August 29,1933, on an Application Filed November 16, 1929, and Containing 43 Claims, of Which 16 Are in Suit.

In the case of Svenson 1,924,422, which is said to be a patent on a “Valve Construction,” it is necessary to quote at length from the specifications and the claims in order that the inventions claimed may be understood. The inventor says:

“My present invention relates generally to fluid control mechanisms and more particularly to valves for automatically controlling the distribution of fluid which is used as a propelling medium.

“In general, one of the primary objects of this invention is to provide a valve of improved practical and simple construction which is adapted to efficiently and automatically control the distribution of high pressure and low pressure fluids.

“More specifically, it is an object of my present invention to provide a unique valve arrangement for accurately and positively controlling the distribution of high and low pressure fluids to a plurality of fluid operated actuating mechanisms as for example those mechanisms used for effecting the actuation of machine elements.

“Another object is to provide an improved fluid valve construction which will preclude,the necessity of employing any auxiliary devices for controlling or effecting the reversal of the valve and to this ,end I propose to provide a self-contained valve unit which may be shifted in response to the action of the fluid medium.

“Another object of my present invention 'is to provide a valve mechanism which 'will enable the combining of fluids under low and high pressures to permit increased displacement of said fluid for high speed transmission.

“Still more specifically, my present invention contemplates the provision of a novel fluid valve arrangement in which a valve unit within a housing may be shifted by unbalancing the fluid pressure on said valve, said unbalancing being occasioned in response to the displacement of fluid from the valve chamber.

“Still another object of the present invention is to provide a self-contained valve mechanism which may be effectively employed for distributing fluid to a plurality of fluid actuated mechanisms and to this end I propose to provide a plurality of adjustable and non-adjustable orifices which are directly associated with the valve unit, said orifices serving to direct fluid to said actuating mechanisms.

“It is also an object of my present invention to provide a valve mechanism of the above mentioned improved construction which may be manually or automatically actuated and in this connection I contemplate the provision of simple means whereby certain of the automatic controlling devices may be rendered inoperative to effect complete manual control of the main valve unit.

“These and numerous other objects and advantages will be more apparent from the. detailed description which is to follow. In accordance with the general features of the invention, one embodiment thereof includes a main cylindrical valve which is longitudinally slidable within a housing. One extremity of this valve is adapted to be connected to a control lever whereby manual reciprocation of the valve may be effected. When the control lever occupies a central or neutral position, fluid such as oil which is directed into the chamber, associated with the valve, circulates there-through without causing the distribution of fluid to various machine elements with which the valve may be connected. In this connection it is to be noted that said valve is connected to a source of high pressure and low pressure fluid supply. When the

*269

control lever is shifted to an extreme position as for example to the left, ports within the valve unit are so positioned as to cause the high and low pressure fluids to he directed through properly gauged, fixed passages to the machine actuating mechanisms. This rapid displacement of the fluid causes said mechanisms to he actuated at high speed. Thus, if these mechanisms were used for moving machine tools, said tools would be caused to rapidly move into operative association with the work. This movement might be referred to as a rapid approach movement. At a predetermined stage of the operation of these fluid actuated mechanisms, the main valve is automatically or manually shifted to a position in which only the high pressure fluid is directed to the machine actuating mechanisms and at this time said fluid is directed to restricted or adjustable orifices associated directly with the housing of the main valve. The reason for employing these adjustable restricted orifices will be apparent when it is understood that a variable amount of fluid must be displaced to give the desired speed to the parts which are propelled by the fluid actuated mechanisms. That is, the speed of these parts or members is controlled by means of these adjustable orifices. In other words, the fluid is now displaced at a feeding rate to the actuating mechanisms. At a subsequent predetermined interval, as for example when the machine tools have reached the limit of their cutting stroke, the main valve is automatically or manually shifted to the opposite extremity of the valve chamber. This shifting movement may be occasioned in response to an unbalanced condition of the fluid associated with the valve. This unbalanced condition is caused by a balancing member which serves to effect the decrease in pressure of fluid at one extremity of the main valve. This unbalancing of the valve serves to carry the same past the neutral point to a position in which high pressure and low pressure fluids are delivered in a reverse direction to the machine actuating mechanisms. This rapid delivery of the fluid may continue until the machine actuating mechanisms have reached the limit of their reversing stroke, at which time the valve will be automatically or manually shifted to its neutral position. If it is desired to impart a feeding reverse movement to the actuating mechanisms, it is only necessary to manually or automatically shift said main .valve from its rapid reverse position to a reverse feeding position. In connection with the shifting of the main valve for the purpose of reversing the delivery of fluid, it should be understood that I contemplate the provision of improved means whereby the positive reversal of the valves is timed with extreme accuracy. In other words, the reversing operation will not take place until all of the fluid actuated mechanisms have reached the limit of their advancing stroke and said reversal may be very accurately controlled for each cycle of the machine operation.

*****

“Before discussing in detail the structural characteristics of the embodiment of my invention which is disclosed in the drawings, it is to be understood that the present invention relates to subject matter similar to that set forth in my co-pending application, Serial No. 391,130, filed Sept. 9, 1929. In said co-pending application I have disclosed a complete automatic lathe construction equipped with a fluid control valve, and the present invention relates to fluid control valves which are adapted for use in connection with such automatic lathes. However, the present invention represents certain improvements in valve construction and controlling mechanism therefor.

**

*

**

“A pipe line 40, Figures 4 and 15, serves to introduce low pressure fluid such as oil into branch passages 42 and 44, while a pipe line 46, Figures 6 and 15, serves to introduce fluid at high pressure into annular passage 48 which is provided in the housing 24. This high pressure and low pressure fluid may be supplied from any suitable source and for the purpose of illustrating the practical application of the valve I have shown the same connected to a variable displacement pumping mechanism which is shown diagrammatically in Figure 15. This pumping mechanism includes a variable displacement high pressure pump designated generally by the numeral 50 and a low pressure gear pump designated by the numeral 52. Fluid at high pressure is directed from the pump 50, Figure 15, through the pipe line 46 and thence into the annular passage 48, while fluid at low pressure is supplied from the pump 52 through the pipe line 40 which commmunicates with the branch passages 42 and 44.

*****

“Thus, fluid at high and low pressures which is associated with the valve when

*270

said valve occupies its neutral position, circulates therethrough without being displaced for the purpose of propelling mechanisms later to be described.

*

*

* *

“Consider now that the valve 26 is manually shifted to its extreme left position as shown in Figure 9 through the agency of the control lever 34. With the valve in this position, high pressure fluid from the annular passage 48 is directed through the valve passage 54 into a passage 86 and thence through a plurality of fixed orifices 88, 90 and 92, Figures 8 and 9. The low pressure fluid is also directed through the fixed orifices 88, 90 and 92, together with the high pressure fluid. In other words, the combined high and low pressure fluid mediums are unrestrictedly passed through these orifices and thence through suitable pipe lines 94, 96 and 98.

íj! Hí Jji

“With the foregoing description of these various machine elements and the pipe lines connected therewith, it should be apparent that when the main valve 26 occupies the position shown in Figure 9, the combined high and low pressure fluids will be dispatched through these various pipe lines so as to cause the various machine mechanisms to be moved rapidly. In other words, this position of the valve 26 might be called the forward rapid traverse position because it permits of an increased displacement of the fluid through the pipe lines which results in a rapid forward traverse of the pistons in the actuating mechanisms. In this connection attention is directed to the size of the fixed orifices 88, 90 and 92. The cross sectional areas of each of these orifices must be properly gauged in order to effect proper movement of the fluid actuated mechanisms. Thus, when a plurality of orifices such as those disclosed in the drawings are employed, the. machine tools which are propelled by the fluid actuated mechanisms, are subjected to varying resistances and consequently the pressure of the fluid in the circuit must exceed the maximum necessary for propelling these machine tools in order to obtain unison in operation. Therefore it is important that the size of these fixed orifices 88, "90 and 92 be gauged so as to insure proper pressure conditions and thereby enable the control of a plurality of machine tools from a. single source of fluid supply and by means of a single valve.

“Consider now that the valve is shifted to the position shown in Figure 10, which position will hereinafter be referred to as the forward feed traverse position. It will be noted that when the valve occupies this position, the section 32 thereof closes the fixed orifices 88, 90 and 92 and sections 138 and 140 of said value prevent the low pressure fluid from entering the passage 86. This low pressure fluid is diverted from the branch passages 42 and 44 through the radial ports 60 and 66 and thence into the annular passage 64 which is connected with the reservoir 78. The high pressure fluid, however passes through the valve passages 54 and 86 and thence through adjustable orifices 88a, 90a and 92a. The size of these orifices is adjust-ably determined by suitable needle valves 142, 144 and 146 as clearly shown in Figure 7. These adjustable orifices 88a, 90a and 92a are companion with the above mentioned fixed orifices 88, 90 and 92 respectively, and it will be seen that the adjustable as well as the fixed orifices communicate respectively with the pipe lines 94, 96 and 98. Thus, when the valve 26 occupies the position shown in Figure 10, high pressure fluid will be directed through the restricted or adjustable orifices and thence into the various pipe lines which are connected with the actuating mechanisms. These restricted orifices may be adjusted to permit any desired displacement of the fluid, this displacement being employed to effect a forward feeding stroke to the pistons in the actuating mechanisms. In other words, when the valve occupies the position shown in Figure 10, fluid will be distributed to the various actuating mechanisms at a feeding displacement as distinguished from the increased displacement which takes place in the manner described above in connection with the forward rapid traverse position of the valve (Figure 9). It is to be noted that the fluid supplying mechanism or pump shown in the drawings is of the type which may be varied to increase or decrease the displacement of fluid. Thus, by the restricted adjustable orifices 88a, 90a and 92a, I am able to adjust these orifices in accordance with the speed at which fluid is displaced by the rotary plunger pump. In this manner I am able to positively control the speed of travel of the fluid actuated mechanism to which each of said adjustable orifices is connected.

“Consider now that the control lever 34 is swung from its forward feed position past the neutral point to its extreme position to the right. This will position the valve as shown in Figure 11. With the

*271

valve in this position, the combined high pressure and low pressure fluids are directed' through the valve passages 54 and thence outwardly in a reverse direction through the pipe lines 105, 122 and 134. That is to say, the high and low pressure fluids are displaced in a reverse direction so as to cause a rapid reverse movement of the various actuating mechanisms. The pipe lines 94, 96 and 98, under these circumstances, serve as return conduits and direct the fluid medium through the fixed orifices 88, 90 and 92 and thence into the valve chamber 68. Fluid from this chamber 68 is directed through the passage 70, Figure 6, and thence into the annular passage 64 which is connected by the return pipe 80 to the reservoir 78. The position of the valve as shown in Figure 11 will hereinafter be referred to as the rapid reverse position. By returning the control lever 34 to its neutral position as shown in Figure 4, both high pressure and low pressure fluids will be circulated through the valve mechanism without effecting any movement to the actuating pistons.

“In some instances it might be necessary to subject the actuating pistons to a reverse feeding movement as distinguished from the rapid reverse movement and in such instances it is only necessary to shift the valve to the position shown in Figure 12. In this position the section 32 of the valve closes the orifices 88, 90 and 92 and the sections 138 and 140 of the valve prevent the low pressure fluid from entering the valve passages 54. The high pressure fluid, however, is directed through the return pipe lines and fluid is forced in a reverse direction through the adjustable orifices 88a, 90a and 92a. Passing the fluid through these adjustable orifices causes a decrease in displacement and thereby enables the pistons of the actuating mechanisms to be moved in a reverse direction at a feeding speed. The position of the valve shown in Figure 12 will be hereinafter referred to as the feeding reverse position.

“From the foregoing it will be apparent that my improved valve may be shifted to five different positions within its housing through the agency of a manually operable lever. I will now proceed to describe the mechanism for automatically effecting the shifting of said valve.

* * *

%

*

“Summarizing the foregoing description, it will be understood that in the operation of my improved valve mechanism, the dogs on the slide 148 are first positioned in accordance with the various shifting movements which are to be experienced by the tool carriages or other movable elements with which the valve is associated. After these dogs have been properly positioned and the work set up in the machine, the control lever 34 is shifted to its extreme left position, Figure 4, so as to move the valve 26 from its neutral position shown in Figure 4 to its rapid approach or forward position shown in Figure 9. In this position fluid at high pressure from the pipe line 46 enters the annular passage 48 and is directed through the valve passages 54, the passage 86 and thence through the orifices 88, 90 and 92. The low pressure fluid is directed from the pipe line 40 and passes through the branch passage 42 and joins the high pressure fluid in the passage 86. From this point it is -introduced within the orifices. From these orifices the combined fluid is displaced through the pipe lines 94, 96 and 98 which are connected with the actuating mechanisms. The increased displacement resulting from the combination of the high and low pressure fluids causes these actuating mechanisms to be moved at' relatively high speeds. The movement of the carriage 130 causes the slide 148 to be actuated, and the dog 160 carried thereby is eventually moved into engagement with the pin 170. This causes the shifting of said pin from the position A to the position B shown in Figure 4. The valve 26 is thus moved to the forward or approach feeding position shown in Figure 10. The high pressure fluid alone is then directed through the adjustable orifices 88a, 90a and 92a thereby causing the actuating mechanisms to be moved at a feeding speed. The dog 158 engages the arm 164 of the bell-crank 166 and this causes communication to be established between the pipe lines 94 and 104 as clearly shown in Figure 4. As the various tool carriages approach the limit of their approach or advancing movement, the lug 192 is carried into engagement with the arm 190 and this causes the bar 194 to be shifted, thereby causing rotation of the member 74. The port 202 of the member 74 is thus carried into registration with the pipe line 204 and fluid from the chamber 38 is dispatched through said pipe line and into the reservoir 78. If the abutment surface 182 of the block has been moved past the pin 170, the valve 26 will be moved to the right, Figure 4, as a result of the unbalancing of the fluid pressure. The valve is thus carried to the position

*272

shown in Figure 11 and at this time the combined low and high pressure fluids will be dispatched in a reverse direction through the pipe lines, said fluid being returned to the chamber 68 through the unrestricted orifices. This increased displacement causes rapid reverse movement of the actuating mechanisms and as the slide 148 continues to move rearwardly, the dog 158 engages the bellcrank arm 206 so as to shift the valve 114. The dog 162 is eventually carried into engagement with the pin 170, thereby causing said pin to be moved from the position C to the neutral solid line position shown in Figure 4. Additional dogs may be provided if it is desired to cause the valve to be moved to its feeding reverse position shown in Figure 12.

“From the foregoing it will be apparent that my invention contemplates the provision of a valve mechanism of improved practical construction in which increased displacement of the fluid medium is accomplished by combining high pressure and low pressure fluids. This is accomplished by the simple and unique arrangement of the passages in the valve mechanism. One of the distinct advantages of my present invention resides in the manner in which the valve is shifted to its reverse position in response to the unbalancing of the fluid pressures to which it is subjected. This is accomplished in a very simple and expeditious manner. Another feature which represents a decided improvement in valve construction is the manner in which I directly associate the fixed and adjustable orifices with the valve housing. By this arrangement no auxiliary units are needed and the entire valve mechanism is rendered self-contained in every respect. It is also to be noted that I employ the restricted or adjustable orifices for effecting the delivery of fluid at a feeding rate in both forward and reverse directions. By means of the abutment surface 182 which co-operates with the mechanism for oscillating the member 74, a distinct improvement is presented in that I am able to positively and accurately control the period of reversal of fluid flow. This problem of accurately controlling the reversal of fluid valves has been one which has confronted those interested in this particular art for some time. To my knowledge, no accurately operable control mechanism has thus far been developed and therefore I believe that my present arrangement represents an improvement long sought for in this particular art. As pointed out above, the valve may be rendered manually operable by simply withdrawing a connector pin and this greatly facilitates the ease with which a machine may be set up. The connection may be established with equal ease by merely reinserting the pin so as to render the valve completely automatic in operation. As shown in the diagrammatic representation of Figure 15, I employ suitable relief valves in association with the fluid circuit so as to positively preclude the building up of pressures to an extent which would tend to cause damage to any of the operating parts.”

* * * * *

The claims in issue are the following:

“5. A valve construction including a housing, a shiftable valve in said housing, said valve and housing having cooperative passages for variously directing fluid, means for directing a fluid medium into association with said valve, said passages being associated with a restricted orifice and another unrestricted orifice, said passages being disposed so as to direct fluid to the second mentioned orifice when the valve occupies one shifted position to permit of increased fluid displacement, and to close said second orifice and direct fluid to the restricted orifice when the valve occupies another shifted position to permit of decreased fluid displacement.

sfc ifc sjc ‡

“8. A valve construction including a housing, a shiftable valve in said housing, said valve and housing having cooperative passages for variously directing a fluid medium, said valve being adapted in one shifted position, to effect the delivery of fluid in a given direction and when in another shifted position, to effect the delivery of fluid in another direction, a pair of spaced chambers, said chambers communicating with each other through a passageway whereby fluid pressure in one chamber will be substantially equal to the fluid pressure in the other chamber, and means for withdrawing fluid from one of said chambers, whereby said valve will be automatically shifted from one position to another.

“9. A valve construction including a housing, a shiftable valve in said housing, said valve and housing having cooperative passages for variously directing fluid, said valve being adapted in one shifted position, to effect the delivery of fluid in a given direction and when in another shifted posi

*273

tion, to effect the delivery of fluid in another direction, a chamber at each extremity of said valve for receiving fluid, said chambers being connected by means of a passageway, and a mechanism for effecting the withdrawal of fluid from one of said chambers to cause said valve member to be shifted from one position to another.

“10. A valve construction including a housing, and a reversing valve shiftable within said housing, said valve and housing having cooperative passages for directing fluid to either end of a hydraulic actuator, a restricted orifice, and another larger orifice to permit of increased fluid displacement, said orifices being included within said housing and adapted to receive fluid discharged from an actuator to which said valve may be connected in accordance with various shifted positions of said valve within said housing.

“11. A valve construction including a housing, and a shiftable reversing valve in said housing said valve and housing having cooperative passages for directing fluid to either end of a hydraulic actuator, a restricted orifice and another larger orifice to permit of increased fluid displacement, said orifices being provided within said housing and adapted to receive fluid discharged from the actuator with which said valve may be connected, said valves serving when in one position to open one of said orifices and when in another position to close one of said orifices.

% % % %

‡

“23. A valve construction including a housing, a unitary valve shiftable within said housing, said valve and housing having cooperative passages for variously directing a fluid medium, said valve being adapted to receive fluid from a plurality of sources and when in one shifted position, to effect the dispatching of fluid from one of said sources and when in another shifted position, to receive and effect the dispatching of combined fluids from said sources, the communication with said sources being maintained during the shifting of said valve.

i]c >¡<

“25. In combination with a fluid actuated mechanism for propelling machine elements and the like and a plurality of fluid supplying devices, a valve construction including a unitary valve member shiftable within a housing, said valve having an orifice which is of a size corresponding to the fluid displacement requirements of the fluid actuated mechanism so as to effect uniform delivery to said mechanism, said valve when in one position being adapted to effect the delivery of fluid from one of said sources of supply to said fluid actuated mechanism, and when in another shifted position, to effect the delivery of combined fluids from said sources through said gauged orifice to said fluid actuated mechanism.

“33. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, pumping means for delivering fluid for propelling purposes to said actuator, and a unitary fluid control means including a restricted orifice for receiving fluid discharged from said actuator during the feeding movement thereof in a given direction, means for rendering said restricted orifice functionally ineffective when the actuator is moving at a faster rate in the same direction, and means 'for directing fluid to either end of said actuator.

“34. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, a relatively low pressure pump for delivering fluid at a relatively rapid rate to said actuator, a relatively high pressure pump for delivering fluid at a slower feeding rate to said actuator, fluid control means including a restricted orifice for receiving fluid discharged from said actuator during the feeding movement thereof in a given direction, and means for rendering said restricted orifice functionally ineffective when the actuator is moving at a faster rate in the same direction.

“35. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, a relatively low pressure pump for delivering fluid at a relatively rapid rate to said actuator, a relatively high-pressure pump for delivering fluid at a slower feeding rate to said actuator, fluid control means including a restricted orifice for receiving fluid discharged from said actuator during the feeding movement thereof in a given direction, means for rendering said restricted orifice

*274

functionally ineffective when the actuator moves at a faster rate in the same direction, and a relief valve connected with the discharge side of at least one of said pumps.

“36. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, a relatively low pressure pump for delivering fluid at a relatively rapid rate to said actuator, a relatively high-pressure pump for delivering fluid at a slower feeding rate to said actuator, fluid control means including a restricted orifice for receiving fluid discharged from said actuator during the feeding movement thereof in a given direction, a relief valve connected with the discharge side of at least one of said pumps, and means for controlling the delivery of fluid to either end of said actuator.

“37. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, a rapid traverse pump for delivering propelling fluid to said actuator, a feed pump for delivering propelling fluid to said actuator, fluid control means including a restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a feeding rate, a less restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a faster rate, means for controlling the operative functioning of said orifices, and means for directing fluid to either end of said actuator.

“38. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, pumping means for delivering fluid under pressure for propelling purposes to said actuator, and a unitary fluid control means including a restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a feeding rate, a less restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a faster rate, and means operable in timed relation with the movement of said actuator for controlling the operative function of said orifices.

“39. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, a rapid traverse pump for delivering fluid to said actuator, a feed pump for delivering fluid to said actuator, fluid control means including a restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a feeding rate, and a less restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a faster rate, and means for selectively controlling the operative functioning of said orifices whereby when the fluid passes through the less restricted orifice the actuator will experience rapid traverse rate and when said fluid passes through the other orifice said actuator will experience a feeding rate of travel.

“40. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cylinder and piston construction, pumping means for delivering fluid under pressure for propelling purposes to said actuator, and a unitary fluid control means including an adjustable restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a feeding rate, a less restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a faster rate, and means for controlling the operative functioning of said orifices.

“41. In combination with a hydraulic actuator for propelling machine parts and the like which includes a cyclinder and piston construction, a rapid traverse pump for delivering fluid to said actuator, a feed pump for delivering fluid to said actuator, fluid control means including a restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a feeding rate, and a less restricted orifice for receiving fluid discharged from said actuator when said actuator moves at a faster rate, and shiftable valve means for closing the less restricted orifice to render the other orifice functionally operable to receive fluid discharged from said actuator, said valve means in another shifted position serving to open said less restricted orifice and thereby render the same functionally operable to receive fluid discharged from said actuator.”

The plaintiffs contend that the claims in suit are valid and that they are infringed by the machines next enumerated. Defendants’ First Senior Hydraulic System is said to infringe claims 5, 33, 38 and 40. Defendants’ Second Senior Hydraulic System is said to infringe claims 5, 8, 10, 11, 33, 38 and 40. Defendants’ Junior Hydraulic System is said to infringe claims 33, 38 and 40. Defendants’ 61 Heavy Duty Cyl

*275

inder Boring Machine is said to infringe claims 10, 11, 33, 38 and 40. Defendants’ Oldsmobile Boring Machine is said to infringe claims 10, 11, 23, 25, 33, 34, 35, 36, 37, 38, 39, 40 and 41. Defendants’ 2-way 8-Station Hand Index Machine is said to infringe claims 10, 11, 33, 38 and 40. Defendants’ Frankford Arsenal Machine is said to infringe claims 5, 10, 11, 38 and 40. Defendants’ Self-contained Unit No. 21 is said to infringe claims 10, 11, 33, 38 and 40. Defendants’ Self-contained Unit Nos. 23 and 25 is said to infringe claims 5, 8, 9, 10, 11, 33, 38 and 40. Defendants’ Thread Grinder is said to infringe claim 5.

The defendants summarize their defenses as follows: (1) The presumption of validity normally attaching to a patent is here destroyed by the applicant’s false affidavit filed in the Patent Office; (2) the entire patent is invalid for failure to disclaim claim 23 which defines the very valve that Sven-son bought from Oilgear in starting his work; (3) the entire patent is invalid for failure to disclaim claim 25 which also defines the very apparatus that Svenson bought from Oilgear in starting his work; (4) all of the claims in issue are invalid under U.S.C.A. Title. 35, Section 33, because of their functionality; (5) claims 5, 10, 11, 33, 34, 35, 36, 37, 38, 39, 40 and 41 are invalid under U.S.C.A. Title 35, Sec. 33, for failure to find support in the disclosure of the patent; (6) claims 34, 35, 36, 37, 39 and 41 (the so-called two pump claims) are invalid on the ground of aggregation; (7) each and every one of the claims in issue is invalid on the prior art; (8) claims 23, 25, 34, 35, 36, 37, 39 and 41 are not infringed by the accused Oldsmobile machine with its Vickers pump; and (9) although the elements of the remaining claims are found in the respective accused machines, those claims are not “infringed” for the reason that the claims find more complete response in the prior art.

Of defendants’ first contention that the presumption of validity normally attaching to a patent is here destroyed by the applicant’s false affidavit filed in the Patent Office:

When the patentee Svenson began his work in anticipation of the filing of an application which eventuated in the issuance of Svenson 1,924,422, he first purchased from The Oilgear Company an Oilgear QRlx2 system. A diagram of the circuit of the Oilgear QRlx2 system in simplified form is shown in Figure 4.

The diagram shown in Figure 5 is that of the circuit shown in the application as filed on November 16, 1929, and no doubt as it appeared when the patentee Svenson signed the application on October 28, 1929. It will be observed that there is a complete

*276

identity between the circuit of the Oilgear QRlx2 system purchased by the patentee Svenson and the basic circuit (shown in heavy lines) of the application as filed. To the Oilgear QRlx2 system, which the patentee Svenson bought, he did two things, and two things only,

in meial.

He had three actuators in his lathe. So he had to have a distribution or divider arrangement to divide the flow of fluid from the one pair of pumps to the three actuators. He chose to do this by connecting the three actuators all in parallel and providing sets of orifices which would divide the flow of fluid between them, in proportions determined by the setting of the orifices. That was one thing he did. The second thing the patentee Svenson did was to provide a different fluid actuating arrangement for operating the plunger of the main valve. This second item we can lay aside from the other because it enters only into claims 8 and 9 and makes a completely distinct issue from the matter of orifices.

The diagram shown in Figure 6 shows the orifice distribution arrangement. The patentee Svenson desired to use one Oil-gear QRlx2 system to operate the three actuators of a lathe, so he put three unrestricted orifices 88, 90 and 92 and three

*277

restricted orifices or needle valves 88a, 90a .and 92a in his valve and by adjusting the openings of those three restricted orifices he proportioned the areas through which the oil could flow and thereby the relative amounts of oil displaced to the three respective actuators. This was the patentee’s contribution in the way of mechanism.

*276

*277

The patentee first operated his lathe at approximately the end of October, 1929, and he signed his application on October 28, 1929, so that it may be assumed the two .acts were simultaneous. Svenson 1,924,422 refers to a “copending application Serial No. 391,130, filed September 9, 1929,” disclosing “a complete automatic lathe construction equipped with a fluid control valve.” The September application shows an Oilgear QSA system, three actuators .and restricted orifices or needle valves but the restricted orifices are shown in a separate block which the September application calls the distributor unit. The reason the patentee substituted the Oilgear QRlx2 for the Oilgear QSA was that the latter system had the main valve built into the box that had the pumps in it and the patentee wanted it placed at a distance. Sometime before October 28, 1929, and probably after September 9, 1929, the patentee redesigned his circuit, using now an Oilgear QRlx2 system and moving the restricted orifices from the separate block of the September application down into the housing of the valve and, having done so, inquired of himself, “What have I done?” and answered by making application for a patent on a “Valve Construction.”

A diagram of the circuit of the patent as issued in simplified form is shown in Figure 7. The change in the pump connections should be noted particularly. In order to procure the change in the drawings in the application, a drawing amendment was first filed without any verified showing and its entry -was refused by the Patent Office because, as they said, there was no support in the original application for the amendment. After an interview with the Examiner, the patent solicitor wrote to the Patent Office and enclosed an amended Figure 15 (making a change in pump connections) and an affidavit of the patentee Svenson. The solicitor’s letter is as follows :

“Amendment.

“Honorable Commissioner of Patents,

“Washington, D. C.

“Dear Sir:

“In response to the Office Action dated June 23, 1932, please amend the above entitled application as follows:

*

‡.

* * £

“Remarks.

“This amendment is being filed after applicant’s attorney had a very much appreciated interview with the Primary and Assistant Examiners. It will be recalled that said interview was had for the purpose of considering the amendment of Figure 15 of the drawing by the addition of the conduit 85 and severing direct communication between the discharge of the pump 52 and the intake of the pump 50. It will also be recalled that the Assistant Examiner stated that the reason for his refusal to approve these corrections to the drawing was based on the theory that the original specification did not warrant such a change. Applicant’s attorney pointed out those portions of the specification setting forth that the valve

*278

mechanism and circuit connected therewith were designed for the purpose of employing the combined low and high pressure fluids for rapid traverse purposes, and that this could not be accomplished if the circuit diagram, as shown in Figure 15, was not amended. It was tentatively agreed by both the Primary and Assistant Examiners, after these facts were pointed out by applicant’s attorney that the specification did show that the invention as originally presented contemplated this combined action of the low and high pressure fluid, and that therefore the correction in the drawing was in order. In order that the record may more clearly show the inadvertence in preparing the original circuit diagram of Figure 15, we are attaching hereto an affidavit by applicant which clearly explains the error and verifies our contention to the effect that the invention as originally disclosed centemplated a circuit arrangement as indicated by the amendment to the drawing.

“It will be clear from applicant’s affidavit that the error in Figure 15 resulted from confusion on the part of the draftsman in preparing this drawing in the light of some of the disclosures in the circuit diagram shown in an earlier filed co-pending application.

»}» Hí ^ *[»

“With the foregoing explanation, together with applicant’s affidavit attached hereto, it is respectfully requested that the Examiner withdraw his objections with respect to the proposed corrections in the drawing and with respect to the balancing action of the fluid upon the valve.

“In view of the fact that no art was cited against the,claims under rejection and that said claims have been rejected only on grounds that have been met in the foregoing argument and during the interview with the Examiner as referred to above, a favorable action on the merits of the claims under rejection is respectfully solicited.

“Respectfully submitted,

“December 8, 1932.”

The patentee’s affidavit is as follows:

“Affidavit of Ernest J. Svenson.

“State of Illinois, County of Winnebago, ss.

“I, Ernest J. Svenson, being first duly sworn, depose and say that I am the applicant in the application, Serial No. 407,781, filed November 16, 1929, for Valve Construction. I personally supervised the making of all shop drawings of the structure disclosed in the above mentioned application. Attached hereto, as Exhibit ‘A,’ is the original of the drawing made by me, which forms one of a series of four similar drawings disclosing various shifted positions of the valve member. These drawings were submitted to my attorneys, Cheever, Cox- & Moore, for the purpose of illustrating how I proposed to employ the combined low and high pressure fluids for rapid traverse purposes. In the drawing I indicated in blue the high pressure fluid from the pump 50, and the low pressure fluid from the pump 52 in red. This drawing was completed by me on July 15, 1929, and upon completing same I placed the date, July 15th ’29, with my initials thereon, as shown in Exhibit 'A.’

“Exhibit ‘A’ shows the manner in which the high and low pressure fluids combine to propel the actuator in a reverse direction at a rapid rate, and conforms in every detail with Figure 11 of my application drawing. To accomplish this result, it was necessary to have the discharge of the low pressure or gear pump 52 directed independently of the intake of the plunger pump 50 into the branch passages 42 and 44. However, when the drawing for the patent application was prepared, the intake of the high pressure pump 50 was inadvertently coupled with the discharge of the pump 52, which would result in a circuit arrangement that would not permit the combined low and high pressure fluids to function in the manner disclosed in Exhibit ‘A’ and as described in my above mentioned application.

“This application, Serial No. 407,781, aforementioned, was in process of preparation by my patent lawyers shortly after my co-pending application, Serial No. 391,130, filed September 9, 1929, for Material Working Apparatus, was prepared, and, due to the fact that the drawings of the above co-pending application were used as a general guide in laying out some of the views in the present application, some slight confusion resulted in laying out the circuit diagram in Figure 15 of the present application. In this connection, I make 'specific reference to Figure 22 of my above mentioned co-pending application, a photostat of which is attached hereto and designated as Exhibit ‘B,’ wherein the discharge of the gear pump 218 is continuously coupled with the intake of the high pressure pump 204. In this co-pending application the valve is not designed nor adapted to combine low and high pressure fluids for the purpose of propelling an actuator at a rapid rate, nor is the

*279

same system of valve balancing disclosed in said co-pending application. In laying out the circuit diagram in Figure 15 of the present application, a return line to the high pressure pump 50 was inadvertently omitted, which return line is essential to the operative functioning of the valve. In my co-pending application, the return line 318 communicates with the discharge side of the gear pump 218, which arrangement conforms with the valve construction coupled therewith and which circuit arrangement was never intended to be shown in the present application because it would not accomplish the purpose of my present invention. In addition to providing means for returning fluid to the high pressure pump 50 independently of the gear pump 52, it will be obvious that some means was necessary to permit the egress of fluid from the chamber 68 in order to shift the valve member and to maintain said valve member in balance, as clearly described in my specification.

“I

supervised the construction of the device corresponding with the details in the present application, and in so doing coupled the valve with the pumps in the manner indicated by the added conduit shown by the red line 85 on the photostat submitted with the amendment dated February 13, 1932.

“The subject matter disclosed in Exhibit ‘A’ shows that it was my intention originally to cover in the present application a valve structure whereby low and high pressure fluids could be combined for the purpose of propelling a hydraulic actuator at a rapid rate. These facts are also set forth in the body of the specification of the present application, and in order to accomplish this result by use of the structure shown in the diagram of Figure 15, it is necessary that the connection of the discharge side of the gear pump 52 with the intake of the plunger pump 50, be corrected, as indicated by the red line 85. This is the manner in which I originally constructed and successfully employed my invention in practice.

*1* sfc »!* H' H*

“Ernest J. Svenson.

“Subscribed and sworn to before me this 10th day of......, 1932.

“Victor E. Ingwalson, “(Seal) Notary Public.”

It has been observed that the affidavit covers three points: First, it purports to substantiate the argument that the specification as originally filed was descriptive of the pump arrangement as amended; Second, it purports to show that this change in the drawing is necessitated merely because through some' draftsman’s error there was an inadvertence in the showing in the application as filed; and, Third, it represents that the actual machine from which the application was presumably prepared had the pumps connected as the applicant now wants them to be shown. The first point raises a question of interpretation which is not of consequence at this juncture.

The record in this case shows that the drawing for Figure 15 of the patent application was copied faithfully, line for line and without any inadvertence or accident or mistake, from the patentee Svenson’s own personal drawing, which is here in evidence as Exhibit A-72 and which had on it exactly the pump connections as shown in the application as filed, and not the pump connections as they were changed later on in the patent application. Care must be exercised in considering Exhibit A-72 because it was changed by the patentee Svenson, as he has testified, at or about the date that he changed the drawing in the application, so that as it now appears it has the pump connections as they were shown in the patent as issued; but in Exhibit A-72, as it was made, and as it was turned over to the attorneys for preparation of the patent application, the pump connections were exactly as shown in the application. Exhibit A-72 as it was made and as it was turned over to the attorneys for preparation of the patent application had the Oilgear QRlx2 system pump connections. All of the facts as to the identity of the draftsman who is alleged to have made the mistake and the facts as to the change in Exhibit A-72 and the change in the patent application are admitted of record. Furtherm'ore, the plaintiffs have not produced any document or any drawing whatever ante-dating the filing of the application which shows the pump connections in the form to which the patentee Svenson later changed them.

The affidavit of the patentee Svenson infers that he had actually constructed his system prior to the filing of the application in the way he desired to show by the amendment, and that some draftsman had inadvertently shown a couple of pipe connections wrongly, so that he should be permitted to change the application by amendment. The record in the case at bar shows, by the patentee Svenson’s testimony, that the changes in the pipe connections were not made in the machine until after the

*280

filing date of the patent or, as Svenson expressed it, until “later on, at the end of the year.”

Two of the reasons urged upon the Patent Office for allowing the amendment were false and were by the patentee Sven-son known to be false.

The only penalty the defendants ask for the use by the patentee of a false affidavit is that it be adjudged that the presumption of validity normally attaching to a patent be held to be destroyed. That can not be said to be demanding a pound of flesh, but the defendants do not cite any authority for the court’s assessing a penalty. The plaintiffs do not discuss the question of the truth or falsity of the affidavit but content themselves with a general denial of fraud or fraudulent intent and refrain from a discussion of an appropriate penalty. The plaintiffs do rely upon the affidavit as compelling a construction of claims 23 and 25 which differentiates them from the QRlx2 system. Since the court has not had the benefit of a full discussion of the question of an appropriate penalty, none will be assessed.

The defendants’ second and third contentions, that the entire patent is invalid for failure to disclaim claim 23, which defines the very valve, and claim 25, which defines the very apparatus, that Svenson bought from Oilgear in starting his work, have been considered above.

Of defendants’ fourth contention, that all the claims of Svenson 1,924,422 in issue are invalid under U.S.C.A. Title 35, Section 33, because of their functionality: The court does not believe that this defense should be sustained as to the claims of this patent in suit.

Of defendants’ fifth contention that claims 5, 10, 11, 33, 34, 35, 36, 37, 38, 39, 40 and 41 are invalid under U.S.C.A. Title 35, Section 33, for failure to find support in the disclosures of the patent: This defense raises the question as to just what Svenson 1,924,422 does disclose. We have found that the patentee Svenson purchased an Oilgear QRlx2 system and made two, and only two, changes in it

in metal.

He desired to use the system to operate a lathe requiring three actuators, so he put in three unrestricted and three restricted orifices, and he provided a different fluid actuating arrangement for operating the plunger of the main valve. However, the controversy which has raged for years between the parties and for weeks before this court has had to do

not

with three actuators, three unrestricted orifices and three restricted orifices, but has had to do with one actuator, one unrestricted orifice and one restricted orifice. The question is, Does the patent disclose the use of one restricted orifice to control one actuator?

One should be able to answer this question by reading the specifications of the patent. The trier of the issue has read the specifications several times, and has just completed a reading of them with a view to' setting down in this memorandum those parts of the specifications which refer to three restricted orifices to control the relative movements of three actuators. It develops, however, that to set down here those parts of the specifications which refer to three restricted orifices to control the relative movements of three actuators would require the repeating of approximately one-half of the parts of the specifications already quoted. Accordingly, the court refrains from quoting further other than from the statements of the objects of the invention, where it is stated:

“More specifically, it is an object of my present invention to provide a unique valve arrangement for accurately and positively controlling the distribution of high and low pressure fluids to a plurality of fluid operated actuating mechanisms as for example those mechanisms used for effecting the actuation of machine elements.

% %

iji

%

sjs

“Still another object of the present invention is to provide a self-contained valve mechanism which may be effectively employed for distributing fluid to a plurality of fluid actuated mechanisms and to this end I propose to provide a plurality of adjustable and non-adjustable orifices which are directly associated with the valve unit, said orifices serving to direct fluid to said actuating mechanisms.”

Reference is made, however, to the six pages of specifications, a considerable portion of which is quoted above and where reference after reference is made to a plurality of restricted orifices to control the relative displacement of fluid to a plurality of actuators or mechanisms. Not once in the entire six pages of specifications is reference made to

one

restricted orifice to control

one

actuator or mechanism.

The court is of the opinion that a reading of the specifications compels the conclusion that the patentee contemplated

*281

varying the displacement of fluid going to the three actuators in the aggregate by (1) shifting the control valve and thereby combining or separating the low and high pressure fluids and sending both or only one of them to the actuators, and (2) adjusting the variable displacement pump, and that he contemplated using the restricted orifices only for the purpose of controlling the proportions of the fluid dispatched to the respective orifices and thereby the relative movements of the three actuators. But since the matter has been the subject of such long continued controversy perhaps it deserves the further consideration which will be given it.

During the course of the trial the controversy as to whether the claims referred to find support in the disclosures of the patent has been referred to as a controversy as to whether the specifications disclose a volumetric system or a constant pressure system. It will be remembered that a volumetric system is one in which all the fluid that is pumped by a pump goes to the actuator or actuators and in such a system the speed of the actuator may be controlled by means of a variable delivery pump. A constant pressure system is one in which a certain maximum pressure is not permitted to be exceeded. This result is accomplished by placing in the system, between the pump and the actuator, a working pressure relief valve set to let liquid pass out of the system at the predetermined maximum pressure. In such a system the speed of the actuator may be controlled by means of a restricted orifice and the working pressure relief valve. The claims now-under discussion cover a single actuator system containing a restricted orifice, for the purpose of regulating the displacement of fluid to the single actuator. A restricted orifice cannot be used for regulating the displacement of fluid in a single actuator volumetric system, the reason being that since by definition all of the fluid that is pumped is going to the actuator it makes no difference whether there is a restricted orifice in the line or not. Restricted orifices may be used in a multiple actuator volumetric system for the purpose of proportioning the fluid among the actuators. The court understands that there is no controversy concerning the facts and conclusions set forth in this paragraph.

Figures 6, 8 and 9 illustrate the facts and conclusions set forth in the preceding paragraph.

51 F.Supp. — 18%

*282

The plaintiffs contend that the specifications of Svenson 1,924,422 disclose a constant pressure system. A restricted orifice may be one of the two elements used to regulate displacement of fluid in a single actuator constant pressure system. The second element which may be used to regulate displacement of fluid in a single actuator constant pressure system is a so-called “working pressure relief valve” — a valve which, when the restricted orifice tends to retard the flow of liquid, permits the liquid to pass out of the system and back to the sump at the predetermined "working pressure.” The defendants contend that the specifications of Svenson 1,-924,422 disclose a volumetric system.

In six pages of specifications the plaintiffs find three statements which they say indicate that' the system described is a constant pressure system. They are the following:

“The reason for employing these adjustable restricted orifices will be apparent when it is understood that a variable amount of fluid must be displaced to give the desired speed to the parts which are propelled by the fluid actuated mechanisms. That is, the speed of these parts or members is controlled by means of these adjustable orifices.”

“The high pressure fluid, however, is directed through the return pipe lines and fluid is forced in a reverse direction through the adjustable orifices 88a, 90a and 92a. Passing the fluid through these adjustable orifices causes a decrease in displacement and thereby enables the pistons of the actuating mechanisms to be moved in a reverse direction at a feeding speed.”

“It is also to be noted that I employ the restricted or adjustable orifices for effecting the delivery of fluid at a feeding rate in both forward and reverse directions.”

These quotations must be considered with the context. It must be borne in mind, as heretofore pointed out, that the patentee contemplated varying the displacement of fluid going to the three actuators in the aggregate by (1) shifting the control valve and thereby combining or separating the low and high pressure fluids and sending both or only one of them to the actuators, and (2) adjusting the variable displacement pump and that he contemplated using the restricted orifice only for the purpose of controlling the relative movements of the three actuators. In considering the three quotations referred to by the plaintiffs it must be remembered that the patentee cuts in the three restricted orifices when he has so shifted his valve that only the output from the low volume high pressure pump may go through them. The restricted orifices do then carry a decreased displacement of liquid but not because they are restricted orifices but because the control valve has cut out the delivery of the output of the large volume low pressure pump.

The principal reasons why the court believes and holds that the specifications of Svenson 1,924,422 disclose a volumetric system are: (1) The specifications refer repeatedly to a plurality of mechanisms or actuators; (2) the specifications do not at any place refer to a single mechanism or actuator; (3) the specifications do not describe the elements of a constant pressure system (The patentee at least should have said: “For the purpose of providing an hydraulic system that may be operated to decrease or increase the displacement of liquid passing to the actuator by cutting a restricted orifice into or out of the system, I provided a sump, a pump, a control valve, an actuator, a restricted orifice that may be cut into or out of the system, a working pressure relief valve to pass liquid out of the system when the restricted orifice is cut into the system, and the piping to connect the foregoing.”); (4) the only mention of valves in the specifications is of safety valves in the following words at page 6, lines 79 to 84: “As shown in the diagrammatic representation of Figure 15, I employ suitable relief valves in association with the fluid circuit so as to positively preclude the building up of pressures to an extent which would tend to cause damage to any of the operating parts.”; (5) the patentee docs not bother to give either of these valves a number in his drawing; (6) the patentee admits that one of these valves is a safety valve but he contends that the other is a working pressure relief valve; (7) the patentee does not differentiate between the two in the specifications; (8) the patentee purchased a relatively expensive Oilgear QRlx2 volumetric system with its relatively high priced variable displacement pump, while if he had intended to construct a constant pressure system he could have purchased a satisfactory pump at one-quarter the price; (9) the following language from the specifica

*283

tions, page 4, lines 31 to 41: “It is to be noted that the fluid supplying mechanism or pump shown in the drawings is of the type which may be varied to increase or decrease the displacement of fluid. Thus, by the restricted adjustable orifices 88a, 90a and 92a, I am able to adjust these orifices in accordance with the speed at which fluid is displaced by the rotary plunger pump. In this manner I am able to positively control the speed of travel of the fluid actuated mechanism to which each of said adjustable orifices is connected.”, should alone settle the controversy; (10) if the system were a constant pressure system there would be no occasion for adjusting the orifices- — if you increased the displacement of the pump all you would do would be to spill more fluid through the relief valve; (11) the hydraulic system disclosed by the patentee’s,' co-pending application Serial No. 391,130 filed September 9, 1929, which is like unto that disclosed by Svenson 1,924,422, has been held by the Examiner of Interferences and the Board of Appeals of the Patent Office to be a volumetric and not a constant pressure system; (12) the testimony of the experts which to the court seems more worthy of credence is to the effect that the specifications disclose a volumetric and not a constant pressure system; and (13) two pieces of documentary evidence are persuasive — they are Defendants’ Exhibit D-61, which is a copy of the Oilgear Company drawing of the QRlx2 system that the patentee bought, and Defendants’ Exhibit D-72 entitled “Diagram showing oil circuit and valve, QR pump” (this last mentioned drawing was changed three years after the patent application was filed) — these two drawings show identical relief valves, a 1000 pound relief valve, a 300 pound relief valve, and a 50 pound relief valve — Exhibit D-61 shows a volumetric system with three safety valves — Exhibit D-72 shows exactly the same valves.

It results from the foregoing that the Court is of the opinion that the defendants’ fifth contention, that claims 5, 10, 11, 33, 34, 35, 36, 37, 38, 39, 40 and 41 are invalid under U.S.C.A. Title 35, Section 33, for failure to find support in the disclosures of the patent, should be sustained.

The defendants’ sixth defense is that claims 34, 35, 36, 37, 39 and 41 (the so-called two pump claims) are invalid on the ground of aggregation. The defendants say that the use of two pumps, as compared to one, does not bring about any new co-operation or result, — that the claims do not attempt to define any. The outputs of the two pumps are used together for rapid traverse and the output of one alone for feed. While, as we shall see, this idea was old, yet the court cannot say that the claims are invalid because they claim aggregation.

The defendants’ seventh contention in respect of Svenson 1,924,422 is that each and every of the claims in issue is invalid on the prior art.

As a background for the study of the prior art on the questions of anticipation and as to whether or not Svenson 1,924,422 discloses invention, the defendants cite and it will be well to consider: Krug 342,463, a German patent of 1920, which has a working pressure relief valve and a control orifice in the supply line, and therefore, a plurality of speeds and a reversing valve for dispatching the liquid to one end or the other of the actuator; Heald 1,582,468 (1923), which has a working pressure relief valve and a restricted orifice and an unrestricted orifice in the supply line, a selector valve for selecting one or the other of said orifices, and, consequently, a plurality of speeds, and which also has a reversing valve for dispatching the liquid to one end or the other of the actuator; Green-smith 1,718,554 (1920), which has a working pressure relief valve and a control orifice in the discharge line, and, consequently, a plurality of speeds, and which also has a reversing valve for dispatching fluid to one end or the other of the actuator; and Ernst 1,969,063 (1928), which has a working pressure relief valve and a restricted orifice in the discharge line and an unrestricted orifice in said line, and a selector valve for selecting one or the other of said orifices, and, consequently, a plurality of speeds, and which also has a reversing valve for dispatching liquid to one end or the other of the actuator.

The defendants contend that the claims in suit are anticipated by or that they disclose no invention over the patents and machines next hereinafter mentioned:

Claim 5: Galloway 1,787,781; Galloway 1,731,718; Bishop 1,905,132; Ernst 1,969,-063; Curtis 2,118,020; 1st Excello Diamond Boring Machine.

Claims 10 and 11: Bishop 1,905,132; Ernst 1,969,063; Curtis 2,118,020.

Claim 25: Oilgear QRlx2.

*284

Claims 33, 38 and 40: Bishop 1,905,132; Ernst 1,969,063; Curtis 2,118,020; 1st Ex-cello Diamond Boring Machine.

Claims 34, 35, 36, 37, 39 and 41: Curtis 2,118,020; Oilgear QRlx2 structure with orifice added as taught by Bishop & Ernst Prior Art Patents.

Claims 8 and 9: Ferris 1,843,082; Boyden Valve of Westinghouse v. Boyden Power-Brake Co., 170 U.S. 537 , 18 S.Ct. 707 , 42 L.Ed. 1136 ; Willey 1,100,642; Miller 1,130,920.

Claim 23: Briegleib Hansen & Co., German patent 220,611 of 1909; Oilgear QRlx2 Valve.

Concerning Ernst 1,969,063, as an alleged prior invention, the plaintiffs make a number of points. The first is, that Ernst does not use a restricted orifice to control the feed rate. In the court’s opinion, Ernst does use a restricted orifice to control the feed rate. The plaintiffs’ second point is that Ernst discloses a grinding machine which differs from other machine tools and from a machine tool of the type shown in Svenson. The court understands that the plaintiffs contend that Ernst 1,969,063 disclosing, as it does, the use of a restricted orifice in a hydraulic system in a grinding machine, is non-analogous art. The court cannot agree with this contention. The United States Circuit Court of Appeals for the Seventh Circuit has spoken concerning the rule for determining what is and what is not analogous art in the case of Automatic Arc Welding Co. v. A. O. Smith Corp., 60 F.2d 740 , at page 742:

“The determination of what is analogous art involves somewhat the same tests as are applied to ascertain patentable novelty. Numerous standards have been laid down, but no rule of thumb is satisfactory. This court attempted to define a test in A. J. Deer Co. v. United States Slicing Machine Co. [7 Cir.], 21 F.2d 812, 813 , which is probably as satisfactory as may be found.

“ ‘If the elements and purposes in one art are related and similar to those in another art, and because and by reason of that relation and similarity make an appeal to the mind of a person having mechanical skill and knowledge of the purposes of the other art, then we are of opinion that such arts must be said to be analogous, and, if the converse is true, they are nonanalogous arts.’

“The over-elasticity of this test and the necessity for fact support make its universal application impossible. It is surely, not capable of mathematical demonstration. When may the court say that a person possessing mechanical skill and knowledge of the art will be subject to ‘an appeal’ from another art? Perhaps greater definiteness would be attained if we said an inventor is

chargeable

with the knowledge and doings of men working in the same field.”

It seems to the court that when the patentee Svenson labored in respect of the disclosures of Svenson 1,924,422, which disclosures relate to “fluid control mechanisms and more particularly to valves for automatically controlling the distribution of fluid which is used as a propelling medium” he, as a mechanical engineer, was chargeable with knowledge that Ernst had prior thereto used a restricted orifice to control the feed' rate in a grinding machine. The plaintiffs’ third point in respect of Ernst 1,969,063, is that there is no back pressure valve in the return line, so that the restricted orifice is not always flooded. If the failure to have a back pressure valve has any effect its only effect is to delay the operation of the restricted orifice. Its absence does not destroy the effectiveness of the restricted orifice. The plaintiffs’ fourth point in respect of Ernst 1,969,063 is that the restricted orifice there shown is not in the valve but, on the contrary, is out some little distance in the piping. The court holds that there was no invention in placing the orifice in the valve.

The plaintiffs make the same points in respect of Bishop 1,905,132 as they make in respect of Ernst 1,969,063 and the additional point that Bishop does not show a pump. The court’s views in respect of Ernst are applicable to Bishop. The court is further of the opinion that in 1929 a mechanical engineer skilled in the designing of hydraulic systems to drive machine tools would know that a pump or a like contrivance was required to dispatch the fluid in a hydraulic system.

The plaintiffs’ point in respect of Galloway 1,787,781 is that that patent discloses two valves. However, there is evidence to the effect that one valve may be cut out and that the other will then operate as does Svenson 1,924,422.

There has been considerable evidence and argument concerning Curtis 2,118,020. The plaintiffs say of it that it does not disclose passages and restricted orifices in the valve housing. The court does not believe that

*285

it involved invention in 1929 to place passages and restricted orifices in the valve housing. Concerning Figure 50 of Curtis 2,118,020, the plaintiffs say that it does not disclose an operable device, particularly that the valves 241 and 242 cannot be so manufactured as to be capable of permitting the passage of sufficient low pressure liquid for rapid traverse and as to be capable of being adjusted to permit the passage of a small quantity of high pressure liquid for feed. The court is of the opinion that the valves disclosed can be made to work if one wants them to work.

There is the question as to the equivalency of the Curtis orifice, which is opened wide for rapid traverse and cut down for feed, to the alternate orifices of Svenson 1,924,422. The court holds they are equivalent.

The plaintiffs say that the Oilgear QR-1x2 system which is cited against claims 23 and 25 of Svenson 1,924,422, is distinguished by the Svenson affidavit to which reference has been made. The amendment to the application which was brought about by the affidavit does show a change in pump connections, but the court cannot find that inventive genius was involved in that change, and the evidence discloses that any long continued experimentation which took place leading to the change took place after the application was filed. Furthermore, the evidence discloses that the pump relationship disclosed by the amendment filed in 1932 was old in the Oilgear QC and QH systems which were produced and marketed before the QRlx2 system which Mr. Sven-son purchased.

The Briegleib Hansen & Co. German patent 220,611 of 1909, which is a patent on a hydraulic turbine control, is cited against claim 23, which is a hydraulic valve claim. The plaintiffs say “that so far as the elements of the claim are concerned, with a strict literal reading, you will find it in this structure or at least most of it. But our point is, it is not analogous art.” The court believes that this German patent is analogous art. By its terms it relates to a “hydraulic * * * control” and it appears that the hydraulic control is a valve. The claim in suit covers a hydraulic valve.

Of Ferris 1,843,082, cited against claims 8 and 9 of Svenson 1,924,422, the plaintiffs say that while it discloses a hydraulic shifting of the valve plunger, yet because (1) the connections of the chambers at the ends of the valve plunger are not within the valve housing and (2) the pilot valve which determines the position of the valve plunger is not within the valve housing but is in a separate structure the patent (Ferris) does not meet claims 8 and 9. The court does not believe there is any patentable difference between the disclosure of Svenson 1,924,422 and that of Ferris 1,843,082.

Of Willey 1,100,642, Miller 1,130,920 and the Boyden valve shown in Westinghouse v. Boyden, Power-Brake Co., 170 U.S. 537 , 18 S.Ct. 707 , 42 L.Ed. 1136 , also cited against claims 8 and 9 of Svenson 1,924,-422, the plaintiffs say they are not analogous art — that they are all pneumatic devices. The answer to this is that air is a fluid and that the claims in suit cover fluid control valves.

The defendants cite the first Ex-Cell-O Diamond Boring Machine against claims 5, 33, 38 and 40. The first Ex-Cell-O Diamond Boring Machine was developed, built and operated in the year 1928 and delivered to Ex-Cell-O Corporation by the maker, Buell Die Machine Company on November 6, 1928. This machine embodied two features of construction and operation which are still prominent in the accused machines. These are the selective orifice control of the exhaust fluid discharging from the actuator for controlling the program of movements of the actuator and controlled diversion from the pressure line of the system of that amount of fluid which is not needed during feed. The actual structure of this machine — the hydraulic circuit construction — as it existed •in November, 1928, and the date of completion of the machine in its original form and the date of delivery are not in dispute. They have been stipulated. There are, however, two issues relating to this machine. The first is whether or not the claims in suit find response in the hydraulic circuit of the machine, and the second issue is whether or not the machine was a structure which was operative to perform its intended function or purpose, so that it can be considered a successful reduction to practice. The first Ex-Cell-O Diamond Boring Machine comprises a cylinder and piston actuator for the carriage, a gear pump, a tank, a main valve structure, a spool type reversing valve in the main valve structure for determining the direction of movement of the carriage, a restricted orifice, an unrestricted orifice, a selector valve

*286

for determining which of those orifices shall he effective in controlling the rate of movement, and a diverting valve for diverting excess fluid not required in feed when the restricted orifice is made functionally operable. On the question as to whether claim 5 finds response in the machine, the plaintiffs say the restricted orifice is always open and only the unrestricted orifice is opened and closed. The court holds that there is no patentable difference between (1) first opening a restricted orifice and closing an unrestricted orifice, and then closing a restricted orifice and opening an unrestricted orifice, and (2) leaving a restricted orifice open all the time and alternately opening and closing an unrestricted orifice. The reason for this is that when the restricted orifice and the unrestricted orifice are both open they nevertheless operate as an unrestricted orifice. On the question as to whether claims 33, 38 and 40 find response in the machine, the plaintiffs say that the machine does not have a “unitary fluid control means.” The patent does not contain a definition of the phrase “unitary fluid control means.” The machine does have a “fluid control means.” The plaintiffs say that this “fluid control means” is not “unitary” because the restricted orifice is not in the valve housing but on the contrary is located some distance therefrom. Claims 33, 38 and 40 do not require the restricted orifice to be in the valve housing unless the word “unitary” imposes that limitation. The court does not believe that it does. Claims 10 and 11 do require the orifices to be within the valve housing. Claim 10 does so by means of the words “said orifices being included within said housing” and claim 11 does so by means of the words “said orifices being provided within said housing.” There is testimony in the record that the restricted orifice in the machine is located as close to the housing as it can be put and still permit a wrench to be applied to the pipes. “Unitary” cannot mean that the valve comprises only one piece of metal because the valve disclosed in the specifications and drawings of the patent is made up of many pieces of metal. Furthermore, a restricted orifice will operate as a restricted orifice whether it be placed in the valve housing, a few inches removed therefrom, or many feet removed therefrom. So there is no patentable difference, so far as the location of the restricted orifice is concerned, between the first Ex-Cell-0 Diamond Boring Machine and claims 33, 38 and 40. Accordingly, the court holds that the claims in suit find response in the hydraulic circuit of the first Ex-Cell-0 Diamond Boring Machine.

Was the first Ex-Cell-0 Diamond Boring Machine operative to perform its intended function or purpose? A great deal of evidence has been introduced on this issue. The court is of the opinion that there had been a satisfactory reduction to practice when in November, 1928, Ex-CellO Corporation accepted the machine from the manufacturer, Buell Die Machine Company, for shipment to the Ex-Cell-0 Corporation’s plant after the latter corporation had supervised tests of the machine. There is evidence in the record that after the delivery of the machine to Ex-Cell-0 Corporation and long before any date to which the Barnes lathe is entitled, 200 automobile pistons were machined for the Ford Motor Company on the first Ex-Cell-0 Diamond Boring Machine. The evidence further discloses that the machine was not intended to be sold to the trade. Ex-Cell-0 Corporation desired to develop a machine of a standard type for sale on the market. Accordingly, particularly during the first six months of 1929 Ex-Cell-0 Corporation tried many different things on this machine and added improvements, and its officers and employees criticized the machine and one of their criticisms in writing which has come into the possession of the plaintiffs is mainly relied upon by them to show that the machine was not operable. The court holds that this writing does not show that. It merely shows what the court has heretofore stated. Ex-Cell-0 Corporation desired to develop a machine of a standard type for sale to the market and it desired to develop the best possible machine for that purpose, so its officers and employees criticized with a view to improvement. The first Ex-Cell-0 Diamond Boring Machine is entitled to a date of November 6, 1928. We have seen that the Barnes lathe, which exemplifies the disclosure of Svenson 1,924,422, is not entitled to an earlier date than October 28, 1929.

The only part of the disclosure of Sven-son 1,924,422 that the plaintiffs have used in their systems is the unbalancing arrangement for operating the valve plunger. Only one machine was manufactured embodying the complete system of Svenson

*287

1,924,422. That was the machine completed in October, 1929. It was operated for a few weeks or months and then lay in the museum of the Barnes Company until the summer of 1942, when a new pump and a new relief valve were put on it and it has since been in operation.

The court is of the opinion that the claims in suit of Svenson 1,924,422 are anticipated by or disclose no invention over the patents and machines heretofore mentioned.

The defendants’ eighth defense is that claims 23, 25, 34, 35, 36, 37, 39 and 41 are not infringed by the accused Oldsmobile boring machine with its Vickers pump. A Vickers pump has two parts. During rapid traverse the whole output of the pump is used, that is, the output from both parts of the pump is used. During feed a part of the output of the pump is used, that is, the output from one part of the pump is used; the output from the other part is automatically by-passed to the pump. There is one conduit or pipe leading from the pump to the valve. In Sven-son 1,924,422, there are two separate pumps and a line leading from each pump to the valve. If the outputs of the two pumps are to be sent to the actuator they are joined in the valve and not before. If the output of but one pump is to be sent to the actuator the output of both go to the valve and the valve sends the output of one to the actuator and the output of the other to the sump. In the court’s opinión, because of the state of the art, no one of the claims of the patent is entitled to a broad construction. The valve in defendants’ Oldsmobile boring machine does not receive and discharge fluid from a plurality of sources as does the Svenson valve; on the contrary, the valve in defendants’ Oldsmobile boring machine receives fluid through a single pipe from a single Vickers pump under all conditions. Accordingly, claim 23 is not infringed.

The defendants’ Oldsmobile boring machine does not have a plurality of fluid supplying devices. On the contrary, it has a single fluid supplying device, the Vickers pump unit, which supplies fluid to the valve through a single conduit. It has no valve which in one position effects delivery of fluid from one source of supply and when in another position effects delivery of combined fluids from two sources. On the contrary, the valve in the Oldsmobile boring machine receives fluid from a single pump through a single pipe under all conditions. Accordingly, claim 25 is not infringed.

Of claims 34, 35, 36, 37, 39 and 41, claim 34 is typical, at least so far as the two elements about to be discussed are concerned. They are: (1) “A relatively low pressure pump for delivering fluid at a relatively rapid rate to said actuator”; and (2) “a relatively high pressure pump for delivering fluid at a slower feeding rate to said actuator.” Defendants’ Oldsmobile boring machine does not have a response to these two elements. It does not have separate low pressure rapid traverse and high pressure feed pumps. It uses a single source of fluid supply, a Vickers pump unit, which supplies fluid through a single pipe under high pressure or low pressure, depending upon whether a restricted orifice is cut into the circuit for feed or cut out for rapid traverse. The whole output of the pump is used during rapid traverse and part of it is by-passed to the sump during feed. Except for efficiency, this Vickers pump unit functions the same as other single pump units with conventional bypass valves and is interchangeable therewith. The court holds that defendants’ Oldsmobile boring machine does not infringe these claims.

The court has considered the questions of infringement without regard to the matter of estoppel, which has heretofore been discussed. There is really no dispute in respect of the facts. The claims are clear. There is no question concerning the construction and operation of the defendants’ Oldsmobile boring machine. The questions are as to the conclusions to be drawn from the undisputed facts. Añd those questions are questions of, shall we say, mechanics, hydraulics or physics. To the court this seems to be a proper place for the application of what appears to the court to be an exception to the rule of this Circuit in respect of estoppel to deny infringement. See L. P. Larson, Jr., Co. v. William Wrigley, Jr., Co., supra.

The defendants’ ninth defense is that, although the elements of the remaining claims are found in the accused machine, those claims are not “infringed” for the reason that the claims find more complete response in the prior art patents and machine: Bishop 1,905,132; Galloway 1,787,-781; Curtis 2,118,020, Figures 50 and 19;

*288

Ernst 1,969,063; and first Ex-Cell-O diamond boring machine. The court is of the opinion that this defense is well founded, but, since it is so closely related to the defendants’ seventh defense of invalidity, it is unnecessary to pursue the matter further.

2.

Svenson 1,980,862 for a "Fluid Controlling Means," Issued January 8, 1935, on an Application Filed November ' 16, 1929, and Containing 29 Claims, of Which 22 Are in Suit.

In Svenson 1,986,862, which is said to be a patent on a “Fluid Controlling Means,” the patentee says:

“My present invention relates generally to hydraulic feeding means and more particularly to means for controlling the dispatchment of a fluid medium to fluid •operated mechanisms such as mechanisms for actuating machine tools and the like.

“Pumps of the multi-plunger type have heretofore been employed for displacing fluid medium to various types of actuating mechanisms such as fluid actuated devices for moving machine tools. One of the problems incident to the operation of such rotary plunger pumps is that of overcoming pulsative effects which result when said pumps are functioning to cause relatively slow feeding movement of a hydraulic actuator. Thus for example, when it is desired to move a tool across the surface of the work at a slow speed in order to make a heavy cut, the rate of displacement of fluid within the hydraulic actuator is obviously less as compared with the displacement within said actuator which takes place when said tool is being moved rapidly across the work. These deleterious, pulsative effects take place during the slow movement of the tool and in many instances seriously impair the cutting action of the tool.

“It is one of the primary objects of my present invention to provide improved and effectively operable means of very simple and inexpensive construction for overcoming the above mentioned and other unsatisfactory results which have heretofore been experienced, and to this end I propose to provide improved means whereby a portion of the displaced fluid may be diverted so as to eliminate pulsative effects.

“More specifically, my invention contemplates the provision of a bleed passage which will serve to divert a predetermined volume of fluid displaced by a rotary plunger pump in such a manner as to maintain uniform, non-pulsative flow of the fluid into the actuator.

“Another object of my present invention is to provide means, as above set forth, for diverting displaced fluid, which is entirely automatic and adapted to be used in a fluid system without the necessity of employing independent means for positively controlling the actuation of the fluid diverting means.

“Still another object of my invention is to provide a fluid feeding device having a discharge orifice which may be adjustably controlled in size so as to effect the diversion of a desired volume of displaced fluid in accordance with the operating characteristics of the mechanism or machine with which the fluid feeding means is to be associated.

“Still another object of my invention is to provide a fluid feeding means of simple, yet sturdy construction which may be employed independently of any actuating mechanism for diverting a predetermined volume of displaced fluid and which may also be rendered inoperative by simply shifting a valve, which shifting may be accomplished manually or automatically as the occasion may demand.

“Still another object is to provide in combination with a fluid system in which fluid is displaced by a multi-plunger pump or the like, a fluid diverting device which includes a restricted orifice or bleed passage and a valve which is operative in response to the movement of a machine element to control the functioning of said bleed passage.

‡ * * * 4s ‡

“The invention about to be described includes control mechanism for automatically controlling the distribution of fluid and this mechanism includes the device designated generally by the numeral 10. In order to clearly illustrate

the

practical application of the invention I have shown this control or compensating mechanism 10 in operative association with a fluid displacement system which includes a high pressure displacement rotary pump 12, a low pressure gear pump 14, a main control valve 16 and a tool actuating mechanism 18.

*****

“The control mechanism 10 includes a suitable housing 38 which housing is provided with a passage 40 disposed at substantially right angles with respect to a

*289

passage 42. Communication between the passage 40 and the passage 42 is established by means of a restricted orifice or bleed passage 44 and the size of this orifice is controlled by means of a suitable needle valve 46. The passage 40 is connected by means of a pipe line 48 to the pipe line 24 as clearly shown in Figure 1 and the passage 42 is connected by means of a pipe line 50 to a pipe line 52.' This pipe line 52 is connected to the low pressure side of the fluid circuit and a back pressure valve 54 is interposed between the pipe line 52 and a pipe line 56 which communicates with a reservoir 58.

% % %

if: ‡

“For the purpose of understanding the practical . application of this control mechanism 10, assume that fluid is being displaced from the high pressure pump 12 at a substantially constant rate and that the main valve 22 is so positioned as to cause said fluid to be delivered to the actuating mechanism 18. Assume further that during the initial stroke of the tool carriage 34, the tool 60 carried thereby during its initial movement, removes practically no metal from the work piece and that as the tool advances, the cutting action of the tool is increased. That is to say, more metal is removed as the tool advances. It will be seen that as a heavier cut is made by the tool, or in other words, as said tool is subjected to greater resistance, there will be a tendency to set up increased pressure in the cylinder 32 of the actuating mechanism. This also tends to Increase the velocity of the fluid which is by-passed through the pipe line 48 and hence through the bleeding or restricted orifice 44. By diverting a portion of the displaced fluid in this manner it will be apparent that less fluid per unit of time is dispatched to the cylinder, thereby decreasing the speed of travel of the piston 30 and consequently the tool 60. Thus, by means of the control mechanism 10, a predetermined portion of the volume of fluid displaced by the plunger pump is diverted through the bleed passage and thence through the pipe line 50.

* * * * *

“As set forth above, my improved control mechanism 10 may be placed within any fluid system and will automatically function to divert a predetermined portion of displaced fluid without employing auxiliary operating devices. However, in some instances it may be desirable to temporarily render the control mechanism functionally inoperative during the actuation of a machine tool. In such instances I employ a valve 62 which is reciprocably mounted within the housing 38. This valve 62 is formed with an annular passage 64 which, permits fluid introduced from the pipe line 48 to be delivered to the bleed passage 44 when said valve occupies the position shown in Figure 1. The upper portion of the valve 62 is formed with a shank 66 and slidable along the upper extremity of this shank is a cam bar 68 in the particular disclosure which is carried by the tool carriage 34. Fluid introduced within the passage 40 is by-passed through a restricted passage 70 which communicates at its lower extremity with a chamber 72 at the lower end of the valve 62. The pressure of the fluid within the chamber 72 is sufficient to constantly urge said valve upwardly into engagement with the surface of the cam bar 68 as shown in Figure 1. As the cam bar moves to the left in response to the movement of the carriage mechanism 34, a depressed portion 74 of the cam permits the valve 62 to be urged upwardly a sufficient distance so as to, prevent the diversion of fluid through the restricted or bleed passage 44. The arrangement of the valve and cam mechanism just described is applicable in instances where it is desirable to reduce the speed of travel of the tool for a certain portion of its stroke and then to increase the speed of travel thereof.

* iji ^ * *

“From the foregoing description it will be apparent that my invention contenu plates a hydraulic system of control wherein the pressure of the propelling fluid in the actuator, namely, the fluid within the cylinder 32 which propels the piston 30, is maintained. In other words, even though the actuator be. subjected to variations in load, the propelling effectiveness of the fluid in the actuator is not impaired. This system of control should be clearly distinguished from systems commonly referred to as ‘bypass’ systems, wherein a restricted orifice interposed between, the source of supply or pump and the actuator is brought into play for the purpose of decreasing the rate at which the fluid is delivered to the actuator. The excess fluid under such circumstances is returned, through resilient valve means at a pressure which is greater than the pressure of the. propelling fluid in the actuator. In such

*290

systems of control, the effective propelling pressure of the propelling fluid in the actuator is decreased when the restricted orifice is rendered functionally operative.”

The diagram shown in Figure 10 will aid in an understanding of the patentee’s statements in his patent. The diagram il-

lustrates the principle of fluid control by diversion for regulating the speed of an actuator during feed in a volumetric hydraulic system as disclosed in Svenson 1,986,862. Of the parts referred to in the foregoing extracts from the patent, three are not specifically shown in the diagram in Figure 10. They are the main valve 22 which is contained in 16 and the tool carriage 34 and the tool 60. The tool carriage is moved by the actuator piston 30 and the tool is carried by the tool carriage.

The claims in suit are the following:

“1. In combination with a fluid transmission system including pumping means for displacing fluid, a propelling mechanism and a main fluid control valve operatively connected therewith for controling the starting and reversing of said propelling mechanism, control mechanism operable independently of said main valve and having an orifice for diverting a predetermined portion of the displaced fluid in response to an increase in resistance experienced by the propelling mechanism during at least the forward movement thereof without impairing the propelling power of said propelling mechanism.

“2. In combination with a fluid transmission system including pumping means for displacing fluid, a propelling mechanism and a main fluid control valve operatively connected therewith for controlling the starting and reversing of said propelling mechanism, control mechanism operable independently of said main valve for diverting a portion of the displaced fluid when the load varies during at least the forward movement of said propelling mechanism without reducing the pressure of the propelling fluid in the propelling 'mechanism.

“3. In combination with a fluid transmission system including pumping means for displacing fluid, a propelling mechanism and a main fluid control valve operatively connected therewith for controlling the starting and reversing of said propelling mechanism, control mechanism operable independently of said- main valve and having a bleed passage for automatically controlling the diversion of displaced fluid in accordance with the resistance experienced by the propelling mechanism without decreasing the pressure of the propelling fluid in said propelling mechanism.

“4. In combination with a fluid transmission system including pumping means for displacing fluid, a propelling mechanism and a main fluid control valve operatively connected therewith for controlling the starting and reversing of said propelling mechanism, control mechanism operable independently of said main valve and having a bleed passage for automatically controlling the diversion of displaced fluid in accordance with the resistance experienced by the propelling mechanism without decreasing the pressure of the propelling fluid in said propelling mechanism, and means for controlling the amount of fluid diverted through said bleed passage.

“5. In combination with a fluid transmission system including pumping means for displacing fluid, a propelling mechanism and a main fluid control valve operatively connected therewith for controlling the starting and reversing of said propelling mechanism,

control

mechanism for diverting a portion of the displaced fluid when

*291

the load varies without reducing the pressure of the propelling fluid in said propelling mechanism, and means operable independently of said main valve for rendering the control mechanism functionally inoperative.

“6.

In combination with a fluid transmission system including pumping means for displacing fluid, a propelling mechanism and a main fluid control valve operatively connected therewith for controlling the delivery of said fluid to said propelling mechanism, control mechanism for diverting a portion of the displaced fluid during at least the forward movement of said propelling mechanism without reducing the pressure of the propelling fluid in said propelling mechanism, and a valve means for controlling the passage of fluid through said control mechanism.

. Jji # iji ifc

! “9. In combination with’ a fluid transmission system including pumping means for displacing fluid, a main reversing valve operatively connected therewith and a fluid actuated mechanism operatively connected with said valve, fluid control mechanism including means for diverting a portion of the fluid displaced by said pumping means at a pressure experienced in said fluid actuated mechanism, and means operable in response to the actuation of said fluid actuated mechanism during at least the forward movement thereof for controlling the passage of fluid through said diverting means.

“10. In combination with a fluid transmission system including pumping means for displacing fluid, a main reversing valve mechanism operatively connected with said pumping means and a fluid actuated mechanism operatively connected with said valve, fluid control mechanism for diverting a portion of the fluid displaced by said pumping means without reducing the propelling effectiveness of the propelling fluid upon said fluid actuated mechanism, and valve mechanism operable in response to the actuation of said fluid actuated means during at least the forward movement thereof for controlling the passage of fluid through said fluid control device.

“11. In combination with a fluid transmission system including pumping means for displacing fluid, a main reversing valve mechanism operatively connected therewith and a fluid actuated mechanism operatively connected with said valve, a control device having a restricted orifice through which a portion of the fluid displaced by said pumping means may be diverted at a pressure experienced in said fluid actuated mechanism, and a valve mechanism operable in response to the actuation of said fluid actuated mechanism during at least the forward movement thereof for controlling the operative functioning of said restricted orifice.

“12. In combination with a fluid transmission system including pumping means’ for displacing fluid, a main fluid dispatching valve, a passageway connecting said fluid dispatching valve and said pumping means, a fluid actuated mechanism operatively connected with said valve, said-mechanism including a piston within a cylinder, and fluid control mechanism including a device for diverting a portion of the fluid displaced by said pumping means during at least the forward movement of said fluid actuated mechanism without reducing the propelling power of fluid in said fluid actuated mechanism, said device being connected at a point intermediate the pumping means and -the valve, said valve being shiftable for starting and reversing said fluid actuated mechanism.

“13. In combination with fluid actuated mechanisms for propelling machine' elements and the like and means for supplying fluid to said mechanisms, a bleed valve mechanism for diverting a predetermined portion of the fluid directed to the fluid actuated mechanisms in response to an increase in resistance experienced by the elements propelled by said mechanism, and valve means operable in timed relation with the travel of said fluid actuated mechanisms for controlling the starting, stopping, and direction of movement thereof.

❖ * # * *

“IS, In combination with a fluid circuit having a high pressure pump, means for controlling the fluid displaced by said pump, said means including a restricted orifice through which a governed amount of fluid may be diverted from the portion of the fluid circuit connected with the discharge side of said high pressure pump without decreasing the pressure of the propelling fluid discharged by said pump, a hydraulic actuator including a piston within a cylinder, and valve mechanism for controlling the starting and reversal of said actuator, said fluid diverting means being adapted to function during the for

*292

ward movement of said actuator at a pressure experienced in said hydraulic actuator.

“16. In combination with a fluid circuit having a high pressure pump, means for controlling the fluid displaced by said pump, said means including an orifice

through

which a governed amount of fluid may be diverted from the portion of the fluid circuit connected with the discharge side of said pump without decreasing pressure of the propelling fluid displaced by said pump, means for controlling the functioning of said fluid diverting means, a hydraulic actuator, and a valve operable independently of said controlling means for governing the starting and reversal of said actuator, said fluid diverting means being adapted to function during the forward movement of said actuator at the propelling pressure experienced in said hydraulic actuator.

5k * * * *

“19. In a hydraulic actuator system, a shiftable supporting machine element, a hydraulic actuator movable in forward and reverse directions for propelling said element including a piston within a cylinder, pumping means, fluid conducting means connecting said pumping means with said actuator, fluid diverting means associated with said conducting means for diverting fluid therefrom at the propelling pressure experienced in said actuator when the machine element is subjected to increase in load during its movement in a forward direction, and means for controlling the functioning of said fluid diverting means in timed relation with respect to the forward shifting of said element.

“20. In a hydraulic actuator system, a shiftable supporting machine element, a hydraulic actuator movable in forward and reverse directions for propelling said element including a piston within a cylinder, fluid conducting means connected with said actuator, fluid diverting means associated with said conducting means for diverting fluid therefrom at the propelling pressure experienced in said actuator when the machine element is subjected to increase in load during the forward movement of said actuator, pumping means for supplying fluid, means for controlling the functioning of said fluid diverting means in timed relation with respect to the shifting of said machine element, and a control valve mechanism capable of being shifted to at least three positions, namely, forward, reverse, and neutral, for controlling said hydraulic actuator.

“21. In a hydraulic actuator system, a shiftable machine element, a hydraulic actuator movable in forward and reverse directions for propelling said element including a piston within a cylinder, fluid conducting means connected with said actuator, fluid diverting means associated with said conducting means for diverting fluid therefrom when the machine element is subjected to increase in load during the forward movement of said actuator, pumping means for supplying fluid, means for controlling the functioning of said fluid diverting means in timed relation with respect to the shifting of said machine element, and a control valve mechanism capable of being shifted to at least three positions, namely, forward, reverse, and neutral, for controlling said hydraulic actuator, said control valve mechanism in its neutral position being adapted to circulate fluid in the system and thereby render the pump functionally inoperative for propelling purposes.

“22. In a hydraulic actuator system, a shiftable machine element, a hydraulic actuator movable in forward and reverse directions for propelling said element including a piston within a cylinder, fluid conducting means connected with said actuator, fluid diverting means associated with said conducting means for diverting fluid therefrom at the propelling pressure experienced in said actuator when the machine element is subjected to increase in load during the forward movement of said actuator without impairing the propelling effectiveness of the propelling fluid in said actuator, pumping means for supplying fluid, means adapted to be automatically engaged by the structure of said shiftable machine element for controlling the operative functioning of said fluid diverting means and valve means for controlling the direction of movement of said hydraulic actuator.

“23. In a hydraulic actuator system, a shiftable machine element, a hydraulic actuator for propelling said element including a piston within a cylinder, fluid conducting means connected with said actuator, fluid diverting means associated with said conducting means for diverting fluid therefrom when the machine element is subjected to increase in load, pumping means for supplying fluid, valve means for

*293

controlling the direction of movement of said shiftable machine element, and hydraulically shiftable means for controlling the functioning of said fluid diverting means in timed relation with respect to the shifting of said machine element.

“24. In combination with a fluid transmission system including pumping means for displacing fluid, a fluid dispatching valve operatively connected therewith and a fluid actuated mechanism operatively connected with said valve, a fluid control device for diverting a portion of the fluid displaced by said pumping means, means operable in response to the actuation of said fluid actuated mechanism for controlling the passage of fluid through said fluid control device, and a second pumping mechanism for delivering fluid to said actuator, said valve being constructed and arranged whereby fluid from only one of the pumps is employed for propelling purposes when said control mechanism is functionally operable.

* * * * *

“26. In a hydraulic actuator system, a shiftable machine element, a hydraulic actuator movable in forward and reverse directions for propelling said element and including a piston within a cylinder, fluid conducting means connected with said actuator, fluid diverting means associated with said conducting means for diverting fluid therefrom at the propelling pressure of the propelling fluid in said actuator when the machine element is subjected to increase in load during the forward movement of said actuator, pumping means for supplying fluid, means for controlling the functioning of said fluid diverting means in timed relation with respect to the shifting of said machine element, and a control valve mechanism capable of being shifted to at least three positions, namely, forward, reverse, and neutral, for controlling said hydraulic actuator.

“27. In a hydraulic actuator system, a plurality of shiftable supporting machine elements, a hydraulic actuator coupled with each element for moving said element in forward and reverse directions, each of said actuators including a piston within a cylinder, fluid conducting means connected with said actuators, fluid diverting means associated with said fluid conducting means for diverting fluid therefrom at the propelling pressure experienced in said actuators when the machine elements are subjécted to increase in load during the forward movement thereof without impairing the propelling effectiveness of the propelling fluid in said actuators, pumping means for supplying fluid means adapted to be automatically engaged by the structure of at least one of said shiftable machine' elements for controlling the operative functioning of said fluid diverting means, and valve means for controlling the direction and movement of said actuators.

“28. In a hydraulic actuator system, a plurality of shiftable supporting machine elements, a hydraulic actuator connected with each of said elements, each of said actuators including a cylinder and piston construction, fluid conducting means connected with said actuators, fluid diverting means associated with said fluid conducting means for diverting fluid therefrom when the machine elements are subjected to increase in load, pumping means for supplying fluid, valve means for controlling the direction of movement of said actuators, and hydraulically shiftable means for controlling the functioning of said fluid diverting means in timed relation with respect to the shifting of at least one of said machine elements.”

The plaintiffs contend that the claims in suit are valid and that they are infringed by the machines next enumerated. Defendants’ First Senior Hydraulic System is said to infringe Claims 1, 2, 3, 4, 5, 6, 9, 10, 11, 12, 15, 16, 19, 20, 22, 23 and 26. Defendants’ Second Senior Hydraulic System is said to infringe Claims 6, 9, 10, 11, 12, 15, 19, 20, 22, 23 and 26. Defendants’ Junior Hydraulic System is said to infringe Claims 6, 9, 10, 11, 19, 22 and 23. Defendants’ Oldsmobile Boring Machine is said to infringe Claims 6, 9, 10, 11, 12, 15, 19, 20, 21, 22, 24 and 26. Defendants’ 2-Way 8-Station Hand Index Machine is said to infringe Claims 6, 9, 10, 11, 12, 15, 19, 20, 21, 22 and 26. Defendants’ Frankford Arsenal Machine is said to infringe Claims 6, 9, 10, 11, 12, 13, 15, 19, 20, 22, 23, 26, 27 and 28. Defendants’ Large Size Self-Contained Hydraulic

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