Appendix — Swan Carburetor Co. v. Chrysler Corp.

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Report of the Special Master 1101*

APPENDIX.

Report of the Special Master

In the Case of Swan v. Reeke-Nash,

Northern District of Ohio,

Eastern Division, Equity No. 2047.

REPORT OF WM. B. WOODS, SPECIAL MASTER.

(Filed August 21, 1933.)

To the Honorable Paul Jones, S. HW. West and Geo, P.

Hahn, Judges of the District Court of the United

States, For the Northern District of Ohio, Eastern

Division:

Pursuant to an order made and entered in this

cause on May 26, 1932, at a term of this Court held in the

City of Cleveland, in said District, the undersigned, Wm.

B. Woods, Special Master in Chancery, has proceeded to

take and hear the evidence offered by the respective par-

ties and to report his findings and conclusions along with

his recommendations concerning the relief demanded, to

this Court; and further,

Pursuant to said order there is stipulated into this

cause by agreement of counsel, the pleadings, evidence,

proofs and exhibits, including the affidavits, testimony,

exhibits, and substantially all other matters heretofore

*The boldface page headings and folios in this Report of

the Special Master refer to the pagination of the Record in the

case of Swan v. Reeke-Nash.

bo

1102 Report of the Special Master

filed, taken, submitted, offered or adduced in the case of

The Swan Carburetor Company v. General Motors Cor-

poration, at Law No. 14,169 in this Court, and there is in-

eluded herein such parts of said record as the parties

hereto have offered for the record in this case; therefore,

I, Wm. B. Woods, as Special Master in said cause,

do respectfully report that I have proceeded to investi-

gate the matters so referred to me, that I have been at-

tended by the parties and their respective counsel at my

office at 1214 Terminal Tower Building, Cleveland, Ohio;

that pursuant to said order I proceeded to hear witnesses

and counsel to receive and consider testimony, affidavits,

exhibits and other proof, including that heretofore filed,

submitted, taken, adduced and stipulated into this case

as aforesaid or otherwise, to examine and consider plead-

ings, proof, briefs, arguments, and any and all other

papers or matters relating to the questions involved and

the issues raised herein, to rule on the admissibility of

evidence, but have preserved such evidence as counsel

has demanded, which the Master deemed inadmissible, to-

gether with his ruling thereon for the ultimate and final

ruling by the Court, to observe such tests and experi-

ments as the parties performed or caused to be per-

formed, and to hold the sessions within the District and

Division of this Court, at such time as directed, and thus

to hear and consider all the proof and argument pertinent

to the issues of law and fact arising in the cause. Such

hearings have been had; arguments of counsel have been

had, briefs of counsel have been filed, together with sug-

gested findings of fact and conclusions of law, and upon

consideration of the same, I find and report as follows:

PLEADINGS.

This is a suit for infringement filed November 3,

1926, on Swan Patent No. 1,536,044, for ‘‘method and

means to facilitate distribution of fuel in internal com-

bustion engines.’’ A supplemental bill of complaint was

filed September 23, 1927, alleging infringement of the

Swan Patent No. 1,636,721, for a ‘‘manifold.’’

Although this was the second patent to issue, it was

issued on an application filed September 17, 1921, Serial

No. 501,314, of which the application Serial No. 747,991

filed November 5, 1924, for the first Swan Patent, was a

continuation in part. The pleadings also include an-

swers, amendment to answers, motions and stipulations.

tee eee tte att a eee en hee Soe ramen CG 0 CONDE Sot Eber abs eter ec

Report of the Special Master 1103

The alleged infringements are the manifolds made by

The Nash Motors Company and sold by the defendants in

the year 1926, and were used in Nash automobiles known

as Special Six, Advance Six and the Ajax.

MANIFOLDS, SUBJECT MATTER OF THE SUIT.

The subject of the invention involved in this suit is

an intake manifold for use in an automobile. The intake

manifold is a pipe connecting the carburetor with the

eylinders of a motor. The function of the carburetor is

to mix the liquid fuel with air by means of its mecha-

nism, which mixture must be conveyed to the cylinders of

the engine wherein the mixture is to be exploded. This

manifold pipe is connected at one end to the outlet from

the carburetor as a single pipe, which part of the mani-

fold is ealled a ‘‘riser,’’ and this ‘‘riser’’ enters a trans-

verse pipe called a ‘‘header,’’ and this ‘*header’’ divides

into the number of pipes sufficient to connect with all the

ports of the cylinders. These pipes from the ‘‘header”’

to the cylinders are called ‘‘branches.’? Sometimes one

‘branch’? feeds one cylinder with fuel, sometimes two

cylinders, and when a single branch feeds two eylinder

ports they are said to be ‘‘siamesed.’’ In some manifolds

there are branches siamesed and another branch or

branches for a single cylinder.

The fuel mixed with air is drawn by the suction of

the cylinders out of the carburetor through the riser, the

header and the branches into the cylinders. The products

of combustion caused by explosions in the cylinders pass

into an ‘outlet or exhaust manifold’? and are usually

-conveved in a hot condition around or adjacent to the

‘riser’? of the inlet manifold so as to heat it or to form

a “hot spot.”’

The Swan Patents describe the form of intake mani-

fold which is sometimes known as a ‘‘T’’ manifold of

rectangular or square cross-section. As used herein, a

“1? manifold is one in which there is a vertical riser

leading from the carburetor to the longitudinal header

of the manifold. In this riser there is the usual butterfly

throttle valve. At the juncture of the riser and the

header the forward and rear branches of the header and

riser form the letter T. That portion of the manifold

which is at the top of the riser and from which there are

three passages, is referred to as the ‘*T,’’ and in the

Swan Patents this is referred io as the ‘‘distributing

zone.’’

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1104 Report of the Special Master

ISSUES.

The two General Motors cases heretofore tried con-

cerned liability on a royalty contract for the use of the

Swan patents. The entire record in case No. 14,169 is

stipulated into the record in this case and certain por-

tions of the record in the second case, No. 16,366, are also

stipulated into this record. The license there involved

was taken by the General Motors Corporation, which in-

eluded the Buick Motor Company in June, 1923, when

application for the second Swan patent was the only one

then pending in the Patent Office.

In the General Motors cases, after the Buick Com-

pany notified plaintiff in the Spring of 1924 that it in-

tended to give up the square section manifold and use a

round section manifold, the application for the first Swan

patent was filed on November 5, 1924, as a ‘*nartial con-

tinuation”’ of the application for the second patent.

The second Swan patent, No. 1,636,721, issued on the

earlier application, and its claims 5, 7 and 8 in issue being

limited to manifolds with straight ducts which change di-

rection at right angles to each other and ‘*devoid of

curves * * * in the direction of the flow of the fuel mix-

ture.’’ The defendant here asserts there is no infringe-

ment of the manifolds in issue which are circular in cross-

section and which it asserts are replete with curves. De-

fendant further asserts that if the claims are construed

to cover defendant’s manifolds they are met by the prior

art.

Defendant further asserts that until the application

for the second patent, on November 5, 1924, there had

been no claim that a round section manifold was within

the scope of the Swan’s invention.

In the second Swan application claims are made

which are asserted to be broad enough to cover a round

section manifold.

In this situation the defendant asserts that the so-

called ‘“‘Swan method”’ claimed in the first Swan Patent

which issued on the second Swan application, is a false

and mythical mode of operation. Defendant asserts that

this ‘“‘method’’ is non-existent and that the claims there-

to in the first Swan Patent are invalid.

The issues are thus resolved to this, plaintiff asserts

(1) that the Swan manifold operates like and employs the

method described in the Swan Patents, and (2) that the

Swan manifold realizes equal distribution. Both asser-

Report of the Special Master 1105

tions are denied by defendant and other items in dispute

between the parties are collateral to these main questions

in issue.

FACTS ADMITTED OR AGREED TO BY BOTH PARTIES.

(1) The plaintiff, The Swan Carburetor Company,

is and was a corporation of the State of Ohio having its

principal place of business at Cleveland, Ohio, as alleged

in the bill of complaint and the supplemental bill of com-

plaint, and is the sole owner of the entire right, title and

interest in and to the inventions and patents in suit

along with the whole right to recover for all the infringe-

ment therein complained of and to be awarded the relief

prayed for in the bill of complaint and supplemental bill

of complaint. The Swan Carburetor Company is prop-

erly the sole plaintiff here having all the right, title and

interest of every nature whatsoever which formerly rest-

ed in the joint plaintiffs named in the bill of complaint

and supplemental bill of complaint, as appearing in the

stipulation and order, plaintiff’s Ex. 5, made by refer-

ence a part hereof.

(2) The defendant, The Reeke-Nash Motors Com-

pany, is and was an Ohio corporation, and has and had a

regular and established place of business at Cleveland,

Ohio, as alleged in the bill of complaint and supplemental

bill of complaint.

(3) Both The Reeke-Nash Motors Company and The

Nash Motors Company were named as defendants in the

original and supplemental bills of complaint, the defend-

ant, The Reeke-Nash Motors Company, alone filed its

answers to the bill of complaint and the supplemental

pill of complaint. The defendant, The Nash Motor Com-

pany, was not served and made no answer to either the

original bill of complaint or the supplemental bill of com-

plaint.

(4) The manifolds charged by plaintiff to infringe

the patents in suit were all made, used and sold in con-

nection with six cylinder engines, and all comprise a

riser, header and branches, of which typical risers are

shown in plaintiff’s Ex. 50, which is by reference made a

part hereof, and of which the header and branch por-

tions, with certain integrally formed risers, are shown in

plaintiff’s documentary exhibits 40 to 46 inclusive, part

of which by corresponding numbers are also illustrated in

plaintiff’s physical exhibits 41A, 42A, 438A, 45A and 46A,

SPSTR TT TTT SEWER AIS SINT RR AE Me ROEANRNIN CRNIM

1106 Report of the Special Master

all of which by reference are made a part hereof. The

said manifolds and engines were made or ‘aused to be

made by The Nash Motors Company, knowing and in-

tending that certain quantities of them were to be used

and sold by the defendant, The Reeke-Nash Motors Com-

pany. Such manifolds and engines were used and sold

by The Reeke-Nash Motors Company in the Northern

District of Ohio, Eastern Division, prior to the filing

of the original bill of complaint and the supplemental

pill of complaint and subsequent to the issuance of the

respective patents in suit.

(5) The defense of this suit is made by the answer

and pleadings of the defendant, The Reeke-Nash Motors

Company ; and in accordance with Article VI of the con-

stitution of the National Automobile Chamber of Com-

meree, Ine. (plaintiff’s Exs. 74 and 144), and at the re-

quest of the Nash Motors Company, the said Chamber

of Commerce assumed and is carrying on and controlling

the defense of this suit, selected counsel therefor, and

has assumed the payment of all expenses of said defense ;

and said Chamber of Commerce has assumed and is

carrying on and controlling the defense of the pending

suits brought by the plaintiff on the same patents against

‘ts members, The Nash Motors Company, the Reo Motor

Car Company and the Willys-Overland Company, se-

lected counsel therefor, and has assumed the payment

of expenses of such suits.

(6) The patent in suit, No. 1,636,721, was issued

July 26, 1927, to John W. Swan on application for Let-

ters Patent in the United States, Serial No. 501,314, filed

September 17, 1921, and the patent in suit, No. 1,536,044,

issued April 28, 1925, upon an application for Letters

Patent in the United States filed by John W. Swan,

Serial No. 747,991, November 95, 1924. The later appli-

‘ation and earlier patent refer to the earlier application

and is a continuation of the earlier application as stated

in said patent.

(7) The patent in suit, No. 1,536,044, along with

its complete file wrapper and contents including the ap-

plication Serial No. 747,991, and the application Serial

No. 501,314, along with its complete file wrapper and

contents up to and including the amendment of March

3, 1927, were exhibited to the Court for the Northern

District of Ohio, Eastern Division, in the case of The

Swan Carburetor Company v. General Motors Corpora-

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Report of the Special Master 1107

tion, at Law No. 14,169, decided by Judge Westenhaver,

42 Fed. (2) 452, affirmed by the Court of Appeals (C. C.

A. 6) 44 Fed. (2) 24. Both of the patents in suit, along

with the complete file wrapper and contents of each of

them, were exhibited to the Commissioner in the case of

The Swan Carburetor Company v. General Motors, at

Law No. 16,366. In both of the foregoing cases the in-

vention or inventions and improvements disclosed and

claimed in the patents in suit were considered, and dis-

cussed by the tribunals which heard and decided the is-

sues therein raised, which appertained to the said in-

vention or improvements and said patents and appli-

vations.

(8) The issues in this case are in many instances

the same as the issues in the first General Motors case

hereinbefore referred to. The parties are represented

by the same counsel, and the major portion of the testi-

mony and exhibits submitted in the first General Motors

case would have had to be adduced and submitted again

in this ease, except for the agreement of counsel to stipu-

late such testimony and exhibits into this case as if it

had been taken here in the first instance.

(9) The Buick manifolds, plaintiff’s Exs. 6 to 11

inclusive, and including the risers and Marvel heaters

for which this plaintiff recovered royalties in the action

at Law No. 14,169 against General Motors Corporation

hereinabove referred to, are substantially identical with

defendant’s manifolds here charged to ‘infringe, plain-

tiff’s Exs. 40 to 46 inclusive and the physical exhibits

hereinabove referred to, and including the risers and

Marvel heaters, plaintiff’s Ex. 50. The Buick manifolds

including the risers were used with six cylinder engines,

as were and are all of defendant’s manifolds here

charged to infringe.

(10) The claims selected to exemplify the invention

and as the basis for the charge of infringement of the

first Swan Patent No. 1,536,044 are method claims Nos.

4,5, 8, 9 and 10, as follows:

4. A method of distributing a fuel mixture to

an engine which consists in moving the mixture in

a straight line to a zone from which it is distributed

to a plurality of engine cylinders, directing said

movement by forces “which t tend to distribute the

mixture uniformly in all directions in a plane trans-

verse to said movement, and further directing the

: 8

8 1108 Report of the Special Master

2

2 movement of the mixture by forces tending to move

4 it successively in a plurality of directions transverse

3 to the original direction, to the cylinders.

5 5. A method of distributing a fuel mixture to

& an engine which consists in moving the mixture to

a a zone through which it is distributed to a plurality

a of engine cylinders, modifying said movement by

forces tending to distribute the mixture in uniform

a character in various directions in a plane trans-

2 versely of said zone, and further subjecting the

cf movement of the mixture to forces acting to prevent

a impairment of the character of the mixture due to

3 influences created by any changes of direction be-

3 yond the zone.

; g A method of distributing a fuel mixture to

: an engine which consists in moving the mixture to a

; zone through which it is distributed to a plurality of

: engine cylinders, subjecting said movement to forees

3 acting to distribute the mixture in uniform character

* in three directions in a plane transverse to said

; movement, and further subjecting the movement of

the mixture to forces acting to prevent impairment

of the character of the mixture due to influences cre-

ated by any changes of direction beyond the zone.

9. A method of distributing a fuel mixture toa

> six-cylinder engine which includes the moving of the

E mixture to a zone through which it is distributed in

three directions in a plane transverse to said move-

ment, and subjecting said movement to forces tend-

ing to distribute charges in alternating directions

and in uniform character in all of said directions.

10. A method of distributing a fuel mixture toa

six-cylinder engine which includes the moving of the

mixture to a zone through which it is distributed in

three directions in a plane transverse to said move-

ment, subjecting said movement to forces tending to

3 distribute charges in alternating directions and in

| uniform character in all of said directions, and fur-

& ther subjecting the movement of the mixture towards

| adjacent pairs of cylinders to forces tending to qual-

F ify the charges for said pairs in substantially equal

proportions of wet mixture constituents.

E Also of the first Swan Patent are included apparatus

f claims Nos. 11, 12, 13, 20, 22 and 23, as follows:

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Report of the Special Master 1109

11. An inlet manifold comprising a distribut-

ing chamber having a single inlet conduit and :

plurality of outlet conduits, said chamber being

formed of walls the intersections of which form

straight lines.

12. In an inlet manifold, a distributing chamber

having a single inlet conduit and a plurality of out-

let conduits, said chamber being formed of walls the

intersections of which form straight lines, the inlet

conduit being at right angles with all outlet con-

duits.

13. In an inlet manifold, a distributing chamber

having a single inlet conduit and a plurality of out-

let conduits, said chamber being formed of walls the

intersections of which form straight lines, one of

said walls being opposite the inlet duct and sym-

metrically shaped and situated relative thereto, so

that entering mixture may be influenced by said wall

uniformly in all directions transversely to the en-

tering stream.

20. In an inlet manifold, a distributing cham-

ber having a single inlet conduit and three branch

conduits, one of the walls of the chamber being op-

posite the inlet duct and symmetrically formed and

situated with reference to the branch ducts so that

entering fluid may be influenced by said wall uni-

formly in all directions transverse to the entering

stream, and the branch conduits being of substan-

tially uniform shape throughout and at any turn

thereof presenting similar walls shaped and situated

so that passing mixture may be influenced thereby in

a manner to distribute equally to eylinders to which

said turns may lead.

22. In combination with a six cylinder engine, a

manifold comprising a distributing chamber having

an intake and three outlets each leading to a pair

of cylinders, the wall of each leading to a pair of

evlinders, the wall of the chamber opposite the in-

take being symmetrically formed and situated with

reference to the outlets to uniformly intluence enter-

ing mixture and cause the same to distribute in uni-

form character in the successive directions deter-

mined by the outlets and induction cycles of the

engine.

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1110 Report of the Special Master

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93. In combination with a six cylinder engine,

aati

@ a manifold comprising a distributing chamber hav-

; ing an intake and outlet branches, the wall of the

Fi chamber opposite the intake being symmetrically

| formed and situated with reference to the outlets to

3 uniformly influence entering mixture and cause the

% same to distribute in uniform character in the di-

4 rections determined by the outlets and induction

4 eycles of the engine, the outlet with the intakes of

; pairs of cylinders, and the angular formations being

2 shaped and situated so that passing mixture will be

. influenced thereby in a manner tending to distribute

equally to the evlinders of the pair to which the

branches respectively relate.

Of the second Swan Patent, No. 1,636,721, there are

included apparatus claims Nos. 95, 7 and 8, as follows:

_ 5. Ina manifold for a six-cylinder internal com-

: bustion engine, the combination with a main mani-

fold duct, level throughout its length, a straight or

& substantially straight riser duct connecting the ear-

: buretor with the central part of the main duct and

‘ being at right angles, or substantially at right angles

: thereto, the interior or the connection of the riser

to the main duct being at a substantially uniformly

sharp angle all around the connection, three second-

ary ducts each for connecting the main duct to two of

the engine cylinders, the middle secondary duct being

connected to the main duct at the junction of the

riser with the main duct and at right angles, or sub-

stantially right angles thereto, a distributing zone

with a non-reeessed roof being formed at the junction

of the main duct, the riser and the middle secondary

duct, the two other secondary ducts being connected

to the main duct at the ends thereof, all of said sec-

ondary duets being parallel, or substantially paral-

lel to each other and perpendicular or substantially

: perpendicular to the main duet, on the interior the

3 end secondary duets making a right angle connection

with the main duct at the sides nearest the middle

and the middle secondary duct making a sharp con-

nection with the interior of the main duct, and all of

TOAD vic OS TRS at

said ducts and riser being devoid of curves and

recesses in the direction of flow of the fuel mixture.

q 7. In a manifold for a_ six-cylinder internal

4 combustion engine, the combination with a main

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Report of the Special Master

1]

1111

manifold duct, level throughout its length, a straight

or substantially straight riser duct connecting the

carburetor with the central part of the main duct

and being at right angles, or substantially at right

angles thereto, the interior of the connection of the

riser to the main duct being at a substantially uni-

formly sharp angle all around the connection, three

secondary ducts each for connecting the main duet

to two of the engine cylinders, the middle duet with

the two middle cylinders and each end duct to the

two nearest end eylinders, the middle secondary duct

being connected to the main duct at the junction of

the riser with the main duct and at right angles, or

substantially right angles thereto, a distributing

vone with a roof having a eurved portion being

formed at the junction of the main duet, the riser

and the middle secondary duct, the two other sec

ondary duets being connected to the main duct at the

ends thereof, all of said secondary duets being

parallel or substantially parallel to each other and

perpendicular or substantially perpendicular to the

main duct on the interior, each of the end secondary

ducts making a right angle connection with the main

duct at the sides nearest the middle duct and the

middle secondary duct making a sharp connection

with the interior of the main duct, and all of said

ducts and riser being devoid of curves and recesses

in the direction of flow of the fuel mixture.

8. In a manifold for a_ six-cylinder internal

combustion engine, the combination with a main

manifold duet, level throughout its length, a straight

or substantially straight riser duct connecting the

carburetor with the central part of the main duet

and being at right angles, or substantially at right

angles thereto, the interior of the connection of the

riser to the main duct being at a substantially uni-

formly sharp angle all around the connection, three

secondary duets, each for connecting the main duet

to two of the engine cylinders, the middle duct with

the two middle eylinders and each end duct to the

two nearest end cylinders, the middle secondary

duct being connected to the main duct at the june-

tion of the riser with the main duct, and at right

angles, or substantially right angies thereto, a dis-

tributing zone with a roof curved on a greater radius

than the adjacent secondary duct and formed at the

pee TAA AR RRO AOE

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1112 Report of the Special Master

junction of the main duct, the riser and the middle

secondary duct, the two other secondary ducts being

connected to the main duct at the ends thereof,

all of said secondary ducts being parallel, or sub-

stantially parallel to each other and perpendicular

or substantially perpendicular to the main duct

on the interior, each of the end secondary ducts

making a right angle connection with the main

duct at the side nearest the middle duct and the mid-

dle secondary duct making a sharp connection with

the interior of the main duct, and all of said ducts

and riser being devoid of curves and recesses in the

direction of flow of the fuel mixture.

FINDINGS OF FACT.

(1) The first Swan patent issued April 28, 1925,

and the second, July 25, 1927; the suit on the first patent

was begun in November, 1926, and upon the second patent

by supplemental bill of complaint filed in September,

1927. The infringements alleged herein are for Nash

manifolds made in 1925 and 1926 on Nash cars sold by

defendant. In April, 1931, plaintiff brought suit against

the Nash Company, and at about the same time the Reo

Motor Company was sued for alleged infringements be-

gun in January, 1927, and the Willys-( verland Company

for alleged infringements begun in 1925. The Dodge

Brothers Company is claimed to have infringed in 1928

but it has not been sued nor has the Chrysler Company,

its successor. The present case is the only infringement

suit, strictly speaking, which has been brought to trial

where the validity of the Swan patents are in issue.

The alleged infringements began as early as July, 1924,

although technical infringement can only start with the

issue of the first patent in April, 1925, and the trial of

this case began in September, 1982.

(2) Substantially all of the prior art testimony of-

fered by the defendant in this case is stipulated into this

record trom the record of one or the other of the General

Motors cases hereinbefore referred to, and all of the

prior art exhibited by defendant here, except defend-

ant’s Ex. 384, a Murray & Tregurtha manifold assembly,

was exhibited to one or the other of the tribunals which

heard and decided the General Motors cases hereinbefore

referred to.

(3) In and about the year 1917 the gasoline fur-

nished for the market became or was generally becom-

_—

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Report of the Special Master 1113

ing so low in volatility that manifolds for internal com-

bustion engines were called upon to distribute wet fuel

mixtures, which included particles of unvaporized or

liquid fuel, from the carburetor to the several cylinders

of the engine. These changing characteristics of the

gasoline on the market as of about this time brought

about a serious new problem, to-wit, the equal distribu-

tion of the wet or unvaporized constituents of the fuel

mixture in its movement from the carburetor to the sev-

eral engine cylinders. With the gasoline on the market

since about 1917, the fuel mixture as it leaves the carbu-

retor contains much liquid gasoline.

(4) The problem of distributing wet fuel mixtures

from the carburetor to the several engine cylinders was

complicated by the vast difference between the density

and volume of the liquid gasoline as compared with the

air and vaporized gas in the mixture, and further eom-

plicated by the inertia of the liquid particles and the

effect of centrifugal force acting to separate the heavier

liquid particles from the vastly lighter air and gas con-

stituents of the mixture; all of which tended to distribute

different quantities of mixture including the liquid con-

stituents to the various cylinders of the engine. The

complications were increasingly aggravated as the num-

ber of cylinders of the engine was increased, as for ex-

ample, from three to six cylinders. This problem was

difficult and its solution was long sought by many eminent

and distinguished engineers throughout the automotive

industry. The existence and difficulties of the problem

was recognized and known to exist long before Swan en-

tered the field. This problem demanded solution and it

is conceded here that whoever solved. the problem

achieved much and made an important invention.

(9) No prior art manifold exhibited by defendant

here effected or accomplished equal distribution of wet

fuel mixtures, and no prior art manifold has the mode

of operation of the Swan patented manifold and method,

as described in the patents in suit. The Murray &

Tregurtha prior art manifold, as operated on a three

evlinder engine with automatie intake valves and with

the riser and carburetor shown in defendant’s Ex. 381,

came nearer to getting equal distribution and operating

like Swan than anything else in the prior art, but this

combination of riser, header, branches and engine was

different from defendant’s and the patented one and

Was demonstrated by defendant, by the use of a header

<

a

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1114 Report of the Special Master

made of glass, to fail to get equal distribution or realize

the mode of operation described in the Swan Patents in

suit. Defendant made no test or demonstration of the

operation of any other prior art manifold or method.

(6) The island type manifold similar to plaintiff’s

Ex. 48 is and was a prior art manifold in extensive com-

mercial use at and prior to the time when the first Swan

application for the patents in suit was filed and the

island type manifold was used on all six cylinder engines

by Buick Motor Company and The Nash Motors Com-

pany when Swan or plaintiff first exhibited and demon-

strated the Swan patented manifold and method to them.

The island type manifold has been generally discarded

since Swan’s entry into the field, and was abandoned

by both Buick and Nash; The Nash Motors Company

changing directly from the island type manifold to the

manifolds herein charged to infringe.

(7) For about seven years prior to July, 1923, both

The Nash Motors Company and Buick Motor Company

had used island type intake manifolds substantially like

plaintiff’s Ex. 48, on their six cylinder engines. Dur-

ing this period the engineers of The Nash Motors Com-

pany had been seeking to solve the fuel distribution prob-

lem by making improvements in the island type mani-

fold, without departing from the general design thereof.

In about July, 1923, the Buick Motor Company, acting

under license from this plaintiff to General Motors Cor-

poration, adopted the Swan manifold in its preferred

form, particularly as to the cross-section of the header,

and paid substantial sums in royalties to this plaintiff

for the use of the Swan invention as embodied and car-

ried out in that manifold. At about the same time, to-

wit, in the summer of 1923, while The Nash Motors Com-

pany was continuing to make, use and sell the island type

manifold, representatives of this plaintiff went to The

Nash Motors Company and took with them and demon-

strated to the Nash engineers and representatives a pre-

ferred form of the Swan patented manifold, similar to

the manifold then commercially adopted by the Buick

Motor Company. This manifold and others of similar

construction, differing in size and ‘‘tailored’’ to fit va-

rious Nash engines, was demonstrated, tested and ex-

hibited to the Nash engineers and_ representatives

throughout the major portion of the year between July,

1923, and July, 1924. In this same period a manifold

of the preferred form of the Swan patented construction

15

Report of the Special Master 1115

was exhibited to The Reeke-Nash Motors Company and

installed on the personal car of Mr. Alfred Reeke, Presi-

dent of that company. Various representatives of this

plaintiff spent many weeks and months during this pe-

riod demonstrating, testing and exhibiting this manifold

to The Nash Motors Company, its representatives and

engineers. Many comparative tests were made between

the Swan patented manifold and the island type mani-

fold in the presence of plaintiff’s representatives and the

representatives of The Nash Motors Company. These

tests included laboratory tests and various and exten-

sive road tests, comprising such standard and accepted

tests as acceleration, hill climbing, economy and general

performance. The Swan patented manifold in its pre-

ferred form, as tested and exhibited in this period, was

demonstrated to be a substantial and distinet improve-

ment over the island type manifold.

(8) In about July, 1924, Buick Motor Company

modified its intake manifold construction from the square

preferred form of Swan’s manifold to a rounded form

like plaintiff’s Exs. 6, 7, 9 and 10 here. At almost ex-

actly the same time The Nash Motors Company aban-

doned the island type manifold, to which it never re-

turned, and adopted on all of its six cylinder engines

manifolds like plaintiff’s Exs. 45, 45A, 46 and 46A. All

of these manifolds, both Buick and Nash, embodied

curved or partly curved recessed roofs or domes in the

header opposite the riser. Later the Buick Motor Com-

pany again modified its construction by eliminating the

recessed portion of the roof of the header, plaintiff’s

Exs. 8 and 11, and at about the same time The Nash

Motors Company also modified its manifold construe-

tion in substantially the same way. (See plaintiff’s Exs.

40, 45, 45A and 44.) In both the first and second Gen-

eral Motors cases the Buick manifolds, plaintiff’s Exs.

6 to 11 inclusive, were held to come within the license

contract between this plaintiff and General Motors Cor-

poration, by virtue of the findings in both of those cases

that such manifolds were the equivalent of the square or

preferred form of the Swan patented manifold, and all

of such manifolds embodied and carried out the Swan

invention as disclosed in the original Swan application

and as disclosed and claimed in such of the Swan patents

in suit here as were before the tribunals which heard and

decided those eases, and that all of those Buick mani-

folds were covered by some or all of the claims of at

least patent No. 1,536,044 here in suit.

‘ 7a

1116 Report of the Special Master

(9) There has been extensive litigation involving

the Swan patents in suit and the inventions disclosed

and claimed therein, and the claims or some of them of

the patent No. 1,536,044 in suit have been sought by

others by interference proceedings in the United States

Patent Office.

(10) The Swan patented manifold as deseribed and

claimed in the patents in suit has gone into extensive

commercial use, both in the square or preferred form and

in the round and hexagonal form, and many licenses

under the patents in suit have been granted by plaintiff

to various automobile manufacturers and engine manu-

facturers. The several licensees having license under

the patents in suit voluntarily paid royalties on more

than 800,000 manifolds, including those of square cross-

section, according to the preferred form of the patented

manifold, as well as manifolds of rounded and hexagonal

cross-section. In the first General Motors case, to which

reference has previously been made, royalties were paid

by judgment of the United States District Court for the

Northern District of Ohio on more than 500,000 mani-

folds manufactured and sold by the Buick Motor Com-

pany, plaintiff’s Exs. 9, 10 and 11 here.

(11) The method invented by John W. Swan and

patented in patent No. 1,536,044 in suit was based upon a

new and original principle of operation, was disclosed in

the original Swan application, Serial No. 501,314, or was

so sufficiently set forth or suggested in that application

as to constitute a sufficient basis for amendment to sup-

port the method claims 4, 5, 8, 9 and 10 of said patent.

The said method described in said patent and applications

and claimed in the claims of said patent, is carried out

and practiced in the preferred form of the Swan pat-

ented manifold and in equivalent forms made in accord-

ance with the disclosure and teaching of the patents in

suit. Among the results achieved by the practice of the

Swan patented method, there is realized an equal or sub-

stantially equal distribution of fuel mixture, including

the liquid particles or constituents of the mixture, to the

several engine cylinders along with other and resultant

advantages.

(12) Each of defendant’s manifolds here charged

to infringe, illustrated in plaintiff’s Exs. 40 to 46 inelu-

sive and 50, when mounted upon and operated with in-

ternal combustion engines such as the Nash engines,

with which such manifolds were operated, embody the

17

Report of the Special Master 1117

aforesaid new and original principle of operation in-

troduced by Swan and accomplished and carry out the

said Swan patented method of fuel distribution in the

manner taught in the patents in suit and as defined and

claimed in claims 4, 5, 8, 9 and 10 of the Swan patent No.

1,536,044 in suit. In each of said defendant’s manifolds

there is realized and achieved or substantially realized

and achieved the results and advantages peculiar to the

Swan patented method including the result of equal or

substantially equal fuel distribution. If any differences

exist between the method employed in any of defendant’s

manifolds here charged to infringe and the patented

method, such differences are merely a matter of degree

and are immaterial.

(13) Nowhere does the prior art, exhibited by de-

fendant here, realize, disclose, or recognize the Swan

patented method disclosed and claimed in patent No.

1,536,044 in suit or as practiced or carried out in defend-

ant’s manifolds here charged to infringe or any of them.

No method is disclosed, taught, or recognized in the prior

art which limits or restricts the method, claimed in

claims Nos. 4, 5, 8, 9 and 10 of patent No. 1,536,044 in

suit, in any manner whereby the method carried out and

practiced in each and all of defendant’s manifolds is not

covered by each and all of said claims. No document in

the prior art discloses the Swan patented method or dis-

closes any method for obtaining the results and ad-

vantages accomplished by the Swan patented method and

hy defendant with its manifolds here charged to infringe.

Swan is a pioneer in the patented method for distributing

wet fuel mixtures as distinguished from dry mixtures

and nowhere does the prior art show any recognition or

realization of the solution of this problem which Swan

solved by his patented method.

(14) Nothing in the prior art restricts the Swan

patented method as claimed in claims 4, 5, 8, 9 and 10 of

patent No. 1,536,044 in suit to a manifold of square or

rectangular cross-section as a means of accomplishment,

as distinguished from a manifold of round or cireular

cross-section. Nothing in defendant’s adoption of round

construction, like the manifolds here charged to infringe

or any of them, makes or causes the method carried out

in such round manifolds conform to or embrace any prior

method recognized, disclosed, or realized in the prior art.

(15) Nothing in the prior art restricts the Swan

patented method as claimed in claims 4, d, 8, 9 and 10 of

18

1118 Report of the Special Master

patent No. 1,536,044 in suit to a manifold having sharp

right angled inside corners or flat walls at the ends of

the header, or a flat wall opposite the riser, as a means of

accomplishment, as distinguished from slightly rounded

inside corners or curved walls at the ends of the header,

or a curved or partially curved wall opposite the riser as

found in some or ali of defendant’s manifolds here

charged to infringe; and nothing in defendant’s adoption

of the manifolds having rounded inside corners or curved

or partially curved walls, as found in defendant’s mani-

folds here charged to infringe, so modifies or changes the

method carried out in such manifolds or any of them as

to make that method conform to or embrace any prior

method recognized or disclosed in the prior art, or to so

depart or differ from the Swan patented method as to

exclude the method carried out in defendant’s manifolds

from the patented method claims relied upon by plaintiff

herein.

(16) The prior art, as it is exhibited by defendant

here for the purpose of showing or attempting to show

any method or process of distributing fuel mixture to

an internal combustion engine, is the same or substan-

tially the same as that which was exhibited in one or

the other of the eases of the Swan Carburetor Company

v. The General Motors Corporation hereinbefore re-

ferred to, and nothing here exhibited as to any prior

method is more pertinent to the Swan patented method

or more fully disclosed as ever having existed than were

the method or methods, if any, employed in the prior

art manifolds, which were offered and received in evi-

dence in both of the said preceding cases involving the

Swan patents and inventions.

(17) The manifold apparatus and combinations in-

vented by John W. Swan and patented in the patents in

suit were based upon a new and original principle of

operation, were disclosed in the original Swan applica-

tion, Serial No. 501,314, and described therein as to

structure, function and mode of operation, or so sut-

ficiently set forth or suggested in preferred and modified

forms in that application as to constitute a sufficient basis

for amendment to support claims 11, 12, 13, 20, 22 and

23 of patent No. 1,536,044 in suit and claims 5, 7 and 8 of

patent No. 1,636,721 in suit. The manifold apparatus and

combinations described in the patents in suit and in the

applications upon which said patents issued and claimed

in the claims upon which plaintiff here relies, as enumer-

—__

19

Report of the Special Master 1119

ated above, and embodying the Swan improvements pat-

ented thereby, obtain distinctive and advantageous re-

sults including, among other things, equal distribution

of fuel mixture and the liquid particles and constituents

thereof to the several engine cylinders, and particularly

to the several cylinders of six cylinder engines, and op-

erate as described in the patents in suit and function ae-

cording to the teaching of the patents in suit.

(18) Each and all of defendant’s manifolds charged

to infringe, as shown in plaintiff’s Exs. 40 to 46 inclusive

and 50, are so identical or so substantially identical in

structure, function, mode of operation and results to the

Swan patented manifold as defined in some or all of the

claims upon which plaintiff here relies, that when oper-

ated as they are operated and used upon or in combina-

tion with defendant’s engines, they perform the same or

substantially the same function, have the same or sub-

stantially the same mode of operation, and achieve the

same or substantially the same results as do the Swan

patented manifolds, as described in the patents in suit

and claimed in some or all of the said claims here relied

upon by plaintiff. Such differences in structure, as may

be found to exist in one or more of defendant’s mani-

folds as compared with the preferred form of the pat-

ented manifold by reason of defendant’s use of round

construction as distinguished from square construction,

or by reason of defendant’s use of slightly rounded in-

side corners instead of sharp right angle inside corners,

or by reason of defendant’s use of curved or partly

curved walls at the ends of the header and opposite the

riser, are immaterial in that such departures as defendant

has made in the structure of its manifolds, here charged

to infringe, do not effect any substantial or material dif-

ference in function, mode of operation, or results in such

manifolds as compared with the patented manifolds or

the preferred form of the patented manifolds, and such

differences as may be found are immaterial in that the

effect of such changes and the extent of such differences

are merely in matter of degree and are not differences

in kind or substance.

(19) The prior art manifolds, here exhibited by

defendant, are the same or substantially the same as were

exhibited to the tribunals that heard and decided the

actions brought by this plaintiff against the General

Motors Corporation hereinbefore referred to. Nothing

exhibited by defendants here is more pertinent to the

FATS IRE I RE ERS RN RARE EE EL TR we RO RSE

j2tn is Saker ea

EPL Le CL SMILE LOMO AKI aM

1120 Report of the Special Master

patented manifold apparatus or combination or to the

manifold apparatus or combination employed by defend-

ant than were the prior art manifolds exhibited in the

preceding litigation.

(20) Defendant has produced no documentary evi-

dence that any prior art device operated like or accord-

ing to the Swan principle of operation, or performed the

function, had the mode of operation or achieved the re-

sults of the Swan patented manifold, or defendant’s

manifolds here charged to infringe. None of the prior

art manifolds exhibited by defendant here have the strue-

ture, function, mode of operation, or results of the Swan

patented manifold apparatus or combination or defend-

ant’s manifold apparatus or combinations here charged

to infringe.

(21) Nothing in the prior art restricts the claims of

the patents in suit heretofore enumerated, which define

the apparatus or combination of elements patented there-

in to the preferred form of Swan’s patented manifold

with square or rectangular cross-section or with sharp

right angled inside corners or with flat walls opposite the

riser and at the ends of the header, and nothing in de-

fendant’s adoption of the manifolds here charged to in-

fringe of round cross-section with slightly rounded in-

side corners and wholly or partly rounded walls opposite

the riser and at the ends of the header, is in such accord-

ance with any prior art manifold or the teaching of any

prior art patent or publication or is in such accordance

with any prior art construction with respect to function,

mode of operation, or results that any of defendant’s

manifolds ean be said to fairly differentiate from the

patented construction or combination, or can be said to

he made in accordance with or in substantial accordance

with any manifold or complete combination shown to

have existed in the prior art.

(22) Nowhere does it appear in the current state

of the art relating to manifolds or methods of fuel dis-

tribution that anyone has brought forward a solution to

the problem of fuel distribution or improved upon Swan’s

solution by any means not based on the Swan principle

of operation. The adoption and use of the Swan pat-

ented manifold and method by licensees, paying royalties

to this plaintiff, has increased and is increasing in pro-

portion to all other manifolds made, used and sold in the

whole automobile industry, including those manifolds

charged to infringe in this and other suits brought by

this plaintiff.

__ —— REAM RRAD PV RAR TT Re PRE WE AN are

2

21

Report of the Special Master 1121

(23) At no time in the prosecution of either of the

Swan applications Serial Nos. 501,314 and 747,991, or

in the filing of application Serial No. 747,991, upon which

the patents in suit matured, did Swan’ surrender any-

thing or acquiesce in any limitation as a condition to the

grant of the claims in the patents in suit whereby to

exclude from the scope and effect of the claims, here

relied upon by plaintiff, the manifolds or methods or any

of them employed by defendant, and here charged to in-

fringe. Such amendments as were made in the original

Swan application Serial No. 501,314, either directly in

that application or in or by virtue of the filing of the

second Swan application Serial No. 747,991, were only in

amplification and explanation of what was already rea-

sonably indicated to be within the invention originally

disclosed and described in the said original application,

and said amendments indicated that Swan came to better

understanding of the principles of his invention or in-

ventions while his application or applications for the

patents in suit were pending, and that he did no more

than make his claims conform to and express his better

and fuller understanding of the principles of his inven-

tion. The tribunals before whom the Swan invention

or improvements and applications and patents were pre-

viously considered also considered the proceedings taken

by Swan in the Patent Office, and the amendments therein

made to the applications for the said patents in suit.

(24) In the testimony stipulated into this record

from the record of the first General Motors case of the

testimony taken before Judge Westenhaver, plaintiff has

adduced evidence here as to the method, function, opera-

tion and results carried out and achieved in the pre-

ferred form of the Swan patented manifold of square

cross-section, plaintiff’s Ex. 16, and a Buick manifold

of round cross-section, plaintiff’s Ex. 15, as measured

by gas analysis tests, which tests demonstrated equal or

substantially equal distribution of the fuel mixture in-

cluding the liquid constituents thereof to each of the

several engine cylinders of the six cylinder engine upon

which the tests were made. Those tests were made inter

parte in the trial of the first General Motors case and

the testimony and exhibits concerning them were offered

and received in evidence here without objection as to

their being made ex parte to this proceeding.

In the instant ease, plaintiff has made numerous road

tests under actual driving conditions comparing one of

see,

a

bo

bo

1122 Report of the Special Master

defendant’s manifolds here charged to infringe, plain-

tiff’s Ex. 42A, with a preferred form of the Swan pat-

ented manifold, plaintiff’s Ex. 42B, and with a manifold

similar to one of the Buick manifolds for which royalties

were awarded by judgment in the first General Motors

case, plaintiff’s Ex. 42C. In these tests the performance

and operation of the manifolds when mounted on a Nash

six-cylinder automobile engine were compared in hill

climbing, acceleration, fuel economy and general per-

formance. The results of these tests showed that the

three manifolds carried out the same or substantially

the same method, operated in the same or substantially

the same way, and achieved the same or substantially

the same results, including equal or substantially equal

distribution of the fuel mixture.

The gas analysis tests made of record here by plain-

tiff are tests made to determine the performance of the

individual engine cylinders with particular respect to

the combustion therein, the products of combustion ex-

hausted therefrom, and the equality or lack of equality

of the fuel distribution effected by the intake manifold.

Gas analysis tests are and were well known and generally

accepted and practiced in the industry, and are and have

been used by many automobile and internal combustion

engine manufacturers for many years, including a period

4 of time prior to the trial of the first General Motors case.

' The road tests of the kind and character performed by

plaintiff here in the presence of the Master are uni-

versally used and accepted throughout the entire auto-

4 motive industry for comparing and determining the per-

formance, operation, results and achievements of intake

4 manifolds. Road tests of the character made by plain-

tiff here are similar in kind to those made and relied

4 upon by defendant in the first General Motors case.

‘ Plaintifft’s demonstration to the Master, under start-

4 ing and actual road conditions such as hill climbing and

acceleration, of a preferred form of the Swan patented

manifold, plaintiff’s Ex. 42D, having large glass windows

in the roof and floor of the header and also opposite the

riser outlet, wherein the appearance of the contents of

the manifold was observed during the actual operation of

the car, showed that the movements of the fuel mixture,

; ineluding the liquid particles, were in substantial ac-

cordance with the disclosure and description of the fune-

tion and mode of operation of the patented manifold

and method, as set forth in the patents in suit and the

application thereof.

SE AL PN I a a

oh

—t

Report of the Special Master 1123

(25) The Master finds that the plaintiff’s demon-

strations and tests have all been of the kind and character

long accepted and universally adopted by the automotive

industry as a whole for the purpose of determining the

operation, performance and results of intake manifolds

for and methods of fuel distribution to internal com-

bustion engines, and have been previously accepted as

standard and reliable tests by the tribunals which have

previously heard and decided similar questions and is-

sues concerning the inventions and patents in suit. All

of plaintiff’s tests, witnessed by the Master, were made

on engines operating under their own power under

normal driving and operating conditions with normal

commercial manifolds and with fuel mixture ratios such

as are commonly used in actual service operation. All

of the road tests, including the visual tests or observa-

tions, were made on a car operating on the road under

its own power with all conditions normal throughout such

operation.

(26) The Master finds that the tests made by de-

fendant were new and consisted of laboratory tests only

and showed the operation of forees and influences on the

fuel mixtures, the actions of which were theretofore un-

known to Swan, the patentee, or his expert counsel. This

apparatus in the laboratory consisted of the manifold,

defendant’s Ex. 375, having transparent walls, operated

with stroboscope demonstrations, with Neon lights, and

following the tests moving pictures of the tests at differ-

ent speeds were shown on the Court Room.

(27) The Cox indicator is an instrument which has

been in suecessful commercial use for automatically

measuring and recording the pressures in the different

evlinders of a gasoline engine, and was used in the tests

in this ease known as the Fulwiler and Detroit tests.

By the use of this indicator, where the only variable is

the mixture ratio, there is shown a changing of the mix-

ture charge and how the manifold distributed such mix-

ture, and in said tests differences in the effect of the

manifold on distribution are shown, that is to say, such

indicator registers the character of the mixtures as de-

livered to each eylinder separately, which seems to be an

improvement over the gas analysis tests offered by plain-

tiff in this ease.

(28) The road tests made by plaintiff in this case,

while having the sanction of the trade by long usage,

did not test the character of the mixtures delivered to the

different cylinders of the engine.

1124 Report of the Special Master

(29) The preferred ‘‘Swan method’”’ as described

in the patents is as follows: that at each successive

eylinder aspiration, a uniform atomized mixture of air,

gasoline vapor and liquid particles moves up the riser

in straight lines, without swirling and without deposit-

ing liquid on the riser walls. The mixture strikes the

flat ceiling of the header directly above the riser and at

right angles to its direction of movement. From this

surface the mixture rebounds and spatters, thereby creat-

ing ‘‘turbulence.’? The horizontal flatness, 1.e., Sym-

metry, of the ceiling with relation to the three outlets

from the T, causes the impinging, the rebounding and

the spattering not to favor, or deflect the mixture to,

one outlet from the T rather than to another. The mix-

ture ‘‘makes an abrupt right angle turn.’’ When a cen-

ter cylinder aspirates, the uniform mixture flows out

through the center outlet. When an end cylinder aspi-

rates, the mixture moves through the header in straight

lines, impinges on the flat wall at the end of the header,

rebounds and spatters and then moves into the end

outlet. There are no accumulations of liquid in the

manifold, and accumulations of liquid would militate

against the carrying out of the method.

(30) The assembly, consisting of a Nash six-cylinder

engine, a Swan square section manifold and a Marvel

equipment comprising a riser containing the usual but-

terfly throttle, an exhaust gas jacket on the riser and

a Marvel carburetor, is the typical assembly involved

in this ease; and this has been used in many of the tests

made by the parties herein and may be ealled a Nash-

Swan-Marvel assembly. The firing order of the cylinders

of the Nash engine of the Nash-Swan-Marvel assembly

is 1-5-3-6-2-4.

(31) Observing and considering the tests and

demonstrations made by both parties, the Master finds

that the Swan patented manifold in its preferred and

equivalent forms, and each and all of defendant’s mani-

folds here charged to infringe, function, operate and

‘rarry out the Swan patented method in accordance with

or substantial accordance with the teaching, deseription

and disclosure in the patents in suit; and that Swan

patented manifold in its preferred and equivalent forms,

along with each and all of defendant’s manifolds here

charged to infringe, and the Swan patented method ecar-

ried out with each of said manifolds, accomplish the

results and advantages deseribed and disclosed in the

25

Report of the Special Master 1125

patents in suit, including the result of equal or substan-

tial distribution of the fuel mixture, including the

particles of liquid gasoline contained therein, to the sev-

eral engine cylinders.

(32) The island type of manifold which preceded

the Swan manifold, and with which Swan was compared

by some, was inferior to the Swan manifold, that is to

say, the Swan manifold was an improvement upon any

of the island manifolds which was the highest develop-

ment of manifolds before the appearance of the Swan

manifold.

(33) The principle of operation of the Swan pat-

ented manifold in its preferred form of square or ree-

tangular cross-section is the same as in defendant’s mani-

folds here charged to infringe of round eross-seetion.

The operation of the manifolds is the same whether they

be round or square in cross-section.

(34) The abnormalities claimed by plaintiff in the

construction of the manifolds (defendant’s Exs. 325 and

379) used in the tests, being (1) a construction different

at one end than at the other; (2) a tin found in the

manifold (Ix. 375) unknown to defendant; and (3) a

thermocouple claimed as an obstruction in the path of

the mixture stream, had no appreciable effeet upon the

movement of the mixture, and were not of sufficient effect

to materially change the results of the tests.

(35) Various members of the National Automobile

Chamber of Commerce have published or caused to be

published advertisements proclaiming the utility and ef-

ficiency of the Swan patented manifold, and proclaiming

that the Swan patented manifold achieved many distine-

tive advantages and results as evidenced by engine opera-

tion and ear performance, and also achieved the novel,

useful and distinctive advantage or result of affecting

equal distribution of the fuel mixtures to the several

engine cylinders of the internal combustion engines with

which they were employed and used by said members.

A great number of eminent and experienced engineers,

who at first were doubtful and skeptical, later, after ex

perimenting with the Swan patented manifold and meth-

od in operation with internal combustion engines under

many and varied road and laboratory conditions in the

usual course of their employment with various members

of the National Automobile Chamber of Commerce, came

to praise the Swan inventions or improvements and ad

AP AeA EIA SIE BORD OID RE TEA ANTS SUNT BO

PPE ASR Pag:

26

1126 Report of the Special Master

mit the utility and excellence of the Swan patented

manifold and method, and proclaim the achievements and

performance thereof, including the achievement of equal

or substantially equal distribution of the fuel mixture

to the several engine cylinders.

(36) The National Automobile Chamber of Com-

merce is conducting the defense of this suit and its di-

rectors, acting on behalf of the Chamber, selected counsel

and are paying the expenses of the suit. All of the

members of the National Automobile Chamber of Com-

merce (see plaintiff’s Exs. 57, 98, Stipulation Ex. 74

and Ex. 144) have contributed and are contributing to

the expenses of this litigation according to an agreed

system or systems. Among said members, The Nash

Motors Company, Reo Motor Car Company, Willys-

Overland Company, Chrysler Corporation, Plymouth

Motor Corporation and Graham Paige Motors Corpora-

tion, paid their share of all the expenses of the said Na-

tional Automobile Chamber of Commerce, including the

expense of this litigation.

(37) On or about June 19, 1925, plaintiff, The Swan

Carburetor Company, served due and formal notice of

infringement in writing, plaintiff’s Ex. 47, upon defend-

ant, The Nash Motors Company, by registered mail,

directed to the attention of Mr. C. W. Nash, then Presi-

dent, and the same was received in the usual course of

mail on or about the day following. Long prior to the

writing of this formal notice of infringement, and long

prior to the date of issuance of the patent No. 1,536,044

in suit, plaintiff through its representatives had advised

the defendant, The Nash Motors Company, that it was

seeking Letters Patent of the United States covering

and protecting the Swan patented manifold and method

as exhibited to The Nash Motors Company as early as

the summer of 1923, and plaintiff by its President had

long prior to the issuance of patent No. 1,536,044 en-

tered into negotiations with Mr. C. W. Nash, President

of The Nash Motors Company, to arrange a license for

the manufacture, use and sale of manifolds embodying

or carrying out the Swan inventions now patented in

the patents in suit, and quoted to Mr. Nash the standard

license or royalty rates obtained for such a license and

expected from The Nash Motors Company in the event

it made, used or sold manifolds embodying or carrying

out said Swan invention or inventions under license from

this plaintiff.

ll

27

Report of the Special Master 1127

CONCLUSIONS OF LAW.

(1) That the United States District Court for the

Northern District of Ohio, Eastern Division, in which this

suit was brought, has jurisdiction over subject matter

of and parties to this suit.

(2) That the Swan patents in suit, Nos. 1,536,044

and 1,636,721, and each of them are valid and describe,

disclose and claim in claims 4, 5, 8, 9, 10, 11, 12, 13, 20,

22 and 23 of patent No. 1,536,044 and in claims 5, 7 and

8 of patent No. 1,636,721 mew and useful inventions or

improvements in intake manifolds for internal combus-

tion engines and methods and means to facilitate the dis-

tribution of fuel mixture in internal combustion engines.

(3) That the patent in suit, No. 1,536,044, is a basie

patent and defines and covers a pioneer invention or in-

ventions, and is entitled to a liberal interpretation and a

broad range of equivalents.

(4) That the patent in suit, No. 1,636,721, as to

claims 5, 7 and 8, is subsidiary in rank to patent No.

1,936,044 and defines and covers a meritorious improve-

ment and is entitled to a liberal interpretation and a sub-

stantial range of equivalents consistent with its rank and

relation to patent No. 1,536,044.

(5) That the method or methods of distributing fuel

mixture practiced and carried out in each and all of de-

fendant’s manifolds here charged to infringe, illustrated

in plaintiff’s exhibits 40 to 46 inclusive and 50, when

operated with the internal combustion engines for which

said manifolds were made and with which said manifolds

were used and sold is and was covered by claims 4, 5, 8,

9 and 10 of patent No. 1,536,044 in suit, and the practice

of said method by the use of said manifolds on said

engines constitutes and constituted an infringement of

said patent with respect to said claims. The defendant,

The Reeke-Nash Motors Company, aided and abetted by

The Nash Motors Company, the other of the defendants

named and identified in the original and supplemental

Bills of Complaint, infringed the said patent and con-

tributed to the infringement thereof with respect to said

method claims as and in the manner alleged in the Bill

of Complaint.

(6) That each and all of defendant’s manifolds here

charged to infringe illustrated in the drawings, plain-

tiff’s exhibits 40 to 46 inclusive and 50, as an apparatus

or a combination with or for the internal combustion

, |

NT Ba OER ON TS ARC AAT Ta

1128 Report of the Special Master

engines for which said manifolds were made, and with

which said manifolds were used and sold, are covered

by claims 20, 22 and 23 of patent No. 1,536,044 in suit;

the manifold illustrated as to header and branches in

plaintiff’s exhibit 41 is also covered by claims 11, 12 and

13 of patent No. 1,536,044 in suit; the manifolds illus-

trated in plaintiff’s exhibits 40 and 43 are also covered

by claims 5, 7 and 8 of patent No. 1,636,721 in suit; the

manifold illustrated as to header and branches in plain-

tiff’s exhibits 42, 45 and 46 are also covered by claims

7 and 8 of patent No. 1,636,721 in suit; the manifold

illustrated as to header and branches in plaintiff’s ex-

hibit 44 is also covered by claims 5 and 7 of patent No.

1,636,721 in suit.

(7) That the defendant, The Reeke-Nash Motors

Company, aided and abetted by The Nash Motors Com-

pany, the other of the defendants, named and identified

in the original and supplemental Bills of Complaint, in-

fringed and contributed to the infringement of said pat-

ents in suit with respect to the apparatus and combina-

tion claims as herein respectively designated and as and

in the manner alleged in the Bill of Complaint and the

Supplemental Bill of Complaint.

(8) That the defendant here having appropriated

the distinctive features and characteristics of the Swan

patented inventions are estopped from denying the utility

thereof, and apart from such estoppel the defense did

not carry the burden by law imposed upon it to show

lack of utility in the patented inventions or to show

inoperativeness of the patents in suit or to show any

material or substantial difference between the mode of

operation of the patented inventions described in the

patents in suit and actually carried out and embodied

in the methods and manifolds disclosed in the said pat-

ents and in defendant’s infringing methods and mani-

folds.

(9) That matter was not inserted in the applications

upon which the patents in suit matured or either of them

by way of amendment or otherwise, which causes any

cloud upon the validity or scope of the patents in suit or

either of them.

(10) That plaintiff is not estopped by reason of

any proceedings in the Patent Office in connection with

the prosecution of the patents in suit from asserting the

claims of the patents in suit, here relied upon, with the

EE BBO AAVNVY AP ORLE LE INANE TTL REY ODN TONGS TANG NG ERE PES thoi " OME TSEM a COLI

29

Report of the Special Master 1129

full range of equivalents to which they are on their face

entitled in view of the state of the prior art.

(11) The various members of the National Auto-

mobile Chamber of Commerce (plaintiff’s Exs. 57 and

58) are privies to the defendant in this suit, and state-

ments made by such members or by their engineers or

representatives, acting in the usual course of their em-

ployment, are admissible in evidence here as admissions

against interest made by privies of this defendant.

(12) That the plaintiff is entitled to the relief

prayed for in the Bill of Complaint and Supplemental

Bill of Complaint and every part thereof as against the

defendant, The Reeke-Nash Motors Company.

(13) That the plaintiff have and recover the costs

of this suit.

MEMORANDUM.

The validity of the Swan patents was not an issue

in the General Motors cases, those suits being upon the

license, by the owner of the patents against its licensee.

The efforts of defendant were there confined to establish-

ing and restricting the limits of the patents, while in

the case at bar defendant contests the validity of the pat-

ents themselves.

While the decision in the General Motors case is not

binding here as to the validity of the patent, comity at

least requires that most serious consideration be given

to the prior findings of the courts which have considered

these patents.

PRESUMPTION OF VALIDITY.

At the outset the Swan method of manifolding is

denied patentability by defendant Reeke-Nash Company

on two grounds: (1) that what Swan sought to patent

was not patentable; and (2) that he incorrectly deseribed

or failed to describe what he sought to patent.

The assumption must be that the claims of the pat-

ents are valid until the contrary is shown. The validity

of the patent is presumed, and this presumption implies

patentable novelty and utility. Westmghouse v. Formica,

266 U.S. 342, 3848 (1924); as to novelty, Soderman Heat

& Power Co. v. Kaufman, 14 Fed. (2) 392, 394 (CA 8,

1926), and as to utility, Boyce v. Stewart-Warner Co.,

220 Fed. 118, 126 (CCA 2, 1914). We therefore start

with the assumption that the claims in issue describing

ESOS GS EES a BE ea

30

1130 Report of the Special Master

the steps in the method and the apparatus are valid

over the prior art.

This presumption of validity is rebuttable and the

question of validity is not to be confused with the ques-

tion of the scope to be given the claims with which we

are principally concerned, if the claims are found to be

valid, and the question of infringement of defendant’s

devices then remains for determination.

‘PATENT CLAIMS FOR A METHOD OR PROCESS.

The method claims in issue of the first Swan patent

are Nos. 4, 5, 8, 9 and 10, and it will suffice to quote claim

4 as typical of these method claims:

‘<4. A method of distributing a fuel mixture to

an engine which consists in moving the mixture ina

straight line to a zone from which it is distributed

to a plurality of engine cylinders, directing said

movement by forces which tend to distribute the

mixture uniformly in all directions in a plane trans-

verse to said movement, and further directing the

movement of the mixture by forces tending to move

it successively in a plurality of directions transverse

to the original direction, to the cylinders.’’

The first step of this method is ‘‘moving the mixture

in a straight line to a zone,”’ namely, the T zone or so-

ealled distributing zone of the riser. Defendant claims

the mixture does not move in a straight line in the riser

to this zone, but on the contrary moves in a turbulent,

swirling spiral, being deflected by the carburetor intake

and jets and by the angularity of the throttle.

The next step of the method takes place at ‘‘the dis-

tributing zone,’’ and is ‘directing said movement by

forees which tend to distribute the mixture uniformly

‘n all directions in a plane transverse to said move-

ments.’? By Swan’s theory the forces act upon the

mixture at the T and distribute it uniformly in the front

and rear header branches and into the center outlet.

Defendant claims that there are no such forces but that

the forces which do act on the mixture at the T do not

have a uniform effect.

The Swan theory is that the mixture is a homo-

geneous mixture of air, vapor and liquid particles which

move up the riser in straight lines, which theory defend-

ant asserts is wholly fictitious and imaginary.

Defendants further claim that the forces operating

in the manifold cause an unequal distribution of the

—

31

Report of the Special Master 1131

liquid mixture in the manifold; that they enrich the end

cylinders as compared with the center cylinders, that

they enrich the inside cylinder of each end pair, and

thus cause errors of unequal distribution which defend-

ants have sought to demonstrate by showing an unequal

performance of the different cylinders. The defense is

grounded on the proposition that the claim is invalid be-

cause the method claimed by Swan is not performed by

the Swan manifold.

The rule as to patents for a method or process is

stated in Walker on Patents, 6th Ed., See. 160. ‘‘It is

not essential that an inventor should understand or set

forth the scientific principle upon which his invention

works.’’ A process has been defined as a mode of treat-

ment of certain materials to produce a given result. This

rule was early laid down by Mr. Justice Bradley in

Cochrane v. Deener, 94 U. 8. 780 (1876), where he said

at p. 788:

‘*A process is a mode of treatment of certain

materials to produce a given result. It is an act, or

a series of acts, performed upon the subject-mat-

ter to be transformed and reduced to a different

state or thing. If new and useful, it is just as pat-

entable as is a piece of machinery. In the language

of the patent law, it is an art. The machinery

pointed out as suitable to perform the process may

or may not be new or patentable; whilst the process

itself may be altogether new, and produce an entirely

new result. The process requires that certain things

should be done with certain substances, and in a

certain order; but the tools to be used in doing this

may be of a secondary consequence.”’

Where a claim for a method or process not involving

chemical change or change of substance, was held valid

and patentable, and asserted the validity of a process

having to do with hydrodynamics and simply dealing

with the flow and control of fluids, Mr. Justice Blatch-

ford in New Process Fermentation Co. v. Maus, 122

U. S. 413 (1887) said at p. 427:

‘‘Within the rules laid down by this court in

Corning v. Burden, 15 How. 252, 267, in Cochrane v.

Deener, 94 U. S. 780, 787, 788, and in Tilghman v.

Proctor, 102 U. S. 707, 722, 724, 725, we think that the

method or art covered by the third claim of the

patent is patentable as a process, irrespective of the

apparatus or instrumentality for carrying it out.’’

eT es) oe ese cc

1132 Report of the Special Master

A process patent was held valid for the dominant

pool for the Bessemer Furnace in Carnegie Steel Co. v.

Cambria Iron Co., 185 U. 8. 403 (1902). The specifica-

tion sought ‘‘to provide means for rendering the product

of steel works uniform in chemical composition * * *”

(p. 443), and as to this, the court said: ‘‘If it be true that

this process cannot be carried on without infringing the

Jones patent, he is certainly entitled to a monopoly of

the invention.’’

In this cireuit a patent for method of feeding water

to boilers, based on the theory of retarding the lag and

maintaining a variable constant, was held valid. North-

ern Equipment Co. v. McDonough Automatic Regulator

Co., 300 Fed. 488 (1924), on page 491 Judge Denison

says:

“Tf anyone before Andrews both observed and

intelligently appreciated the factors involved in the

variable constant theory and worked out his ideas

into concrete form, it is not disclosed by this record,

as we understand and interpret the testimony. Such

prior appreciation of the theory as there was, if

any, Was vague and abstract,”’

and comments upon the method claim in suit, page 492.

Again in the purolator case, Motor Improvement Co. v.

General Motors, 49 Fed. (2) 548 (1931), the Court of

Appeals of the 6th Circuit held the Sweetland patent,

relating to oil filters, valid and infringed, and considered

the method or process claims in its opinion.

In the recent ease of Nestle-Le Mur Co. v. Eugene,

55 Fed. (2) 854 (1932), was involved a patent of machine

claims for permanently waving hair, but there were no

method or process claims involved in the suit. While the

Court of Appeals reversed the District Court, Judge

Hickenlooper goes on to state that process claims might

have been valid, but such had not been made. The ma-

chine claims were invalid since they involved only the

arrangement of old electrical apparatus which could be

manipulated by any mechanic skilled in the art. The

Judge quoted from Cochrane v. Deener, supra, and says

at p. 857: :

‘“‘The subjects covered by patents for a process

and for a machine, although frequently related and

in sense often founded upon the same mental con-

cept, are nevertheless in substance independent and

radically different. As clearly stated in the author-

ities here cited, ‘a machine is a thing,’ while ‘a

Te eS ee ee

Report of the Special Master 1133

process is an act, or a mode of acting’; ‘a new process

is usually the result of a discovery; a machine, of

invention.’ ”’

HOW ACCURATELY NEED A PATENTEE DESCRIBE HIS

DISCOVERY OR INVENTION?

Since it is established that a method or process is

patentable, the question arises, how accurately must a

patentee describe his discovery or invention. In the

case at bar a method or process is involved, so follow-

ing the authorities as pointed out by Judge Hickenlooper,

the question here is, how accurately was Swan required

to describe his discovery.

Walker on Patents states the rule ‘‘it is not essen-

tial that an inventor should either understand or set forth

the scientific principle on which his invention works,”’

6th Ed., See. 160.

In his first application Swan stated ‘‘I have found

it somewhat difficult to analyze the exact theory on which

my discovery rests. * * *’’? Question then arises, if

the method claimed by Swan is not an accurate descrip-

tion of what actually happens in the manifold, is his pat-

ent defeated and invalid. This brings us to a considera-

tion of the rules as to how far courts will go in destroy-

ing a patent on the grounds that the inventor failed to

sufficiently describe the forces which enter into the opera-

tion of his method or process.

Karly in the administration of Patent Law the Su-

preme Court held in the Telephone cases, 126 U. S. 1

(1888) in the 2nd Syllabus: ‘‘In order to procure a pat-

ent for a process, the inventor must describe his inven-

tion with sufficient clearness * * * and must point out

some practicable way of putting it into operation; but

he is not required to bring it to the highest degree of

perfection.”’

In this Circuit this question was raised in connection

with the Jeavons Oil Burner, reported in Cleveland

Foundry Co. v. Detroit Vapor Stove Co., 131 Fed. 853

(1904) where defendant sought to destroy the patent by

asserting that the inventor did not describe with suffi-

cient definiteness the forees which entered into the opera-

tion of the Jeavons Burner. In that case Judge Severens

said, at p. 855:

‘*A burner made according to their construetion

would operate in the way to be expected from the

a

ot

1134 Report of the Special Master

claim. * * * But he (Jeavons) did see and know

that the burner he had devised would successfully

accomplish the results he anticipated and was la-

boring for. * * * But the fact is that, by construct-

ing the burner in the manner prescribed by hin,

(Jeavons) the vapor is produced and distributed to

and in the combustion chamber in a very satisfactory

and useful way. That it is a successful improve-

ment on all former methods is shown by the general

adoption of it by the public, no less than 122,000

burners of this kind having been sold within 2%

years. It may be that the patentee did not fully un-

derstand the rationale of the manner in which his

eunstruction effected the results, and it may be that

expert witnesses have not in all respects correctly

apprehended it. But if the fact be that his con-

struction does effect the results and they are bene-

ficial, he is none the less entitled to the benefit of his

invention though he may not have correctly under-

stood the principles of its operation. Andrews v.

Cross, 19 Blatehf. 294, approved in the Driven Well

case, Eames v. Andrews, 122 U.S. 40, 55 (1887).”’

Many forces, such as the force of gravity, centrifugal

force and inertia, act and persist and are understood by

those skilled in the arts. The rule is summarized by the

Supreme Court in Diamond Rubber v. Consolidated Tire,

990 U. S. 428 (1911) which involves rubber tires, where

Mr. Justice MeKenna says, at p. 430:

‘¢And how can it take from his merit that he

may not know all of the forces which he has brought

into operation? It is certainly not necessary that he

understand or be able to state the scientific prin-

ciples underlying his invention, and it is immaterial

whether he can stand a successful examination as to

the speculative ideas involved. (Citing the Driven

Well case, supra, Cleveland Foundry Co. v. Detroit

Vapor Stove Co., supra, and others.) He must in-

deed make such disclosure and description of his in-

vention that it may be put into practice.”’

Mr. Chief Justice Taft expressed the same thought

when he said, in Libel Process Co. v. M. € O. Paper Co.,

961 U. S. 45 (1923) at p. 63:

‘‘Infringement exists if the claim fairly reads

upon the defendant’s device which may not be exact-

ly the one described and if it approximates it nearly

| 35

Report of the Special Master 1135

enough so that it may be said to be an equivalent

thereof. The range of equivalency is to be deter-

mined in the light of the state of the art and the ad-

vancement made therein.’’

Thus specifications and claims are addressed to those

skilled in the art and a claim should be liberally con-

strued. Sun Ray Gas Corp. v. Bellows-Claude Neon Co.,

49 Fed. (2) 886 (C. C. A. 6, 1931). In the recent case

of National Battery Co. v. Richardson Co., 63 Fed. (2)

989 (1933), the Court of Appeals of the 6th Circuit, in

the 3rd Syllabus says that ‘‘where the inventor had

mental concept of a new composition of matter to achieve

a desired result * * * the invention consisting of the

mental concept.’’ While this patent was for a compo-

sition on the questions of the sufficiency of the disclosure

and that patents are addressed to those skilled in the

art, Judge Hickenlooper says, at p. 293:

““The specifications and claims are addressed to

those skilled in the art * * * that which is, and

was understood to be, necessary to make the claim

operative may then be implied therein, provided al-

ways, that the description of the claim and the

specification is sufficient to enable one skilled in the

art, with the specifications and claims before him,

and without the necessity of further experiment it-

self of an inventive nature, to practice the invention

of the patent.’’

DID SWAN SHOW ANYTHING NEW, AND IF SO,

WAS THIS INVENTION?

Often it is difficult to determine whether invention

exists in an apparatus or method which is essentially an

improvement upon the prior art devices or means for

securing similar results. There seem to be no sure tests

which can be applied in all cases.

The question is one of fact to be determined by the

weighing of evidence in the light of decisions of the

courts upon analogous states of facts where rules have

been declared which seem to be applicable.

Attention has been called to the recent case of New-

comb, David Co., Inc. v. The R. E. Mahon Co., 59 Fed.

(2) 899 (1932), where the Court of Appeals of this Cir-

cuit held that invention does not exist in merely aggre-

gating or ‘‘making judicious selection from’’ the devices

of the prior art, each designed and utilized to accomplish

36

1136 Report of the Special Master

its individual purpose at a time and in a place where

such function is necessary for the operation of the whole,

and Judge Hickenlooper said, p. 901:

‘‘This is but the exercise of the mechanical abil-

ity reasonably to be expected in the development of

the art, and has repeatedly been held insufficient to

evidence invention, whether such decision be placed

upon the ground of aggregation or upon the lack of

an exercise of the inventive faculty. Concrete Appli-

ances Co. v. Gomery, 269 U. S. 177. * * * And com-

pare: Sachs v. Hartford Electric Supply Co., 47 Fed.

(2) 743, 748 (C. C. A. 2) where Judge Learned Hand

criticizes the promiscuous use of the term ‘aggre-

gation,’ and says that in every case ‘invention must

depend upon whether more was required to fill the

need than the routine ingenuity of the ordinary

craftsman.’ We think that this statement perhaps

requires too little, but certain it is that something

more is required than even a highly skillful selee-

tion of well-known means from the prior art to pro-

gressively perform their severa! functions. * * *

Doubtless the conveyor design of Mahon, certainly

as embodied in the commercial practices of the com-

plainant, has met with favorable reception and has

gone into broad use. Doubtless, also, it is a more

serviceable conveyor than had theretofore been

placed upon the market; but we fail to find in its

underlying concept that spark of inventive genius

which alone ean distinguish it from an exercise of

mechanical ability reasonably to be expected from

the pneumatic engineer, and which alone would justi-

fy a patent.’

Just here is where it seems that the courts must de-

termine the question of invention in each case as pre-

sented. Does the underlying concept of Swan contain

the spark of inventive genius?

If it does contain such spark of inventive genius then

in connection with the presumption of patentability and

failure to find anticipation in the prior art, leaves no al-

ternative but to find the patent valid. The question is

one of fact to be determined by the evidence, which per-

suades me that Swan displayed inventive genius. Per-

haps the result is the determining factor in the process

of arrival at such conclusion. Swan did show a mani-

fold which gave better gas distribution, which was a

—

37

Report of the Special Master 1137

matter of great importance in the building of automo-

biles.

Swan saw what others did not, that the gasoline con-

tinued as a liquid in the air stream up the manifold, that

whether the gasoline globules adhered to the inner sur-

faces of the manifold or rolled along the bottom, these

globules must be broken up to secure even distribution,

and his contribution was a manifold with rectilinear lines

and right angle turns. This was a novel method and

new in the art with Swan; in short, this was his invention.

In Pyrene Mfg. Co. v. Boyce, 292 Fed. 480 (1923)

at p. 481 in an opinion of the 3rd Circuit, Judge Woolley

said:

‘‘On the major issue of validity we shall first

inquire whether the conception for which the patent

was granted involves invention. Because of the lack

of a definite rule, questions of this kind are often

perplexing. It is a trite saying that invention de-

fies definition. Yet, through long use, the word has

acquired certain characteristics which at least give

direction to its meaning. Invention is a concept; a

thing evolved from the mind. It is not a revelation

of something which exists and was unknown, but

is the creation of something which did not exist be-

fore, possessing the elements of novelty and utility

in kind and measure different and greater than what

the art might expect from its skilled workers.’

Swan’s was a concept which conforms to this definition

of invention.

THE ACHIEVEMENT OF THE SWAN MANIFOLD.

The defense of the Nash Company against the Swan

patent is bottomed upon one premise: that Swan accom-

plished nothing in the art of manifolding, in fact that

the Swan invention is not an advance, that it is not an

achievement.

Yet from the writings of Tice in 1911 down until

after the Swan patents appeared, the existence of the

manifold problem has been of great concern to automo-

tive engineers. It is even admitted that it would be a

great achievement to produce an increase in power or

a saving in fuel of as much as 2 or 3 per cent.

Before the advent of Swan the island type of mani-

fold as used by Nash had been improved upon over a

period of years by Engineer Wahlberg of the Nash Com-

— WORAENA

a

38

1138 Report of the Special Master

pany and brought to its highest efficiency (Trans. p.

405). In 1923 the Swan engineers made comparative

tests at the Nash plant with the Nash manifold and a

Swan manifold, on a Nash engine, which showed favor-

ably for the Swan manifold, following which the Nash

engineer said that ‘‘Swan has made a real contribution

to the industry’? (Trans. p.. 48), and following the sug-

gestion of Mr. Nash, plaintiff did national advertising in

1925 to familiarize the public with its Swan manifold

(Trans. 50).

In the letter of Engineer Taub of the General Mo-

tors Corporation (plaintiff’s Ex. 26), March 22, 1922,

he said after tests had been made by General Motors that:

‘©Ag far as we have tested the Swan type of

manifold, we are positive that this construction has

many advantages over the accepted practice of to-

day. The distribution has proven as perfect as can

be made by manifolding, and the vaporization is

practically complete.

In every test that we have made using the prin-

ciples shown in the Swan manifold, this has been

borne out.’”’

The commendation of this letter was given before Gen-

eral Motors had taken a license.

Others from Buick Motor Company who had com-

> mendation for the Swan manifold were Mr. Sage, Pence,

Experimental Engineer, and Bassett, then President and

General Manager of Buick, and DeWaters and Bower,

Chief and Assistant Engineers of Buick, and Hartz, En-

gineer of Buick Testing Laboratory. In addition, there

was Mr. Reuter, President of Olds Motor Works and

Mr. Baker, Chief Engineer of Willys-Overland, and ref-

erences to their statements are found in briefs of coun-

sel.

H. L. Horning, a manufacturer of gasoline engines

and an expert motor engineer, states that:

“‘The art of building six-cylinder engines might

be said to revolve about better valve materials until

some better form of manifold could be designed,”’

(Trans. 23e) ‘‘and after spending a hundred thou-

sand dollars in trying to produce a good manifold,

and research, and so forth, and consideration of the

results we got, it seems to me that the simplicity of

the Swan manifold is a very important thing * * *

because of the saving in the cost of construction of

ee Ne ee ee ee ee) eee ee ee ee a oe.” Cf er we ee ee

39

Report of the Special Master 1139

the usual manifold,’’ (Trans. 23f) ‘‘and finally this

Swan manifold is better than anything we have seen

before.’’ (Trans. 23i.)

Thus many automobile engineers accepted the Swan

manifold and have said that it was an improvement upon

the old island type of manifold. Buick took its license,

proceeded to manufacture, and without cancelling sought

to manufacture a manifold which it claimed was not

within the bounds of the patent. Such claims were de-

nied in the first General Motors case and are now pend-

ing in its second case.

After General Motors took this stand other members

of the National Automobile Chamber of Commerce pro-

ceeded to manufacture, after experimenting with the

Swan manifold, and suits are pending against Willys-

Overland and Reo. Several engine manufacturers took

licenses and there was an acceptance of the Swan mani-

fold as an improvement.

Engineers and engine manufacturers have accepted

the Swan method as an improvement over the old forms

of manifolding and wherever contest was made, it was

on the ground that they did not use the Swan method.

In this case for the first time has the proof been offered

that the so-called Swan method of manifolding is non-

existent, and the basis for this, of course, is the elaborate

tests and testimony of Mr. Tice. Before this case there

has been no proof offered either in publications or by

tests showing with such accuracy and clearness the ac-

tual operation of the forces in a manifold.

Even if there were no other evidence before the court

than the tests and testimony of Mr. Tice, the value and

importance of Swan’s invention and its title to be rated

as an important invention would seem to be clear, for

in his 1911 articles (plaintiff’s Ex. 37) all of the state-

ments which he now affirms (Trans. 1059) set forth the

want, the need, the problem, its difficulties, and the fail-

ure of its solution notwithstanding the many efforts to

improve manifolds as shown in his writings. The later

work of Tice at the Stewart-Warner Company in efforts

to find the solution of the manifold problem, resulted in

patents which have been launched into the trade. While

he has testified to many things and clearly shown and

analyzed the operation of the forces and the actions of

mixture in the manifold, it must be still said that Swan

did add to the solution of the manifolding problem, that

while he may not have secured scientifically ‘‘equal dis-

40

1140 Report of the Special Master

tribution,’’ he did secure ‘‘good commercial distribu-

tion’’ in the operation of his manifold. So that under

the heading of utility the Swan invention has met the

test of invention prescribed by the patent courts.

TESTS AND EXPERT TESTIMONY.

The tests upon which plaintiff relies include the

usual road tests, that is, acceleration, hill-climbing and

economy. Spark plug tests and gas analysis tests were

also offered in evidence. Expert testimony for plaintiff

was given by Frank L. Sessions who testified in the

General Motors cases, Kirkham, engineer for plaintiff,

and President Pelton of the plaintiff company. Gener-

ally speaking, in offering its testimony, plaintiff covered

the same ground as in the General Motors cases and much

of the testimony from those cases was stipulated into this

record.

Defendant also relies upon the record in the Gen-

eral Motors cases for most of its evidence as to prior

art, the only new evidence being as to the 20th Century

manifold. For its defense to the patents, the new evi-

dence upon which defendant principally relies, is the ex-

pert testimony and tests made by or under the supervl-

sion of P. S. Tice. This is the same P. 8S. Tice whose

article on the prior art appeared in ‘‘Motor’’ of May,

1911, and Judge Westenhaver, in Swan Carburetor Co.

v. General Motors Corp., supra, said ‘‘his description of

the existing art in manifolds and of the problems in-

volved may be accepted as correct.’’

The tests conducted by Tice in the Master’s presence

at the factory of the White Motor Company showed the

performance of liquid gasoline at the elbow of manifolds.

Also later at the same factory, he operated another test

ona Murray & Tregurtha engine with a glass window on

its manifold. The Cox indicator tests at Detroit were

made under the supervision of Tice and results became

a part of his testimony. The tests made with the Cox

indicator used a delicate, scientific apparatus, the record

sheets of the tests being in evidence. To better show

the operation of the forces, test apparatus was operated

by Mr. Tice with Neon lights and stroboscope, and the

record contains two reels of moving picture film show-

ing the manifold in operation driven by a dynamometer.

In addition to Mr. Tice as a practical carburetion en-

eineer, defendant relies upon Professor Cooley of the

University of Michigan, Dean Emeritus of College of

41

Report of the Special Master 1141

Engineering, a scientist who testified as to the behavior

of flowing liquids.

With these tests made by defendant, an explanation

is offered of the problem involved in the operation of

forces in a manifold. The facts were developed and

shown in the actual operation of test apparatus and prob-

ably were publicly viewed for the first time. There was

no such proof offered in the General Motors cases, as the

record shows. The operation of the forces as pictured

by defendant’s tests was unknown to plaintiff’s expert,

Sessions, and could not be described by him (Trans. 195)

for he says ‘‘the exact action of mixture is measurable

only by results, so far as I know * * *. We know what

it performs, but we don’t know the manner by which it

performs it.’’

The operation of the forces in the manifold was

also unknown to Swan, as appears from the first state-

ment of his original application for patent, where he

states his inability to describe such forces.

With the Tice tests offered by defendant, showing

operation of forces in a manifold, has this new evidence

destroyed the Swan patents? Judge Westenhaver said

that the Tice 1911 description of the existing art and

manifolds might be aecepted as correct, and that Swan

sought to solve the problem Tice had stated and dis-

cussed; and he found that Swan solved the problems in-

volved ‘‘by introducing a new and original principle of

operation. The gist of his invention consists in bringing

the gaseous mixture from the carburetor to the header

in perpendicular or straight lines, then abruptly chang-

ing its course at right angles in the header, and then

again changing its course at right angles from the header

into the branches.’’

Judge Westenhaver goes on to say that all other

features of Swan are subsidiary, that while he might

have stressed a dome or flat wall, the recesses in the

outer bend, flat or level floors, or even square cross-sec-

tion, such were not made by Swan as the substance of

his invention.

THE NEW PROOF AS TO METHOD AND OPERATION OF

FORCES IN A MANIFOLD OFFERED IN THE TICE

TESTS AND THE SWAN CLAIMS TO INVENTION.

Distribution of the liquid gasoline to the various

cylinders is the function of any manifold. **Hqual dis-

tribution’’ of such gasoline is the claim of the Swan

patents.

1142 Report of the Special Master

Defendant claims that the description of the entire

mode of operation of the Swan manifold is incorrect as

stated in the patents and that the record fails to show

that either Swan or plaintiff’s experts described or un-

derstood the actual operation of the mixture in a mani-

fold. Plaintiff asserts that patents in suit describe the

operation and that its experts have testified sufficiently

as to this (Trans. 104-109, 1334 and 1530).

Relying upon the Tice tests, particularly those made

with a Cox indicator, known in this record as the Detroit

tests and the Fulwiler tests, defendant urges that a Swan

manifold on a Nash engine (plaintiff’s Ex. 375) distrib-

utes gas unevenly to different cylinders, and so fails to

effect the ‘‘equal distribution’’ essential to the ‘‘Swan

method’’ of the patents.

Plaintiff’s answer is in substance, that no matter

what some delicate, scientific laboratory apparatus may

show as to any variation of gasoline as received and re-

corded upon the aspiration of any individual cylinder,

the effect is that the Swan manifold gives ‘‘good com-

mercial distribution,’’ which in itself is invention; was

unknown in the prior art, and is an improvement on the

prior art; and which defendant has appropriated with-

out license and is now an infringer.

With the help of most delicate electrical apparatus

in the laboratory, Mr. Tice has shown every step, in

fact every instant, in the travel of gasoline from car-

buretor nozzle, past the butterfly throttle up the riser,

around the bends, into the header, around another bend

into the branches, and finally into the cylinder for use in

the separate aspiration of each cylinder. These globules

of gasoline move at ‘‘hurricane speed,’’ varying with the

engine speed which operates at 800, 1200 or 1800 revolu-

tions per minute, at the rate of 120 miles per hour at

1200 R.P.M. (Trans. 1169). Most complete is the Tice

analysis of these operations, by charts, diagrams and

photographs of operations, which were viewed in the

tests at the White plant, with and without Neon lights.

Finally two moving pictures of the tests are articulated

in one film so that the audience may have before it at

one time, in a single view, a birdseye view into the top

of the manifold and a view into the side, showing side.

by side the two views of the interior of the manifold, as

the mixture containing particles of gasoline is sucked in

for each separate aspiration of the six cylinders.

Without attempting to describe the different phe-

nomena pointed out by Mr. Tice in a single cycle of the

43

Report of the Special Master 1143

six aspirations of the several cylinders, which include

gasoline on riser walls, its behavior at the T, the eddies

at the corners or bends, the hot and cold blow-backs, the

impingement or failure to impinge of liquid gas at the

ends, the action of the valves and the quick reversals of

the flow of mixture as different cylinders operate, the

claims of operation as shown by the Tice proof must be

considered as against the claims for the Swan method of

the patents.

Counsel for defendant claim for the Tice proof that

it establishes:

(a) That while Swan claims to start with a homo-

geneous mixture of gas particles and air and that such

character of the mixture is maintained until delivered to

the different cylinders, defendant denies that the mix-

ture of air and gas is homogeneous to start with and

never becomes homogeneous.

(b) That the mixture does not move up the riser

in rectilinear lines but has an inherent turbulent motion

with deflections due to carburetor intake, nozzles and

throttle, which prevent movement in rectilinear lines;

that because of the swirling motion most of the liquid

is deposited on the walls of the riser where it aceumu-

lates unevenly and is blown up the riser in uneven

streams.

(c) That the square shape of the Swan riser does

not prevent the swirling of the mixture, which Tice shows

does swirl and deposits liquid unevenly on the riser walls.

(1) That the mixture, on reaching the top of the

riser, does not impinge on the flat surface of the header

above the riser and that the Swan method ignores what

Tice shows, that the mixture stream bends around the

corner at the top of the riser in a curved path and does

not impinge upon the ceiling; yet there is proof that the

liquid globules of gasoline in the mixture do strike the

top of the header at or near the riser, and this is a scien-

tifie fact based upon the action of inertia, for the liquid

gasoline being heavier than the air part of the mixture

as the turn is made, is thrown against the header due to

the force of inertia. The result is the impingement, so-

called, of the plaintiff’s patent and its effeets were to be

seen in all tests viewed by the court.

(ec) That the mixture, when it reached the T or the

so-called distributing zone, makes a right angle turn, is

challenged, because of the speed of the mixture and the

a

44

1144 Report of the Special Master

pulling force, the mixture is shown by the pictures to

bend as it changes direction at the right angle turns of

the manifold, and the Tice tests show the path of the

mixture in curves as large or as ‘‘sweeping’’ as the

diameter of the manifold will permit.

(f) That there is no spattering or rebounding of the

particles of gasoline in the mixture at the turns, although

such descriptive words fairly well describe what is seen

in the tests made, which were observed in this case and

the General Motors case, and were accepted by Judge

Westenhaver and the defendant in that case; only in tlie

new tests made by Tice with the aid of Neon lights and

stroboseope other phenomena appear and spattering and

rebounding are not the only visible results of the effects

of the forces in operation.

(g) That the liquid accumulates in eddies and forms

puddles or reservoirs in the header and center branch at

points just beyond the corners at the top of the riser;

which eddies or accumulations were first shown by Tice

tests and are ascribed by plaintiff’s expert to the tur-

bulence of the mixture and such eddies or accumulations

flatten out and practically disappear when there is a

change of direction in the flow of the mixture as it is

pulled from one end of the engine to the other as the

different cylinders aspirate, which change of direction

is also accompanied by the hot and cold blow-backs, and

the Tice tests show that there is some variation in the

richness of the mixture as received by the end cylinders

compared to the center cylinders.

(h) That after the mixture leaves the T it does not

flow in rectilinear lines to the branches, is untrue for

practically all of the liquid particles of the mixture are

on the walls and such as are in the air stream at the T

immediately come into contact with the walls to which

they adhere.

(i) That the liquid particles are not projected be-

yond the sharp inside corners at the ends of the header

and are not remixed in the gas stream, for Tice says that

the liquid is substantially all on the walls.

(j) That the absence of liquid accumulations of the

Swan method is untrue, for Tice points out eight places

where accumulations or reservoirs of liquid assemble due

to eddies.

(k) That such equality of distribution as has been

obtained by Swan has been due to the application of

Pes ct

oS sh tae = ‘ ee ysigthacncie

ee ° a is ‘ ire ‘Saas

49

Report of the Special Master 1145

heat on the exhaust jacket which has produced evapora-

tion in the riser, but for which heat application there

would be larger accumulations of liquid in the header

and branches; and that whatever commercial suecess the

Swan manifold has had, has been due to this application

of heat to the riser, which vaporizes most of the liquid

before it reaches the T, so that this vapor mixes with

the air and is evenly distributed to the cylinders.

(1) That increased economy is not obtained by the

Swan manifold since its lack of equal distribution re-

quires in practice the setting of the carburetor rich

enough to bring up to the necessary richness cylinders

that run lean, and this practice produces an unnecessary

richness in other cylinders and causes fuel waste.

Defendant urges that there is no proof of equality

of distribution by the Swan manifold; that the only way

to test equal distribution of liquid by a manifold to each

individual cylinder is to test the mixture in each eylin-

der separately from the mixture of other cylinders, and

to establish this claim the new proof of the Tice tests is

offered.

Defendant urges that commercial success, acquies-

cence by the taking of licenses, or statements of engi-

neers skilled in the art do not establish the Swan method

or that the mixture is equally distributed as against proof

tendered in the Tice tests; further, that road tests evi-

dence only the over-all performance of the engine and

give no information as to the method or quality of the

distribution.

As before stated, the court must weigh the evidence

and consider the effect of the new proof offered by Mr.

Tice in this ease.

The motion pictures show particles of the mixture

striking the roof of the header opposite the riser (plain-

tiff’s Exs. 117-123 inel.). Even if this be only a part

of the mixture, yet it is in the method of the patent and

is a phenomena described by Swan and one which has

been shown in all tests heretofore made.

The stroboscopic demonstrations on the glass mani-

fold at the White Plant showed the liquid particles hit-

ting the roof of the header opposite the riser, and liquid

particles were also seen hitting the roof of the header

opposite the riser at the road demonstration, with a glass

manifold on plaintiff’s test car.

The elbow demonstrations with and without the

stroboscopic lights demonstrated movement at the turns,

i ~ oe ee aE

ee ee OY eR ae Le

ea kent

a

46

1146 Report of the Special Master

notwithstanding the controversy between experts as to

the presence of turbulence as contrasted with eddies and

accumulations. Particularly as to the Murray & Tre-

gurtha manifold, with a glass header, it was apparent in

the tests that the mixture was unevenly distributed for

greater quantities of liquid flowed to the front of the

header than to the rear, and confirmed the testimony of

the failure of the Murray & Tregurtha manifold to give

equal distribution. Colchester (Trans. 1409), Kirkham

(Trans. 1427), and Sessions (Trans. 1543).

Finally, while Tice has shown much new information

as to the phenomena of the movement of the mixture in

the manifold which was unknown before the tests offered

in this ease, it cannot be said that the concept of Swan

did not add something new to the art of manifolding, so

that his patents may now be denied because of the new

proof offered by the Tice testimony in this ease. While

his method may not effect ‘‘scientifically equal distribu-

tion,’? he did give ‘‘commercially equal distribution”

and made an advancement in the art of manifolding.

DEFENSES TO THE PATENTS IN SUIT.

Defenses to the patents in suit urged by counsel are

indefiniteness, functional claims, belated amendments to

enlarge scope of application, contentions as to the file

wrapper, and anticipation of method claims of first Swan

patent, which will be considered in order.

The Defense of Indefiniteness is urged and seems

to be on the proposition that Swan patents do not de-

scribe all the forees which tend to distribute the fuel

mixture. Yet the law seems to be, if the applicant states

fully enough the scientific principles and the forces in-

volved in the operation of his method, that he is con-

sidered to have solved a problem and be entitled to a

patent.

The law only requires as a condition for protection

that the world be given something new and that the

world be taught how to use it. Diamond Rubber v. Con-

solidated, 220 U. S. 428, 435 (1911). The rule is stated

‘n Walker on Patents, 6th Ed., Sec. 218, pg. 292:

“Tt is enough to describe one particular mode

and one particular apparatus by means of which the

process may be performed with at least some bene-

ficial result.”’

47

Report of the Special Master 1147

While it might be said that Swan did not completely

and scientifically define his process or method, he de-

fined them sufficiently to meet the requirements of the

patent law. He did describe the apparatus in which the

method could be performed. The patent drawings show

to one skilled in the art not only one apparatus, but a

preferred apparatus and modified forms for carrying out

his process. Mr. Sessions, for the plaintiff, summarized

this (Trans. 1522):

‘‘In fact, my opinion that the Swan patents ade-

quately and accurately describe the structure and

operation of the Swan inventions, has been made

stronger by my observations of Mr. Tice’s demon-

strations, both of the glass manifold, the transparent

manifold on the engine, the moving pictures and the

operation of the engine at Detroit.’’

The Defense of Functional Claims is urged on the

basis that the claims do not say what the forces are or

how they are to be identified, which distribute the mix-

ture uniformly in all directions. The rule seems to be

that the method claims are valid, even though functions

may be recited in them.

The function of the Swan machine and the Swan

method is equal distribution of the mixture. This fune-

tion is not recited in any of the claims in suit, and if it

were such claim would not be functional unless patent-

ability depended upon recitations of the function.

For instance, in claim 9 the steps are the moving

of the mixture to the T from which it is distributed in

three directions and subjecting the movement to forces

which distribute the charges alternately in each direc-

tion in a plane transverse to the original movement.

These are steps in the method and not in the function,

which is the distribution of charges to the cylinders in

equal proportions. The method or process of this claim

is typical and is the orderly succession of movement of

the fuel mixture to the T, changing its direction of move-

ment at right angles and alternately sucking the mixture

from the T, first in one of three directions and then in

another.

Swan discovered that the effect of centrifugal force

“acting to throw the liquid particles out of the intended

aggregate line of travel, and thereby separating the mix-

ture constituents,’’ gave unequal distribution in the prior

art manifolds. His method proposes, pg. 2, line 23, first

ae

48

1148 Report of the Special Master

patent, ‘‘the liquid particles in the air fuel mixture in-

stead of being thrown in a direction not intended, as at

some curve, are influenced to move in a proper direction

and thereby the mixture will be delivered to. all the eyl-

inder ports substantially alike.’’ Thus by the effects of

centrifugal force and inertia, he claims for his method

the successive steps of moving the mixture from one

point to another, i.e., through the T with its turbulence

or its adjacent eddies, and thus from one stage of re-

mixing to another. Swan uses those forces for his new

purpose, but does not seek to claim the use of old and

well-known force. Thus with such known forces as the

suction from the engine and the inertia of the fuel par-

ticles, Swan discovers a method by which substantially

equal distribution of the constituents of the fuel mixture

was effected between the several cylinders of the engine.

So that in this case, as in New Fermentation Co. v.

Maus, 122 U. S. 413 (1887), where a similar argument

was made, this is a mode of treatment to produce a given

result and the patent requires certain things be done

with certain substances and in a certain order, and is

therefore a process or art.

The Defense of Belated Amendment Which Seeks

to Enlarge the Scope of the Application: Counsel urge

that Swan described and claimed the square section mani-

fold and disclaimed the round section in his first applica-

tion. Yet he illustrated a manifold round in cross-section

and described and claimed such a manifold. Disclaimers

are in the nature of estoppels and only apply where the

intention to abandon is clear and unequivocal. Nothing

less will prevent the resort to the doctrine of equivalents.

Winans v. Denmead, 15 How. 330 (1853).

In considering the disclosure of the original Swan

application, it is to be remembered that patent specifica-

tions and other disclosures are directed to those skilled

in the art. Without further considering the measure-

ments, figures and descriptions of the patent, it suffices

to say that it does not matter whether the Swan applica-

tion shows a round manifold or not, so far as this case

is concerned. Professor Cooley has stated that the mak-

ing of the manifold round instead of square would not

make any difference (Trans. 1180). Even if the patent

only showed a square manifold, infringement would ex-

ist under the doctrine of equivalents. Societe v. U. S.,

224 U.S. 309, 328 (1912).

- 49

Report of the Special Master 1149

That the Swan method was disclosed in the original

application was held by Judge Westenhaver and by the

Commissioner in the General Motors cases, and recently,

in considering the Commissioner’s report in the second

General Motors case, Judge Hahn said on this subject :

‘“‘It is enough that the language at pages 243

(14-25) and 244 (11-16) suggest a principle or meth-

od of operation, (or a sufficient basis for amendment)

not dependent upon specific form of device, and no

language of the specification directly or by impli-

cation excludes the possibility that the essence of

Swan’s invention may be a principle or method of

operation not dependent for its successful operation

upon any particular embodiment as to form.’?

The authority urged by counsel, Railway Co. v.

Sayles, 97 U.S. 554 (1878), holds that new matter could

not be added which was at variance with the original ;

in this case the holdings have been that the method was

disclosed in one original application.

That a patentee may amend his specification from

time to time, making no additions in substance or ma-

terial variations from the original disclosure, is well

established; Michigan Carton v. Sutherland Paper Co.,

29 Fed. (2d) 179 (C. A. 6, 1928), where Judge Knappen

said, at pg. 184:

“The rule is that insertions by way of amend-

ment in the description or drawing, or both, of a pat-

ent application do not invalidate the patent, if they

are only in amplification and explanation of what

was already reasonably indicated to be within the

invention; and this rule applies with special foree

where the insertion was required by the Patent Office.

General Electric Co. v. Cooper, ete., Co., (C. C. A. 6)

249 F. 61, 64, certiorari denied 246 U. 8. 668, 38S. Ct.

336, 62 L. Ed. 930. And if an inventor comes to bet-

ter understanding of the principles of his invention

while his application for patent is pending, an amend-

ment of his claim to conform thereto does not intro-

duce any original matter nor enlarge his invention,

and is within his legal rights. Cleveland, etc., Co. v.

Detroit, etc., Co., (C. C. A. 6) 131 F. 893, 857, et seq.;

Proudfit Co. v. Kalamazoo Co., (C. C. A. 6) 230 F.

120, 141.”

It hardly comes with good grace for a member of

the National Automobile Chamber of Commerce to

50

1150 Report of the Special Master

charge that the plaintiff has interfered with their mani-

folding business. The record shows that when manufac-

turers were struggling with the old island and other types

of manifolds, that Swan showed them the advantages of

the Swan manifold which would handle a wet mixture

better than had ever been done before. At expense to

plaintiff, defendant was taught the merits of the Swan

invention and manifolds were ‘‘tailored’’ to operate on

defendant’s engines. And now, plaintiff is entitled to

protection for its patent, from infringers who have

copied the Swan manifold.

File Wrapper Contentions: Defendant urges that

the essence of the invention as Swan originally con-

ceived it lay in a square or rectangular cross-section

manifold with flat bottom, flat ceiling and flat surfaces

against which the mixture could impinge, with the avoid-

ance of liquid accumulations and the absence of curves,

both in cross-section and in the direction of the flow of the

mixture. Defendant asserted similar limitations for

plaintiff in the General Motors cases. Yet on such broad

disclosure in the first instance Swan should not now be

estopped to assert the broad construction of the present

patented claims. Examination of the Swan file wrapper

could not lead one to believe that Swan intended to limit

himself as defendant urges. Of the meaning and effect

of patent claims, Walker on Patents, 6th Ed., See. 219,

says:

“To use the words of the Supreme Court, ‘the

claims measure the invention,’ and ‘apprise the

9°99

public of what is still left open to them’.

and in Section 234:

‘‘Likewise a patentee of a manufacturer is not

restricted to a construction which he describes in the

specification merely as ‘preferable’ unless specifi-

cally limited by the claims.”’

If, as defendant urges, the essence of this invention

was the square manifold or flat bottom, the avoidance

of curves and the avoidance of liquid accumulations, such

issue as to supposed limitations was disposed of in each

of the General Motors cases and has heretofore been

commented upon.

Method Claims of the First Swan Patent are not

Anticipated: Defendant urges that method elaims 4, 5

and 8 are anticipated in the Murray & Tregurtha mani-

_—

Report of the Special Master 1151

fold if these claims be construed to cover defendant’s

‘Special Six’? manifold which is asserted to be identical

in shape with Murray & Tregurtha, also method claims 9

and 10 are urged as literally anticipated by Murray &

Tregurtha.

The burden of proof that the prior art devices of

Murray & Tregurtha operate like Swan and realize the

Swan method of operation is ever upon the defendant.

The rule is that the burden rests upon the defendant to

prove that the prior art device operates like the patented

device or like defendant’s device. Coffin v. Ogden, 18

Wall. 120 (1870).

Defendant cannot escape this issue for, as stated by

Judge Westenhaver in Fulton v. Bishop & Babcock, 284

Fed. 774 (1922), and again in the 6th Cireuit, 17 Fed.

(2) 999 (1925) in the same case, Bishop & Babcock v.

Fulton, 37 Fed. (2) 293 (1930), the second syllabus is:

‘‘Patentee of process is entitled to have patent con-

strued broadly enough to cover the meritorious thought

of his process.’? The opinion is by Judge Moorman, and

for this rule he relies upon Tilghman v. Proctor, 102 U.S.

707, 728 (1880), and Fibel Process v. M. & O. Paper Co.,

261 U. S. 45, 63 (1923).

Defendant relies upon the rule of Knapp v. Morss,

150 U. S. 221, 228 (1893), that what would infringe if

later would anticipate if earlier. Judge Westenhaver

thought that the Matheson manifold was the nearest to

the Swan, and the proof is here lacking that the Murray

& Tregurtha manifold is identical with Swan in respect

to performance, mode of operation and achievement.

Defendant also urges that the 20th Century manifold

and the Fiat also anticipated the method claims, and

what has been said here as to Murray & Tregurtha ap-

plies equally as to these.

PRIOR ART.

All of the prior art relied upon in this case was

relied upon and considered in one or both of the General

Motors cases. The conclusion there reached was that

The Swan Patent is a Pioneer in Manifolding.

The manifold art was illustrated and discussed in

the articles by Mr. Tice in Motor (plaintiff’s Ex. 37) for

April and May, 1911, and the Swan principle of manifold-

ing seems to have met the difficulties experienced by in-

ventors and manufacturers of gasoline engines. Gordon

a

1152 Report of the Special Master

Form Lathe Co. v. Walcott Machine Co., 32 Fed. (2) 55

(C. A. 6, 1929), Byers v. Keystone Driller, 45 Fed. (2)

283 (C. A. 6, 1930).

The opinion of Judge Westenhaver, with the af-

firmance of the Court of Appeals, states the rule that

patents are to be construed according to the order of im-

portance and the degree of the advance in the invention _

patented. Any doubt as to the scope or the effect of the |

patent should be resolved in favor of the patentee, with

increasing liberality where the patent is basic and marks

a great advance in the art, as Mr. Chief Justice Taft said,

in Eibel Process v. M. & O. Paper Co., 261 U.S. 45 (1923,

pg. 63):

‘In administering the patent law, the Court

first looks into the art to find what the real merit of

the alleged discovery or invention is and whether

or not it has advanced the art substantially. If it

has done so, then the Court is liberal in its construe-

tion of the patent to secure to the inventor the re-

ward he deserves * * * the application of the rule

‘ut res magis valeat quam pereat’ has been sustained

in so many eases in this Court.’’

fd) |

bo

The prior art relied upon consists of

(1) Patents in Exhibit 398, 29 in number, which

were cited by the Patent Office Examiner in one or other

of the Swan applications and were relied upon and ex-

hibited to the court in the first General Motors case.

(2) Other Patents and Publications, in the second

General Motors case, which included patents to Sundh

(defendant’s Ex. 394) and Koken & Pichl (defendant’s

Ex. 395).

(3) Manifolds Shown in Exhibit 380, 6 in number,

not shown in patents, all of which were in the second

General Motors case and some in the first case. Consid-

ering these prior art items, all of the patents in the first

eroup relied upon are paper patents which have had no

commercial use (Trans. 1582). While a paper patent

may anticipate, yet if it never found commercial favor,

it has little foree and credit on the question of non-in-

vention. Republic v. Youngstown, 272 Fed. 386 (C. C. A.

6, 1921), Wellman v. Cramp, 3 Fed. (2) 531 (C. A. 6,

1925), and Gordon v. Walcott, supra.

From the large number of manifolds used, many are

illustrated in the Tice articles, some in Exhibit 380, and

Report of the Special Master 1153

Matheson is shown in both the Tice articles and in Ex-

hibit 380. The record does not show that any of the

6-cylinder manifolds of the Tice articles or of Exhibit

380 were in production when Swan entered the field, ex-

cept perhaps the Fay & Bowen and the F ‘anklin, which

manufacturers later adopted the Swan manifold. Of the

users of 6-cylinder manifolds illustrated by Tice, only

three, Franklin, Pieree Arrow and Oldsmobile were still

in business at the time of the trial (Trans. 1059) and

these three became licensees adopting the Swan manifold

(Trans. 31).

The record fails to show that anyone, except de-

fendants contesting the Swan patent, has ever claimed

that the prior art manifolds employed the Swan mode of

operation. In this ease Mr. Tice testified that none of

the manifolds in defendant’s Exhibit 380 employed the

Swan mode of operation and that none of them realized

equal distribution (Trans. 1084).

Since the manifolds of defendant’s Exhibit 380 are

conceded by the experts of both parties to be those near-

est to Swan, all evidence of other manifolds in patents

or publications loses its probative effeet if those of Ex-

hibit 3880 fail as to prior art.

The rule is that the burden is on the defendant to

show that the prior art device operated like the patented

device and performed its functions. Defendant must

show that the prior devices ‘t produced are ‘‘eapable of

producing the results sought to be accomplished,’’ as re-

quired in Coffin v. Ogden, 18 Wall. 120 (1870). Defend-

ant cannot eseape this issue for, as stated by Judge Wes-

tenhaver in Fulton v. Bishop & Babcock, 284 Fed. 774

(1922), and again in the 6th Cireuit Court of Appeals, 17

Fed. (2) 999 (1925), in a Per Curiam opinion on rehear-

ing, pg. 1007 (1927), anticipation is not effected by an

arrangement which was not adopted and used to perform

the funetion which was performed in the patented inven-

tion. So, as the Supreme Court said in Coffin v. Ogden,

_ Supra, “the burden of proof is upon defendant to prove

these things, and every reasonable doubt should be re-

solved against him.’’ Defendant must prove that prior

devices were capable of and adopted or used to perform

the Swan functions or embody the Swan principle of op-

eration. The record is clear, that if any of the mani-

folds of the prior art ever did operate like Swan or

realize equal distribution, such was accidental and unree-

ognized.

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1154 Report of the Special Master

That the Swan method might have been performed

by one or another of the prior art manifolds if operated

under certain conditions is no answer; for the rule is well

established that a method or process cannot be anticipated

by a device in which it might have been performed. Car-

negie Steel Co. v. Cambria Steel Co., 185 U.S. 403 (1902) ;

Nestle-LeMur v. Eugene, 55 Fed. (2) 854 (C. A. 6, 1932).

Murray & Tregurtha Manifold. Experts for both

parties in this case agree that this manifold comes near-

est to looking like Swan and when placed on a 3-eylinder

engine as it was used, ought to come nearer than others

to doing what the Swan manifold does on a 6-eylinder

engine. The experts also agree that fuel distribution to

a 6-cylinder engine is more difficult than distribution toa

3-eylinder engine (Trans. 1179), so if Murray & Tregur-

tha solved the problem that Swan solved, with the 3-cylin-

der engine, the Murray & Tregurtha manifold would not

necessarily anticipate one who solved the more difficult

problem of the 6-cylinder engine. Tests of the Murray &

Tregurtha glass manifold (defendant’s Ex. 382) failed to

show equal distribution on a 3-cylinder engine, so there is

no need for the court to speculate as to what could be done

on a 6-eylinder engine. It would seem to be sufficient to

say that the Murray & Tregurtha manifold cannot be held

to anticipate Swan because there was no problem of dis-

tributing the mixture at the end of each of the branches.

Fiat manifold. Of the 6-eylinder manifolds, Mr.

Tice as defendant’s expert, picked the Fiat manifold as

best of all. This is based on the testimony as to a Fiat-

manifold-Greuter-carburetor device which is claimed to

anticipate Swan. The Fiat manifold (defendant’s Ex.

272) with the testimony of Rowan (Trans. 1480-81, 1490)

shows efforts to correct fuel distribution, failure, and that

the Italian experts were called to remedy trouble with

the manifold, which efforts were unsuccessful. The most

that ean be said for the Fiat manifold is that, as modified

by the witness, it can only rate as one of several prior

efforts and failures to do what Swan did.

Matheson Manifold. In the first General Motors

‘ase Judge Westenhaver picked Matheson and Peerless

as the best of the manifolds in the prior art, following

the testimony of plaintiff’s expert, Mr. Sessions, to the

same effect. Also in the second General Motors case

defendant’s expert, Schwartz, considered the Matheson

manifold to be the best.

The Matheson manifold is also one of the 76 mani-

folds illustrated in the Tice article in which he says that

.

=

Report of the Special Master 1155

they fail to effect equal distribution, and commented

upon the inability of the devices of the then existing

manifold art to equally distribute the fuel mixture. The

faults of the Matheson manifold were testified to by

several witnesses. Dean, who had operated a Matheson

ear, said the center pair of cylinders, 3 and 4, fouled and

were apparently getting more mixture than others

(Trans. 1395-6). Parker, who had operated a Matheson

ear with Matheson manifolds in 1911, said the motor was

never smooth or flexible and missed when running slow

(Trans. 1400). Greuter, who had been a Matheson en-

gineer and knew the Matheson manifold, said that on

tests he had made the cylinders connected to the center

branch would invariably get more gas than the end ones

(Trans. 1402). The Matheson manifold, like the others,

must rate as a prior effort and failure instead of a device

anticipating the Swan invention.

Pierce Arrow Manifolds. Two types of Pierce Ar-

row are relied upon (defendant’s Ex. 252), and the

modified Pierce Arrow shown in Exhibit 249 (also

shown in Ex. 380).

These manifolds were used upon one of the finest

and highest priced cars, its engineering and equipment

being considered of the highest order. The manifold

shown in defendant’s Ex. 251 was unsatisfactory, and

witnesses were called to show how the standard Pierce

Arrow manifold was improved, yet the Pierce Arrow

manifold as modified is not considered as close to Swan

as Matheson or Peerless by any of the experts. These

also must be regarded as a prior effort and failure before

the advent of Swan.

Fay & Bowen Manifold. This manifold (defend-

ant’s Ex. 229) was also presented in the trial in the Gen-

eral Motors case, and the proof it offered was considered

by Judge Westenhaver only as cumulative. This mani-

fold was also used on marine or other 6-cylinder engines,

and its performance was inconsistent with any claim of

the Swan principle or result, for Ware said “the Swan

manifolds were very much better’? (Trans. 1438, 1442).

This also represents a prior effort and failure.

New York Yacht & Engine Manifold (20 Century

Manifold). This is shown in defendant’s Exhibits 380

and 268. Testimony is meager and fails to show that it

realized the Swan principle or the Swan results. It ean

only be classed as a prior effort which does not anticipate.

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1156 Report of the Special Master

INFRINGEMENT.

The Nash Company, like many other automobile

manufacturers, had been using the island type of mani-

fold for several years (Trans. 404). After the plaintiff

conducted experiments at the Nash plant, showing the

improvement to be effected by the Swan manifold over

the island manifold, Nash adopted the manifold which is

claimed to be the Swan manifold, there being this dif-

ference, the manifold as adopted was of round cross-see-

tion instead of square, which Professor Cooley says

makes no difference in operation. This manifold became

standard equipment with Nash and defendant has never

gone back to the island manifold since the change was

made,

That the manifolds adopted by Nash (plaintiff’s

Nxs. 41-A, 42-A, 43-A, 45-A and 46-A) and disclosed in

drawings (plaintiff’s Exs. 40 to 46 incl.) operate like and

eet the same results as Buick manifolds (plaintiff’s Exs.

9, 10 and 11), which Buick manifolds were held to in-

fringe in the General Motors suits, is the testimony of

Engineer Wahlberg, Vice-President in charge of En-

eineering of the Nash Motors Company (Trans. 418, 419,

427, 428). The qualifications of Engineer Wahlberg are

not in question. A strong case is one which can be proved

by cross examination of opposing witnesses, said Mr.

Chief Justice Taft, Eibel Process Co. v. M. & O. Paper

Co., 261 U.S. 45.

Such result is further confirmed by the testimony of

plaintiff’s experts, and the outdoor tests which included

economy, hill-climbing and acceleration tests. These are

the standard tests accepted by the automobile and in-

ternal combustion engine industry for testing manifolds,

carburetors and equipment to determine operation and

relative performance. The challenge of the defendant

is that such standard tests should now be discarded in

favor of the laboratory tests as conducted by Mr. Tice

on manifolds driven by a dynamometer and tests with a

Cox indicator.

The broad claims in suit, Patent No. 1,536,044,

claims 4, 5, 8, 10, 20, 22 and 23, are infringed for the same

reasons that they were infringed by the manifolds in the

two General Motors cases.

The method claims of the first patent cover what

Judge Westenhaver characterized as ‘‘the new and

original principle of operation’? which Swan invented.

Some of these claims cover a 3-step method and some of

eee ee Ne eee ee ees

—

57

Report of the Special Master 1157

them a 2-step method, and some are limited to a six-

cylinder engine. Claim 10 is typical, is limited to a six-

cylinder engine, employs a 3-step method, which are the

characteristics of the defendant’s manifolds charged to

infringe. The claim may be analyzed into various steps,

as follows:

(1) ‘‘A method of distributing a fuel mixture to a

six-cylinder engine which includes moving the

mixture to a zone through which it is distributed

in three directions in a plane transverse to said

movement,

(2) subjecting said movement to forces tending to

distribute charges in alternating directions and

in uniform character in all of said directions,

and

(3) further subjecting the movement of the mixture

towards adjacent pairs of cylinders to forces

tending to qualify the charges for said pairs in

substantially equal portion of wet mixture con-

stituents.’

The opinion evidence and the tests of plaintiff show

that defendant’s manifolds employ all of the steps re-

cited in this claim, and defendant denies that the Swan

manifold so operates.

Notwithstanding defendant urges that the claims

are invalid because the method claimed is not performed

by the Swan manifold, plaintiff must prevail on this is-

sue which has been considered in the discussion of the

law on the subject.

Improved Performance of Infringing Device, No De-

fense. It would not avail defendant if it had established

that the Swan manifold with the round cross-section per-

forms better than the Swan manifold with a square cross-

section. This is only a matter of degree and the same

claims were made by witnesses Sage and Bower in the

General Motors cases as to the Buick manifolds there

held to infringe.

The performance and operation of the Buick mani-

folds tested with the Swan was so clearly alike that they

could not be fairly distinguished (Trans, 128-157 and

187-88), which is also supported by the admission of wit-

hess Sage as quoted by witness Pelton (Trans, 1229),

The rule is that where there is a mere improve-

ment on the device, that infringement can never be

58

1158 Report of the Special Master

avoided by thus improving the patented device and mak-

ing it work better. This rule is stated by Mr. Chief Jus-

tice Taft in Temco v. Apco Co., 275 U.S. 319 (1928) at pg.

328, as follows:

“Tt is well established that an improvement can-

not appropriate the basic patent of another and that

the improver without a license is an infringer and

may be sued as such.”’ Cochrane v. Deaner, supra,

and other cases.

DEFENSE OF LACHES.

Defendant urges that plaintiff has been guilty of

laches in the prosecution of this suit filed late in 1926 and

brought to trial in September of 1932. Before consider-

ing the application of such principle to this patent cause,

a review of the steps taken in the litigation over the pat-

ents in suit seems necessary.

The bill of complaint in this cause and the petition

in the first General Motors case were both filed in No-

vember, 1926. The General Motors case was heard by

Judge Westenhaver in April, 1927, and judgment entered

on September 27, 1927; decision in the Court of Appeals

was had in June, 1930, and rehearing denied November

5, 1930, after which Writ of Certiorari to the United

States Supreme Court was denied January 12, 1931.

By stipulation of counsel this case was dropped

from the trial calendar in May, 1927. The second patent

in suit was issued in July and the plaintiff restored the

ease to the trial calendar, filing a supplemental bill of

complaint in September, 1927.

Following Judge Westenhaver’s decision in the Gen-

eral Motors ease, on November 12, 1927, counsel moved

to reopen the General Motors case, claiming newly dis-

covered evidence in the Murray and Tregurtha matter,

and on the 18th of November amended its answer in the

‘ase at bar by adding such new matter to its defenses

here.

This case was on the calendar ready for trial; par-

ties stipulated parts of the General Motors record as ap-

pears by plaintiff’s Ex. 25; and any part of the General

Motors record that either party desired was to be used

in this ease. After Judge Westenhaver’s death in 1928,

by consent of counsel the case was again dropped from

the trial calendar during the appeal of the first General

Motors case and the case was not reinstated until Oc-

tober of 1929.

w—

59

Report of the Special Master 1159

On November 18, 1929, his Honor, Judge Jones,

ordered this case be passed pending the decision of the

Court of Appeals in the General Motors case, and the

first General Motors case was concluded by the denial of

Writ of Certiorari in January, 1931.

Meanwhile the second General Motors case had

been filed and was set for hearing April 15, 1931, and

awaiting the outcome of this second case, counsel stipu-

lated an extension in the case at bar until May, 1931.

Also in May defendant amended its answer to inelude the

20th Century manifold as used by it and by General :

Motors as an alleged prior use. Also, defendant offered :

two more amendments in May, 1931, regarding Fiat and 5

other manifolds, to which amendments plaintiff made no

objection but asked delay of trial until the newly as-

serted defenses could be investigated. Counsel there-

upon agreed that the case be dropped from the trial

calendar, ‘

Trial of the second General Motors case began in the

Fall of 1931 and the case was submitted to the Commis-

sioner late in the Spring of 1932. After the testimony

was concluded in that case, the case at bar was reinstated

on the trial calendar and the order of reference to the

Master bears date of May 26, 1932. After the reference

the Master stated to counsel for both parties that he

would not proceed with the trial of this case until the

General Motors case then on hearing was concluded. The

Commissioner’s report was filed with the District Court

on August 15th, and after several conferences with coun-

sel about proceeding to trial, the first testimony in this

case was taken on September 28, 1932.

Counsel for defendant rely on the leading case of

Johnston v. Standard Mining Co., 148 U. S. 360 (1893),

where it was stated that the mere institution of a suit

does not relieve from the charge of laches and that if

plaintiff fails to diligently prosecute the action that the

consequences are the same as though no action had been

begun.

Counsel further rely upon Kellogg Switchboard &

Supply Co. v. Dean Electric, 231 Fed. 197 (1915), where

Judge Clarke cited Johnston v. Standard Mining, supra,

and stated that plaintiff had shown such lack of diligence

in the prosecution of its claim that it deserved no relief

ina Court of Equity, and further stated that ‘laches

is a defense which can be made without any pleading to

support it.’’ There seems to be no analogy between the

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60

1160 Report of the Special Master

facts of that case and the case at bar for there the plain-

tiff did absolutely nothing for a period of ten years. In

this case the plaintiff has been busy prosecuting matters

concerning this patent and defendant has acquiesced in

delays except the delays which have followed upon Court

orders.

Defendant has not pleaded laches as a defense and

has offered no support for such defense, whether pleaded

or otherwise, and under the new equity rules it seems is

not entitled to raise a defense not pleaded. Walker on

Patents, 6th Ed. See. 632, pg. 728:

‘The defense of laches could formerly be made

in a demurrer, or in a plea, or in an answer, or in

an argument on the hearing without any pleading to

support it. Of course now this defense can be made

only by answer or motion to dismiss accordingly as

the situation permits.”’

The rule also seems to be that a mere lapse of time

alone does not constitute laches, 48 Corpus Juris, 331.

Accompanying the lapse of time in the case at bar has

been a litigation against others for royalties under li-

censes concerning the patents in suit. While it is true

that the validity of the patents could not be attacked in

such suits, the attack made by the defendant there was

based upon the same prior art and the same kind of de-

fenses raised in the ease at bar. Delay in the prose-

cution of other suits for infringement of the same patent.

48 Corpus Juris, 333, citing Plecker v. Poorman, 147 Fed.

528 (C. C. Ohio, 1905), U. 8. Mitis v. Detroit, 122 Fed.

863 (C. C. A. 6, 1903).

Laches like any other equitable defense must be

maintained in equity and good conscience. Here the de-

fense is admittedly maintained by the National Automo-

bile Chamber of Commerce, of which General Motors

Corporation, defendant in the prior cases has been a

member prior to the beginning of all litigation on these

patents (plaintiff’s Exs. 57-8). The several members

of the Chamber contribute to the defense of patent suits

which are defended by that body. Reo v. Gear Grinding,

42 Fed. (2) 965 (C. C. A. 6, 1930).

Such being the relationship between General Motors

and Nash Motor, the real defendant here, both being

members of the Chamber, plaintiff should not be penal-

ized and this defendant cannot be heard to take advan-

tage of a situation created by one of its privies, where

—_

61

Report of the Special Master 1161

plaintiff elected to pursue the General Motors and estab-

lish its rights on issues which also arise in this litigation.

In Frank V. Smith v. Pomeroy, 299 Fed. 544 (C.0.A4. 2

1924) Judge Manton says at pg. 547:

“* * * that the appellant was exeused for the

delay in suing for infringement by reason of the

previous Yates litigation, taken in connection with

the concurring circumstances above described. We

regard these facts and circumstances as justifying

an appeal to the conscience of a court of equity as

a sufficient excuse for the delay. Such delay should

not work to the advantage of one who has fraudu-

lently and deliberately infringed, and who has stood

behind and actively participated in a stubborn at-

tack upon the validity of the patent by another liti-

gant. They should not profit by the appellant’s help-

less condition, nor be permitted to escape from the

results of their wrongdoing.’’

CONCLUSION.

This case for the first time tests the validity of the

Swan patents. In the second General Motors case the

Commissioner concluded his report with this statement:

‘Judge Westenhaver, upon mature deliberation,

found that Swan sought to, and did solve the prob-

lems in the existing art in manifolds by introdue-

ing a new and original principle of operation. He

found the gist of the Swan invention to consist in

bringing the gaseous mixture from the carburetor

to the header in perpendicular or straight lines, then

abruptly changing its course at right angles in the

header, and then again changing its course at right

angles from the header into the branches, Having

before him the judgment and the opinion in the for-

mer case, with the affirming opinion on appeal by

the 6th Cireuit Court of Appeals, the Commissioner

would be presumptuous, indeed, to attempt to set

them aside, or even not to give full effect to these

judgments. ”’

Notwithstanding the new proof offered in this case,

the so-called Tice tests which have shown better the phe-

nomena of the action of forces in a manifold than it has

ever been shown before, the Swan patents are found to

be improvements giving ‘‘commercially equal distribu-

62

1162 Report of the Special Master

tion,’’ if not ‘‘scientifically equal distribution,’’ and are

entitled to the protection of the court.

Many protracted hearings have been held in this pro-

ceeding and the testimony has covered a wide range.

Tests were made which the Master attended and there

observed the operation of manifold apparatus, and the

results of the tests are offered in evidence. Some of the

evidence has been received over objection, so that the

court may have before it all of the claims and the proof

offered by both parties. Claims of new issues in this case,

supported by new evidence, have been heard at length by

the Master, for it was believed by all parties that a full

and complete hearing should be had in this proceeding.

The Master reports that on the 30th day of June,

1933, he handed draft copies of this report to counsel

and asked that errors and corrections to be made be

pointed out by counsel by July 12th, 1933, that the Mas-

ter might consider and make such corrections insofar as

the Master believed proper and in keeping with the views

as expressed in the report. Such suggestions have been

received and corrections made in the report, and there-

after, again on July 25th, 1933, draft copies of the cor-

rected report were handed to counsel with the request

that errors and corrections to be made be pointed out

by August 3rd, 1933, and such suggestions have been

received and the corrections made. Two copies of this

report have been furnished to counsel for each party.

Herewith I hand up for your Honors the following:

(1) Original files and papers from the Clerk

of the Court.

(2) Stipulation.

(3) Transcript of testimony, together with

plaintiff’s exhibits Nos. 1 to 168, inclusive, and de-

fendant’s exhibits Nos. D-201 to 410a inclusive.

(4) Briefs of Counsel.

(5) Suggested Findings of Fact and Conclu-

sions of Law submitted by counsel.

(6) Report of Special Master.

Respectfully submitted,

Wma. B. Woops,

Special Master.

August 21, 1933.

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