Appendix — Lincoln Co. v. Stuart-Warner Corp.

Supreme Court brief1937

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Supreme Court of the Brited Staten |f

Ocrosger Term, A. D. 1937.

No. 608 ;

LINCOLN ENGINEERING CO. OF ILLINOIS,

Defcndant-P etitioner,

v8.

STEWART-WARNER CORPORATION,

, Plaintiff-Respondent.

APPENDIX TO RESPONDENT'S BRIEF. -

CONTAINING ~— |

1. Sec. 4884, Sec. 4886 and Sec. 4888 Revised Statutes. ian

2. The Opinions, Findings and Conclusions of the 7th OC. C. A.

and the District Court in This Cause.

3. Excerpts from the Opinions in the 12 Cases Cited in Foot-

note 4 to the Opinion of the United States Supreme Court -

in Bassick v. Se ee any. Aen ee :

415, 80 L. Ed. 1251. ' 48

4, Copies of Phonogragh Patents Reficred to tn Tisegaslens a8

of Leeds & Catlin v. Victor.

] Lyyn A. Wriume,

Counsel for Respondent.

4 PO Oe Te EET A ELIS 5 oD

TABLE OF CONTENTS.

Revised Statutes, Sections 4884, 4886 and 4888

The opinions of the Seventh Circuit Court of Appeals

and the District Court in this case as follows:

(a) Opinion of Judge Lindley upon merits of case

delivered July 15, 1936 (R. 603-620)

Stewart-Warner Corporation v. LeVally

and Lincoln Engineering Co., 15 F.

Supp. 571-580

(b) Findings of fact and conclusions of law en-

tered by Judge Lindley on July 15, 1936 (R.

431-437) ......

Stewart-Warner Corporation v. LeVally

and Lincoln Engineering Co., 15. F.

Supp. 571-580.

rehearing delivered October 5, 1936 ,

Stewart-Warner Corperation v. LeVally

and Lincoln Engineering Co., 16 F.

Supp. 778-783.

(d) Opinion of Judge Lindley upon application for

stay of injunction delivered October 26, 1936.

Stewart-Warner Corporation v. LeVally

and Lincoln Engineering Co., 31 U.S.

P. Q. 195-197.

_(e) Opinion of United States Circuit Court of Ap-

peals for the Seventh Circuit delivered on

June 29, 1937 (R. 628-644)

Lincoln Engineering Co. of Illinois v.

Stewart-Warner Corporation, 91 F.

(2d) 757-766.

Excerpts from the opinions in the 12 cases cited in

footnote 4 to the opinion of the United States Su- .

preme Court in Bassick v. Hollingshead and Rogers 4

v. Alemite, 298 U. S. 415, 80 L. Ed. 1251............ 43)

Copies of phonograph patents referred to in discussions 4

of Leeds & Catlin v. Victor: ...............0.0000. 71%

(1) Berliner 534,543 a

(2) Edison , 200,521

(3) Edison 227,679

(4) Bell & Tainter 341,214

(5) Berliner 372,786

(6) Berliner 382,790

| ee | ‘i

4 REVISED STATUTES. .

» Referred to on pages 97, 94 and -87 respectively of re-

jpondent’s brief. The statutes here incorporated are those

n force on the date of the filing of the application for the

mtler patent in suit on February 19, 1923. They were

subsequently amended to provide for plant patents. .

Section 4884. Every patent shall contain a short ~

title or description of the invention or discovery, cor-

rectly indicating its nature and design, and a grant

to the patentee, his heirs or assigns, for the term of

seventeen years, of the exclusive right to make, use,

and vend the invention or‘ discovery throughout the

United States, and the Territories thereof, referring

.. to the specification for the particulars thereof. A\copy

. - of the specification and drawings shall be annexed to

* the patent and be a part thereof. Migs =

Sorrow 4886. Any person who has invented or dis-

covered any new and useful art, machine, manufacture,

or composition of matter, or any new and useful im-

provements thereof, not known or used by others in

this country, before his invention or discovery thereof, -

and not patented or described in any printed publica-

tion in this or any foreign country, before his invention

or discovery thereof, or more than two years prior to

his application, and not in public use or on sale in this’

country for more than two years prior to his applica-

tion, unless the same is proved to have been aban-

~ doned, may, upon payment of the fees required by law,

and other due proceeding had, obtain a patent therefor.

Secrion 4888. Before any inventor or discoverer

shall receive a patent for his invention or discovery

he shall make application therefor, in writing, to the

Commissioner of Patents, and shall file in the Patent

Office a written description of the same, and of the man-

_ner and process of making, constructing, compounding,

and using it, in such full, clear, concise, and exact terms

as to enable any person skilled in the art or science to

which it appertains, or with which it is most nearly

_ connected, to make, construct, compound, and use the

3°

329s PERE Ls nO e ay

JPREME COURT OF THE UNITED STATES.

# No. 608.—OcronER Trem, 1937.

» Engineering Company of Illi-) On Writ of Certiorari to

ze nois, Petitioner, the United States Circuit

a ¥ vs. Court of Appeals for the

¥ Stewart-W arner Corporation. Seventh Circuit. ~

a [March 28, 1938. ]

i Mr. Justice Ropeers delivered the opinion of the Court.

he District Court and the Circuit Court of Appeals® have h

| § petitioner guilty of contributory infringement of the Butler

ent No. 1,593,791. We granted certiorari because of alleged

Bflict with our decision in Rogers v. Alemite Corporation reported —

h Bassick Manufacturing Co. v. Hollingshead Co., 298 U. S.

&. Like that in the Rogers case, the patent in suit has to do

ith th apparatus for lubricating bearings, especially those of auto-

hobil by the use of a nipple or fitting connected with the bear-

, & gun consisting of a compressor or pump for propelling the

at under high pressure, a hose or conduit to connect the

ip with the fitting, and a means of coupling the conduit to the

ing to make a tight joint during the operation of greasing.. Both

dent and petitioner market apparatus for pressure lubrica-

a, including fittings and guns. The charge is that the petitioner

Us fittings such as are described in the respondent’s patent which

fe usable, and intended to be used, in connection with the gun

id ébupler of tie patent.

i not be repeated. Butler’s alleged invention is in the same

ld and deals with similar apparatus as did Gullborg’s patent,

ed. in the Rogers case. As there shown, it was old practice

le lubrication of bearings to use in combination a fitting con-

i with the bearing through which oil or grease was to be

“416 F. Supp. 671; 16 F. Supp. 778. A

Snr. (24) 757.

t was said in our earlier detision in respect of the prior art

‘

OTE ELIE IIE oes , NN

; 7

2° _ Lincoln Engineering Co. vs. Stewart-Warner Corp.

propelled into the bearing and a gun, which was joined to the

fitting by a coupler. In the greasing operation the coupler ig

fastened to the head of the fitting and the pump is operated’ to

drive the lubricant through the fitting to the bearing. Not on)

¢ was this combination old but the elements long used in the art

varied in design and dimension. Fittings were of different sizes

and shapes and had diverse arrangements for their closure when

. not in actual use for the injection of lubricant. Guns were of

many sizes and types. Various forms of coupler had been used

for sealing’ the connection between the pump hose and the fitting.

In the Rogers case it appeared that fittings with lugs or pins to be

engaged by the coupler were old but that: Gullborg had obtained a

patent for a new form of pin fitting the novel feature of which

was means of automatic closure and opening for admittance of the

grease in connection with a pin which passed through the bore of

the fitting. This was not the patent there in suit. Gullborg also

obtained a patent in which the novel feature of certain claims was

a bayonet-slotted coupler so designed as to cooperate with a pin

fitting (including one of the type covered by his other patent), to

permit the building up of very high pressure and, by its operation

upon disengagement, to obviate exudation of grease about the head

_ ~ Of the fitting. In other claims Gullborg claimed a combination of -

er @ pin fitting, of the type covered by his fitting patent, a pump, a

discharge conduit secured to the pump, and a hollow coupling

member of any type (whether old and unpatented or of the im-

proved construction disclosed in the patent) for receiving the

closed end of the fitting. In the Rogers case the owner of the

patent asserted the sale of any grease gun for use with the patented

pin fitting of Gullborg, or the sale of any pin fitting, whether of

the Gullborg type or of an old type, susceptible of use with the

improved Gullborg coupler, constituted contributory infringement

‘of the patent. We held that as the combination of pump, connecting

conduit, coupler, and fitting was old, Gullborg could not, by invent :

ing a new and improved type of coupler or fitting claim either of

these in combination with the old forms of the other elements so a8

to exclude the public from the use and sale of the old forms of fittings

or grease guns even though these might be used respectively with

Gullborg’s improved coupler or his improved pin fittings, because, |

in the combinations claimed, an old-type pin fitting, or an old-type

Lincoln Engineering Co. vs. Stewart-Warner Corp. 3

_.eoupler had no novel function over those of the prior art. We said

that if Gullborg had invented anything he had invented an im-

. proved pin fitting and an improved coupler and that to allow him.

to claim either in combination with old elements which performed

no new function, would be to permit him to extend the monopoly

of his invention to those old and well known devices. = —*

’ With this background we turn to the patent in suit. Like that

of Gullborg, the claim is for a combination. It is as follows:

_ “9. The combination with a headed nipple fer receiving lubricant,

of a lubricant compressor having a coupling member for connecting

said compressor and nipple comprising a cylinder,.a piston mov-

able within the. cylinder, and having an aperture for the discharge

of lubricant thereof, an apertured sealing seat carried by said

piston for engagement with the end of the nipple, connecting the ©

piston aperture with a passage through the nipple, radially mov-

able locking.elements carried by the cylinder coacting with the

nipple and actuated by said piston for compressively clutching

the elements upon the nipple whereby the pressure of the lubricant

on said piston will move the piston to forcibly compress said ele-

ments | while the lubricant is passing throngh said connecting

In its petition for certiorari, and in argument upon the merits,

, the petitioner insisted that the respondent’s commercial form of

“coupler was not that of the Butler patent; that the Cireuit Court

ef. Appeals for the Eighth Circuit Court had so held,* and that the

courts below erred in not reaching a similar conclusion. In view |

of the grounds of our decision we find it unnecessary to pass upon

this question. .

The petitioner’s principal contention is that our decision in the

Rogers .case is controlling.* We so hold. As has been said, the

’ eombination of elements disclosed is old in the art. As the Circuit

Court of Appeals held, a headed nipple or fitting connected with

the bearing, and to be coupled to the conduit from the grease gun,

-is old and unpatentable. A compressor or pump for propelling

lubricant is old and unpatentable as such. The inventidn, if any,

which Butler made was'an improvement in what he styles in his

specifications the ‘‘chuck’’ and in his claim a ‘‘coupling member’’.

* Stewart-Warner Corp. v. Jiffy Lubricator Co., 81 F. (2d) 786.

«The District Court for Western Pennsylvania hes so held: Stewart-Warner

Corp. v. a 15 F. Supp. 410; and see Jacques v. Universal Lubricating

Systems, D. C. W. D. Pa., ecided Feb. 4, 1938.

4 Lincoln Engineering Co. vs. Stewart-Warner Corp.

It, is not denied that multi-jawed chucks had been used in industry

and as couplers in lubricating apparatus. Butler may have devised

& patentable imfrovement in such a chuck in the respect that the

multiple jaws in his device are closed over the nipple by the pres.

sure of the grease, but we think he did no more than this. As we

said of Gullborg in the Rogers case, having hit upon this im

provement he did not patent it as such but attempted to claim it in

combination with other old elements which performed no new

function in his claimed combination. The patent is therefore void

as claiming more than the applicant invented. The mere aggrega-

tion of a number of old parts or elements which, in the aggregation,

_ perform or produce no new or different function or operation than

that theretofore performed or produced by them, is not patentable

invention.’ And the improvement of one part of an old combination

_ Gives no right to elaim that improvement in combination with

other old parts which perform no new function in the combina. -

.tion.* Though the respondent so concedes, it urges that, in the

combination of the Butler patent, the headed nipple performs a

new and different function from that which it has heretofore per-

formed, in other combinations, in that, when the coupler is with-

drawn from the nipple, at the end of the greasing operation, the

rounded head of the nipple ‘‘cocks’’ the jaws of the coupler for

the next operation. The suggestion seems to be an afterthought.

No such function of the nipple is-hinted at in the specifications

of the patent. If this were so vital an element in the functioning

5 Pickering v. McCullough, 104 U. 8..310; Burt v. Evory, 133 U. 8. 349;

Brinkerhoff v. Aloe, 146 U. 8. 515; Office Specialty Mfg. Co. v. Fenton

Metallic Mfg. Co., 174 U. 8. 492.

* Heald v. Rice, 104 U. 8. 737, 754; Underwood v. Gerber, 149 U. 8. 224,

227, 229; Deering v. Winona Harvester

v. tive Foundry Co., 12 Fed. 436, 438; Yale Lock Mfg. Co. v. Berk-

Nat. Bank 17 Fed. 531, 532, 535; Troy Laundry Machinery Co. v. Bur-

Ansell Kodel Maociria’ Oo we: 7 Cloak On. on r (24)

. , 58 F. (2a) 205; . v. Warren ey .

692, 695; ay Fl Foam v. Lubrair Corp., 62 F. (2d) 898, 900; In re Reed,

76 F. (2d) 907, 909.

Lincoln Engineering Co. vs. Stewart-Warner Corp. 5

of the apparatus it is strange that all mention of it was omitted."

Moreover, the argument is unsound since the old art includes in-

stances where the head of a nipple or fitting performs a similar

funetion when the chuck is disengaged from it. The same argu-

ment was unavailing in the Rogers case. It was there contended

that the pin fitting of the Gullborg patent performed a new func-

tion in causing the beneficial operation of the coupler at the moment

. of disengagement. We commented upon the matter thus: ‘*The

design of the bayonet slots is such that, in uncoupling, the coupling

member of the gun will at first be moved slightly forward on the

pin 4tting thus backing up the perforated washer in the bore of

the coupler.’’ But there, as in the present case, it was the peculiar

and improved mechanism of the coupler which brought about the

result and not the form of the fitting. We suppose that a headed

nipple has always been so headed in order that the jaws of the

chuck may slip over the head in the coupling and uncoupling

operation. The weakness of the respondent’s position is well illus-

trated by what developed at argument. When interrogated as to

how in the claimed combination the function of the nipple could

be thought novel in any different sense than the function of the

pump, counsel replied that the pump performed a novel func.

tion because the pressure it generated forced forward the piston

in the coupler and caused the movable jaws to engage the fitting.

If this argument is sound, the respondent may convict every one

who sells a grease pump of contributory infringement. The

answer is the same as in the case of the headed nipple. . The

function of a pump has always been to force a fluid or a grease

through a conduit. The fact that this function of the pump is

__ utilized in Butler’s improved form of coupler not only to convey

the lubricant to the bearing but to operate the jaws of the chuck

does not alter the function of the pump. The invention, if any,

lies in the improvement in the coupling device alone.

The courts below and the respondent rely upon Leeds and Catlin

v. Victor Talking Machine Co., 213 U. S. 301, 325. In the Rogers

case we held that authority not controlling. Berliner disclosed

an entirely novel principle; he utilized the flat dise having a

smooth bottomed groove with spiral waves in its sides not only

* Union Edge Setter Co., v. Keith, 139 U. 8. 530, 589; Ball and Socket

Co. v. Kraetzer, 150 U. 8. 111, 116; MacColl o, Knowles Loom Works,

: 95 Fed. 982; Kursheedt Mfg. Co. v. Naday, 103 Fed. 948, 950,

6 ‘Lincoln Engineering Co. vs. Stewart-Warner Corp. —

‘to agitate the needle connected to the diaphragm, but, in combina:

tion: with a swinging arm, to propel the needle lengthwise the

groove. In his combination, the disc not only performed a new |

function but performed it in combination with another new ele.

ment,—the swinging arm which carried the needle.

- We conclude that Butler’s effort, by the use of a combinatiel

claim, to extend the monopoly of his invention of an improved form

of‘ chuck or coupler to old parts or elements having no new fune

tion when operated in connection with the coupler renders the

elaim void.

Decree reversed.

Mr. Chief Justice Hucues and Mr. Justice Carpozo took no

part in the consideration or decision of this case.

A true. copy.

Test: j

Clerk, Supreme Court, U. 8.

hea a a a

IO I EE IO YG em a I AR I ea A Me NR aarp

- 4, Patents @=>26 (2)

“Combination patent” may consist ‘a-

ther of one or more old elements, plus one

or more new elements; or of a plurality

of elements, all of which are old; or of

a plurality of elements, all of which are

sl (Bd. Note——For other definitions of

“Combination Patent,” see Words &

- Phrases.) —

2, Patents G26 (1%)

Old elements in new valid combina-

tion constitute “invention” and are as much

a unit in contemplation of law as a single

or noncomposite instrument.

{Ed. Note.—For other definitions of

“Invent ; Invention,” see Words & Phras-

es.)

3. Patent G26 (146).

No one element of combination patent

is gist of combination, but it is the co-

operative, co-ordinating, unified result,

wherein the various elements contribute

to one. unitary result, which constitutes

“invention.”

New combination — of | old elements,

each of which contributes to new and

unitary result, is patentable.

5, Patents 6260.

Defendant in suit for contributory in-

fringement of patent which did not be-

gin manufacture of infringing device until

after commercial success was achieved by

assignee of patent was estopped from as-

setting that patentee’s nonuse rendered

patent subject to strict construction.

6. Patents €=328

Butler patent, No. 1,593,791, claim~ 2, |

describing combination for lubricating ant-

‘tomobiles, held valid- and contributorily in-

fringed by manufacturer of fittings which

en ART-WARNER CORPORATION vy. LE VALLY

, 15 ®. Supp. 671 — ;

STEWA WARNER CORPORATION v.LE were sold with knowledge and understand-

<i VALLY et ‘al. ‘ing that they were to be used in co-opera-

No. 13955. tion with one element of patented combina-

District Court, N. D. Illinois, B. D. tion. Sea

* July 15, 1936. :

L Patents ¢=>26(1) In Equity. Suit by the Stewart-Warner

Corporation against John R. Le Vally and

another, doing business as the Lincoln En-

gineering Company of M[linois, and an-

other for contributory infringement of one

claim of a patent. :

Decree in accordance with opinion. _

Williams, Bradbury, McCaleb & . Hinkle,

of Chicago, IIL, for plaintiff.

Wilkinson, Huxley, Byron & Knight, of

Chicago, IIL, and Delos G. Haynes and

Lloyd R. Koenig, both of St. Louis, Mo.,

for defendants.

LINDLEY, District Judge. -

Plaintiff, as assignee and owner of .

patent No. 1,593,791 to Butler, applied for

February 19, 1923, and allowed July 27,

1926, sues the Lincoln Engineering Com-

pany of Illinois for contributory infringe-

ment. of* claim 2. The defenses are in-

validity and noninfringement.

Claim 2* of the Butler patent describes

a lubricating system for automobiles or

other machines, essentially high pressure in

character, in which each bearing is pro-

vided with a headed nipple for receiving

oil or grease of a lubricant compressor

having a coupling member for connecting

- said compressor with the nipples. The

coupler is~ slipped easily and somewhat

loosely over the nipple head. As the op-

erator pushes on the compressor, the pres-

sure of the lubricant moves a piston with-

in the cylinder in such a manner as to

cause the locking or gripping jaws to clutch

or grab about or upon the nipple head. At

the same time the grease under pressure

acts also upon an apertured sealing seat,

carried by the jaws and actuated by the

piston in such a way as to engage the end

of the nipple and thereby produce a tight

seal. Gripping, grabbing, or clutching ‘of

*Claim 2. The combination with a

headed’ nipple for receiving lubricant, of

a lubricant compressor having a coupling

“member. for connecting said compressor

and nipple comprising a cylinder, a piston -:

Movable within the cylinder, and having

. aperture for the discharge of lubri-

cant thereof, an apertured sealing seat

, Carried by said piston for engagement with

the end of the nipple, connetins: Se se:

ton aperture with a passage’ through the

nipple radially movable locking elements

carried by the cylinder coacting with the

nipple and actuated by said piston for

compressively clutching -the elements up-

on the nipple whereby the pressure of the

lubricant on said piston will move the pis-

ton to forcibly compress said elements

while the lubricant is passing through ‘said

connecting parts,

is carried out completely and per-

sg without interference by the other.

_result, the operation is successful

ven ” aca there be considerable varia-

on in the precise dimensions in the forms

nd parts involved.

sinc, “aniaaeh two ek thet the dain

includes seven elements; naniely, a headed

nipple, a compressor or pump, a cylinder, @

piston, an opening in the piston, a sealing

‘seat, and laterally or radially moving lock-

Ang elements or jaws. Admittedly, each of

‘thesé elements is old, and plaintiff makes

no claim of invention because of the pres-

ence of any one of the particular elements,

‘but insists that invention resides in a new

leombination of old elements 80 associated,

related and interrelated as to accomplish

‘a new result.

| The headed nipples are adapted to be

‘screwed to each ‘of the bearings of an au-

tomobjle; the compressors are intended to

‘be filled with grease and then to be coupled

‘in succession to/each‘of the nipples in or-

‘der to ect into the openings of

the several’ bearings. Consequently, the

combination of the nipple, compressor, and

coupler is brought together only periodical-

ly and temporarily and in the hands of the

owners or servicers of the car. The

nippl& and insergy thent in the bearings An

automobile may uire 25 to 60 such fit-

tings. Some can be conveniently

greased with a straight nipple; others with

lan elbow nipple, at angles varying from 90°

‘to 22%°. Some of the nipples are long,

‘others short, and they are screwed into

‘holes tapped with different pipe thread

(sizes. Consequently, the manufacturer of

‘the device separately lists and prices each of

-\the sizes of compressor which may be cou-

pied to and used in conjunction with the

‘nipples. Thus the purchaser may buy such

nipples as he desires and a compressor of

‘small capacity or one of large capacity, or

even a power-driven compressor. An auto-—

‘mobile owner may never use a compressor.

’ He may have his car greased at a garage,

from that usually found in industry. Org;

manufacturer of the car buys the headed

15 FEDERAL SUPPLEMENT

and in such case the senihimatien, cain

only when the car is greased.

narily, a manufacturer makes and sells the

complete combination, but .in the busines

of high-pressure lubricating equipment, the

parts are necessarily sold separately. %,

prior to the commencement of this suit

some 6,000,000 Alemite hydraulic guns o

compressors claimed to have been embodied

within the Butler patent were sold by

plaintiff, and during the same period it

distributed some 218,000,000 of its so-called

Alemite hydraulic system nipples.

For seven years prior to January, 1933

the Lincoln Engineering Company of &

Louis, Mo., who is defending this suit, and

who is treated herein as the real defend

ant, had manufactured grease guns fo;

plaintiff. The latter took all of its product

Stewart-Warner had furnished coupler

and nozzles to Lincoln, and the latter hai

incorporated them in compressors, whic

it in turn sold to Stewart-Warner. Thes

compressors and -nozzles were used in com

bination with hundreds of Millions «

Gullborg pin fittings and Zerk push typ

fittings manufactured and sold by plaintiff

Early in 1933, the Lincoln Company de

cided to undertake the direct sale of it

compressors to service stations and garage

and took steps to create a distributing o

ganization for such purpose. Prior to tha

time, for many years, practically all Amer

ean-made automobiles had been equippe

at their factories with pin fittings sold an

manufactured by plaintiff under Gullbor

or with push type fittings, manufacture

and sold by plaintiff under Zerk. Hum

dreds of millions of these nipples were i

the field, practically to the exclusion ‘¢

anything else adapted to lubrication of a

tomobile bearings. Consequently, the Ii

coln Company, in order to sell its co

pressors, found it necessary to incorpora

a terminal of ‘buch character as would co

nect with and co-operate satisfactorily wil

these Gullborg and Zerk nipples. As

result it brought out its N-1 needle ty

nozzles.

' In April, 1933, plaintiff through its #0

sidiary the Alemite Corporation, put 1

on the market its new Alemite hydrad

system involving the combination now !

lied upon: Soon thereafter the Linco

Company, in its advertising, claimed th

its compressors could be used not @

with Gullborg fittings and Zerk push ty

noszies but also with the headed nipple of

the Alemite Corporation which plaintiff

claims is protected by the Butler combina-

tion patent. 2

In July, 1934, Lincoln's advertising |

literature illustrated all three types of fit-

“tings as the various kinds of nipples with

which the Lincoln compressor and nozzle

were intended to be combined and used.

Thus far, however, the Lincoln Company

had not manufactured or sold any nipples

of any kind for use in the lubrication of

automobiles. But in the summer or early

fall of 1934, after the Alemite system had

been oD the market for one and a half

years, Lincoln entered upon negotiations

with General Motors Corporation to sell to

it in Meu of Alemite hydraulic fittings

theretofore manufactured and sold to it by

plaintiff, a new fitting to be manufactured

for the first time by Lincoln. The nego-

tistors had under discussion round-headed

and straight-sided nipples, without head,

shoulder, or peripheral groove, not adapt-

ed for co-operation with the gripping jaws

of the Alemite hydraulic coupler, but

properly adapted for use in conjunction

with’ the Lincoln N-1 nozzle and Lincoln

Snap-On coupler.

No straight-sided nipples, other than a

few samples, were manufactured or sold.

On the other hand, Lincoln began to manu-

facture a peripherally grooved, shouldered,

— ert headed nipple of form, size, and di-

mensions as to afford perfect co-operation

-.with the gripping jaws of the Alemite hy-

draulic coupler. The first of these nipples

were shipped to the Oldsmobile factory on

November 24, 1934, and displaced the pur-

chase and use of the Alemite fitting,

Shortly thereafter, Cadillac, Buick, and

Pontiac switched from the peripherally

‘grooved and headed nipples of plaintiff to

those of Lincoln. These branches of Gen-

eral Motors, however, except as to cars

sold in foreign countries, included no pur-

chase of couplers. mth

For eighteen months plaintiff had at-

tempted to put its new coupler into the

hands of every garage and service station

' in the United States. On April 1, 1935,

2,385,148- such couplers had been sold. It

appears clearly that the sale of Lincoln

Kleenseal fittings dates from the shipment

made to Oldsmobile and that the fittings

. Satisfactorily serve with plaintiffs com-

. “pressor. Thus, the purchasers of automo-

biles from General Motors divisions could

have their cars, equipped with Kleenseal

STEWART-WARNER CORPORATION v. LE VALLY

18 ¥. Supp. 872 ; “

fittings, greased with the Alemite hydraulic

compressors and couplers then in the hands

of the service stations and garages through

Mr. Fox, an engineer for Lincoln. be

‘came familiar with plaintiff's headed nipple

shortly after its first appearance on the

market in April, 1938. The automobile

trade papers were, in that spring, summer,

and fall, replete with advertisements and

reading notices illustrating and describ-

ing ‘every detail of plaintiffs hydraulic

‘coupler, and Lincoln in July, 1934, illus-

trated in. its circulars, Alemite headed

nipples as being capable of combination

with the Lincoln compressor. It is only a .

fair inference that during of this pe-

riod Lincoln, which seems ‘Ihave been

alert in its business, knew about and un-

derstood the Alemite compressor. At any

rate, Mr. Fox admits that he became

familiar with the coupler in January, 1935,

and from that time on, Lincoln: sold its

peripherally grooved, shouldered, and head-

_ed nipples, adapted for satisfactory co-

operation with the Alemite hydraulic com-

pressor, with the knowledge that the pur-

chasers of the Lincoln nipples could . use

them and would use them in conjunction

and combination with the Alemite com-

pressors and couplers. Furthermore, that

company became familiar with the- Alemite

fittings immediately upon their appearance

in April, 1933, and when the Lincoln nip-

ples were first put on the market in No-

vember, 1934, they were in some thirty odd

styles having arbitrary dimensions cor-

responding with those of the Alemite

headed nipples and having their structure.

of such size, form, and dimensions as to

make them completely interchangeable with

Alemite nipples.

On April 17, 1935, a representative of

plaintiff went to the place of business of

“Lincoln in Chicago .and said to the man be-

hind the counter that he wanted to pur-

chase some nipples to be used with a gun

which he then produced, an Alemite hy-

draulic compressor and coupler.. The man

produced Lincoln fittings The witness

tried them in co-operation with the gun and

found that they co-operated with the

Alemite compressor and couplet; pur-

chased the fittings and took them away

with him.. He subsequently made other

purchases of similar fittings for the same

purpose. It thus appears in evidence that

understanding that they were to be used in

combination with plaintiff's compressor

ey mee oe sas PR sa a

15 FBDRRAL SUPPLEMENT

responding to such. peatleve. welttng insane

as above described. He \deserihes &@ nipple

having a heed, a throat, and 4 moemee

" and segments adapted to-slip over the head

gold could be used and would be used by

ie purchaser in conjunction: with plain-

: gs compressor and coupler part of the

complet — ander the Butler pat-

gi ee brings u is, then, to the issue in this

case; that of contributory infringement.

If the combination of. the Lincoln nipples

With the plaintiff's hydraulic compressor

and coupler embodies claim 2 of the Butler

patent in suit and that claim:ig valid, then

we have a clear case of contributory in-

fringement. we? nes

The ‘estimony ~shows a complete re-

sponse of the combination of the Lincoin

fittings and plaintiff's Alemite hydraulic

compressor and coupler to claim 2 of the

Butler patent. Every element included in

claim 2 is included in such combination,

and the demonstrations disclose that the

co-operation and the functions thereof in

this combination are the same as the com-

bination of the plaintiff's compressor

coupler, and fittings. >

But defendant insists that claim is in-

valid. It relies largely upon the case of

Stewart-Warner Corporation v. Jiffy Lu-

bricator Co., 81 F. (2d) 786, 792 (C.C.A.

8). There the court held claim 1 of the .

Butler patent, while valid, not infringed by

the Jiffy Company’s sale of a certain coup-

ler intended for use in conjunction with

‘the cylindrically projecting end of an

te pin fitting. Claim 1 is not in-

in this case. It included a fitting.in

the combination, and the elaim is similar to

claim 2, but the nipple is not headed. In

the Jiffy ‘Case, the nipple considered did

not have head, throat, or shoulders. It was

a perfectly smooth straight cylinder, and

the Circuit Court .of Appeals was of the

Opinion -that the gripping action of the

pegmental jaws as. disclosed in the Butler

patent would not be .sufficiently powerful

hold the coupler to such a plain, cylin-

drial ‘nipple under the force of grease

' under pressure of several thousand pounds

per square inch. The court seid :

“But when we turn to the Butler patent

specifications disclosing the ‘means’ he had

in mind for ‘compressively engaging about

the nipple for locking said parts together,’

we find no reference to any elements cor-

of such & @ an race

thereof. Then he specifies spring fingers ° 7

mounted on the forward face of the piston.

_ Ample room is left in the cylinder for the

free play of the spring fingers. As the

piston is moved forward by the pressure of

the lubricant, the spring fingers do engage

and press upon the segments so that the

segments are pressed upon the throat of

the nipple. But the nipple is not specified

to be held against longitudinal displacement

by the force of the gripping. The lan.

guage of the specifications is that the seg-

ments are held in position on the throat

by the spring fingers, but it is the ‘shonl-

der’ on the nipple which ‘prevents the re

traction of the segments’ or pulling away

from the nipple. We conclude from con.

sideration of all the specifications and the

drawing that the inventor excluded dis.

closure of elements which would be actuat- |

ed by the forward movement of the. piston —

to lock the coupler to the nipple by any

unyielding wedging action, but that he dis

closed only such a yielding compression as

should be accomplished by spring fingers.

¢ ¢ 8

“We find the difference between the

Butler patent and the Jiffy coupler sub

stantial, in that the mechanical or engineer-

ing principle on which the Butler patent

compresses the jaws of its chuck about the

bearing nipple is different from that re-

lied upon in the Jiffy structure. As they -

are riot mechanical equivalents and as it

does not appear that Butler invented or

disclosed such a chuck as that made by

Jiffy, there was no infringement.”

Consequently, the opinion is of no aid

in the decision of this case. Here we ate

dealing with a nipple of the character de

scribed by Butler in claim 2, with a head,

a-throat, and a shoulder. The coupler in-

corporates segments adapted to slip over

the head of such a nipple and embrace or

grasp the throat thereof. It is. the shoul-

der on-the nipple which prevents the re

traction of the segments. The nipple dis

cussed in the Jiffy Case, as the court point-

ed out, was not of such construction. It

would not prevent longitudinal displace

ment by the force of the gripping of 4

compressor of Butler’s type, although 6

would eo-operate with the Jiffy comp

held not to infringe. It did not have the

shoulder which prevents retraction of the

segments OP the pulling away from the

nipple. Lincoln sells a headed nipple, to.

be substituted for the plaintiff's headed

we: It has a head, a throat, and shoul-

ders; and when used in conjunction with

the Alemite hydraulic coupler, the segments

. of the coupler slip over the head of the

defendant’s nipple and embrace the throat

thereof and clutch the~head within the

meaning of Butler’s specifications and

_daims.

Defendant insists that this case is con-

- trolled by the recent decisions of the Su-

preme Court in Bassick - Manufacturing

Company v. R. M. Hollingshead Company.

(G. 8. Rogers et al. v. Alemite Corpora-

tion), 56 S.Ct. 787, 80 L.Ed, —~, and it

becomes necessary to examine those deci-

_ sions with some care.

These cases went to the Supreme Court

when the Gullborg patent was about to ex-

pire. The question of validity of the pat-

ents involved had been raised in many

District Courts and the patents held valid

and infringed in various Circuit Courts ©

of Appeals. Unfortunately, the record was

rather short. . Plaintiff in the Hollingshead

- Case offered in evidence a sample of de-

fendant’s device and relied upon physical

demonstration to show that uncoupling in-

volved the suction effect of Gullborg.

From a decree finding infringement in

the sale of the compressor and coupler of

the type complained of, the Hollingshead

Company appealed and argued that the

device complained ef had no suction ef-

fect’ The Circuit Court of Appeals af-

firmed, 73 F.(2d) 543 (C.C.A6). ‘The

Supreme Court took jurisdiction, and the

question presented. was as to the validity

of the Gullborg patent, and whether the |

device complained of utilized the suction

effect of the Gullborg claims. The Su-

Preme Court held the claims valid, but said

that the suction effect construction had not

been proved and that the accused device

did not. involve the novel feature claimed

in the patent. Clearly the case was de-

termined upon a question of fact and the

decision is-of no help here, except in so

far as it implies that if the device had been

shown to be of the suction effect type, its

manufacture and sale would have been

held to constitute _ contributory infringe-

ment.

. The language | of the opinion indicates

no intention to upset or to reverse any-

thing that had been — announced

vicina trans teen siti. CORPORATION v. LE VALLY

: 15 ¥. Supp. 571 ‘

Justice McKenna in Leeds &

v. Victor: Satie: ‘Suites Be.

325, at page 382, 29 S.Ct. 503,

218

505, 53 L.

Ed. 816, as follows: * “A combination is a

composition. of elements, some of

may be old and others new, or all old or

all new. It is, however, the combination

that is the invention, and is as much a

unit in contemplation of law as a single

or noncomposite instrument. Whoever-

uses it without permission is an infringer

of ft. Whgever contributes to such use is

an infringer of it. It. may be well ‘here to

get rid of a misleading consideration. It

can make no difference as to the infringe-

ment or noninfringement- of a -combination

that one of its elements or all of its ele-

‘ments are unpatented.”

‘In the companion case of Leeds .& Cat-

lin Co..v. Victor. Talking Machine Co,

213 U.S. 301, at page 318, 29 ata 495,

500, 53. L.Ed. 805, he said:

“A combination is 2a union of clemente

which may be partly old and partly new,

or wholly old or wholly new. But, wheth-

er new or old, the combination is a meang

—an invention—distinct from them. They,

if new, may be inventions and the proper -

subjects of patents, or they may be cov-

ered by claims in the same patent with

-the combination.

“But whether put in the same patent

with the combination or made the sub-

jects of separate patents, they are not

identical, with the combination. To be-

come that they must be united under the

same. co-operative law. Certainly, one ele

‘ment is not the combination, nor in any

proper sense, can it be regarded as a sub-

stantive part of the invention represented

by the combination, and it can. make no

difference whether the element was always

free or becomes free by the expiration of

a prior patent, foreign or domestic. In

making a combination, an inventor has

the whole field of mechanics to draw from.

. This view is in accordance with the prin-

ciples of patent laws. It. is in accordance

with the policy of § 4887 -of the Revised

Statutes, which is urged against it.”

I find nothirg in the Hollingshead Case

that purports in any way ‘to disturb the

previous announcements of the Supreme

Court. Rather, it seems to me, the court

‘reaffirms its adherence to its former hold-

ing.

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[2-83] It is well to obgerve that there are

three classes oF. coments patents as

‘tolews :

ae.

eEPe

{4}. The question, of course, always i,

whether there is a new patentable compi.

nation which produces a new and er

tty —-One— or Sse itieleie libanisidloc option _suemths.,..‘T3in. oneration and functioning o

+: er more new elements.

(2) A plurality. of elements, ail of

which are oid.

7 @) A flurality of elements, all of

which are new.

| Obviously to any trial Judge, in their

final anslyses, almost all patentable coni-

bineations are of the second class; namely;

these in which all of the elements are of

themselves old. The old elements in a new

valid combination, as the Supreme Court

says, constitute invention ‘and are as much

@ unit in contemplation of the law as a

single or noncomposite instrument. There

“ig no one element that can be said to be

the gist of the comibination, but it is the

“co-operative, co-ordinating, unified result,

whereix the various elements contribute to

ome unitary result, which constitutes .in-

‘. vention. It is misleading, therefore, to

speak of any “one element ‘hs the essence

of the invention. Thus, in Automotive

. Parte Oo. v. Wisconsin Axle Co. 81 F.

(2a) 125, at page 126 (C.C.A.6), the court

said: “The invention is for a composite

thing, embracing several elements or parts;

ali of which are necessary to and co-op-

erate

/ tarnishing of parts for a combination in-

vention is whether the parts furnished con-

stitute the gist or egsence of the invention;

a ih

vind

;

ile

4 a!

Be’

[

]

posed of a chamber or pump, a hose, a hose

all of the old elements of the new contin

tion must be affected by their presence ip

the new combination and each part musi

contribute its part to the unitary whole

Otherwise, we have an unpatentable ag

gregation. But if the operation or fun.

tioning of each of the old elements is fp

some way affected by its presence in the

new combination in such a way as to con-

tribute to the accomplishment of a new ang

unitary result, then we lave a valid patent

claim.

In the Rogers Case, apparently, in the

District Court the trial revolved about the

question of whether the defendant sold

its products with the knowledge that they

would be used in conjunction with the

parts sold by plaintiff. But in the Supreme

Court this question of fact was abandoned

and the defendant’s coritentions were that

Gullborg patent was invalid and that ‘the

plaintiff was illegaty extending its me

nopoly. The court held that the plaintiff

might not extend the monopoly of its pat-

ent. But we do not understand that the

decision in any way sought to review any

prior announcement of fhe Supreme Court

upon the subject of contributory infringe

ment. The court did not so expressly hold,

and I find.in the opinion no such implica-

tion. ne pea Ee . e

“However, the court held that the evi

dence was that the prior art embraced the

use in combination of a grease gun com

coupler, and a spring-closed fitting, the

coupling being of the pin and slot or bay-

onet type. This prior art arose from Gul-

borg’s earlier patent, No. 1,807,733, and

the Seng French patent, No. 468,869. The -

court observed that the plaintiff's position _

‘was that when defendant furnished a gu,

a part of this old - ns

entable combination, . for use

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coupler. The court said that the question

them was whether elaima 14 and 15, unless

restricted to the combination of a grease

gun and coupler and a pin fitting such as

are described in .the specifications of the

patent, are void as attempting to extend

Gullborg patent, No. 1,807,733, to the use

therewith of any grease gun not having

the suction device of the patent in suit. It

held that though claims 14 and 15 are for

a- combination using a device of a prior

patent, with grease gun or coupler of any

type, they must be read as claiming only a

combination of pin fittings and a gun, with

coupling device having the suction effect

set forth in Gullborg’s patent; otherwise,

the claims would be void as unlawful at-

tempts to extend the monopoly of the pin

- fitting in patent 1,307,733.

The court observes that Rogers neither

made nor sold pin fittings of the type

‘covered by Gullborg,. No. 1,307,788, and

observed that the question was whether the

patentee “might further claim the combina-

tion between the patented pin fittings and-

any form_of grease gun. He would there-

by in effect be repatenting the old combina-

tion by reclaiming it with the improved

element substituted for the. old element.

This the court said could not be done.

The thought underlying the court’s re-

be permitted to extend the monopoly of this

old patent. The court, in effect, reaffirmed

Leeds & Catlin Oo. v. Victor Talking Ma-

chine Co., 218 U.S. 301, 825, 29 8.Ct. 495,

53 L.Ed. 805.

«that the Leeds Case patent to Berliner,

No. 534,548, was a pioneer patent. I con-

the Supreme Court has extended, inten-

tonally or otherwise, the meaning of the

word “pioneer,” for in the Leeds Case the

thing in Berliner, 634,548, then being con-

- aidered, in the way of disc, record, cabinet,

There was an improvement, however,

the original p back to

[

delvers in the art have procured patents

since then, but Bell and Tainter, No. 341,-

214, includes most of the prior art. As

compared with that, the Berliner inven-

tion consisted in permitting the stylus of

the reproducer ‘to be propelled. by and

along the sound groove of the record tablet

all the way from its outer circumference

to its Inner end. To accomplish this, it

made use of a mounting for the reproducer

which woukd permit it to travel freely

throughout this distance. Berliner’s inven-

tion resided in giving’ the reproducer a

greater degree of freedom of movement to

follow the groove in the record, and,. by

doing so, eliminating the necessity of pro-

vidthg means for relatively shifting ‘the

record ‘and reproducer. The new thing

was the unrestricted pivotal mounting.

Consequent-

ly, the statement of the Supreme Court in

the Leeds “(Rogers?)” Case that the patent

with the record and free be vibrated

and propelled by it. It was, therefors, a

true mechanical combination device, pro-

ducing by the cooperation of .its ¢on-

stituents the result specified in the man-

equally suitable for use Im connection with

‘the Victor machine as well as their own

machines. The court held that there was

contributory infringement.

The result’ was in general the oid re-

was the production of articulate sounds by

patent was a pioneer. Everything

for the stylus so that it might be

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5T8 15 FEDERAL SUPPLEMENT

seemed no utility without co-operation in

combination. ach element was necessary

to the operation of the whole.

From, an examination of the Leods opin-

relative to the Gullborg patent was that

this inventor of (the) pin fitting, part of the

complete combination, part ‘of which had

already been separately patented, did not

bring about any new mode of operation or

cooperation in or among the other ele-

‘ments thereof. It did not alter or modify

or give new functions to any of the other

parts of the combination; and, therefore,

the old perts did pot participate in a new

way in the accomplishment of a new and

unitary result. As pointed out by Judge

Thacher in the District Court in Bassick

Mfg. Co. v. Adams, Grease Gun Corpora

tion 39 F.(2d) 904, 905, in discussing the

Gullborg patent, where he says: “The

novelty in Gullborg’s fitting was merely

fm thé use of the same pin to furnish bear-

ings for the slot and.an abutment for the

spring, and it was only this specific form

of construction which was patentable.

Lyman Mfg. Co. v. Bassick Mfg. Co. (C..

C.A.) 18 F.(2d) 29. Thus it will be seen

that there was no functional novelty jn

combining such a pin fitting with a bayonet

coupler and a gr@pse gun. The old com-

bination of the gun, the bayonet coupler,

and a pin fitting with ball and spring valve

would work as well. and accomplish pre-

cisely the same result. To extend the

combination claims to cover the use of any

old gun and any old coupler on a Gullborg

fitting is clearly not permissible in view

of the prior art, which limits novelty in

the pin fitting to a specific form of con-

- struction and deprives the aggregation of

elements of all patentable novelty as a.

combination. Whether its elements be old

or Rew a combination is an invention dis-

from them.” |

ground for decision appearing in

opinions is not applicable to the

new unitary result. Defendant insists that

the essence of the combination is the coup

ler, but we have seen this is a fallacious

theory, for if tt were correct and available

y~the-—wee—of-the—nipple—teo—<co-ey—__

erate in. the combination, one person might

make the nipple, another the cylinder;

another a group of jaws, another the seal.

ing seat;“another the piston. Hach of

these are old; each of them sell separate.

ly. The purchaser could quickly assemble

them and then claim that each part had ap

independent status apart from that jn the

Butler combination. There ¢ould then be

no infringement.

_ The headed nipple, which co-operates .

with the sealing seat and jaws of the cou

pler and thus with the piston and cylinder,

is just as essential a part of the Butler in-

vention as any of the several elements of

the coupler. There is co-operation be

tween the nipple and the jaws which pro

duces the operation of the‘seal, which in

turn effectuates the operation of the grip

ing jaws, making possible heretofore un

achieved pressures. The headed nipple

has new functions arising out of direct -

co-operation with the jaws. The head

spreads the jaws of the coupler when the

latter is attached and thus prepares the |

coupler for operation“in bringing about a

mechanically strong and lubricant tight

joint. In detaching the coupler the head

of the nipple engages and pushes the jaws

outwardly. These in turn push the piston

backward, thereby effecting the release of

the coupler from the nipple. : The presence

and the action of the nipple are essential,

because the nipple alone makes it possible:

to build up in the cylinder of the coupler

a grease pressure which will force the

STEW AR?T-WARNER CORPORATION vy. LE VALLY

5T.

15 ¥. Supp. 671

gseful, and unitary result. It could not be

accomplished “with anything less taah- the

combination of all of the elements inciud-

ed in Butler. Each part of the combina-

tion performed new functions and operat-

ed and co-operated in new ways in order

to accomplish the single new result. The

invention of Butler resides in the combina-

tion and not in one specific element. Every

one of the seven old elements’ functions

became essential factors in the new com-

’ »ination. ‘The situation is not one wheré

the language of the Supreme Court in the

Gullborg Case (56 S.Ct. 787, 791, 80 L.Ed.

——) is applicable, for in the sezise that the

' Sapreme Co used the term pioneer,

Butler is equally a pioneer.

-pew unitary result is achieved; something

never accomplished before. Just as the

Supreme Court said of the Berliner patent,

“each element was necessary to the opera-

tion of the other.”

What has been said with reference té

the Hollingshead and Rogers Cases is

___—_

Judge Schoonmaker in Stewart-Warner_ v.

Rogers, and Stewart-Warner v: Universal

Lubricating System, Inc., 15 F.Supp. 410, in

the District Court for the Western District

““eonstrued in such way as to include the

mechanism of canceled claim 8 There

‘Ro estoppel as contended. :

\ Defendant argues that to decree this

g s

pitt

A completely |

equally applicable to the recent decision of ~ ¢

tombination valid is te deprive prior pat-.

StF

the. parts which distinguish the combina-

tion, make it possible for offers to azs-

semble and use the combinations,

the Circuit Court of Appeals for the Bighth

(Stewart-Warner Corporation v.

Jiffy Lubricator Co., 81 F.(2d) 786), the

record-of which is not before us, it is suffi-

cient to say that the evidence here presented

discloses clearly that the operability of the

Butler invention was: not dependent upon

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straeture produced by the defendant I be-

Heve does not follow the teaching of New-

ton. It is impractical for Newton’s pur-

poses, and does not teach what Butler

taught.

Defendant insists thet Lincoln cannot.

contributorily infringe thes Butler patent

because plaintiff's coupler part is not con-

tiffs hydraulic apparatus. I believe the

premises are not well founded, but that

plaintiff's construction follows the teach-

ing of daim 2

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designed could be used with all of these

other compreshors, but could not be usej

with devices ‘built in accord with Butler,

When. defendant changed from a nonin.

fringing device which it could use with

other nozzles, to infringing devices which

could .be used and were intended to be

used in combination with plaintif’s cov

plers, it began its infringement. — ?

As Welker on Patents (6th Hd.)

564, said:

“But where the machine or other prop .

erty thus furnished, is useful for some

other purpose than to be a part of a pat-

‘ented combination, or to make a patented

articie, or to be operated upon by a pat.

ented machine, or to be used in performing

a patented process; and where he who

furnishes the property, does not intend or

know, when furnishing the same, that it &s

to be thus used, he incurs no liability to

an action for infringement.

“But if he knew or intended that the -

property furnished by him was to be used

in either of’ the infringing (ways, he can

not defeat an action for infringement, by

showing that the furnished property could

-have been used in some non-infringing

“In the absence of specific proof of

knowledge or intent, the fact that the

sufficient? to absolve one who supples such —

Fo]

Sierc

——_— —

Sette,

Findings of Fact ‘and Conclusions of Law. 431

In THE

DISTRICT COURT OF THE UNITED STATES

For tHe NorrHesn Distraict or Iuiinor,

RY a Eastzen Drvisron. 7

Srewant-Warnes Corporation, *

Plaintiff,

v8. e

L&VALLY, ET AL,

Defendants.

FINDINGS OF FACT AND CONCLUSIONS OF LAW.. .

I find the facts to be as follows: :

(1) Plaintiff is a Virginia corporation and is the owner

of the Butler patent No. 1,593,791, and of all rights there- |

under. ~ ,

(2) Defendant Lincoln Engineering Company of Llinois

is the distributor for the Chicago territory of lubricating ap-

paratus manufactured by the Lincoln Engineering Company

of St. Louis, Missouri, a Missouri corporation. ee

- (3) The defense of this suit is being conducted by. ahd

under the control of Lincoln Engineering, Company of St.

Louis, Missouri, a Missouri corporation. a pee

. 4) The Butler patent in suit No. 1,593,791 illustgates, de-

scribes, and claims lubricating apparatus in which a headed

or shouldered nipple or fitting is provided for attachment to

each bearing of an automobile or other je to be sup-

lied with lubricant from a lubricant! conipréssor or

by successively attaching to the nipple, a eq

Re engegemen Niet ipa eed oe Cee

by. against ‘the’ end of the; nipple, i

- coupler has jaws engageable about the throat of

604 nipple ye oypomney | to grip the nipple when the com-

in cus ry:

- ‘pressor is opera tomary: way to deliver

lbrioant to bearing The tightness of the seal effected be-

tween the nipple the coupler, and the tightness of the |

'y Portionately with increases in the pressure of the lubrioant

"big plied to the bearing

thor of pounds square inch are frequent}

_ in order to force the gre into the ititerstices of a

Sie ao

: Ee ; a

———~432___Rindings.of Fact and Conclusions of Law, |

nection between the coupler and the nipple by forcing these ¥

parts asunder. ~

(7) Because of the tremendous pressures which must be

_ developed in a lubricating system, it is important in order to

prevent leakage of lubricant to secure the maximum tight-

‘ness of seal and the maximum mechanical grip. Both the

_ strength of the grip and the tightness of the seal must be

proportional to the pressure of the grease to be transmitted. _

If the seal is not sufficiently tight, the grease will escape,—

-and the requisite pressure cannot be developed. If the grip

is not sufficiently strong, the parts will be forced asunder. _

(8) In the Butler combination the automatic end seal and

the automatic grip both become more effective as the lubri-

cant pressure increases and the need for a more effective seal

and grip becomes: greater. ' a

(9). In the Butlér patent the end seal member is move-

able and thus may adjust itself to fittings of slightly different

| dimensions. - =

605 (10) Any resiliency in part 42, referred to in the

Butler patent aS constituting ‘‘spring fingers,’’ serves

the purpose of compensating for any slight out-of-roundness

of the fitting. -

(11) Butler, applicant for the patent in suit, presented to

his solicitors for the purpose of preparing the application for

the patent in suit, a sample device including a coupler, the

jaws of which were forced: into clamping engagement with

the nipple by a relatively rigid, hollow cylindrical part, cor-

respon exactly to the disclosure in Fig. 2 of the Butler

patent here-in suit. Claim 2 of the patent describes this early

sample of the invention. |

. (12) Butler was the first to propose or to devise a lubri-

cating systém in which the sealing of the joint between the

end of, the nipple and the coupler, and the mechanical grip

between the nipple and the coupler, were effected automati-

_-— tally by the pressure of the lubricant in and by the normal

pumping’ operation of the compressor.’

(13) Claim 2 of the Butler patent describes in more or

less corm a a iaae ou of seven aga which may be

-. enumerated as nipple, compressor, cylinder, piston, aperture,

. jaws, and sealing seat. Each and all of these parts scomicebe

with one another in new ways in the accomplishment of a new

_ (14) Prior to manufacturing and selling the Alémite Hy-

Me vag ate, Fea 18°

Findings of Fact and Conclusions of Law.. 433 &

draulic system of.the patent in suit (exemplified in Plaintiff’s . § §f

Exhibits 13 to 20 and 22 to 25, inclusivé) plaintiff sold lubri- i

eating apparatus (Plaintiff’s Exhibits 9 and 12) of’the types .

. illustrated in Gullborg patent No. 1,307,734 and Zerk pateftt

2 No. 1,475,980. ae |

606 (15) Plaintiff commenced selling the Alemite -Hy- i

draulic lubricating equipment exemplified in Plaintiff’s '

Exhibits 13 to. 20 and 22 to 25, inclusive, in April, 1933. ee

~ (16) Plaintiff sold 281,555,000 of the Alemite Hydraulic

fitting parts of the combination during the period from April,

1933, to March, 1936, and during this same period sold

6,306,000 of the Alemite Hydraulic coupler parts thereof.

(17) Of-the 6,306,000 Alemite Hydraulic coupler parts |

sold during the period from April, 1933, to March, 1936, ap- 4

. proximately 4,485,000 were sold with their associated com- |

- pressors to automobile manufacturers, to be put in the tool

its of the cars at the factory. iaees ;

(18) The Alemite Hydraulic lubricating equipment em-

bodying the invention of the patent in suit rapidly super- —

seded the Gullborg and the Zerk lubricating equipment be-

cause : ile

(a) Under this equipment, it was not necessary to mauirp-

ulate any coupler mechanism. in the operation of attaching

and detaching the coupler to and from the fitting—as was

necessary in effecting a connection between a Gullborg

coupler and fitting, and REE: :

(b) It was not necessary for the user to apply force to

hold the coupler against the ‘fitting to prevent separation of

these parts,—as was required in effecting a connection be-

—* the coupling nozzle and fitting of the Zerk lubricating

_ Within eight months after its introduction on the marke

- the plaintiff’s Alemite Hydraulic system had been adop’

_ as the factory lubricating equipment of every automobile and -

_ truck made in the United States, with the single exception

: of the Duesenberg. ee ers

_ 607 (19) The mechanism embodied in the means by which

_._ the jaws are compressed about the nipple of the Alemite 4...

_ Hydraulic system, is identical in its mechanical principles” —_

_ with that disclosed in the Butler patent. It is a simple

equivaldnt involving a mere reversil of parts. Bien te

* (20) The Alemite Hydraulic system comprises tho com.

: bination of elements set forth in claim 2 of the Butler patent. os

: ' cS 19 ee > .

48h Bindings of Fact.aind. Conclusions of Law.

(21) The Lincoln Reinet Company of Missouri

initially in the business of making and selling auto-

mobile lubricating équipment in 1925, supplying its equip-

ment exclusively to plaintiff...Thig relationship between the

Lincoln ‘Company and the plaintiff continued for several

years thereafter, until 1933. 2 :

" (22) When, shortly after January 1, 1933, Lincoln En-

gineering Ceseeny began selling automobile lubricating ‘ap-

paratus to others than Alemite, the saled of such apparatus,

equipped pa ysgret or nozzles of its own manufacture,

(23) Im May, 1933, Mr. A, P. Fox, the vice-president and

designing engineer of Lincolti Engineering Company of. Mis-

souri, bscame familiar with the nipple parts of the Alemite

Hydraulic system. Although he known of the compres-

sor and coupler parts at an earlier date, he became familiar

with them at least as early as January, 1935. 3

(24) The Lincoln Company’s Kleenseal nipples were

r sold with the knowledge that they could be sub-

stituted for the plaintiff’s nipple part of the Alemite Hy-

dranlic combination, and that they would be so combined in

use. Claim 2 applies to the combination in the same way,

regardless V r.it incorporates the Lincoln Company’s

Kleenseal nipple part or the plaintiff’s ‘nipple part. |

608 «= (25) -—- The di ions of the Lincoln Kleenseal fitting

are exactly such as to make it cooperate satisfactorily

with an Alemite Hydraulic coupler. If the dimensions se- .

lected had been slightly different, such cooperation would

have been impossible. Similar fitti of slightly different

dimensions would have had all other ilities which have been

ascribed to the Lincoln Company’s fittings, and would have |

cost no more:to make. . _ get tig See Re

- . (26) The defendants John R. LeVally and Frederick A. |

Faville did not, as individuals, either jointly or severally, sell be

: "tary ‘Defendants sold “Lincoln Kleenseal’’ fittings with

the knowledge that they were to be used in combination with.

he ¢ ssor and oc of the Butler combination

Findings of Fact and Conclusions of Law. 435

pected. that automobiles equipped with the Lincoln aipple .

art of the combination and sold in the United States, would

be lubricated at garages and service stations. The plaintiff

had previously sold millions of the compressors and coupler

parts of the combination, and had endeavored to supply every

public garage and service station in the United States.

'. (29) The Lineoln Engineering Company of Missouri in

its Kleenseal fittings, duplicated, fitting for-fitting, all of the

arbitrary dimensions of the entire line of Alemite Hydraulic

(30) The Lincoln Engineering Company did not sell any

of its grease guns or iiozzles to automobile maffafacturers for,

tool kit equipment. of automobiles sold in the United States,

even though the automobiles+were equipped with Lincoln

. Kleenseal fittings. — | = Pe

609 (31) There is nothing in the Butler patent which re-

quires the use of spring fingers which can yield a. sub-.

stantial amonnt. .

(32) 'The Lincoln Engineering Company initially submit-

- - ted to the Standards Division of General Motors Corporation

a fitting like the Kleenseal fitting, but without the peripheral «

groove or shoulder or head. But General Motors never pur-

ehased these ungrooved fittings. “Instead, #¢ purchased the:

Kleenseal fittings having‘ the groové, and cooperable with

Alemite Hydraulic couplers. Z : eh ss

(33) The Alemite Hydraulic coupler will grip and form a

sealed connection with a Lincoln Kl ing as well as

-with an Alemite Hydraulic fitting atd claim 2 of the Butler

patent describes one combination as¥well as the. ather.

(34) Defendant’s model of Fig. 2 of the Butler t does

not accurately or fairl resent the invention of Butler.

' (35) Defendants’ ibit A-61 does not correspo ia tae

’ drawing thereofgDefendants’ Exhibit 0-21. -.-)_ .

(36). Def ts’ expert, stated, that none of the prior art

except Winkley Reissue Patent No. 14,667 accom the

results obtained by the Butler patent. .-

(37) The Winkley Reissue pitent No. 14,667 does not dis- |

close the radially movable locking elements, Ieee chudlion =

sranatoens crewi

es ae r co vely |

the locking elements upon we Butler's i ion is

defined in clairn 2 of his patent. The Winkley patent dis-

closes ‘a coupler mpi | a spring pressed sealing member. It

alogous to the combination of elements

oy - Me : . . Sores Saris

‘gj - _ &, 21 Care Petite ee

ad SE Winn ee eT ee ene

“teh

the

- g novel

Sera

art

(38) ‘Blin erlcilar ebuios of the oil cup ‘vanity the:

"Richardson patent No. 8,251 has no si of func-

Te tents to Paul No. 621,276, Ulleland No. 1,253,-

French No. 327,557, each discloses a construc-

ton readily ble from that claimed by Butler in

these prior art patents the locking the oe

oe: are not actuated by any piston nor automatically by the p

sure of the grease.

(40) The patent to Newton No. 1,118,876 discloses a train

hose testing appliance which was never intended to be used ~

for high pressure lubrication and could not be uséd for such

— without making a great many. alterations of an in-

ventive character in its construction. It does not embody the

. .combination of Claim 2 of the Butler patent.

(44) Defendants’ representation, ibit A-68, differs in

' many material respects from the disclosure of the Newton

patent No. 1,118,876, but even with all of the changes which

e been incorporated in it in an endeavor to make it work,

it is not-a commercially feasible or practically operative

device for high pressure lubrication.

My conclusions of lAw are as follows: :

(1) This'Court has jurisdiction of this suit and of all of

the parties thereto..,

(2) The ‘Lincoln . ineering Company of Missouri fs .

bound by the decree ;

(3) Defendants John R; LeVally and Frederick A. Faville

did not, as individuals? either jointly or severally, infrin

claim 2 of the Butler patent, -_ the bill of complaint should »

be dismissed as to these

(4) Claim — the Butler patent No. 1,593,791 yamine \

new and useful mp phe sha in lubricating ap

611 The combinations of elements set forth in this er arc

not anticipated by any combination disclosed in any gat.

ent, Pe epee or prior use antedating the application for

15) Butler was the first to have invented = combination

Oe rhe Bader of hig patent No. 1,593,791

Lda oe be Baller patent contains an‘adequisdicorare of

of ting apparatus which could be made -

the in coer su sess Mane gapapmedh eee

making lubricating

(7) All of the partsvof tik the rH tim system invented by

Butler disclosed in his patent, cooperate i in a novel man-

—

Findings of Fact and Conclusions of Law. 437

ner ‘to produce a new and unitary result. Each part is de-

0 rly oem the other for the performance of its functions, .

and part performs new functions because of the pres- at

ence and cooperation of the other parts. —~ |

Claim 2 of the Butler patent No. 593,791 is valid.

(9) Defendants have ¢ontributorily infringed claim 2 of ,

- the Butler patent by their sales of nipples or fit-

_ tings exemplified in Plaintiff’s Exhibits 27a and

{ ‘ (10) Plaintiff is entitled to a writ of permanent ifjunction

_- enjoining and restraining the defendant Lincoln Engineering

meg aad of Illinois, its officers, agents, emplo associates

and confederates, from making, using, and calling lubricating

—, P act ora fittings of the kind exemplified in

Plaintiff’s Exhibits 27a and 27b; or any other device or de-

vices embodying tlie invention of claim 2 of Butler patent No.

_ 1,593,791, or any of the parts thereof, orany of the coupler or

embodying adapted and intended te be used in combinations

ing the invention of said patent, and from offering or

“% vertising so to do, and from aiding or abetting, or in

. 612 any way contributing to the infringement of said patent.

¥ (1%) Plaintiff is entitled to recover from the defend.

ants -the profits which said defendants have made, and the

ee intiff has suffered by reason of the said

defendants’ infringement of the Butler — in suit, and to

ver its and disbursements of this proceeding, in

ce W the statutes and rules in such cases made

provi intra’ |

adopt as a part of these findings and ¢onclusions of law

incorporate herein as a part hereof by reference all find- - |

and conclusions of law included in-my memorandum —- -

ion entered as of even date heréof. ;

Entered this ‘day of July, A. D. 1936.

sk | Walter ©. Lindley, |

i, ee Sr cathe | udge.

Filed July 15, 1938," : :

, STEWART-WARNER CORPORATION

; » v. LEVALLY et al.

{ : No. 13955.

prmrict Court, N. D. Illinois, E. D.

i Oct. 5, 1936.

7 . 1. Equity e392

} , Practice of rearguing issues previously

: ; determined in petition for rehearing is not

to. be encouraged. .

2, Patents ¢=315 .

P . ie In patent infringement suit, reason-

By - ble diligence before hearing in procuring

evidence offered as newly discovered, as

See _ ground for rehearing, -held not shown,

; where such evidence consisted of state

, : a ments made to Patent Office in course of.

; ; | solicitation of another patent which were

available before trial.

SS ee

3. Equity @—392

Trial court cannot consider evidence

on rehearing which could have been dis-

covered with reasonable diligence before

4. Patents 6>315 ee .

| STEWART-WARNER CORPORATION v. LBVALLY

16 ¥.. Supp.

6. Patents 6-315

Statements of counsel for plaintiff who

prevailed in patent infringement suit as

golicitors for another. patent which were

proffered as newly discovered material

evideuce, held not to warrant a rehearing.

& Patents ¢—26(1)

New combination involving only a

variation in method of reducing original

idea to practice, or which varies idea of

"means without changing essential charac-

ter, or giving substantial increase to prac-

‘tieal efficiency, is mere change of form, not

constituting invention.

1. Patents ¢>19

Chauge indicating introduction into

the idea of means of a’ different force, a

different object, or a different mode of ap-

plication, is & separate invention.

& Patents G=>316 .

. Decree enjoining manufacture and

sale of nipple contributorily infringing

patent beyond limits of United States held

too broad and would be limited to opera-.

tion within United States.

On petition for rehearing.

.Rehearing denied, original decree va-

cated, and decree rendered in conformity

_ “with opinion. .

For former opinion, see 15 F. Supp. 571.

Williams, Bradbury, McCaleb & Hin-

kle, of Chicago, Il, for plaintiff.

» Wilkinson, Huxley, Byron & Knight, of —

Chicago, IlL, Delos G. Haynes and Lloyd

“RB. Koenig, both of St.’ Louis, Mo. and

deonard L. Kalish, of Philadelphia, Pa., for

defendants.

LINDLEY, District Judge.

Subsequent to the entry of decree here~

be postponed indefinitely.” Jenkins v. El-

dredge, Fed.Cas. No. 7,267, 3 Story, 298,

305° (Story, J.).

{2, 3] Defendant alleges that, since the

trial, it has discovered additional material

evidence, consisting basically of statements

made to the Patent Office in the course of

the solicitation of Bystricky patent No.

2,016,809, issued on October 8, 1985 to

plaintiff, as assignee. Aside from any

question as to materiality, when the patent

was issued on October 8, 1935, its contents

Pe’

charged

thereof and of

patent had is-

the file

125; McLeod v. New Albany (0.0.A.)

‘@ ¥F. 378; Allis v, Stowell (C.0.) 85 F.

;. Moneyweight Scale Oo. v. Toledo

Scale Co., 199 F. 905,-118 C.C.

| Thus in Combustion Utilities Corpora-

v. Worcester Gaslight Co. (€.0.) 190

155, a rehearing was denied where the

_Claimed to have discovered that

when such patent was referred to in the

t’s brief and record upon the orig-

hearing. - Similarly, because of the dis-

covery of a mortgage on the patent, which

shown by the file wrapper then put in

e Money-Weight Scale Co. vy. To-

ade Compting Scale Co. (C.C.A.) 199 F.

[4] However, despite the insufficient show-

ing In this respect, the court, at a sacrifice

of no ‘inconsiderable time and labor, has

examined the offered evidence and. the

other suggestions of counsel with a view

té determining whether, had the plaintiff

materially upon the issues adjudicated.

Obviously, the first question to be deter-

mined, is whether the new evidence sought

to be introduced would have been material

16 FEDERAL SUPPLEMENT

patent anticipated the one in suit,

Upon examination of the Bystricky pat.

ent and a reexamination of the

herein, although the validity of

is not before me, it seems obvious

that Butler was a pioneer in the

lubricant pressure in the sense that

term was used by the Supreme Court

Leeds & Catlin Case (Leeds & Catlin Oe

v. Victor Talking Machine Co.), 218 U

801, 20 S.Ct. 495, 58 L.Ed. 805, and that

: F

onde

eRe

“a

tered, which I see no occasion to modify,

pointed out Butler’s invention and found

that the Alemite System embraced the But-

ler invention. Nothing now urged moves

me in the slightest degree to conclude oth-

erwise.

Another statement of the solicitors ig

the file wrapper is that the Bystricky coup-

ler was not “practically operative except in

combination with a compressor of a certain

definite type, in which means are provided

to relieve or partially relieve pressure in

.the distharge conduit so as to facilitate dis.

connection of the coupler*from the fitting.”

It is contended that this argument clearly.

indicated that the Alemite System does not

embody the Butler invention, but rather

that of Bystricky. Such statement is in

nowise inconsistent with the record here

in, for, as we have seen, Bystricky is mere

é. 4ays ATR FRAT Hae peat HTH giviaetg: ee | te

4 ag ee a 2 is any

tr aTTHHE : Hag ili di ie iia i

‘| s ¥ § | as tT #3

E rite i ut ihe hit Hf il i ilk

at hy fil ie elit ne ceili abt

. plist ad pig a dpa a ii! PTH HT carte +f a

Hn i ha eam bit

t i uit fa i atid ta a i

fe iti re HAH AHURA

HSH )

cee eatatbaaiall

fa vol. 1) ch. 11, 5.218, p. 200, (Ital:

is a mere improvement on the earlier.”

Robinson on Patents, vol. 1, ch. 11, § 216.

(Italics mine.) _ ;

Se, here, Butler introduced into the art

» 4

)16 FEDERAL SUPPLEMENT

Supreme Court believed Gullborg hag

done, trying to extend his patent to a com. |

bination of a certain nipple with ony king

of grease gun. Quite to the contrary, he

demonstrated conception of a new creative

thought, the achievement of a new valid

- combination in which not only the coupler

the idea of an automatic sealing connec- .

tion achieved by the size and character of

elements, which, in themselves, were old.

But he employed a different mode of opera-

ton. ‘He achieved his object by means of

was essential, but in which also the nipple

of peculiar shape and dimension was es.

sential. He produced a new combination,

a new arrangement of known elements, by

virtue of which he produced an entirely

e - new and beneficial result. He developed

new functions and new properties and

achieved novelty, resulting in great com-

mercial success.

In this situation, defendant entered the

field and developed its nipple of equivalent

form, shape, and dimensions, which it sold,

obviously, for use with Alemite guns, sup

planting in the combination of Butler thé

nipple essential to his success. It is a

striking fact that.a nipple of this shape and

dimension was not necessary to the opera- '

tion of ‘defendant's gun or of any

guns than those of plaintiff or of in

fringers OF licensees of plaintiff—a fact of

tremendous significance in determining the

purposes and intent of defendant. It sold

- grease guns which operated with straight-

headed nipples as well as with nipples

with head and shoulders. It first made

straight-headed nipples and exhibited them.

to General Motors Corporation, but .it ‘sold

to that company only nipples of infringing

iy At ss

one

4 “

ARS

LEVALLY

STEWART-WARNER CORPORATION

16 ¥. Supp. 178

ere erent ett 6 ee oe

District Court, N. D. Illinois

sSoyaaealgipnsara CoRPoRATION

Joun B. La Vay and Farpesick A. Faviiim, doing business as LINoonx ENGINEER-

gate Bs : neg CoMPaNy or ILLInots, and Lincotn Enorneerine Co, or [111801

a) ee _ Equity No. 13955 Decided Oct. 26, 1936 oe

general-—

oes nen oes grant supersedeas lies within 5 ike Ghdaeation ant that Gleceetien

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appre oot ca rpc sant as bt dw 2

MS eoart does not, tell € what shall be incorporated in

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: ented.

[INCOLN ENGINEERING 00. OF ILLI-

=. . NOS v. STEWART-

CORPORATION !

No. 61€3.

Cirentt Court of Appeals, Seventh Circuit.

= ' June 29, 1987.

Rehearing Denied Sept. 15; 1937.

1. Patents ¢=26(1)

> 4 “combination” contemplates a plural-

“tty of units, but patentable invention can

only reside ih a “combination” when it fs

considered as a unit,

_ [Ba. Note-—For other definitions of

“Combination (In Patent Law),” see

‘Words & Phrases.)

_& Patents ¢=41 :

If all elements of unit are old but have

never appeared together in eombination, and

they coact so as to avoid charge of aggrega-

~ tion, the combination fs not lacking in novel-

ty so as to bar patentability.

' §, Patents ¢—42

Where combination consists of five ele-

ments and inventor uses four elements in

same way and for same purpose as in pre-

vious combination, but substitutes new ele-

- ment -for remaining element of old combina-

tion and obtains desirable results, new com-

bination is not lacking in novelty so as to bar

"” patentability. :

4, Patents ¢=>41

‘Where combination consists of five. ele-

> ments and inventor uses four old elements

in same way and for same purpose as in

previous combination but substitutes for re-

maining element old and well-known ele-

ment which has never been used in combina-

_ thon with such other four elements, new com-

bination may be patentable.

5 Patents 6=26(1%)

An old combination may not be repat-

+. LINCOLN ENGINEERING CO. v. STEWART-WARNER COMPORATION 87

scribing a “combination,” and not ap “ag-

{md. Note—For other definitions of

“aggregation,” nee Words & Phrases.)

9. Patents 6-86 (1%) OREN

The nanies qf various s embodied in

patent did not determine w unit was

“eombination” or “aggregation,” and if

there was coaction of elements so as to make

single unitary structure, there was 2 patenta-

ble “conibination.” .

10. Patents 6259 (2)

The supplier of an element in @ valid

combination embodied in a patent might be

guilty of infringement, though element was

not patentable, and was old. — ae

11. Patents G=255 — , ,

If element of patented combination

very nature of its use wears out, new ‘ele-

mient may be furnished without producer’s

infringing. ._

12. Patents 6226, 259 (1)

‘An infringer and a contributory in-

fringer are tort-feasors. :

13. Patents @=>259 (1) -

The maker, buyer, or seller of non-

patented article is guilty. of “contributory

infringement” only when it knows that non-

patented element is to be used: in connection’

with other elements in valid. combination ©

liane atthe ttt ha LOA LNA

oe ee

eee

- i ti

Mi he mo interdependency in sense of one

’ being dependent on the others for

18, Patents 45.

_ As respects,patentable novelty, evidence ,

., ' of wide and popular acceptance of patented

apparatus is controlling in doubtful cases.

<9. Patents ¢328

it No. 1,598,791, claim 2, dealing

| ~ —,°< Syith @ lubricating apparatus, is not invalid

> ee ie of patentable novelty.

. Patent No. 1,593,791, claim 2, dealing

with a lubricating apparatus, was infringed.

% ee - — .

Appeal from the District Court of the

‘United States for the Northern District of

Illinois, Eastern Division.

Patent infringement suit by the Stewart-

Watner Corporation against the Lincoln

Engineering Company of Illinois. From an

adverse decree, defendant appeals.

-Warner Corporation v. Jiffy Lubri-

cator Co. (0.0.A.) 81 F. (2d) 786; Stewart.

Warner Corporation v. Rogers. (D.C.) 15

F.Supp. 410. ‘

The decree subsequently entered granted

‘an injunction that restrained future in--

accounting of profits and damages occa-

sioned by past infringements. '

The application for the Butler patent

was filed February, 1923, and the patent is

sued

July 27, 1926. It related ta Lubricating

Apparatus.

Claim No. 2, the one in issue, reads as

follows: ‘

“2. The combination with a headed nip-

ple for receiving lubricant, of a lubricant

compressor having a coupling member for

connecting said compressor and nipple com-

prising a cylinder, a- piston movable within

the cylinder and having an‘aperture for the

= gis ity HIE Te Bige

ee ie

EY He flay ie tories fds i :

if ae fa H iil Hal les i ill

eagaal ih PULAU HEH f iii it il

: ar i ‘ é ' wyaeg.

ee eae Tan

Fee Pes HE RT rial i

cai ea a i

E las ate ae Hi He Hy Tr dl

t fi Hil + FL sei HAART ight wee

ote tk iila,: "ih His! lid tiatat

its introduction, the Butler

every automobile

United States with

& “The mechanism embodied in the

which the jaws are compressed

nipple of * * * (appellee’s)

identical in its.mechanical princi-

Gi Wilh that Clecioned fn the Butler patent.

It ts a simple equivalent involving a mere

reversal of parts.”

10. Appellee’s system comprises 2 com-

bination of elements, as set forth in claim 2

of the Butler patent.

ii. Prior to 1988, appellant was en-

gaged in the business of making and selling

automobile lubricating eqquipment to appel-

lee, In 1983, it began séiling lubricating

apparatus to others. It made and sold coup-

lers and nozzles with the expectation that

they would be used with appellee’s ap-

peratus. Its nipples were. sold with the

knowledge. that they could, and would, be

used as part of appellee’s combination. The

dimensions of appellant’s fittings are exact-

ly such as to fit appellee’s coupler. If they

did not select exact dimensions such coop-

‘eration would have been impossible. Appel-

‘ Jait’s. “Lincoln Kleenseal Fittings” were

sold to be used in combination with the com-

pressor and coupler parts of the Butler com-

bination as made and sold by appellee. Ap-

_ pellee sold its compressor and coupler parts

of ‘the combination to public garages and

service stations in the United States, and

appellant offered its fitting parts to be used

by the said garages in connection with the

Butler combination. Appellant duplicated

‘for fitting all of the arbitrary dimen-

slons of the entire line of appellee’s fittings.

32.. The Butler patent does not require

ee Coens Spbeet: wich con yicid

~ 3B. Appeliant’s model .of Figure 2 of

‘Butler patent does not accurately or fair-

the invention of Butler.

' Olaim 2 of ‘the Butler patent de-

ee ee oe

and “Alemite Hydrau-

the

-mite Hydraulic” coupler.

91 FEDERAL REPORTER, 2d SERIES

As gsonelusions, the court found:

That claim ‘2 of the patent is valid, and

defendant contributorily infringed it by the

sale of “Kleenseal” nipples or fittings, ex.

emplified in plaintiff's Exhibits 27a and 27p;

- and that appellee is entitled to an injunction

and to an accounting.

Appellant challenges the decree on three

separate, distinct grounds, stating each with

commendable frankness, brevity, and clari-

ty:

(1) SButler’s hose coupler can not be

validly claimed in combination with a non.

patented lubricant receiving nipple or an old

compressor, particularly where his conceded

purpose is not merely to monopolize the hose

coupler, but to include in the monopoly the

admittedly old device which is used with

it. To support this position appellant relies

upon Bassick Manufacturing Co. v. R: M..

Hollingshead Co. (Rogers v. Alemite

Corp.), 288 U.S. 415, 56 om. 787, 791, 8

L.Ed. 1291.

(2) The coupler of the Butler patent

shown in Figure 2 is not the so-called “Ale

Supporting this

position, appellant relies upon the facts

brougkt out by the evidence ‘and the holding

in Stewart-Warner v. Jiffy Lubricator Co.

(C.C.A.) 81 F. (2d) 786.

(83) The Butler multi-jaw chuck type

hose coupler is not a patentable improve-

ment over the multi-type hose coupler of the

prior art. As bearing upon this issue, if

contends that the evidence does not support

the findings of validity because the Butler

hose. coupler as described by Butler both in

Figure 2 and in his claim never went into

commercial use. It likewise argues that ex-

tehsive use where the trade was so dominat-

‘ed by Stewart-Warner is not persuasive of

validity.

Ths Sniciednainee of ths cake ant Ge cau

of the Bassick opinion upon the whole field

of. patent law make it impossible for’ us to

dispose of the case in an opinion of desirable

and satisfactory brevity.

While going no further than is necessary

36 .

LINOOLN ENGINEERING CO. v. STEWART WARNER CORPORATION . 161

> 91 r. (24)

“Peonaylvania) tm Stewart-Warner v. Uni-

‘horg patent, the validity and infringement -

‘ef which were the subject matter of the

Mfg. Co. v. ‘R. M. Hollingshead

The Gullborg patent had been the sub-

- fect of much litigation, as pointed out in the

- opinion, and it dealt, as here with (1) a

. typeof pin fitting, (2) a grease gun, (3) a

the facts to which it applies, yet there are

cages where the differences in the facts are

go inconsequential, so inimaterial, that the

-@pinion must be accepted as authoritative

__ ‘fhe uppermost question in this case is

. the controlling effect of the Bassick Mfg.

~ €o..y. R. M. Hollingshead opinion, supra.

“We are not disposed to limit it in order to

“bring about an avofdance of any new princi-

ple it may announce. Nor are we inclined .

to. give it an effect which was not intended,

if it does not follow from a fair construction

one element of an old combination.”

If the court announced a rule in the Bas

sick Case as contended by appellant’s coun-

sel, of if all of its implications (the substitu-

tion of a new element for an old element

BARE

Nag Fetes o>

Pony ne

In testing the validity of any machine

‘tutes a new element 4 for old element 4 of

. @ement 4 an and well-known element

but which has never been used in combina-

tion with elements 1, 2, 3, and 5, and these

elements being presented in the new com-

bination for the first time may be the subject

of a valid patent.

_ Im stating these propositions, we have

used the word “may” for there are other

factors to be considered in determining

_ fmmy not be patentable. The advance may

Represent the skill of the artisan or the

‘mechanic, not the genius of the inventor.

say that the

that

+ Prd

a *

iF . as

’ bination.

mechanical skill. In passing, it might be &

‘Case as authority for its contention that

> J

{5] Equally clear is the law which denies

to anyone the right to repatent an old cage

{6] Accepting the foregoing principles

sound and applying them to the instant caga

we have no difficulty in distinguishing egy |

of thé prior art. Nor are we troubled by the’

decision in the Bassick Case. The. Bute

novel. Their structures are clearly dip

tinguishable from the prior art. Whethe

the other mentioned elements are old is ig

niaterial. : a

[7] The only valldity"questions left relate:

to combination as distinguished from ag

gregation and the character of the discop

ery—whether it marks patentable novelty or

served that if g new product is found to be

patentably, novel, it is immaterial whether.

said patentable novelty is of the pioneer type

or “the mere improvement type” of inves

tion. *3

Appellant also relies upon the Bassi

contributory infringement is not disclosed

upon a showing that it furnished nipples”

and grease guns, even though made in sui

a. way as to be used as an element in the Bub

ler combination. “its

The last paragraph of the Bassick opis’

ion is cited in support of appellant’s pos

tion. It reads as follows: =

of the patents cannot extend the monopoly”

of its patent, for a pin fitting to preciada-

the use therewith of any grease gun not em

device evidenced by the patent in suit;

cannot extend the monopoly of the

bination patent in suit to prevent the use

a coupler such as that claimed in the

in suit.” oe «fs

We accept, of course, without qu a

this opinion as applied to the facts in te

case that was before the Supreme Court. ~~

In the instant case, Butler does not sem

@id Butler set forth a valid patentable com-.

‘Second, did the sele of a headed nipple or a

Pom

LINCOLN ENGINEERING CO. v. STEWART-WARNER ceonenans 3.

91 F. (94) Ter

lubricant compressor ine for the sole pur-

pose of being used in connection with the

ent, constitute infringement?

9) Combination or Aggregation. As

» view claim 2 of the. Butler patent, it

+a combination, not aggregation. It is

: _ names of the various parts that de-

SUMiihs to an to make i soils enhady

fucture, we have a combination. The nip-

fle head may be a non-composite apparatus.

it may be the subject of a valid patent claim.

akewise, it may be part of a combination.

In the instant case, it is conceded that

= headed nipple was not patented. More,

was old. Nevertheless, if it is an element

novel coupling method), it is a unit of

r 4 @ combination and a third party supplying

Wt, if other necessary facts are shown, may

| Whether the supplier of headed nipples

* other elements of the combination set

h in claim 2 is a-contributory infringer

spends first on whether the element sup-

lied is a part of a valid combination (as

Istingnished from an aggregation), and

cond, on whether the producer so con-

fructs it that it can be said that it was

nov ngly made with the intention that it

fould be used in connection with the pat-

nted combination.

1} There is an exception. to this state-

hent—If an element of a patented com-

ination in the very nature of its use wears

pu and a new one is supplied, it may be fur-

emished without the producer’s infringing.

Heyer v.. Duplicator Mfg. Co., 263 U.S. 100,

4 S.Ct. 31, 68 L.Ed. 189; Leeds & Catlin

v. Victor Talking Machine Co., 218 U.

825, 29 S.Ct. 503, 53 L.Ed. 816. But,

Where the intent is present, as here, to sup-

ply separate units of a patented combination

Contributory infringement is disclosed.

question respecting the dimensions of

pellant’s headed nipple clearly show an in-

Pntion to make parts which could only be

fed in connection with the patented com-

mation. If, then, tle Butler claim No. 2

uaclosed a valid combination, infringement

2 shown.

12] In dealing with

tributory infringement, it

subject of con-

t be observed

apparatus made according to the Butler pat-

p this question. If there be coaction —

it is not patentable. It will be assumed that -

} an ‘otherwise valid combination (due to’

i not as a renewal of a worn out part, -

[The findings of the District Court on

we are dealing with a phase of the gen-_

elements in a valid combination covered by

a valid patent. This is ‘the doctrine of con-

tributory infringement, “~-

In the instant case, the court has made

findings, and the facts leave no doubt as to

the’ soundness of such findings, to the effect

that the non-patented parts made by appel-

lant were not only intended for use in con-

nection with Butler’s patented combination

but they could hardly be used otherwise.

The size and dimensions of the fittings most

conclusively demonstrate this fact. »

It might be asserted that appellant did

not infringe when it manufactured one ele-

ment of the product for it could have been

sold to one who would use it other than in

the Butler patent combination. However,

when it appears that such products were

made by the appellant and sold to garages

and it further appears that the fittings were

of such measurement as to preclude their use

‘except on appellee’s patented apperatus, con-

tributory infringement both in selling and

in using is established. ‘

To establish contributory infringement

the following facts must appear: (1) a valid

patent; (2) ordinarily in the case of a prod-

uct patent covering a combination; (3) the

alleged infringer must make or supply one

or more of the elements of the combination

with the knowledge and intention that the

same is to be used in the patented combina- .

tion.

Contributory infringement is ‘the out-

growth or result of the application of the

following legal propositions:

(1) A patentable combination is a unit

in the contemplation of the law. .

1 gee =

Dees on oe 91 FEDERAL REPORTER, 24 SERIES

it) me mao bad i yg in- the vexpene of the anament aay, for oer

. es, | Thr Morn _Wike we. would before accepting it.

e of a valid combination wherein one of tion.

essential elements was a product made [15] ac.

appeliant. Ifthe elements do not spell cept the term “aggregation,” if used at all,

00. v. STEWART-WARNER CORPORATION.

Pa UY fogs ar

plish a desired result, ‘a patentable combina- ented apparatus which is so controlling in

‘tion may well be present. Nor is it proper gonhtful cases. wi ¥

te say that the correlation or cooperation Andis Clipper Co. (0.C.A.

(0c.a.)

View may not harmonize with many of ‘the. ‘United States. It is for this reason that wa :

“Gecisions, and tt is not applied in the instant _ have not allowed the sale figares to inflnence

_ tase, it seems to us the more logical one. (our judgment on this issue of validity of the

"For when we attempt to distinguish between patent. - See ins oy

* the skill of the me- _— It is only after observation of the varices |

eee anne Stailt Chat the tortie often ' lubricating systema that we have eome to the B

expression in the selection of the par- same conclusion as was reached by the Dis-

“teular element and it is the selection of ele- trict Court, If the advance.-which Butler

Ments that solved the problem, improved the made was merely the solution of a mechani-

product, or brought about the desired econ- fal problem, we are at 9 loss to undesstand

with the other elements may be very limited, Holding one part of the lubricating system

—in fact, limited to mutuality of effect or against another while pressure was applied

functioning to a common purpose. and grease squirted in all divections, or mak-

41 Nie eS

high pressure was extremely desirable. The

- ing under the car or reaching points rather

never been used before. It was novel in the

lubricating field. It may not have been

wholly new in the entire field of mechanics,

but it was novel in this particular field. Its

a *

necessary in @

der to distinguish the invention from

prior art. More frequently however, it;

the principle of operation which is beij

illustrated rather than an effort to conf]

the invention to the exact figures shown |

drawings. 3

This seems to have been the thought:

5 Judge Lindley when he said: 4

“The Alemite Hydraulic System (appl

lee’s) comprises the combination of elemeal

set forth in claim 2 of the Butler patey

patent which requires the use of ‘sprij

fingers which can yield a substantial amou

* The Alemite Hydraulic coupl

' will grip and. form a sealed combination wil

a Lincoln Kleenseal fitting as well as wi

an Alemite Hydraulic fitting and claim 24

the Butler patent described one combinati

as well.as the other.”

_ He further stated:

“The mechanism embodied in the meaj

by which the jaws are compressed about @

nipple of the Alemite Hydraulic system,’

identical’ in its mechanical principles wi

that disclosed in the Butler patent. It %&

simple equivalent involving a mere revere

of parts. The Alemite Hydraulic syst?

comprises the combination of elements §

forth in claim.2 of the Butler patent.”

[20] -Our conclusion is that such depa

tures from the Butler patent as were mai

in the commercial structures were nev

theless the equivalent of the Butler claf

and they embodied the mechanical principl

which were described in the Butler 7

In other words, we agree with the Dist

Court that appellee’s Alemite Hydrau

‘system was an embodiment of claim 2 of €

The decree is 5

“ } rmed. . 3

= = mee te era enw nce npn niet pe ‘ x

ey ae, MELE OE SS ee ee 2 : : — =< * Je ark Ve ote wel iniline selenmeeiiad

“eo

a from the Opinions in the 12 Cases Cited in Fost.

= nota 4 to th Opinion ofthe United States Supreme Cour

- 8. 415, 80 L. Ed. 1251.

er The opinion of the Supreme Court in the cases of Bassick

t. Hollingshead and Rogers v. Alemite, 298 U. 8. 415, 80

L. Ed. 1251, cites twelve decisions in support of its state-

ent that ‘‘as shown by numerous cases in this and other

Jeral courts’’ one eannot, ‘‘in effect, repatent the old

fombination by reclaiming it with the improved element

batituted for the old element’? where the ‘‘construction

‘oom RM aecration 3 is otherwise unchanged.’’

It will be found that these cited cases were decided

ast the plaintiffs upon nine different grounds, namely :

y Double patenting: Underwood v. Gerber, 140 U. 8.

@) mn of Invention: Wall Pump ¢& Compressor Co,

¥. Gardner Governor Co., 28 Fed. (2d) 334, 338, 339; Gen-

ora Electric Co. v. Ohio Brass Co., 277 Fed. 917; Troy

Wagon Works Co. v. Ohio Trailer Co., 274 Fed. 612;

~ (3) Anticipation by prior art: Heald v. Rice, 104 U. 8.

> 181, 753; Troy Wagon Works Co. v. Ohio Trailer Co., 274

| Fed. 612;

a (4) That a reissue patent was for a different invention

| from that of the original patent; Langan v. Warren Aze &

- a Tool Co., 184 Fed. 720; Heald v. Rice, 104 U. 8. 737, 753;

(5) Non-infringemeéent because defendant did not sell

E any part of the thing claimed in the patent in suit: Harvey

a © Hubbel, Inc. v. General Electric Co., 267 Fed. 564; '

| (6) That the patentee and purchaser and user of the

|) patentee’s machine contemplated that the purchaser might

a. 45

win Bassick v. Hollingshead and>Rogers v. Alemite, 298

Pawan * ~

ee GS SN a es

onda a. eeee + :

replace quickly perishable and periodically renewed parts

or supplies: Morgan Envelope Co. v. Albany Perforated

‘Wrapper Paper Co., 152 U. 8. 425, 431, 482; Wagner Type-

writer Co. v. Webster Co., 144 Fed. 405, 409;

(7) That the defendant had been impliedly licensed by —

the patentee: Edison Electric Light Co. v. Peninsular Light,

P. é H. Co., 101.Fed. 831;

(8) That a patentee may not exact as the condition of a

license, that unpatented materials used in connection with

the invefition shall be purchased only from the licensor:

Carbice Corporation v. American Patents Development Cor-

poration, 283 U. S. 27, 31, 32. (Upon a rehearing the pat-

ent in suit was held to be. invalid because anticipated, 283

U. 8S. 420.)

(9) That it was a violation of the Clayton. Act for the

Radio Corporation to require its licensees to purchase radio

tubes from it alone for inclusion in sets licensed under

Radio Corporation circuit patents as initial equipment:

Radio Corporation v. Lord, 28 Fed. (2d) 257,

CASE NO. 1—CITED BY THE SUPREME COURT.

John T. Underwood, et al v. Henry Gerber, et al., 149

_ U. 8. 224—Decided May 1, 1893—Opinion by Mr. Justice

Blatchford.

In this case the patent in suit was held void on the ground

of double patenting.

Snit was brought on patent No. 348,073 for Carbon Paper

_consisting of a sheet of material coated with a specific com-

position. Carbon paper consisting of a sheet of material

coated with various compositions was old and well known.

The specific composition was separately claimed in patent

No. 348,072, also owned by the plaintiffs but not in suit.

The court indicated that the specific composition claimed

_in patent No. 348,072 was new and that if suit had been

- brought on this patent, a different result would have been

reached. The court, however, held that the specific com-

position claimed in the earlier patent must be considered

prior art, and held the patent in suit to be void thereover.

The court said, at page 331: ©

‘As No. 348,073 does not claim the composition of

matter, although it describes it, that composition must,

be regarded as disclaimed, and as being public prop-

_erty, and there was no invention in applying it to

paper, as claimed in the patent sued on.’’

CASE NO. 2-CITED BY THE SUPREME COURT.

Wall Pump & Compressor Co. v. Gardner Governor Co., ©

28 Fed. (2d) 334, 338, 339. (C. C. A. 7—Sept. 13, 1928—

Alschuler, C. J.)

This case involved a patent on a two stage air compres-

sor for use in supplying air for automobile tires. The court

found the patent to be invalid, citing numerous anticipa-

tions, It was argued that none of the citations constituted

anticipations, because they did not possess radiating flanges

of the patent in suit. As to this, the court said:

‘‘What we have said sufficiently indicates our view

that invention is not involved in so equipping such a

conduit or receptacle. The presence or absence of such

well known radiating expedients, or the number or .

ys i of such fins, involves engineering or mechanical

judgment and skill, but to no degree invention.”’

The gist of the decision, however, is contained in the fol-

lowing excerpt from the opinion, appearing on page 339:

“*Tt is of much significance here that about the same

time several important builders of such machines—

without relation to each other, and,.so far as the evi-_

dence discloses, without knowl of what Gardner

or the others were doing—designed and built machines

which s~ bstantially embody the elements of the patent,

without themselves claiming to be inventors. Such a

situation is instructively dealt with in section 25 of

Walkeg.an Patents, where it is stated: ‘i

‘¢ ‘The absence of invention may be established in

‘some cases, by evidence that a considerable number of

persons who were not inventors, acting pre wre nd

of each other, and without receiving any information

from the patentee or his patent, did in fact contrive

the im ment claimed therein, not long after he

produced it.’

** Also, in Concrete Appliances Co. et al. v. Gomery, -

tes :

et al., 269 U. 8. 177, ot page 2, 2 8. SE OO

L. Ed, 222),-the court said:

‘* ‘The adaptation i independently. made by engineers

and builders of these familiar appliances Tailding the move-

ment and. distribution of wet concrete in wr away Se

erations and the aye ene patent applications, wi

in a comparatively sho pent me of time, for devices for

that purpose are in t rsuasive evidence that

this use in combination of known mechanical! ele-

pose lee hy: 3 roduct o Se ee

“py and not of inventive ey

Works. vady, 107 U. S. 192 (2 8. oe 7 L Ea.

‘*We believe that the ‘circumstances of the instant

case invoke the application here of the principle a

stated, and give yet another reason for co

we do, that the bringing together of the various hog

ments of the claims 5 Wentele not invention, but only

the exercise of such mechanical and enginee skill as

might reasonably be expected in those ve in this

department of endeavor.’’

* *~

’ . . °

> r s

DEE SARS pi SRP wR TEMS A 9 oe ee YTS a peer ae Lain aking ews

{ar neo nee aa

ee eedananeneaineineen => een

ORT ETA TA PET AON, 3

at OP dee

2. niger.

LE ER et ee ee as

OASE NO. 3—CITED BY THE SUPREME COURT.

General Electric Co. v. Ohio Brass Co., 277 Fed. 917.

(C. C. A. 3, Jan. 6, 1922—Woolley, C. J.)

_ The Buck and Hewlett patent in suit was for a system of

electrical transmission. Claims 2, 3, and. 4 covered the

combination of poles, electrical conductors, and insulators

supporting the electrical conductors and flexibly connected

to the poles. The court found that this combination was

anticipated by a prior use in Indianapolis, and that these

‘claims were accordingly void. a :

Claim 6 covered the same combination, but required that -

the insulator be of the specific type disclosed in a patent

taken out by Hewlett alone. The Hewlett patent was not in

suit. .

- The court found that claim 6 of the Buck and Hewlett

patent in suit described nothing more than the usual and

‘ necessary combination in which the insulator of the Hew-

‘lett patent was designed to be used, and that the claim was

accordingly -void for lack of invention. The court said,

‘‘On this issue (of invention) the complainant con-

cedes that, with qualifications, all elements of the com-

binations of the claims in suit are old. Therefore, it is

certain that invention,.if any, must be found in the

combinations alone. Leeds ¢ Catlin v. Victor, 213

U. 8. 325; 332, 333, 29 Sup. Ct. 503, 53 L. Ed. 816. We

understand that the complainant does not deny that

the combinations themselves were, in their essentials,

found in systems of lowet potentials and in systems of

higher potentials, the formers exemplified by railways

and the latter by wireless telegraphy.’’

: & ca _* e + 4 & *

‘*But the complainant says the Indianapolis system

was of low potential. It was, relatively so. Yet its

problems, electrical and mechanical, were different

only in degree from those in a system of high poten-

tial. That difference is cared for by insulators and

their related expedients. But if it were not, still we.

fail to discern invention in the mere adaptation of this

Indianapolis system of low potential to the complain-

ant’s system of high potential.

‘¢We are of opiniqn, therefore, that within the gen-

’ eral description of the element of an insulator, the in-

vention of the patent in suit was anticipated. On this

ground, as well -as of the ground which will. control

our decision on claim 6, we hold claims 2, 3 and 4 in-

valid. It follows on the same evidence that claim 1 is

invali

ticularly described in the specification and displayed

~ in the diagrams, is the insulator of the Hewlett patent,

or an insulator distinctively of its: type, we have the

question whether the Hewlett insulator, or one falling

within its description, can in combination with common

expedients of the art be the subject of invention.

‘Turning to claim 6, we find, as we have said before, .

the invention. to be a combination of three elements:

First, towers provided with cross-arms ; second, an elec-

. trie conductor; and, third, disc insulators flexibly con-

nected in series supporting the conductor, thereby pro-

ducing as a result its free suspension. ‘Towers pro-

vided with cross-arms’ were not new. At any rate they

are the equivalent of poles with cross-arms. . Poles with

cross-arms are an expedient of the art as.old as the

art itself. Current conductors, of course, are an ex-

ient as old:as poles. The only other element is the

insulator, and that insulator is intended for use only

in suspended connection between cross-arm and con-

ductor. ‘Thus there is a combination which embodies

a specifie element of suspended insulator in assem-

blage with expedients of the prior art, which together

produce no function other hon that which the sus-

pended insulator would itself produce when in opera-

- tion with these ordinary expedients of the art. _.

‘‘The insulator described in claim 6, whether spe-

cifically the insulator of the Hewlett patent or gener-

ally an insulator of the Hewlett type, is adapted for

both horizontal dead-ending insulation and for suspen-

sion insulation. Whether used for one purpose or the

; Vy

’

alid. 2 7

‘¢ As the insulator in the combination of claim 6, par- ~

en RRR OR NTR Se een meee meee

Sasa tte

‘

wn oe Set Se See eee ee ~~

fierce

ae a ee ee eee

Dew rlnatts « TIC se Oa 58 ate tore teem ee

de ihe i

oro 5 eneneneunreness

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—aenea eee

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other, or for both purposes, such an insulator in over-

head suspension can be used—so far as we have been

shown or can.imagine—only in connection with the -

patent combination. At least, claim 6 discloses use of

the insulator only with these expedients. There must

be a tower or pole with a cross-arm from which to sus-

pend the flexible insulator at one end and a current

conductor to be appended to the insulator at its other

end. Without these two expedients the insulator can-

not work. This being true, can there be inyention in a

combination of three elements, when two of them, sep-

arately free to everyone, are indispensable to the func-

tioning of the third? Or, stated differently, is there

invention in a combination which produces no result -

other than that produced by one of its elements operat- —

ing in the only way. ible for it to operate—that way

being through dave common to the art? Reading

claims 6, 2, 3 and 4,—all combinations,—we find, de-

scribed as an element in each, an insulator of a specific _

(claim 6), and an insulator of a more general type:

(claims 2, 3 and 4), in combination with expedients ap-

oes pee from the art without which insulators of

neither type can function. The complainant says here

is invention. With this we cannot agree because : First,

we do not find a combination which in the patent sense

is new. Nor can we find such a combination useful be-

yond that of the insulator itself with the expedients

of the art open to it—expedients without which the in-

sulator is useless. If such a combination constitutes |

. invention, then, if patented, use of th on expe-

dients of the art—poles and conductors—would be

foreclosed to every one seeking lawfully to use insula-

tors of their own which happen to fall within the class

of the insulator elements of the claims. Of such insu-

lators there are numbers patented and extensively used

in the art. . , pees | 7

‘¢As drawn, the patent to Buck and Hewlett grants —

them not merely a monopoly of a system of electrical

transmission, but, in effect, expands the. Hewlett pat-

ent for an insulator and permits it to embrace and

lize, the named expedients of the art, thereby ~«

bringing about infringement whenever these expedients

aré used in combination with insulators of others,

_ ‘which, though not infringing the Hewlett insulator,

fall within its broad Daccddptice, ‘The Buck and Hew-

_leftspatent for a system, built around the Hewlett in-

sulator, pretty nearly, if not entirely, covers the whole

art, present and perspective,. of insulators eb series

flexibly connected, whether the insulating members te ee

discs, globes, or other shapes

‘*We are constrained to hold the claims’ of the patent

in suit invalid and direct that the decree below dis-

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CASE NO. ITED BY THE SUPREME COURT.

“Troy Wagon Works Co. v. Ohio Trailer Co., 274 Fed. 612

(C. C. A. 6—July 27, 1921—Donahue, C. J.). . 3

- This suit involved two patents, one & patent to Hudson

_ for improvement in steering mechanism adapted to trailer

trucks, and the other a patent to Eccard & Smith, relating

to an improvement in reversible trucks or dump wagons,

and claiming a combination of draft bar and automatic

locking device. Both patents were held to be iavalig for

want of invention.

The Hudson patent for aitaring device was held to be

anticipated by various steering mechanisms in the automo-

bile art.: The chief argument apparently on appeal was

that the automobile art was not analogous to the trailer art.

The court held, however, that if it was not in the same art, it

was at least in a closely analogous art, and held the patents

in the automobile are to be good anticipations.

The court likewise held the Eccard & Smith patent to be

anticipated by prior patents in the automobile and agricul-

tural implement arts.

The court further held that the automatic lock of the

Eccard & Smith patent performed precisely the same fnnc-

tion that automatic locks had performed long prior thereto,

and that there was therefore no new result from combining ~

’ an automatic lock with the old steering elements of vehicles,

and that consequently ‘the patent did: ‘not, involve invention.

The court, on pages 618-621 of the opinion, said:

“‘The Eccard & Smith patent, No. 1,117;816, relates to

improvements in reversible trucks or dump wagons of

the which a 4 pivoted draft bar at each end

thereof, which drai

steering purposes, scsi ra, Sa aeaeaahat the wagon :

bar is connected to the wheels for — :

aoe

bed or frame in a central position when the truck is be-

ing drawn from the opposite end. Claims 6, 7, and 8

are relied upon by the appellant. These claims are sim-

ilar in their nature; claim im 8 being, perhaps, a little

more comprehensive than either of the other two. This |

claim reads as follows: | Beis

_. ‘8. In a vehicle of the character ibed, a

main frame, a draft bar pivotally to. said

a main frame at its rear end, an automatic latch for

locking said draft bar to said frame near its front’

end in a central position with respect to said main

frame, said draft bar ae Cee with the

—T wheels of said vehicle, and means for hold-

ing said latch in inoperative position to permit said

draft bar to steer said wheels’ «sss

‘‘There are other claims describing this automatic

locking device in detail, but it is not seriously con-

tended that the automatic locking device used by the

defendant is an infringement. of appellant’s automatic

locking device, separate and apart from the combina-

tion in which it.is found. On. the contrary, it is the

specific claim of the appellant that the invention lies in

the combination and not in the lock per se, and that

therefore the introduction of any automatic locking de-—

vice into this combination described in the ‘specifica-

tions and claims, on eae ‘in like manner as ap-

pellant’s automatic lock with the other elements of the

combination, would constitute infringement. _

“In reply to this it is insisted upon the part.of the

appeHee-that there is nothing new or novel in appel-

lant’s combination, for the reason that automatic locks

for locking the draft bar of vehicles of the character

named in the patent in suit and other wheeled vehicles

of a similar nature are old in the prior nt art. In

support of this contention a large number of patents

relied upon by appellee are cited. The steering mech-

anism of a trailer truck or dump wagon, that is asso-

ciated in this combination with appellant's automatic

locking device, ‘is admittedly old in the’ art. Nor is

there anything new or novel in the idea of locking the

rear draft bar to the wagon bed or frame in a central

position when the truck or wagon is being drawn from

the opposite end. On the contrary, this is absolutely

essential to its successful operation. Nelson, 793,799;

Geiger, Eccard & Southerland, 903,185; Chrestenson,

~- 1,068,737. oa Seer

body. ; %

‘‘Souther, 207,453, relatés to a reversible

for street cars. It appears from the-evide

expert witness Browne, and also from an e

of this patent itself, that it contains fundamen

same character of locking mechanism used by

fendant, which consists of two latches, which eo-op\rate

directly with a hump or boss on the drawbar. Souther

_-has-two pivoted latches, which, when released by pres-

sure of the foot of the driver, permits the drawbar to

swing free, but when it comes back to a central position

it is again automatically locked. Nee

‘<The expert witness called on behalf of the appellant

testifies in reference to this patent that the action is

automatic in closing, but there are no means for hold-

ing the lock out of operation except the foot of the

motorman ; that, because this feature is lacking, South-

er’s automatic lock would not be suited for use in a

trailer. It is clear, however, that the idea of the auto-'

matic lock as rf to the steering mechanism of a

trailer truck is fully disclosed b uther, and that

the mechanical means for holding this lock out of opera-

tion was not used, because an operator was always pres-

_ent om these trailers, and for that reason no such device

was fecessary. Therefore the most that Eccard &

Smith could claim over. Souther is this means for hold-

‘ing the automatic locking device out of operation when

it is desired that the draft bar should swing free, but

this is also old in the art. ie é n

‘In the Eccard & Smith patent it is also necessary

for the operator to use his hands in placing the means

provided for fastening their automatic lock in such

| position that it will not function.

‘“‘Knupfer, 410,692, is for a seed-drilling machine,

‘having an automatic locking device, which consists of,

a bolt actuated: by a spring, which corresponds with

a notch carried by the drawbar, so that when the spring

bolt is free to move, and the notch is brought into

- gegister with the bolt, the tongue or drawbar will be

automatically logked in central position. It is also

- provided with means for holding this automatic locking

device out of operation. While this machine is being

used in the field in the drilling of grain, it is desirable

the tongue or draft bar should swing freely, and

therefore the lock is not released or used in the actual

operation of the machine, except in turning-a corner,

or-in moving the machine on the road, or from one

field to.another. It then becomes necessary that the

tongue should be so locked to the body as to providea = k

steering means other than the mere draft. To thatend —

the automatic locking device is released, and functions |

as in Eccard & Smith, to lock the tongue or draft bar

in rigid relation to the frame or body.

Oy Oe a ee -

**In any event, it-is clear that Souther and Hurd are -

within the identical art, although Hurd is not of the 1

reversible type, or of a type that apy ty rear |

wheels to be rigidly locked to the frame or body of the

vehicle when drawn from the opposite end. Neverthe-

.less the Hurd invention relates to substantialty the —

same problem in the same art as Eccard & Smith. It is

also apparent that agricultural implements, including

a frame mounted upon wheels, with tongue or draft

bar connected with and used as part of its steering

mechanism, if not in the same art, are at least in such

a closely allied art that prior patents in relation there-

to must necessarily be held as anticipatory of similar

inventions in relation to reversible vehicles described

in Eecard & Smith, whether motor-drawn or horse-

drawn trucks or dump wWagons., ;

‘*It is further insisted, however, that, even though

these patents were in the same or an analogous art,

they have no application, for the reason that the auto-

~~ matic locks shown in the earlier patents are not found

in the same combination as in Eccard & Smith, and

that the. Eccard & Smith patent is for a combination,

and not for an automatic lock per se. The mere

adaptation of an old element to a — use is

not invention, unless the combination of such old ele-

ments produce ‘a new result, or an old result in a new

and materially better way.’ Frey et al. v. Marvel Auto

Supply Co. (C. C. A. 6) 236 Fed. 916, 150 C. C. A. 178.

It is clear from the evidence in this case that the auto-

matic locking device of Eccard & Smith. functions in

identically the same way as the automatic locking de-

vices in the prior patent art, and that the other elements

of this combination produce no new or different result

in combination with this automatic lockiug device than

produced by these elements when locked by any other

‘means. It necessarily follows that the combination of

an automatic lock with the old steering elements of

vehicles of the character described in this patent does -

‘not constitute invention. Heald v. Rice, 104 U. 8, 737-

755, 26 L. Ed. 910; Huebner-Toledo Breweries Co. v.

Mathews, 253 Fed. 435-447, 165 C. C. A. 177; Turner

v. Lauter Piano Co., 248 Fed. 930, 161 C. C. A. 48;

Robinson v. Fabric Co. (D. C.) 248 Fed. 526; Over-

weight Counter-balance Elevator Co. v. Machine Co.,

102 Fed. 957,.43 C. C. A. 80; Self Sealing Can Co. v. |

Hocker (C. C.) 136-Fed. 418; Warren Webster € Co. v. |

Dunham, 181 Fed. 836, 104 C. C. A. 346.

* *- * * * &

‘Therefore, even if Knupfer were to be entirely

disregarded, the combination of these old elements in-

cluding adequate means for holding the automatic

locking device out of operative engagement, does not .

amount to invention, even though that means may be

in and of itself new and novel, and entitled to separate

and distinct patent protection or protection in com-

bination with these old elements as to that peculiar

or novel means employed for that purpose but cer-

tainly not as a monopoly covering such combination

with any and all forms of automatic locks, :

‘‘For the reasons above stated, the decree of the

District Court as to both patents is affirmed.’’

CASE NO. 5—CITED BY THE SUPREME COURT.

Heald v. Rice, 104 U. 8S. 737, 753. (October, 1881—Opin-

ion by Mr. Justice Matthews.) ;

This suit was brought upon a reissue patent to Rice,

which the Supreme Court held void because it was not for

" the same invention as the original patent, and also because

it was anticipated by earlier patents.

‘‘It appears, then, from the mere reading of the two

specifications, that the invention described in the first

is for the returmflue boiler; while that described in the

second, abandoning the claim for the boiler itself. is

for a particular mode of using it, with straw as a fuel,

by means of an attachment to the furnace door for that.

purpose. It might well be that Rice was entitled ‘to

patents for both, separately, or to one for both inven-

tions. But it is too plain for argument that they are

perfectly distinct. A patent, consequently, originally

issued for one, cannot lawfully be surrendered as the

- basis for a re-issue for the other. * *.*

“The second principal objection to the validity of

the Rice re-issued patent is, that it is anticipated by

the Morey patents. We are of opinion that it also is

well taken.’’ 7

‘8

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CASE NO. 6—CITED BY THE SUPREME COURT.

Langan v. Warren Axe & Tool Co., 184 Fed. 720 (C. C. A.

3, Feb. 2, 1911—Lanning, C. J.)

The patent in suit involved an alleged improvement in

grab hooks employed in skidding logs, and claimed a com-

bination of the grab hooks with draft appliances.

The patent as originally filed and as issued, described in

the specification only the grab hooks themselves, and stated

-that in use they were connected by links or chains to the

usual draft appliance. The specification expressly stated

that the invention consisted in the particular and peculiar

‘ form of hook described therein. .

The six claims contained in the application as filed, were

all limited to the particular grab hook itself. These claims

were all rejected and the patentee acquiesced therein, and

substituted a single claim claiming a combination of the

particular grab hooks with a draft appliance.

The suit was not one for contributory infringement, but

charged direct infringement.. At the trial, counsel for

plaintiff conceded that the real invention lay in the grab

hooks themselves, and attempted to have the patent so

interpreted. The court, however, held that there was a

Patent Office estoppel because of the patentee’s acquiescence

in the rejection of the claims for. the grab hooks themselves,

and that the claim was therefore one for a combination,

and that so read, it lacked invention. The opinion reads in

part, pages 721-722: |

‘‘Tt will be observed that in this specification, which,

except as to one or. two verbal corrections, is in the

same form as when the application was first filed in the

Patent Office, there is no suggestion that any part of

the patentee’s invention resides in a combination of

the grab-hooks and the draft appliance. The connec-

tion between the grab-hook and the draft appliance by

_means of links or chains is mentioned, but such con-

nection was as old as grab-hooks themselves, and the

patentee expressly states that his invention consists,

not in such combination, but ‘in the particular and

peculiar form of hook herein described and pointed out

in the claim.’ |

‘Not only is the claim for a combination foreign to

what is set forth in the specification, but there is no

new coaction or co-operation of. the elements of the

combination. The grab-hooks and draft appliance of

the patent, in combination, coact as grab-hooks and

draft appliances have always done. The grab-hook of

the patent, by reason of its peculiar construction and

form, is very probably an improvement of no little —

utility. But the patentee cannot, merely because of

that fact, have a patent for a combination which shall

have, as one of its elements, a pair of such

He did not invent the combination. He invented, if

he invented anything, .an improved grab-hook. In-

deed, this is conceded by the patentee’s counsel, and

he argués that because the patent examiner, when the |

original claims were before him, said ‘claim 6 is incom-

plete without the links, and the eye in the end of the

shank is useless without the other elements,' the claim

as it now stands should be construed as one describing,

as the real invention, a specific form of grab-hook.

Manifestly, we cannot so construe it. The claim is for

a combination of grab-hooks, of a peculiar form, and a

draft device. -We are not at liberty to distort its plai

language. It may be, as the patentee’s co de-

clares, that the criticisms of the examiner led to the

present form of the claim. But if the examiner’s criti-

cisms were unsound, the patentee could have had them

reviewed by an appropriate appeal. This.is not a case

where there was a mere change of phraseoiugy to suit

the views of an examiner. The structure of the claim

was remodeled in a fundamental respect. It was

changed from a claim for an improved grab-hook to a

claim for a combination of an improved grab-hook and

a draft device. We are therefore compelled to read

the claim as one for a combination, and not for an

improved grab-hook. So read, it is clear that there is

no error in the decree of the Circuit Court.

**The decree is affirmed, with costs.’’

{

CASE NO. 7—OITED BY THE SUPREME COURT.

| - Harvey Hubbell, Inc. v. General Electric Co., 267 Fed.

| 564. (C. C. A. 2—May 26, 1920—Hough, C.J.)

This suit involved two patents, one covering a plug for

an electrical connection comprising a combination of. spe-

_. eific elements, and the other a-combination of the plug

with a cap of specific construction. : Both patents were |

| --. found to be not infringed, as necessarily limited by the

prior art and their prosecution in the Patent Office. With

reference to the first patent, the court said, at page 570:

‘The applicant was compelled to redraft the claim,

so that it reads as at present, and plainly requires the

| contact posts to pass through guide holes before en-:

gaging the contact ‘locking springs in the recesses.

It was this provision of an approach through insulated

material that was required by the Office and yielded to

by the applicant, and that acquiescence ‘procured the

allowance of the patent. * * * 7

‘“There is not a single one of the above enumerated

alleged infringing articles of which this is true. * * *

» ‘Tt follows that there is no infringement of claim 1

of the senior patent, and it becomes unnecessary to

determine whether that claim is invalid, if confined, as

it must be, to the exact device described and depicted.’’ _

- As to the second patent in ‘suit, the court also found non-—

infringement, saying, at page 572:

‘‘There was no novelty per. se in the use of knife

blade contacts. They had been commercially used in

the Ft. Wayne-Jenney construction, and known at least

since 1886. Nor was there inventive thought in se-

_ curing a locking, as distinct from a frictional, ‘engage-

ment between contact post and current carrying

spring. That was old, and is found in the senior pat-

ent, if nowhere else. The field of invention left open

and occupied by Hubbell was to secure a notched or

recessed blade by a supplementary spring, and this he

‘did. That is the only idea validating the locking spring -

claims, and defendants do not employ that means.”

The court further held in this case that in any event

there would have ‘been no contributory infringement of

these patents by defendant, because it did not sell its caps

with the intent that they be used with the plaintiff’s plug. '

pin ipeicinoeciaenemmmnttansi ns te -siaie ck

CASE NO. 8—CITED BY THE SUPREME COURT. -

Morgan Envelope Co. v. | Albany Perforated Wrapper:

Paper Co., 152 U. S..425. (Mar. 19, 1894—Opinion by Mr.

Justice Brown.)

This case involved two patents; one covering a package

of toilet paper of particular form, and the other involving

_ the combination of the paper roll with a mechanism for

delivering it in an economical manner. The paper rolls

patent was held to be so limited by the prior art that it

. was not infringed by the paper roll sold by the defend-

_ant. The court further held that the combination patent

was not contributorily infringed by deferidant’s sale of —

‘ paper rolls for use with plaintiff’s delivery mechanism in-

_ asmuch as the paper element of the combination was per-

ishable in its nature and intended by the manufacturer to

be renewed periodically. The court said, pages 432-433:

‘The real question in. this case is, whether, conced-

ing the combination of the oval roll with the fixture to

be a valid combination, the sale of one element of such

combination, with the intent that it shall be used with

the other element, is an infringement. We are of opin-

ion that it is not. There are doubtless many cases to

the effect that the manufacture and sale of a single ele- |

ment of a combination, with intent that it shall be

united te the other elements and so complete the com-

bination, is an infringement. Sazve v. Hammond,

Holmes, 456; Wallace, v.. Holmes, 9 Blatchf. 65; Barnes

v. Straus, 9 ’ Blatchf. 553 ; Schneider v. Pountney, 21

Fed. Rep. 399. But we think these cases have no ap-

plication to one where the element made by the alleged

infringer is an article of manufacture perishable in

its nature, which it is the object of the mechanism to

deliver, and which must be renewed, ee

whenever the device is put to use.’’ ;

CASE NO. 9—CITED BY THE SUPREME COURT.

Wagner Typewriter Co. et al. v. F. s. Webster Co., 144

Fed. 405. (C. C. S. D. N. Y., March 28, 1906—Ray, D. J.)

In this case, the plaintiffs owned a patent for a ribbon

mechanism for typewriters. There was a single combina-

tion claim including a pair of disconnected ribbon spools.

The Court found that such ribbon spools needed frequent

replacement in the normal life of the typewriter, and that

the defendant might make and sell ribbons wound on spools

which would fit any typewriter on the market.

The basis for the decision is clearly set forth in the fol-

lowing excerpt taken from page 416 of the printed deci-'

sion: |

patented element of a patented combination may be

replaced by the purchaser of his own authority when

its use upon external objects must work its early de-

struction (and such is this case as to a spool with a

ribbon); when in the arangement of an element, not

the chief element, it is so fashioned and placed as to

be specially subject to external forces that make it

peculiarly liable to breakage or wear; when it is not

the chief part of the combination (and that is this

case); when it is an ordinary working part (and such .

® is this case); and I will add when it is not a vital ele-

ment of the combination, or a chief part of it, and is

easily removable and replaced without affecting the

identity of the machine, and it fs a natural inference

that it..was contemplated by the patentee and pur-

_ ehaser and user that such part should be removed and

replaced from time to time, and the part is in general

use and extensively made and sold by others.’’

This case falls, therefore, in the same category with

Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425.

: 64

CASE NO. 10—CITED BY THE SUPREME COURT.

| cememeneenetinnetanamanll

Edison Electric Light Co. et al. v. Peninsular Light,

Power & Heat Co. et al., 101 Fed. 831 (C. C. A. 6, May os

1900—Lurton, C. J.) . |

The decision in this case rested squarely upon a finding

by the Court of an implied license resulting from the con-

’ duct of plaintiffs. One of the plaintiffs, a licensee of the

Edison company, in order to introduce electric service, had

wired at cost a hotel which was under construction. The

type of installation, a three-wire system, was covered by a

patent owned by the Edison company. The wiring was

permanently installed in the building. The hotel bought

electricity for six years from the licensee-plaintiff; then

later bought current from the defendant, Peninsular Light

Co., which installed transformers in the hotel, and after

an unsuccessful attempt to use its own noninfringing three-

wire system, used the wiring peculiar to the Edison sys-

‘ tem for its outside connections. - The plaintiffs brought

suit against the Peninsular Co. and another power com-

pany, alleging contributory infringement of the Edison pat-

ent. Dismissal of the bill by the trial court was affirmed,

_ the Court of Appeals saying, at pages 836 and 837:

‘*It is evident that the extent of an implied license

must depend upon the peculiar facts of each case. The.

question in each case is. whether or not the circum-

stances are such as to estop the vendor from assert-

ing infringement. * * * The circumstances in this _

record plainly indicate that the vendors’ of the house

apparatus installed in the Livingston Hotel ‘intended

that the vendees should enjoy the advantages of the .

‘ Edison system of electrical distribution. The ma-

chine it constructed was peculiarly adapted for the

use of Edison’s inventions, and, as we interpret. the

65.

Oe OM

lees eae lie ten

;

facts and circumstances of the record, is not capable _

of safe use under any other- plan or system. If it was -

* intended that so expensive an apparatus could be util-

ized according to the methods of the patents. under

\. which the vendor was operating only so long as the -

syendor should supply the current, good faith required —

_.that the vendees should be plainly so informed. It

cannot, be doubted but that Phe vendees understood E

they Were. securing a permanent wiring system, which

might be used in combination with a current obtained

.- from any source, delivered to the house wires in such

manner as to utilize them to the best advantage. It .

would be most unreasonable to suppose that-in order

to continue the use of this, the very essence of the

Edison inventions, they must continue to take cur- |

. Trent from a particular source.’’

~~ @.

QASE NO. 11—CITED BY THE SUPREME COURT.

= a “ e .

dite .

Carbice Corporation of America v. ‘Atnevican Patents -.°

Development Corporation et a., 283 U. S. 27. (Mar. 9,

1931—Opinion by Mr. Justice Brandeis.) bane

This case involved a patent on a refrigerating transpor-

tation package employing solid éarbon dioxid as the re- ~

frigerating medium. The carbon dioxid was itself unpat-

ented. The plaintiff neither sold nor licensed others to sell

the complete transportation package of. the patent in suit,

but sold merely the carbon dioxid as did also the defend-

ant. In this suit to enjoin defendant’s sale of wpatented -

carbon dioxid, the court denied relief to the plaintiff. The

gist of the whole decision is stated at pages 30 and 31, as

follows : |

‘‘The Carbice Corporation challenges the validity

of the patent and denies infringement.’ Whether the

transportation package described is a patentable in-

vention we need not determine. . For, even if it is,

no/elief can be granted. Bee

/‘The invention claimed is for a particular kind of

package employing solid carbon dioxid in a new com-

bination. If the patent-is valid the owner can, of

course, prohibit entirely the manufacture, sale, or use

of such packages. Continental Paper Bag-Co. v. East-

ern Paper Bag Co., 210 U. S. 405, 52 L. ed. 1122, 28

S. Ct. 748. Or it can grant licenses upon terms consist- -

ent with the limited scope of the patent monopoly.

United States v. General Electric Co., 272 U. 8. 476,

489, 71 L. ed. 362, 370,47 S. Ct. 192. It may charge

a royalty or license fee. But it may not exact ‘as the

condition of a license. that unpatented ‘materials used

in connection with the invention shall be purchased

only from the licensor ; and if it does so, relief against

one who supplied such unpatented materials will be

denied.’”? - Fr : ;

CASE NO. 12—CITED BY THE SUPREME COURT.

Radio Corporation of America v. Lord et al., 28 Fed.

(2d) 257. (C. C. A. 3, Sept: 11, 1928—Opinion by Davis,

a # Re

This case was a suit under the anti-trust laws charging

defendant with having caused damage to plaintiff by vio-

lation of the anti-trust laws as a result of its license con-

« tract with- various radio manufacturers. No question of

the court held, that Radio Corporation, by requiring its

licensees to purchase radio tubes from it alone for inclu-

sion in sets licensed under Radio. Corporation circuit pat-

ents as initial equipment, had made a contract for a sale -

of goods on 2 condition or understanding that the _pur-

chaser would not use or deal in the goods of a competitor ~

and, therefore, violated the Third Section of the Clayton

Act. The defendant asserted in defense that the license

was not a violatign of the-anti-trust laws but was merely

an exercise of its lawful rights of monopoly granted it

under the patent laws. The court held, hewever, that

there was no patent protection on radio tubes per. se, as

the patents upon the tubes had expired, and as the tubes

_ constituted only one element of a combination patent, there

was, therefore, no lawful monopoly in the tubes separate

and apart ‘from the combination itself. There is no find-

‘ing or intimation in the opinion of the majority that an

unlicensed seller of radio tubes with the intent that they

. 'bé included in the patented combinations could not be sued _

as a contributory infringer by Radio Corporation. Cir-

cuit Judge Buffington dissented.

The part of the opinion dealing with the patent phase of

the case reads as follows, page 260:

‘*A patentee, the defendant says, has the exclusive

right to make and sell to licensees, for their use in

completing the licensed apparatus manufactured by it,

any element of the patented combination, even though

that element is old’and free from patent monopoly.

The learned District Judge, on-the authority of the

case of Umited Shoe Machinery Corp. v. United States,

supra, overruled this contention. A licensed combi-

nation need not consist of separate patented elements,

. each of which is entitled to individual patent monopoly.

It is the new combination that the law protects. Some

of the elements may be new, and patented, and others

old, on which patents have expired, or never patented.

Of course, the law protects the individual patented

elements, as well as the new combination composed of

new and old elements. In such cases the patentable

novelty consists in bringing together these new and

old elements into a new combination, and not in the

patentability of each element. Goss Printing-Press v. i

Scott (C. C. A. 3) 108 F. 253; United States v. Ameri- he

cam Bell Tel. Co., 167 U. S. 224, 249, 17 §. Ct. 809, 42

L. ed. 144; Leeds ¢ Catlin v. Victor Talking Machine 4

Co., 213 U. S. 325, 29 S. Ct. 503, 53 L. Ed. 816. | i. |

‘A single old element, whose patent monopoly has i

_ expired, cannot be put into a new patentedscombina- - i

tion as a constituent element, and thus have its indi-

vidual monopoly ‘revived for 17 years more. This

would be.a new method of securing a patent, or a

means of evading the patent law, by doubling the

length of the life of a patent. A patent may not be

secured on a single element by inclusion. The vacuum

tubes are an element in the electrical circuits licensed

under the contracts. It is these circuits, as such, and

not/the single unpatented elements, that are protected.

‘While the defendant has the. exclusive right to mannu-

. facture, lease, and sell the combination, it does not

have Bs right to withhold from the ‘manufacture, use,

and.sale by others a single one of. the elements, com-

ing the circuits, which is no longer protected by a

natant other words, a patentee may not nod

the individual manufacture, use, and sale of a § e@

unpatented element, which the world-is free to ‘

use, and sell, by simply including it as an element in am

a new patented combination. To put it differently, the @

inclusion in a patented combinatioh of an unpatented &

element does not give the patentee of the combination g

a monopoly of each element, and the exclusive right

to make, use, and sell that element, indépendent of the 4

combination. So long as the patent covering vacuum a

tubes was in existence, the patentee of this element of 3

the combination was protected, and it could not be =

included in the combination without a license to do so; +

but, when the patent on this tube elenient expired, the %

rights, which were theretofore vested in the patentee, y

became the property of the publip, and not of the pat- =

entee of the combination.’? (Emphasis ours.)

llr Gadadanh sen. ars Waelted MEN sla e 5,

Oo eee eee reenrrsiervoriceneiyhatinn

Bric SNA MeL ie iCae + “44

‘

I (Heo Model.) 4 Sheets—Sheet i.

E. BERLINER.

GRAMOPHONE,

No, 534,543. Patented Feb, 19, 1895.

PmP OA RAM A MONE! AV RE ERODE IR MBE NAICS ONLY TEEN PAIR PN

Ainile Berliner, |

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arsey.

{No Model.)

E: BERLINER.

| ¢ GRAMOPHONE.

No. 534,643. Patented Feb. 19, 1896.

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EB. BERLINER.

GRAMOPHONE.

No. 534,543. Patented Feb. 19, 1895.

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E. BERLINER.

GRAMOPHONE.

~~ Patented-Feb. 19, 1896,

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» UNITED STATES

Application filed March 30, 1893.

To all whom ié. may concern:

Be it known that If EM1Le BERLINER, aciti-

zeti of the United States, and a resident of

Washington, District of Columbia, have in-

5 vented certain new and useful Improvéments

in Gramophones, of which the following is a

qoactfioat on. ;

My invention has reference. to improve-

ments in the method of andapparatus for re-

> cordingand reproducing sounds, the improve-

ments being more particularly directed to the

| eonstraction of that kind of sound recording

and reproducing apparatas. which I have

called B peeg serpy and for which Letters

Patent of the United States No. 382,790, dated

15, 1888, have been granted to me. -’

to im

eoun

vements in the method of recording

by tracing film deposited

sponding to sound waves, and than etching

j lines in the metal base, or as it is: now

. Commonly called, the record tablét; while the

‘other features of my invention have reference

85 to the constraction of the details of both the

— feeorder and the reproducer of the gramo-

phone. Each of these features of improve-

ment are designed to overcome certain diffi-

caltisn, and to avoid certain imperfections

herstofore met with in tho operation of the

bone: These diffica'ties and imper-

‘fections, end the manner in which they are

avoided, v.ill be particularly + .inted ‘out in

the following detailed descripi on with ref-

Hips erence to the accompanying _o awings, in

: Figure 1, is « perspective view of my im-

proved gramophone recorder. . Fig. 2 isaside

_ elevation, partly. in section, of the recorder.

tepovduccr. Fig. 4, ir an elevation of a re-

- Serdin, Siaphregn and stylus, Fig. 5, is a

_s8ttion of the sanie on the line 2—z of Fig. 4.

petty

EME thé same on line y—

'® perapective vie

EMILE BERLINER, OF WASHINGTON, :

TO TIE UNITED STATES GRAMOPHONE COMPANY, OF SAME PLACE.

“One feature of my invention has reference |

“ee 8 ey,

a metallic surfave, undalatory lines, cor- |

ee 6 re- | ot

diaphragm and stylus. Fig.7,isa

PaTENT OFFICE. »

DISTRICT OF COLUMBIA, ASSIGNOR

GRAMOPHONE.

SPECIFICATION forming part of Letters Patent No, 534,543, dated February 10, 1895,

Seria} Ho, 427,060. (Ho model.)

as a whole in Figs. 1 and 2, mounted upona °

suitable base 1. About midway of fhe length

of this: base there is an upright shaft 2, jour-

naled in brackets 2’; 2’, stepped at its lower

end ia a suitable bearing 3. This shaft car-

ries at its upper end a circular disk 4, the

outer or peripheral portion of which is re-

duced in thic¥.neas as shown at 5, and this re-

duced portion extends over a ring shaped pan

6, supported by stays or bracket ets 7, from

which it may be lifted and removed, when ra-

quired. The outer edge or wall 8, of the pan

is of sufficient height to project foradistance |

above the disk 4, and is provided with pour- 65

ing lips 9, fora purpose hereinafter described. °

The bottom 10 of the pan extends under the

reduced portion 5; of the disk-4, and its inner

edge 11, is upturned close to the auder side

of the reduced portion: of the disk, as shown.

Bearing against the under side of the disk

4, is a friction wheel 12, secured to a horizon-

tal shaft Is tren son custabte tt oe = the.

upper ends o ts or ghte 14 constitat-.

ing the ends ofa’ frame, the base 15, of which

is secured to the base 1 of the apparatas.

The position of shaft 13, and the diameter of

the friction wheel 12, are such, that & portion

7°

rictional ;

‘by meaas of which it is

the two uprights 14, there

shaft a heavy fly or balance

cured to the u shaft

4, there is beveled platon

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along the upper surface 26, of one of the side

pieces of the frame 22. The carriage 23, has

firmly secured to it-a projecting arm 27, on

the outer end pf whith is an upright post 28,

carrying at ite upper end an arm 29, parallel

with the arm 27, and of such length as to

overhang thé disk 4, when the carriage

moved to the-right, us represented in

drawings; the construction being such, that

when the carriage 23 is moved in the manner

to be described@, the urm 29, wil! he carried ra-

- dially over tha disk 4,and any object carried’

thereby pl go gga in said movement.

The carriage 23, is moved in one direction

tance of the ay edge of the idner-wall 11,

of the pan, while the upper part extends over

that edge to renee Oy short distance of the

outer wall of the par. This is indicated bya

dotted line in Fig. 2, and if this constraction

is adopted, only the apper thinner part of the

table is removable frum the apright shaft 2,

whiie the.lower thicker part of the table may

be fixed to that shaft. hee

‘When a sonnd record is to be made, a record

tablet of the kind described in my aforesaid

Letters Patent, is placed upon the rotary table

4, and this record tablet is represented in the &>

drawings as a circular disk 44, which has a

534,543

15 by meansof the screw-threaded shaft 20, and | central perforation passin~ over the upper

in order to effect this operation, tnere is pro- | end of the shaft 2. Some..mes it is conven-

vided & block 30, in*one side of which, near | ient ta interpose between the record tablet

one end, is formed a.balf nut 31, constructed | and the rotary supporting table a thin disk 85

to engage thet ds on the shaft 20; and | 45, of felt, or of some other non-resonant ma- |

20 this block 30,}s pivotally supported between | terial. This, however, is not-essential. Upon

ears 33, erected on the carriage 23. Project- | the record tablet is placed a'‘clampiug plate

ing from the ather end of the block 30, there | 46, which by preference is provided with a

is a pin 33, towhich one end of a spring 34, | hub 47, which is slipped over the upper end go

> is attached, the other end of said spring being | of the shaft 2. This upper end of the shaft

25 secured to thé carriage 23, and the tendency | 2, is screw-threaded as shown, and a thuiab-

of the spring & to maintain the block 30, in -_ 48, is then screwed down upon the hub of

_a tilted posi with the nut portion raised | the —— plate, whereby the record tablet

out of t with the shaft 20. In | is securely fastened in position. 95

order to ,the block 30,in engagement; At one end of the base plate 1, there is

,o with the s 20 there is provided a leaf | mounted a standard 49, which may be a split

epring 35, mor on the. carriage po- | tabe as shown, and in which is supported by

site tho free the block 30, and having | friction a stem 50, projecting from the bottom

on its free en h 36, ghich passes over.| of a shelf 51, and which in tarn supports # 100

the t pinged block“S0, when the nut | vessel 53, containing alcohol. rons the bot- .

35 for ne is in engagement with the | tom of this vessel extends a tube 53, er-

screw th pa the shaft 20, the tendency | ably provided at its free end with a flexible

36, to move iowardly | nozzle 54; and a etop-cock 58 with which the

),. tube is provided permits the to regu- 105

> late the flow of alcohol from thé noasle. With

40 as a handle my. nt improvement it is that

“du p Apa whole of tracing the reo-

reely | ord, the record t be covered with a film

* °

;

ith

sits

peers.

ale

of aleohol, gad for this purpose a thin stream 110

of alcoho! is directed — the center of the

tablet, ov rather a the clamping @ 46,

from which the spreads in dires-

vessel 52; by one of the pouring lips.

The recording diaphragm 56,is mounted in

the circalar/frame 40, between a ledge formed

5 on said frame and an annulus 57, screwed

down upon the same by screws 58, as shown,

er in at oo diaphres —— On ae

rear 8 that ragm re is appl

a small block 59, of hard rubber from which

1o extends radially an arm 60, which at its free

end is turp p at right angles, outwardly

and into con with the lever 61, which car-

ries the recording stylas 62.

The block 59, is fastened to the center of.

is the diaphragm by a screw 63, passing through

the diaphragm and through a washer 64, ap-

er tothe front sideof thediaphragm. The

ead of this screw is faced with a dink 65, of

sof rubber, and against the same bears the

10 point of. an adjusting screw 66, which is

mounted in a perforated disk or spider 67,

fixed in: the neck 39: ,

~The lever 61 is mounted on a plate 67’,

. formed with a slot 68, through which a set

¥g screw 69, fixed in the annulus 57, passes. The

plate 67’, can thus be adjusted to various po-

sitions on the annulas, and is clamped

aijasted position by a thumb-nut 70. One

end of the plate 67’ is bifurcated, and screws

jo 71, 71, passing through the legs of the fork,

are formed at their ends with bearings for the

pivot points of the arbor 72, which is fixed to

the lever 61. This lever, is made as light as

_ practicable and as is consistent wita rigidity,

yg and the plate 67’, together with the lever 61,

which it carries, is so adjusted that the up-

turned ead of the arm 60, bears upon the lever

at the greatest practicable distance from the

_ axis of the spindle 72, viz: at the free end of

je thelever. The connection Sstween the lover

by a small quantity of pitch, 60’, which acts

as an efficient cement, and which is applied

' after the lever has been adjusted io its proper

i$ position. This mode of connecting the lever

with the arm 60, and thereby. with the dia-

phragm, I have found to be of great advan-

tage fora variety of reasons, but more espe-

.Cially on account of the ease w'th which the

50 connection is mee, and unmade in case of

+s mt and on. account of the damping effect

it has upon the lever.

To the end of the lever 61, is secured the

recording stylus 62, by soldering or other-

5 wise, with its plane at right angles to the

¥ ‘plane of the lever, as shown. The stylus is

compored of x flat, and rather thin plate of

hw steel, pointed at its free end, and pru-

3 with a tracing point 62’;-of iridium.

bo broad portion of the stylus is damped by

- “ic or two bands 72’, of suft rubber, which

simply slipped over the same.

reference to Fig. 4, it will be seen that

61, “ the recording stylus 62 ex-

ld across the diaphragm upon a line which

tes a Chord but not a diameterof the

tele of thediaphragm. They are, therefore,

a .

™’ “

in the

— ee

684,543 | 3

is poured out and preferably back into thé | eccen

y mounted with reference to the

center of the diaph ; but notwithstand-

ing this eccentric the lever is rigidly

connected with the center of the

and thus receives the maximum amplitude of

its vibration. By thas ver with

the stylus ecoentric with reference to the cea-

both the lever and the

ter of the diaph

stylus may be and are made shorter than if

they were on thé line-of a diameter of

thediaphragm. This is an im t result,

since the shorter the lever and stylus, the less

liability there is of lost motion, and. the less

liability there is of extra or spontaneous vi-

these facts conspire to produce an accurate

tracing of the sound waves impinging against

the diaphragm.

Where the stylus passes over the edge of

casiag 40, the latter, together with the annulus

57, is cut a a straight line, as indi-

cated at 57’. is permits a further reduction

of the length of the stylas, siace the record

tablet may be located close to the straight

edge 57’.

The eed of the stylus is normally carve!

downwardly, as shown in dotted lines at 62’,

bat when diaphragm holder or frame 40,

is turned toe@ause the stylas to impinge upon

the record tablet, which is the preparatory

step for making a record, the stylus is unbent

avd beeomes straight, as shown in solid lines

in Fig. 4, and I have found that the best re-

sults are obtained when the stylus is at on an-

gle of about forty-five degrees with the plaue

of the tablet. The maximum pressure of the

stylus upon the record surface is therefore

equal to the force required to unbend the

stylas. It is very small, because the stylus is

made as thin as practicable, and it is uniform

for different records and for al! parts of the

same record.

The mouth-piece, into which vocal sounds

are uttered for recording, is shown at 43, in

Figs. 1 and 8, and it consists of a bell shape:

structure, the small ead of whieh is secured

to the sound conveying tube,-while the wire,

flaring end is tarned toward thespeaker who

applies his mouth to the opeaing. Near the

ge of the-mouth opening there isa perfora-

tion 43’, cut into the wallof ths mouth-piece,

and this perforation is of such shape and size,

and at such distance from the edge of the

mouth-piece, as tu fit approximately the edge

of the nose of the speaker; so that when the

mouth-piece is applied, the sounds uttered by

the mouth enter the wide, flaring opening,

while the sounds uttered by the cose enter

the perforation 43’.

Io making a recur of voeal suunts, it is

necessary that all sound waves cow posing the

words or the so

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

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