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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1937
- **Citation:** 303 U.S. 545

## Text

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.

(c) Opinion of Judge Lindley upon petition for
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.

30

ii

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

a

‘
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-

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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)

i
rf
f

“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-
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-

SS

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-

10

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;

fl

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ti
tt
a ih
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vind

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ile

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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

RPS hk Reet Se AS

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STHWART-WARNER CORPORATION v

a 5 if
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. LE VALLY vté

18 ®.-Bupp. S7i

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

BRT ON GR Oh a Ada RE seek SSR ROR GAM aL ea aE

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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— “tet 4
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hii 2 RRAL SUPPLEMENT.
|
i

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

Fp SER ES RING TAN TR aaa ETN Sg
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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 —

wa

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°

2

*
©
«
-
;>

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

9
: ' 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

Ee

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

r
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-

ee
—

©

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
em

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 .

we

| 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.

v

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.

oe

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’

ah
it

:

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,

a

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

we

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
4
»
2

LEVALLY

STEWART-WARNER CORPORATION

v.

.

16 ¥. Supp. 178

ere erent ett 6 ee oe

7]

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

tei teed @ eee woe
appre oot ca rpc sant as bt dw 2
MS eoart does not, tell € what shall be incorporated in

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

a

"” 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 ©

2
.
liane atthe ttt ha LOA LNA

oe ee

ie

eee

- i ti

Mi he mo interdependency in sense of one
’ being dependent on the others for

ot

18, Patents 45.

_ As respects,patentable novelty, evidence ,

., ' of wide and popular acceptance of patented
apparatus is controlling in doubtful cases.

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-

by
the
is

t

-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

|
|
|

i
:
|

BARE
|
|

E
Hy
2
|

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
a *
Ti
iF . as
oe

’ bination.

mechanical skill. In passing, it might be &

‘Case as authority for its contention that

ea
> 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,

3

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 *

1
bs
Le

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
* © © ‘here is nothing in the Butif
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

v
ey ae, MELE OE SS ee ee 2 : : — = 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

ze

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.’’

47

-

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
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.

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

50

ee

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

51

.
; Vy
’

alid. 2 7
‘¢ As the insulator in the combination of claim 6, par- ~

en RRR OR NTR Se een meee meee
Sasa tte

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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 -
very expedients of the art named as elements of 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-
missing the bill be —

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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

4

-

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

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Rec Lmite Berkiner,

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(No Model) 4 Sheets—Sheet 2.

EB. BERLINER.

GRAMOPHONE.
No. 534,543. Patented Feb. 19, 1895.
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Zimile Berliner

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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.
© Fig. 3. isa perapective view uf a gramophone
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

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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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drawings as a circular disk 44, which has a

534,543

79

15

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

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ith
sits

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peers.
ale

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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
; ©6and the upturned end of the arm 60 is made
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
record

[Text truncated at 120,000 characters. The full text is on the page linked above.]

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386402_0028%3A7. Public record. Not legal advice.