244 F. 799 | S.D.N.Y. | 1917
By a bill of complaint filed September 12, 1916, the plaintiff seeks to recover money damages resulting from the alleged infringement of letters patent No. 638,588 dated December 5, 1899, granted to the International Wheel & Traction Company as the assignee of Louis De F. Munger. This patent was subsequently assigned back to Louis De F. Munger shortly prior to the commencement of this action. The patent expired December 5, 1916. The relief sought is a decree decreeing that the patent in suit is valid as to claim No. 4 thereof, and infringed by the defendant as to the same claim. The basis of recovery sought is that of a reasonable royalty.
“In removing tlie band it is merely necessary to back off the base slightly from the felly, when it can be easily slipped down and off the inclined surface.”
The metallic base is described as “adapted to be detachedly connected to the wheel,” and the specifications expressly state:
“It is obvious that various modifications in the form of my improvement may.be made without departing from the idea of my invention.”
From this it is argued that the structure which is shown in the drawings and described in the specification of the patent is therefore to be regarded as merely illustrative of one possible embodiment of the “idea of my invention,” and not as the only form in which the invention can find expression. The specification further describes the invention as:
“The face of the felly is slightly inclined or out of angle with the axis; the outer diameter of the wheel being the smaller to form a tapering fit for the tire base to assist in the work of slipping the tire on and off the wheel for the purpose of attachment and detachment; this angle being slight and hardly discernible in the drawings. The outer side of the base is also longer than the other so as to form an inclined undersurface which will conform to the felly and make the tapered felly described.”
Claim No. 4 of the patent in suit relied on is as follows:
“In combination with a tapered felly, a tire; an annular ridged base to which said tire is secured, said base having a tapered undersurface and fitted on said felly substantially as described.”
This claim analyzed is found to cover in combination the following elements: First, a tapering felly; second, a tire; and, third, an annular ridged base to which said tire is secured, said base having a tapering undersurface and fitted on said felly.
The defendant manufactures and produces under its patent known as No. 1,052,270, issued February 4, 1913. The defense claims: First, inoperativeness; and, second, noninfringement; and, third, invalidity. The defendant’s patent was considered in Perlman v. Standard Welding Co. (D. C.) 231 Fed. 453, and later in Id., 231 Fed. 734, 146 C. C. A. 18. There its patent was held valid and infringed. But the application of the plaintiff’s claim to the specific embodiment of the invention shown in the drawing of the patent and in Plaintiff’s Exhibits 17, 28, and 30 is obvious.
From the specifications as quoted above the claim need not be restricted to the specific embodiment, and can be interpreted to cover what the plaintiff claims for it under the doctrine of equivalents.
The patent need not be restricted to the precise relation of the wedge elements shown in the drawing, but is to be interpreted so as to include within its scope the obvious equivalent and arrangement of wedge surfaces in defendant’s wheel, the structure of which, so far as it comes within the scope of the invention and suit, performs its function in practically the same was as the patented structure. Johnston v. Woodbury, 109 Fed. 567, 48 C. C. A. 550; Hallock v. Davison (C. C.) 107 Fed. 482.
The plaintiff rests his case upon the proposition that his claim must be so interpreted as to cover within a reasonable range of equivalents that which was new in the art with him, namely, the utilization of the wedge as a means for securing a tire-carrying rim upon a wheel in such a manner that the rim, under tension, produced by the wedge action, hugs the felly tightly when in use, and can be removed readily by freeing the wedge surfaces. Nor should his claim be limited to a structure in which one wedge surface extends all the way across the face of the felly, and the other wedge surface extends all the way across the inner face of the rim, any more 'than it should be limited to a structure in which the tire is vulcanized on the rim or base, nor to a structure of which the tire forms a permanent part. It should be taken to mean only a rim adapted and intended to have a tire secured therein with such degree of permanence as to resist accidental displacement under ordinary conditions of use. This range of liberality was given to the present defendant by Judge Hunt in Perlman v. Standard Welding Co., supra, where he held that the wedge moving inwardly parallel with the axis of the wheel was the equivalent of the screw mounted radially in the felly and moving outward against the rim.
I am satisfied from the proofs that the plaintiff has shown by credible testimony that in the practical operation of the wheels and rims made under the patent there was no such sticking of the rim on the wdieel as to prevent its removal with the ordinary tools carried on the road, and that such a degree of utility exists which justifies, sustaining the patent against the claim made by the defendant of inoperativeness, and that therefore the patent has commercial utility.
In Johnston v. Woodbury, 109 Fed. 567, 48 C. C. A. 550, Judge Gilbert said:
“We do not think, however, that the appellant [plaintiff] should be limited in his invention to the use of the angle which appears in the drawings. The specification contains no designation of a specific angle, and it is clear that the patentee contemplated that the angle should he such as would successfully overcome the defects which his invention was designed to remedy. The idea of his invention was to place the rods at an angle, at any angle that would give the necessary oscillatory movement to prevent the banking of the pulp upon the traveling belt, and at the same time not throw it over the sides. The specification clearly indicates this.”
See, also, Crown Cork & Seal Co. v. Aluminum Stopper Co., 108 Fed. 845, 48 C. C. A. 72.
As to the infringement claimed by the plaintiff, the plaintiff claims that the flange at the rear of the defendant’s wheel is a wedge flange, and that it forces tire rim further and further away from the wheel, that is, from the cylindrical portion of the wheel which lies between the “little outer wedges” at the outer edge and the wedge flange at .the inner edge. In both wheels the further the rim is pressed on the tapered wedge felly or the wedge flange of the felly the further the rim is pressed outwardly or away from the axis of the wheel, and the more is increased the state of tension of the rim which is desired in both cases in order that the rim may hug the felly or its wedge flange the more tightly and be held more securely in place. The only difference in structure is that in defendant’s wheel there is an annular strip between the two edges of the felly with which the rim is not in contact, being held therefrom by the wedge flange or at the inner or rear edge, and the “little outer wedged” at the outer or front edge. The defendant’s wheel is forced further from this metal strip of the felly, but the distance by which it is so' forced is limited by the resistance to the stripping offered by the rim, and is immeasurable except by the most delicate instrument. The only result secured by forcing the rim laterally on the wedge flange is the placing of the rim under tension, and the closer hugging of the wedge flange by the rim which is the purpose of, and the result obtained by, the wedge action of the plaintiff’s patented structure. This is well exemplified and shown by Plaintiff’s Exhibit 4 offered on the trial. It is a sketch prepared by the witness Duryea, plaintiff’s expert, and this sameness of purpose and function is well pointed out in Mr. Dur-yea’s testimony.
The embodiment of defendant’s wheel is found in Mr. Munger’s contribution to the art, to wit, the utilization of the wedge as a means for securing a tire-carrying rim under tension on an automobile wheel so that the rim shall hug tibe wheel tightly and be held firmly in position while at the same time it can be detached readily by freeing the wedge surface. Reading claim 4 of the patent in suit, together with the disclosure of the specifications and interpreted with a reasonable range
I am satisfied, therefore, that the plaintiff’s exhibit (defendant’s wheel) infringes the claim in suit. But the defendant claims that the patent is invalid in view of the prior art and because of two patents, one issued to Perkins & McMahon, No. 3,037, dated April 10, 1843, and the other, the British patent of Carberry, No. 7318, in 1895. Defendant’s counsel claims that the Perkins & McMahon patent was not limited to car wheels, but was a structure applicable to other vehicles, and that certain set screw bolts were provided for the purpose of bending the rim and wheel together, but the evidence is convincing that this rim of the car wheel could not be placed on or removed from the wheel in the sense suggested by counsel for the defendant, to wit, with the ease or with the ordinary tools, nor would the rim and wheel come apart if the screw bolts were not there, and in no sense was there the ready demounting of the rims; indeed, they could only be removed by great pressure as by hydraulic power. There was, therefore, no possibility of practical use for other than railroad purposes of a wheel with a rim held on merely by bolts with the method of mounting exhibited in the patent in suit. I am satisfied that this patent furnishes no warrant for the conclusions urged by the defendant’s counsel. This patent was set up by the defense in the suit of Perlman v. Standard Welding Co., supra, where Judge Hunt said that:
“Patents Nos. 4147-1846, and No. 405710-1889, showing railway car wheel structures with rims intended for being mounted permanently, ought not to he regarded as fairly in the prior art under examination. It strikes ine that such structures apply to a foreign art. But, if I am wrong in so regarding them, still they could not be claimed to disclose a solution of a problem in the art of automobile wheels. In the car wheel art the object was to get the rim on just as tight as it could be put on and to mount it nearly with permanency, and in doing so the greatest amount of contact surface was provided between the rim and the wheel body of the car wheel.”
In passing it might be noticed that in Judge Hunt’s opinion he refers to the Muuger patent in considering the prior art, saying that Munger’s structure was of little use because the rims became so attached to the wheel body that it required much more labor to remove it than to take the tire from the rim. Evidently Judge Hunt did not have the opportunity for experiment and observation that was afforded this court in the consideration of the merits of the Hunger patent, or I think he would have reached a conclusion other than that which is voiced in his observation in this opinion.
The Carberry patent does not show a construction which embodies the inventive thought of the patent in suit, to wit, the securing of a tire-
These circumstances, although briefly stated, show the financial inability of the plaintiff and his predecessor in title to bear the expense of the litigation, and was sufficient to excuse the delay in bringing the suit. Columbia Graphophone Co. v. Search Light Horn Co., 236 Fed. 135.
In Taylor v. Sawyer Spingle Co., 75 Fed. 301, 22 C. C. A. 203, Judge Wales said:
“It has never been held that mere laches, unaccompanied by circumstances which amount to an equitable estoppel, shut out a party from all relief in a court of equity. Knowledge of and long-continued acquiescence by complain**805 ant in an infringement may, in special cases, be fatal on a motion for a preliminary injunction, but will not, on a final hearing, prevent the court from granting such relief as may be just and equitable.”
For the foregoing reasons, a decree will be granted in favor of the plaintiff and against the defendant, directing the defendant to account before a master, and the plaintiff may recover a reasonable royalty upon the patent in suit under the rule established in Dowagiac Mfg. Co. v. Moline Plow Co., 235 U. S. 641, 35 Sup. Ct. 221, 59 L. Ed. 398.