Involved in the present infringement suit is the Hillis reissue patent No. 21,-236 for a “divisional feeder” designed to deliver measured quantities of lubricants to each of a number of outlets leading to bearings to be lubricated. The original patent to Hillis was No. 2,027,1.71, issued January 7, 1936, on an application filed January 26, 1934. The reissue was granted October 17, 1939, upon an application filed August 20, 1936. The issues here presented relate solely to validity. The defendants had counterclaimed on á patent to Dirkes No. 2,146,424, and charged infringement thereof by the appellant, but the court held both patents in suit invalid and the counterclaimants have not appealed.
The Hillis structure is incapable of precise description without detailed reference to models and drawings. It will be sufficient, however, for our purposes, to refer to it in the language of the Examiner in Interference (No. 72,609) as comprising “a liquid dividing and measuring device designed for use in a lubricant supply line which successively will receive lubricant from the line in measured amounts and discharge it through various conduits and outlets to various bearings, as the bearings of an automobile chassis, which require intermittent lubrication. The measuring device consists of a member having two cylindrical cavities and reciprocatory plungers in the cavities which serve both as pumps for the measured quantities of lubricant and as valves for the passage of the pumped lubricant to the conduits leading to the bearings.” A typical claim is printed in the margin. 1
The defense of invalidity was grounded principally upon delay in seeking reissue and the insufficiency of the oath in support of the application therefor, anticipation by the French patent to Vincent, No. 702,682, and because a device responding to the claims was offered for sale more than two years before the patent thereon was applied for, constituting it invalid under the provisions of 35 U.S.C.A. § 31. Hillis was held to be invalid upon the second and third ground without discussion of the validity of the reissue or the sufficiency of its application.
The applicant’s oath in seeking reissue, recited that his attorneys drafted and accepted claims not commensurate with the invention because they were unable to make broad claims which were regarded as complete by the examiner, the latter seeming to desire a complete description of the device in each claim. In Union Switch & Signal Co. v. Louisville Frog, Switch & Signal Co., 6 Cir.,
The sole prior art reference now urged in support of the contention that the claims of Hillis were anticipated, is the Vincent (French) patent and the specification which Vincent incorporated in 1931 in an application for a British patent. The application for the British patent was abandoned and no patent ever issued thereon. Its publication in 1933 was subsequent to the Hillis invention which the record shows to have been in commercial use and on sale in March, 1932. Vincent is clearly a paper patent. There is no evidence whatsoever of its commercial exploitation, and in its complicated arrangement of pistons, cylinders, spring-controlled. ball valves, it appears upon the record to be clear that it is inoperative without substantial modification, — an inference that gains some support from the abandonment of the Vincent British application.
We have no doubt that paper patents which precisely disclose the purpose, means, and mechanism for accomplishing the end of a patent in suit, or which may be adapted for that purpose by obvious and common mechanical expedients, may be regarded as anticipatory in that they disclose lack of novelty in an assailed invention. Carnegie Steel Co. v. Cambria Iron Co.,
The Vincent patent discloses a structure wherein the lubricant, when ejected by reciprocation of the piston in the cylinder, is forced into a central reservoir instead of directly to the bearing. "It is “then withdrawn by suction resulting from the movement of the pistons and eventually discharged into the bearings through spring-controlled ball valves. In Hillis, as the lubricant enters one end of the cylinder that at the other end is ejected directly to the bearing. Vincent, in effect, is a combination of two separate mechanisms, one acting as a motor, the other operating as a pump. In Hillis, the central pumping device of Vincent is absent. In addition, Hillis apparently achieves a wholly new and useful result in that if any bearing is so clogged that lubricant cannot be forced into it, the device will automatically stop and so warn the operator that all bearings cannot be reached. This the Vincent device would not do. Vincent is, in all likelihood, inoperative if all the pistons are on the same side at the start of the operation. Such situation is immaterial in Hillis. A distinction seems to be fairly established that Hillis may be made to operate on only two cylinders while Vincent is wholly inoperative on an even number of cylinders without substantial modification. There is no commercial history to the Vincent structure, while Hillis and the infringing machine of Dirkes have had a substantial degree of success. The counterclaim leaves no doubt of infringement by Dirkes, if Hillis be valid.
To suggest even theoretically the operability of the Vincent patent requires substantial changes therein to eliminate spring valves, ducts leading to the reservoir, and the reservoir itself. It involves changes in diameter of plungers, a reversal of the movement of the lubricant, and some revision in the successive action of the pistons made necessary by other modifications. There is no demonstration, however, that even when so adapted Vincent would become a practical machine, and particularly no demonstration that the changes would have suggested themselves to those skilled in the art prior to the disclosure of the Hillis invention. In Gordon Form Lathe Co. v. Walcott Mach. Co., supra, there was a dramatic demonstration in open court that the alleged anticipatory lathe of Brophy could grind the non-geometric form • for which
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the Gordon and Redlin invention was designed. No one in the industry had, however, conceived the machine to be capable of such an operation, and both in the trial court, D.C.E.D.Mich.,
The District Judge was of the opinion that when Hillis made his invention in the summer of 1931, mechanics skilled in the art of hydraulics knew that fluids could be measured by piston displacement in cylinders, and that pistons could be reciprocated by delivering fluids under pressure at opposite ends of the cylinders alternately, and that even without the disclosures of Vincent it would not require the exercise of inventive genius to design a mechanism such as that of the patent in suit. The problem, as we see it, was not so simple. Lubrication by piston displacement was, of course, old, but to provide for measured lubrication through multiple outlets from a single pressure source by a series of reciprocating pistons operating in predetermined sequence so as to insure operability notwithstanding initial placement of pistons in their cylinders, and all so cooperating that failure of lubrication through any outlet because of its clogging would stall the entire machine and so apprize the operator of the trouble therein, was, we think, an inventive achievement of merit and entitled the inventor to a patent.
We are not unmindful of the high standards set in recent years by the Supreme Court as a test of the inventive quality. The Court of Appeals of the Second Circuit [Perkins v. Endicott Johnson Corp.,
We are likewise aware of the deep concern felt by patent lawyers and research engineers, not only over higher standards of invention, but over what in some quarters
2
has been thought to be an entirely new concept of invention deriving from Cuno Corp. v. Automatic Devices Corp.,
Long experience with assailed inventions in trial and on review led us in humility to the conclusion that the inventive concept is an abstraction impossible to define, and so for that reason courts have sought for simple rules by which its presence may be detected, and while these have proved helpful they are never absolute; that long recognition of an existing problem in any art, and the advantages to accrue to an industry from its solution, have been considered as highly persuasive of invention when success is finally achieved; that sometimes achievement is revolutionary, but more often an inventor begins where others leave off, and perceives the vital forward step to which predecessors had been blind. Cleve
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land Trust Co. v. Schriber-Schroth Co., 6 Cir.,
In the court below the claims were thought to have been anticipated by a transfer device delivered by Dirkes sometime in 1931 and advertised in the magazine “Automotive Industries” in its issue of January 9, 1932. Dirkes testified that the device was identical with the Hillis divisional feeder in construction, although its purpose was different. His testimony is, however, not corroborated. It is impossible to tell from the exhibited advertisement, what its elements were or what their organization. Even so, the advertisement does not constitute a sale of the device more than two years prior to the Hillis application. Mershon & Co. v. Bay City Box & Lbr. Co., C.C.,
Decree reversed and cause remanded for further proceedings by way of injunction and accounting consistent herewith.
Notes
“1. liquid dividing moans comprising a casing Raving a fluid inlot and a plurality of fluid outlet passages, a pair of cylinders, ports therein and passages interconnecting said cylinder ports and said inlet and outlet passages, and a rcciprocatory piston in each cylinder actuated by the incoming fluid at one end of the cylinder and ejecting a measured' quantity of fluid from the opposite end of the cylinder through a cylinder port and an interconneeiing passage into the other cylinder, said pistons being alternately actuated, each piston when stationary constituting a valve cooperating with said ports and passages to control and direct both the admission and ejection of fluid to and from the other cylinder and causing the fluid received from the opposite end of one cylinder to be directly discharged out of an associated casing outlet passage under the inlet pressure.”
N. Y. Journal of Commerce, March 11, 1943 (2nd section).
9 Ene. Amer. 588.