Consolidated Rubber Tire Co. v. Finley Rubber Tire Co.

• Decision Date: 02 June 1902
• Citation: 116 F. 629
• Parties: CONSOLIDATED RUBBER TIRE CO. et al. v. FINLEY RUBBER TIRE CO. et al. FINLEY RUBBER TIRE CO. et al. v. CONSOLIDATED RUBBER TIRE CO. et al.
• Court: U.S. District Court — Northern District of Georgia

116 F. 629

CONSOLIDATED RUBBER TIRE CO. et al. v. FINLEY RUBBER TIRE CO. et al.

FINLEY RUBBER TIRE CO. et al. v. CONSOLIDATED RUBBER TIRE CO. et al.

United States Circuit Court, N.D. Georgia.

June 2, 1902

Paul A. Staley, Border Bowman, Hoke Smith, and H. C. Peeples complainants.

H. A Toulmin, D. S. Craig, and Edmund Wetmore, for defendants.

NEWMAN District Judge.

In this case a bill was filed by the Consolidated Rubber Tire Company, the Rubber Tire Wheel Company, and the Munford Rubber Tire Company, complainants, against the Finley Rubber Tire Company, Samuel Everett Finley, J. J. Coulter, and W. D Hoyt, defendants. The purpose of the bill was to enjoin the infringement by the defendants of patent No. 554,675, issued February 18, 1896, to A. W. Grant, for a rubber tired wheel. The defendants answered the bill, denying that they had in any way infringed said patent, and the defendants J. J Coulter and W. D. Hoyt disclaimed any interest in or connection with the Finley Rubber Tire Company or Samuel E. Finely in the business of making or selling rubber tires. Subsequently a cross bill was filed by the Finley Rubber Tire Company and Samuel E. Finley, the main purpose of which was to enjoin the complainants from prosecuting certain suits in other districts against the agents of the Finley Rubber Tire Company engaged in selling its rubber tires. On the cross bill a temporary restraining order was granted by Circuit Judge Shelby, and afterwards the case came on in the circuit court on the hearing for preliminary injunction on the main bill, and on the application for injunction on the cross bill. At this hearing an order was made granting to the complainants an injunction pendente lite unless the Finley Rubber Tire Company would enter into a bond in the sum of $10,000 to indemnify the complainants against any damages which they might sustain in the premises, which bond was given. It was further determined that it was unnecessary for the complainants to prosecute any separate suits, inasmuch as the whole matter could be determined in the main litigation in this court, and the injunction on the cross bill was continued of force. 106 F. 175. Thereafter, and before the final hearing, an intervention was filed by the Goodyear Tire & Rubber Company, alleging that it was the real party in interest, and asking to be made a party defendant in the case; and, after hearing, the prayer of the intervener was granted, and it was made a party defendant. There has now been a final hearing in the case. At this hearing voluminous testimony was produced, taken at different points in the country by special examiners appointed by the court; also considerable documentary evidence, and a great quantity of rubber tires,-- principally tires which had been in use, and showing the effect of such use in various respects. There was able and elaborate argument for both parties, accompanied by exhaustive briefs. The briefs then filed have, since the argument, by consent of the court, been added to by supplemental briefs filed by the respective counsel.

The first question for consideration in the case is that raised by the defendants as to novelty and invention in the Grant patent, No. 554,675. The claim in the Grant patent is as follows:

'(1) A vehicle wheel having a metallic rim with angularly projecting flanges to form a channel or groove with tapered or inclined sides; a rubber tire, the inner portion of which is adapted to fit in said groove or channel, and the outer portion having sides at an angle to the inner portion, the angle or corner between the outer and inner portions being located within the outer periphery of the flanges; and independent retaining wires passing entirely through the inner portions of said tire, and also within the outer peripheries of the flanges,-- substantially as described. (2) A vehicle wheel having a metallic rim with outwardly projecting flanges at an angle to the plane of said wheel, so as to form a channel or groove having tapered or inclined sides; a rubber tire, the inner portion of which is adapted to fit in said tapered groove or channel, and the outer or exposed portions formed at an angle thereto, the angle or corner between the said portions being placed within the outer periphery of said flanges; openings extending entirely through the unexposed portion of said tire; and independent retaining wires in said openings, and a re-enforcing strip of fibrous material placed at the bottom of said tire, and wholly within said flanges,-- substantially as specified.'

The contention for the defendants is that this invention claimed by Grant is a mere combination or aggregation, as they term it, of old elements, each of which was well known to the art long before the date of the Grant patent. Defendants claim that combining these various elements required only ordinary mechanical skill, and involved no discovery and no new principle. Speaking generally, the three devices involved in Grant's patent were (1) a rubber tire; (2) a metallic rim with sloping sides, in which the tire is seated; and (3) two wires running through the tire to hold it in place, the wires being located within the outer periphery of the flanges of the rim. The question as to whether this combination of separate parts by Grant was novel, so as to constitute a patentable invention, has been before the circuit court for two districts. In the case of Rubber Tire Wheel Co. v. Columbia Pneumatic Wagon Wheel Co., 91 F. 978, the question is discussed at length by Judge Thomas in the United States circuit Court for the Southern district of New York. The conclusion reached by Judge Thomas, as embodied in the third headnote to the case, is as follows:

'The Grant patent, No. 554,675, for a rubber tired wheel, discloses patentable invention, and was not anticipated by anything in prior patents, either English or American, though the several parts which constitute the essential features of the invention were each used in different combinations in previous inventions.'

Quite recently the same question was before Judge Wing, in the United States circuit court for the Northern district of Ohio, and an opinion filed, which has not yet been reported, but which I have before me. A brief extract from that opinion will show Judge Wing's view of the matter:

'In view of the able and elaborate opinion delivered by Judge Thomas, I do not deem it necessary to go into particularities with respect to the reasons for my conclusion. Suffice it to say that, upon an independent examination of the record, I have come to the conclusion, which, in brief, is this: that, while the elements of the complainants' combination are, each of them, old and well known, this particular combination of shape of rubber and of flange, and the position of the retaining wires, has not been shown in any previous patents or other publications; that the device, when completed and put upon the market, practically displaced all other forms of tires; that there is abundant evidence of the great usefulness and merit of the invention; that, deductively, the combination is novel and useful, and the patent valid.'

It is claimed by the defendants that the decision of Judge Thomas should not be considered, because it was collusively obtained by the parties to that case. On this subject, Judge Wing, in the opinion just referred to, says:

'I have examined carefully the record, and have read with interest the opinion of Judge Thomas, in the case of Rubber Tire Wheel Co. v. Columbia Pneumatic Wagon Wheel Co. (C.C.) 91 F. 978. It is contended by the defendants that the decree in that cause was collusively obtained by the parties. It is in no wise suggested that the opinion of the learned judge was in any sort the result of collusion.'

It appears from what has been presented to this court that the case before Judge Thomas was argued by counsel who had no knowledge whatever of any negotiations that were pending between the parties for a settlement of their differences, and that Judge Thomas had no knowledge whatever, up to the time the opinion was filed, of any such negotiations. Subsequently, and before the decree was entered in the case, it seems that the attention of the court was called to an adjustment between the parties of their differences, and probably the decree would be ineffective for certain purposes; but the opinion of the learned judge as persuasive authority, and as a determination of the question at issue for recognition under the rule of comity, it seems to me, is in no wise affected. It is claimed by the defendants that the case as made in this court differs materially, as to the evidence submitted, from the case before Judge Wing. The claim is that additional patents have been presented which antedate the Grant patent, and strengthen defendants' case as to its lack of novelty. These are what are known as the 'Prudden Cushion Tire,' the 'Rogers Cushion Tire,' the 'Fisher or Gendron Cushion Tire,' and the 'Frazier Two-Wire Sulky Tire.' These patent undoubtedly must be added to those before the courts in former cases, which contain some of the parts embodied in the Grant combination.

The courts enter upon the investigation of the question as to whether a particular device or combination of devices is patentable with the prima facie case in favor of the patent, by reason of its issuance by the patent office. In Cantrell v. Wallick, 117 U.S. 689, 6 Sup.Ct. 970, 29 L.Ed. 1017, it is said in the opinion of the court:

'The burden of proof is upon the defendants to establish this defense. For the grant of letters patent is prima facie evidence that the patentee is the first inventor of the device described in the letters patent, and of its novelty. Smith v. Vulcanite Co., 93 U.S. 486,

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