Outboard Marine & Mfg. Co. v. Muncie Gear Works, 7388.

• Citation: 119 F.2d 404
• Decision Date: 16 May 1941
• Docket Number: No. 7388.,7388.
• Parties: OUTBOARD MARINE & MFG. CO. et al. v. MUNCIE GEAR WORKS, Inc., et al.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

119 F.2d 404 (1941)

OUTBOARD MARINE & MFG. CO. et al. v. MUNCIE GEAR WORKS, Inc., et al.

No. 7388.

Circuit Court of Appeals, Seventh Circuit.

January 29, 1941.

Rehearing Denied May 16, 1941.

Geo. L. Wilkinson, of Chicago, Ill., and S. L. Wheeler, of Milwaukee, Wis., for appellants.

Chas. W. Rummler, of Chicago, Ill., for appellees.

Before EVANS and TREANOR, Circuit Judges, and BRIGGLE, District Judge.

EVANS, Circuit Judge.

This appeal involves six patents which the District Court disposed of by consolidating two suits and hearing them together. Of the six patents, plaintiff, Outboard Marine & Manufacturing Company, is the owner of three, Nos. 1,786,835; 1,869,749; 1,875,912; and is the exclusive licensee of the remaining three, which are owned by Johnson Brothers Engineering Corporation, a co-plaintiff. The latter three are Nos. 1,716,962; 1,763,970; and 2,067,533. They all deal with phases of outboard motors in which field plaintiffs appear to be the leaders.

The Outboard M. & M. Co. operates two separate plants, one known as the Evinrude Motors Division, located at Milwaukee, Wisconsin, and the other, the Johnson Motors Division at Waukegan, Illinois. Each has its own separate engineering and production staff, and the output of each plant is large. It asserts responsibility for most of the development of the outboard motor industry and contends that defendants are endeavoring to enter the field by copying plaintiffs' motors and improvements and appropriating the results of its long continued and costly research efforts.

The more specific legal questions raised by the record, to which we must confine our attenion, are asserted validity of certain improvement patents and the asserted avoidance of infringement by defendants' structure, wherein it appears defendants have made a studied effort to avoid a narrow patent through a slightly changed mechanism. This situation necessitates an ascertainment of the place of the patent in the art and the correlative inquiry as to the extent of the mechanical equivalents we should allow.

The court found claims 11, 12, 13, and 14 of Johnson patent, No. 1,716,962, were invalid because aggregations and also that claims 11 and 12 of said patent were not infringed and that claims 13 and 14 would be infringed if they were valid.

The court also found claims 3 and 14 of Johnson patent, No. 1,763,970, are invalid because aggregations. It also found them not infringed.

It found claim 19 of the Pierce Reissue patent, No. 18,118, invalid, because of the prior art and also infringed, if valid.

It found claim 16 of No. 1,875,912 was not infringed by defendants' structure. Claims 1, 4, 5, 8, 9, and 10 of Evinrude No. 1,786,835, were held invalid because aggregations. Claims 5 and 10 of said patent were not infringed, and claims 1, 4, 8, and 9 were infringed, if valid.

It also found claims 1 and 2 of the Irgens patent, No. 1,869,749, to be not infringed. It also held the Johnson patent, No. 2,067,533, invalid.

By separating and dealing with each claim in each patent and making findings both on the validity and the infringement of each claim, the District Court has greatly lessened our burden.

While our purpose is not to avoid writing lengthy opinions, we are convinced that elaboration of views may be unnecessary where specific and direct findings on individual claims by the District Court are in full harmony with like findings by us made, after an independent study, and the issue before both courts is a factual one.

Plaintiffs' counsel call our attention to the relative importance of the various claims, admitting that some patents cover minor and rather unimportant improvements which are narrow in scope. Quite unjustified would we be to devote a great deal of time to them, when we are clearly convinced and our conclusion is confirmed by the decision of the trial court.

Such a patent is the Johnson patent, No. 2,067,533, covering a "Spark Plug Cover." The claims in issue covered an exposed spark plug on an internal combustion engine with the novel claim element consisting of a "normally closed cover therefor hinged to the engine for making a tight connection with its outer surface and movable to cover and uncover the spark plug."

We have no hesitancy in holding that providing a cover for a spark plug, which cover can be moved so as to shield the spark plug, is not invention, irrespective of any prior art.

Likewise we will dispose of the non-infringement defense of the defendants to claims 3 and 14 of patent No. 1,763,970, entitled "Stream Line Construction," without elaborating our views. We will not deal with the validity of these claims in view of our conclusion that the accused structure does not infringe. Claim 3 describes a propeller wherein the "said casing having a portion projecting above the water level of substantially symmetrical knife-edge or wedge-like stream line contour and having a portion below said anti-cavitation plate, the front vertical edge of which is of substantially bluntly rounded stream line contour and the trailing edge of which is substantially knife-edge or wedge-like stream line contour."

We are satisfied that the front vertical edge of the accused device is not of "substantially bluntly rounded stream line contour." As the trial judge observed, "It is knife edge as that term is used in the art."

Patent No. 1,875,912 covers a cooling system for marine engines, and only claim 16 is involved. The court found this claim was not infringed. While we doubt the soundness of this finding, we are of the opinion that the defense of invalidity must be sustained.

Novelty, if any, in the combination of this claim, lies in the shape of the opening which provides a water inlet of sufficient capacity and so located with reference to the stream line surface that it does not extend to any portion of the stream line in which it might be subject to increased pressure or vacuum.¹ In other words, Arndt, the inventor, so shaped his inlet opening as to make it stay within the confines of a narrow upright surface. This was accomplished by extending the inlet vertically along the forward apex of his stream line lower unit. Substituting an inlet which is transversely narrow and vertically elongated for a somewhat circular one, does not, in this art, pass beyond the skill of the mechanic. We therefore hold the claim invalid.

Patent No. 1,869,749, to Irgens, covering an "Exhaust Tube for Internal Combustion Engines" presents two claims which the court found were not infringed.

The asserted patentable novelty of the combination consists of a tapering exhaust pipe having a submersible outlet movable in accordance with the operation of the engine and directed rearwardly, "the tapering form of said pipe being adapted to destroy its resonance to pulsation frequencies." The second claim describes the novel feature as having an exhaust pipe leading from the manifold and of such dimensions as to be resonant to the frequency of the pulsations occasioned therein by engine exhaust, the pipe having a tapered form destructive of such pulsation.

After the claim had been rejected in the Patent Office, the Board of Appeals allowed the claim in the following language:

"The mere tapering of the pipes is deemed insufficient to obtain the function desired. It is obviously necessary to design the pipe of proper dimensions. Applicant gives certain dimensions in his specifications. The exact length of the tube is not given although it may be fairly well estimated from the drawing when the pipe is compared with the boat...