128 F.2d 632 (2nd Cir. 1942), 244, Picard v. United Aircraft Corp.

Docket Nº:244.
Citation:128 F.2d 632, 53 U.S.P.Q. 563
Case Date:May 28, 1942
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 632

128 F.2d 632 (2nd Cir. 1942)

53 U.S.P.Q. 563




No. 244.

United States Court of Appeals, Second Circuit.

May 28, 1942

Page 633

Raymond L. Greist, of Chicago, Ill., and Stephen J. Cox, of New York City, for plaintiff.

C. Blake Townsend and Drury W. Cooper, both of New York City, for defendant.

Before L. HAND, SWAN, and FRANK, Circuit Judges.

L. HAND, Circuit Judge.

Both parties appeal from a judgment in an action to enjoin infringement of claims 2, 3, 4, 5, 11, 14, 15, 17, 18, 19 and 20 of Reissue Patent No. 21, 031, originally issued on July 21, 1931, to Martin J. Schenk (No. 1, 815, 868), the reissue being granted on March 14, 1939. The district judge held claims 4 and 14-- original claims-- valid and infringed; he held claims 2, 3, 5, 11, 15 and 16-- likewise original claims-- not infringed; and he held claims 17, 18, 19 and 20-- reissue claims-- invalid because broadened over the original claims, and also because of laches in the application. Each side appealed from so much of the judgment as went against it. In the view we take, it will not be necessary to pass upon the plaintiff's appeal, because we

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think that the claims in suit are all invalid for lack of invention.

The patent was for a lubricating and cooling system for 'radial' air-cooled combustion engines, and was primarily, if not exclusively, intended for aeroplanes. 'Radial' engines are like ordinary combustion engines except for location of the cylinders as to the driving shaft which in ordinary engines are either set 'in line' or in a V-- two parallel lines inclined to each other. In a 'radial' engine the cylinders are set around the driving shaft like the spokes of a wheel-- ordinarily nine in number-- and it follows that some of them are vertical-- heading up or down-- some incline upwards, some are horizontal and some incline downwards. The train of elements in the patent-in-suit which operates the poppet valves in each cylinder starts with a cam in the crank case which engages a 'cam follower' (divided into two parts), or 'valve tappet.' The upper surface of the 'cam follower' holds the end of a hollow push rod-- enclosed in a case-- and the upper end of the push rod abuts upon one end of a rocker-arm. The rocker-arm is journalled in a housing or box which completely encases it; its other end abuts upon the stem of the poppet valve, depressing it against a spring to dislodge it from its seat in the cylinder head. Thus, by means of this train the cam in the crank case alternately seats and unseats the valve. All this was old in the art.

Oil is pumped by a standard pressure pump through passages in the 'cam follower' not necessary to describe, whence it flows through the inside of the hollow push rod, oiling the joint between it and the 'cam follower' as it passes. It emerges from the upper end of the push rod and enters a passage in the rocker-arm, oiling the joint between them; thence it passes through the bearing of the rocker-arm and through a passage out of its other end and into the stem of the poppet valve, oiling the joint between these. It is not necessary to describe the further course of the oil during which it cools the valve, because concededly the defendant does not use it. It is enough to say that after passing through certain passages and a chamber in the valve, the oil spills into the rocker-arm box. In the infringement the oil, having lubricated the joint between the end of the rocker-arm and the stem of the valve, similarly spills into the rocker-arm box. Schenk disposes of the oil so spilled by tapping into each rocker-arm box at its lowest part a pipe which leads to a circular manifold. Since the boxes drain by gravity the manifold has to run below each, and this is accomplished by passing it between the crank case and the boxes in the case of all boxes which are above the level of the crank case, and below the boxes in the case of all that are below that level. The manifold drains into a sump from which a scavenging pump sucks it back to the main oil reservoir.

There was nothing new in the train which leads from the oil pump to the joint between valve stem and the rocker-arm. That had been shown for a 'radial' engine in Scott's Patent No. 1, 321, 388 in 1919, although the oil did not pass beyond the bearing of the rocker-arm. Obviously no invention was necessary to pass it to the joint between the rocker-arm and the end of the valve stem. Moreover, if any had been, Simes fully disclosed it for an 'in line' engine in Figure 2 of his British Patent No. 223, 393 of 1924. However, in these disclosures the rocker-arm and its joints were exposed to the air so that the joints could, and did, gather dirt; but in the Pratt & Whitney 'radial' engine the rocker-arm and its joints were housed exactly as in Schenk's disclosure, and indeed he copied this feature from the Pratt & Whitney design. In that engine the bearing of the rocker-arm and its joints with the push rod and the valve stem, were lubricated by a grease gun which had to be used periodically at intervals of from ten to fifteen hours of flight, and which could not be used during flight without difficulty and danger. Schenk's invention, so far as the defendant borrowed from it, can therefore be fairly stated as substituting the automatic oil feed of Scott or Simes in the necessary adjustments to drain back the oil to the reservoir. It is in the of the rocker-arm boxes that the invention, if any, must lie.

There had never been any complete anticipation of Schenk's method of oil disposal in the prior art; the nearest was the Curtiss R-1454 engine about which the evidence has very largely centered. The plaintiff challenges its relevancy, first, because she denies that it is properly a part of the prior art at all; and second, because even though it is, the step between it and Schenk's disclosure required invention. She wishes us to disregard it because it

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was only an 'abandoned experiment.' The district judge thought otherwise, and so do we. Three of these engines were made under a contract with the United States Army and completed in 1925 or 1926 at a cost of over $50, 000. They were to be put to a fifty hour endurance test-- greater than would be demanded in service-- and one of them was. The same one was later installed in a plane, though it does not definitely appear that it was ever used in flight; and in any event it was never exploited, but was taken out and placed in a museum where it was at the time of the trial, accessible to visitors and open for examination. All three of these engines were certainly 'experimental'; all three were 'abandoned' if by that is meant that the model never went into production and became an historical exhibit. But that is by no means conclusive on the issue of novelty. It is true that the designer, Heron, said that the engine was not successful and that he was surprised that it 'worked at all, ' but he was not speaking of the lubricating system; the defects he referred to were in the crank case, crank shaft and connecting rod; these were the cause of any abandonment, and they were remedied in the Pratt & Whitney engine. In that, however, the lubrication remained what it had been before-- manual greasing-- automatic oil lubrication being deferred until 1934 when 'the customers squawked' for it. It is true that the plaintiff's expert Woeltjen testified that the Curtiss engine would foul the cylinders because the suction was so arranged as not to empty the rocker-arm boxes, and perhaps that was true, though the judge made no finding on the matter. Be that as it may, the testimony does not show that the defect-- if it was one-- made the engine inoperative.

On this showing the engine must be considered a part of the prior art. To be patentable, an invention cannot have been 'known or used by others' in this country before the inventor 'invented or discovered' it. Sec. 31, Title 35, U.S.C.A. 'Knowledge' in this sense is to be distinguished from a public use or sale by the inventor himself for more than a year before he files his application, which is ipso facto an abandonment. Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651. In computing the year the inventor will be allowed for any time during which he may have publicly used the invention honestly to perfect it, and such a period is frequently spoken of as one of 'experiment.' Elizabeth v. Pavement Co., 97 U.S. 126, 24 L.Ed. 1000; Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755; Thomson-Houston Electric Co. v. Lorain Steel Co., 2 Cir., 117 F. 249. It is also true that another's experiment, imperfect and never perfected, will not serve either as an anticipation or as part of the prior art, for it has not served to enrich it. The patented invention does not become 'known' by such a use or sale, or by anything of which the art cannot take hold and make use as it stands. But the mere fact that an earlier 'machine' or 'manufacture, ' sold or used, was an experiment does not prevent its becoming an anticipation or a part of the prior art, provided it was perfected and thereafter became publicly known. Whether it does become so depends upon how far it becomes a part of the stock of knowledge of the art in question. Coffin v. Ogden, 18 Wall. 120, 21 L.Ed. 821; Brush v. Condit, 132 U.S. 39, 44-48, 10 S.Ct. 1, 33 L.Ed. 251; Parker v. Ferguson Fed. Cas. No. 10, 733, 1 Blatchf. 407; Stitt v. Eastern Railway Co., C.C., 22 F. 649. Our own decision in Universal Winding Co. v. Williamantic Linen Co., 2 Cir., 92 F. 391, accepting in this respect Judge Townsend's opinion, C.C. 82 F. 228, 239, 240, is an illustration extremely apt to the case at bar. Judged by that standard, the Curtiss engine was not an 'abandoned experiment'; it had been perfected; it had withstood a severer test than was necessary in use; it had been sold; it remained...

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