Galion Metallic Vault Co. v. Edward G. Budd Mfg. Co.

• Decision Date: 30 June 1948
• Docket Number: No. 9497.,9497.
• Citation: 169 F.2d 72
• Parties: GALION METALLIC VAULT CO. v. EDWARD G. BUDD MFG. CO.
• Court: U.S. Court of Appeals — Third Circuit

169 F.2d 72 (1948)

GALION METALLIC VAULT CO. v. EDWARD G. BUDD MFG. CO.

No. 9497.

Circuit Court of Appeals, Third Circuit.

Argued April 5, 1948.

Decided June 30, 1948.

Writ of Certiorari Denied November 8, 1948.

H. A. Toulmin, Jr., of Dayton, Ohio (Pepper, Bodine & Stokes, of Philadelphia, Pa., Toulmin & Toulmin, of Dayton, Ohio, Harold Scott Baile, of Philadelphia, Pa., and Herbert H. Brown and Clayton E. Crafts, both of Dayton, Ohio, on the brief), for plaintiff-appellant.

Charles H. Howson, of Philadelphia, Pa. (Howson & Howson, Dexter N. Shaw, and Charles H. Howson, Jr., all of Philadelphia, Pa., on the brief), for defendant-appellee.

Before GOODRICH, McLAUGHLIN, and O'CONNELL, Circuit Judges.

Writ of Certiorari Denied November 8, 1948. See 69 S.Ct. 132.

McLAUGHLIN, Circuit Judge.

There are two patents involved in this matter. The first is for a compartment or space in an automobile truck between the chassis and the body platform for holding a spare tire or tires. The second is for a support to which the tire is anchored in a horizontal position in that compartment and by which it can be swung down to a vertical position along the side of the truck. The court below found both patents invalid for lack of invention. There was also a finding of misuse of the patents.

The lack of invention as to the compartment is predicated principally upon the prior publication in Cooper's Vehicle Journal of January, 1922 of a hawkers' lorry having a locker in the same area as appellant's compartment and upon the disclosure and public use of mine safety trucks which carried three oxygen cylinders in the space utilized by appellant for its tire holder.

Appellant's compartment invention is No. 1603095 issued October 12, 1926 to Kissel Motor Car Co. of Hartford, Wisconsin, as assignee of Herman D. Palmer. It was acquired by appellant in 1938. Its title is "Pneumatic-Tire Carrier for Automobile Trucks." It is not a separate construction but is formed by a combination of parts in an automobile truck. The space between the forward end of the floor or loading platform of an ordinary truck and its supporting frame is utilized to provide a relatively flat box like space adapted to completely enclose one or more tires. The space is obtained by cutting away the ends of the longitudinal body sills.¹

The hawkers' lorry shows a built-in locker just forward of the rear wheel, extending to the back of the cab and lying between the bottom of the lorry floor and the tops of the longitudinal chassis rails or sills. There is a similar locker behind the rear wheel and extending almost to the back of the lorry. The forward locker is located substantially at the same point as the Palmer compartment. Space for the locker is obtained by reducing the height of the longitudinal sills throughout their length. The locker is used for the hawker's scales, measures and other "equipment necessary for trading purposes." In order to carry a tire, the box would have to be somewhat widened, which could be accomplished by spacing the transverse bolsters further apart. This, under the evidence, was no extraordinary feat in body building, the District Court calling it "a routine matter."

The mine safety trucks were used by both the United States Bureau of Mines and the Bureau of Mines of the State of Ohio long prior to the Palmer patent. These had a space forward of the rear wheel and between the platform and the chassis in which three oxygen cylinders were carried. The longitudinal sills were notched and the front cross bolsters were spaced a greater distance apart than the others in order to accomodate the cylinders.

The court below found that the carrying of "equipment necessary for trading purposes" in the lorry locker was so closely analogous to carrying a spare tire that the non-mention of the latter "does not matter." It found that the narrowing of the longitudinal supports in the lorry served the same purpose as cutting away their front ends in the Palmer patent. It found further that the whole idea of cutting away or notching the supports was fully disclosed in the Ohio mine rescue cars.

The question of invention is generally regarded as one of fact, and what we said recently in White v. E. L. Bruce Co., 162 F.2d 304, 305, applies with at least equal force to the present situation, namely, that it is "certainly not an instance in which we can say that the result reached by the learned District Judge was clearly erroneous * * *." The record here discloses ample support for the holding that the hawkers' lorry and the mine safety trucks anticipated the spacing of the transverse members and the cutting away of the longitudinals, maintained by appellant to be the distinctive characteristics of the Palmer patent.

The District Court found Palmer's "suggestion that a spare tire be carried at the place which it indicates is new." The result so obtained is evidence of invention (Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177) but to achieve patentability it must "not only new but, we think, patentably new in view of the art * * *." Julius Levine Co. v. Automatic Paper Machinery Co., 3 Cir., 63 F.2d 547, 549. Nor will the fact that the new device is also useful make it automatically patentable. Cuno Engineering Corporation v. Automatic Devices Corporation, 314 U.S. 84, 90, 62 S.Ct. 42, 86 L.Ed. 65.

Appellant asserts that the Palmer patent attained immediate commercial success. It concedes this argument is only available if there is doubt as to patentability. Radiator Specialty Co. v. Buhot, 3 Cir., 39 F.2d 373, 376. And that is not the status of this patent under the holding of the court below. In addition, examination of the record reveals the claimed success to be doubtful. The patent, dated 1925, was sold in 1938 for $500. That year one of appellant's witnesses said it was "the sensation" of the Cleveland road show. However, there is nothing to show the sale of a single truck body because of the Palmer compartment. During the last war that sort of carriage of tires became standard with army trucks, but that would be merely some evidence of patentability. Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721.

Appella...