Trico Products Corp. v. Delman Corporation

Decision Date08 March 1950
Docket NumberNo. 14021,14022.,14021
Citation180 F.2d 529
PartiesTRICO PRODUCTS CORPORATION v. DELMAN CORPORATION et al. DELMAN CORPORATION et al. v. TRICO PRODUCTS CORPORATION.
CourtU.S. Court of Appeals — Eighth Circuit

Edwin T. Bean, Buffalo, N. Y. (Bean, Brooks, Buckley & Bean, Buffalo, N. Y. and Talbert Dick, Des Moines, Iowa, were with him on the brief), for Trico Products Corporation.

Charles F. Meroni, Chicago, Ill. (Rudolph L. Lowell, Des Moines, Iowa, was with him on the brief), for The Delman Corporation and for J. Paul McGinn and Mrs. J. Paul (Mary Helen) McGinn, co-partners, doing business as Eldora Mill & Manufacturing Company.

Before SANBORN, THOMAS, and JOHNSEN, Circuit Judges.

SANBORN, Circuit Judge.

The important question for decision in these cases is whether the determination by the District Court that claims 1, 3, 5, 6, 16 17 and 24 of United States Letters Patent No. 1,949,098 issued to Albert W. Becker on February 27, 1934, for a "Windshield Clearing Device," upon an application filed February 6, 1928, and claims 9, 13 and 14 of United States Letters Patent No. 2,206,814, issued to Erwin C. Horton on July 2, 1940, for a "Windshield Clearing System," upon an application filed August 12, 1935, are void for want of invention, is clearly erroneous.

The Trico Products Corporation, which owns both of these patents and which makes and sells windshield wipers and windshield washers, brought an action against The Delman Corporation and an action against J. Paul McGinn and Mrs. J. Paul (Mary Helen) McGinn, co-partners, doing business as Eldora Mill & Manufacturing Company, for infringement of the patents. The defenses interposed were anticipation, want of invention, indefiniteness of claims, fraud in the procurement of the patents, and unclean hands. The actions, which involved the same issues and the same devices, were consolidated. Thereafter the defendants filed a counterclaim for treble damages and asked for an accounting, asserting that the plaintiff had misused its patents in violation of the federal anti-trust laws.

The issues were tried to the District Court without a jury. At the opening of the trial, counsel for the plaintiff stated that as to the Becker Patent the plaintiff would rely upon claims 1, 3, 5, 6, 16, 17 and 24, and as to the Horton Patent it would rely upon claims 9, 13 and 14. The District Court determined that, under the evidence and the applicable law, while infringement was apparent if the claims in suit were valid, they were not valid, because the subject matter of the claims involved neither invention nor discovery but only mechanical skill. The court dismissed the plaintiff's complaints. It also dismissed the defendants' counterclaim for treble damages, on the ground that the evidence in support of it was insufficient to show that the plaintiff had misused its patents. 85 F. Supp. 393. This appeal and cross-appeal followed.

The plaintiff contends, in effect, that it was entitled to an adjudication that the patents in suit were valid and infringed, upon the ground that the evidence would support no other conclusion. The defendants assert that the court should have (1) found non-infringement of the plaintiff's patents, (2) adjudged the plaintiff guilty of a misuse of its patents and sustained the defendants' counterclaim, and (3) determined that all claims of each of the patents in suit were invalid.

It is apparent that if the District Court was justified in finding that the claims upon which the plaintiff relied were void for want of invention, it is unnecessary for this Court to consider the question of infringement. We agree with the District Court that the evidence in support of the defendants' claim that the plaintiff had misused its patents was insufficient to sustain that claim. Compare, Falkenberg v. Bernard Edward Co., 7 Cir., 175 F.2d 427, 431. We are also of the opinion that the District Court correctly limited its findings and judgment to the patent claims which were relied upon by the plaintiff, although we regard that question as largely academic.

The only question in the cases which we think merits serious consideration is that of the sufficiency of the evidence to support the findings that the claims in suit of both patents are void for want of invention.

What the patents involve are improved means or devices for discharging a suitable fluid in the path of windshield wipers of motor vehicles, to assist in keeping the windshields free from ice, snow, dirt, insects, etc., while the vehicles are in operation. The general idea was concededly old prior to Becker and Horton.

The question whether an improvement involves merely mechanical skill or the exercise of the faculty of invention is a question of fact, and a finding either way upon that question by a trial court is, under Rule 52(a) of the Federal Rules of Civil Procedure for the United States District Courts, 28 U.S.C.A., conclusive on appeal unless clearly erroneous. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 446, 44 S.Ct. 533, 68 L.Ed. 1098; Graver Tank & Mfg. Co., Inc. v. Linde Air Products Co., 336 U.S. 271, 274-275, 279, 69 S.Ct. 535; Hall Laboratories, Inc. v. Economics Laboratory, Inc., 8 Cir., 169 F.2d 65, 66-67, and cases cited.

Becker's solution of the problem of discharging liquid into the path of the windshield wiper of a motor vehicle was to use a combination consisting of a cylindrical reservoir, a tube or pipe connected therewith, and a shut-off valve at the outlet of the reservoir. The reservoir was attached to the inside of the body of the motor vehicle above the windshield, with the shut-off valve within reach of the driver. The tube from the tank ran along the top of the windshield for a short distance on the inside and thence through an aperture to the outside. The tube was then led back on the outside of the windshield near the top to a point just above the pathway of the windshield wiper, where the liquid from the reservoir would, when the shut-off valve was opened, run down into the pathway of the wiper.

Claim 1 of the Becker Patent reads as follows: `1. In combination, a windshield, a windshield wiper thereon, and means including a supply line independent of the wiper for delivering a localized supply of clearing fluid on the windshield for flow thereon intersecting the path of the wiper and distribution by the latter."

It seems to us that what Becker did was to point out how a combination of a tank, a valve and a tube could be arranged to furnish a gravity flow of liquid into the pathway of a windshield wiper for the purpose of assisting the wiper to clean or clear the windshield. It was common knowledge, however, long before Becker, that liquid could be piped from a tank to any spot below the level of the tank where the liquid was wanted, and that if a valve was placed in the outlet from the tank the flow of liquid could be turned on or shut off at will. Examples of this are the old tank street sprinklers, the tank trucks for delivery of oil and gasoline, the tanks of windmills and the like, and flush toilets. The application of an old device to a new use is not invention. Mallon v. William C. Gregg & Co., 8 Cir., 137 F. 68, 76; Tropic-Aire, Inc. v. Sears, Roebuck & Co., 8 Cir., 44 F.2d 580, 588-591, certiorari denied 282 U.S. 904, 51 S.Ct. 217, 75 L.Ed. 796; H. D. Hudson Mfg. Co. v. Standard Oil Co., 8 Cir., 60 F.2d 377, 379; Warden v. City of St. Louis, Mo., 8 Cir., 140 F.2d 615, 617. Nor is it invention to produce a device which a skilled mechanic would produce when required to effectuate a given result. Frank Adam Electric Co. v. Colt's Patent Fire Arms Mfg. Co., 8 Cir., 148 F.2d 497, 502, and cases cited. It seems inconceivable to us that, either before or after Becker's alleged invention, anyone could be prevented from installing in a motor vehicle such a combination as Becker disclosed and claimed in his patent. In any event, we are convinced that the District Court committed no error in finding that the claims in suit of the Becker patent were void for want of invention.

Horton's solution of the problem of injecting cleaning liquid into the path of a windshield wiper was, as a practical matter, far superior to Becker's device, which had obvious defects, the principal one of which was that on a slanting windshield of a moving motor vehicle the opposing air currents would almost invariably overcome any gravity flow of the liquid. It is apparent that Becker was dealing with vertical windshields (with wipers pivoted at the top of the windshields) of vehicles moving at slow speeds, while Horton was...

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