204 F.Supp. 249 (W.D.Tenn. 1961), Civ. 3791, Monroe Auto Equipment Co. v. Heckethorn Mfg. &amp Supply Co.

Docket Nº:Civ. 3791
Citation:204 F.Supp. 249
Party Name:Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co.
Case Date:December 27, 1961
Court:United States District Courts, 6th Circuit, Western District of Tennessee

Page 249

204 F.Supp. 249 (W.D.Tenn. 1961)

133 U.S.P.Q. 34

MONROE AUTO EQUIPMENT COMPANY, Plaintiff,

v.

HECKETHORN MANUFACTURING AND SUPPLY COMPANY, Defendant.

Civ. No. 3791.

United States District Court, W.D. Tennessee, Western Division.

Dec. 27, 1961

Don K. Harness, Detroit, Mich., Walter Armstrong, Jr., Memphis, Tenn., for plaintiff.

Robert F. Conrad, Washington, D.C., M. Watkins Ewell, Sr., Dyersburg, Tenn., for defendant.

BOYD, Chief Judge.

This is an action for infringement of two patents brought by Monroe Auto Equipment Company against Heckethorn Manufacturing and Supply Company. The plaintiff Monroe is a corporation of Michigan with its principal place of business at Monroe, Michigan and is engaged in the manufacture of equipment used on automobiles including shock absorber devices. Heckethorn is a Colorado corporation which has its

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principal place of business at Dyersburg, Tennessee and is also engaged in the business of manufacturing shock absorber devices for automobiles. The complaint alleges that Heckethorn has infringed United States Letters Patent No. 2,874,955 to McIntyre, et al., and No. 2,896,938 and No. 2,912,235 to Walker, all three of which had been assigned to Monroe prior to the commencement of this action. The complaint also alleges that Heckethorn has competed unfairly with Monroe in its advertising of devices of the kind to which the patents in suit relate, and in particular has copied certain portions of plaintiff's advertising and merchandising material.

The defendant, by way of answer, admits that plaintiff notified it concerning infringement of the mentioned patents, but denies said patents are valid or that they have been infringed by the defendant. Defendant also denies it has engaged in unfair competition with plaintiff or that its advertising and merchandising practices have caused any detriment or damage to the plaintiff.

This action as it applies to United States Letters Patent No. 2,874,955 to McIntyre was dismissed on plaintiff's motion before the trial.

At the trial plaintiff limited its charge of infringement to claims 2 and 3 of the '938 patent and claim 14 of the '235 patent.

The Court upon the pleadings, evidence and briefs of counsel, makes the following:

FINDINGS OF FACT

1. Patent No. 2,896,938 relates to a device which is used in automobile suspension systems. The device, herein, consists of a conventional shock absorber disposed within a coil spring. The shock absorber consists of two parts, one being a body portion and the other a piston and rod. The piston rod telescopes into the body portion when the shock absorber is compressed. The ends of the coil spring are supported with respect to the relatively movable parts of the shock absorber Mounted on the shock absorber between it and the spring is a sleeve of rubber or non-metallic material.

2. It is the addition of this sleeve to the shock absorber disposed with a coil spring that provides the basis for the combination claimed in claims 2 and 3 of the '938 patent.

3. The '938 patent was based on application No. 769,967 filed October 10, 1958 as a division of United States patent application No. 427,927 filed May 6, 1954 by Brooks Walker.

4. No. 427,927 was entitled 'Spring Adapters for Shock Absorbers'. In this original application all the stated objects of the invention were directed to the adapters which were used with the shock absorbers for the purpose of holding the ends of the spring in position thereon.

5. All nine claims in this original application were directed to the spring adapters, and none of the claims mentioned the non-metallic sleeve. Thirteen new claims were added by amendment on April 5, 1955. All these claims were again directed to the spring adapters, and none mentioned the non-metallic sleeve. All claims in the application were rejected by the Patent Office on August 2, 1956 and ten new claims were subsequently added by amendment on January 28, 1957. Again, all ten claims were directed to the spring adapters, and no reference was made to the nonmetallic sleeve.

6. During May of 1957, the plaintiff marketed its commercial device under the trade name 'Load Leveler' which is the same as the device in suit herein. Subsequently, in an amendment filed October 25, 1957, claims for the first time were inserted in the original application which made reference to a rubber or non-metallic sleeve. These were claims 35 and 37, the addition of which claims was accompanied by the comment:

'New claims 35 and 37 are directed to the non-metallic sleeve between the spring and a main portion of the shock absorber. * * *'

In a proceeding dated June 3, 1958, the Patent Office refused to consider

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claims 35 and 37 in application No. 427,927 because they covered a structure different than that which the applicant had earlier elected to prosecute in his application.

7. On October 10, 1958, a divisional application was filed in the Patent Office which became No. 769,967 on which the '938 patent in suit is based. This application was identical to the original application Serial No. 427,927, having the identical title, the identical disclosures and the identical claims, all being directed to 'Spring Adapters for Shock Absorbers.'

This divisional application was accompanied by an amendment of October 10, 1958, which introduced as claims 10 and 11 being former claims 35 and 37 of application No. 427,927.

8. Claims 10 and 11 were rejected by the Patent Office of March 2, 1959 as unpatentable over prior art which showed non-metallic sleeves between a shock absorber and a surrounding coil spring.

9. On May 20, 1959 Walker filed a further amendment containing major revisions in the specification and also three new claims 14, 15 and 16 which subsequently became claims 2, 3 and 4 of the '938 patent. These claims met the Examiner's objection that the non-metallic sleeve as broadly claimed did not distinguish over the prior art, by particularizing the nature of the material of the non-metallic sleeve.

The words and phrases which were used to particularize the character of the sleeve were introduced for the first time in the history of both applications Nos. 427,927 and 769,967 by this amendment.

10. The claims 14 and 15 (claims 2 and 3 of the '938 patent) are identical in language to two claims which the plaintiff had abandoned on November 20, 1958 in its McIntyre application which later issued as patent No. 2,874,955.

11. At the time of the amendment of May 20, 1959, the plaintiff's 'Load Leveler' had been on the market for more than a year (May 1957) and embodied each of the features as set out in claims 2 and 3 of the '938 patent.

12. The purpose of employing the rubber sleeve herein referred to is to prevent noise from metal to metal contact of the shock absorber and the spring. This is in accord with the description of the rubber sleeve as a 'silencing sleeve' in plaintiff's sales literature concerning its 'Load Leveler.'

13. The Patent Office never commented on claims 14 and 15 (claims 2 and 3 of the '938 patent) which were added by the amendment of May 20, 1959, and a notice of allowance was issued within forty-eight hours of the amendment. Patent '938 issued on July 28, 1959.

14. The date of invention with respect to this '938 patent is May 6, 1954, the filing date of Serial No. 427,927 which is the parent application of No. 769,967 on which the '938 patent is based.

15. The combination embraced in claim 2 of the '938 patent consists of the two part shock absorber, the coil spring surrounding the shock absorber, means for supporting the ends of the spring on the shock absorber, and the elongated non-metallic or rubber spacer sleeve. The combination embraced in claim 3 is the same except it omits reference to the means for supporting the spring ends.

The prior art shows numerous examples of combinations of shock absorbers disposed within coil springs and including means for supporting each end of the spring with respect to one of the relatively movable parts of the shock absorber.

16. The patented combination in '938 has as its distinguishing characteristic the elongated non-metallic or rubber spacer sleeve, the primary purpose of which is to prevent noise resulting from metal to metal contract by the spring and shock absorber. It was common knowledge long prior to May 1954, that rubber was useful in preventing noisy metal to metal contacts, and it was also well known prior to May 1954, that rubber sleeves were useful in preventing metal to metal contact between a coil spring

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and a relatively movable cylindrical body disposed within the spring.

17. The rubber sleeve as used in the patented combination herein performs in a manner to reduce noise as rubber has been used in the past.

18. Patent '235, herein, entitled 'Automatic Auxiliary Support for a Vehicle' refers to the variable rate spring suspension system described therein. Claim 14 thereof is not concerned with an automatic support or a variable rate spring system of any kind. The written description and drawing in the patent relevant to claim 14 reveals a rear suspension of an automobile with the shock absorbers shown therein being disposed within coil springs fixed at each end to one of the relatively movable parts of the associated shock absorber. The drawing also shows the upper end of the shock absorbers mounted closer to the center line of the automobile than the lower ends, to provide a so-called 'sea leg' mounting. Such 'sea leg' mounting of shock absorbers was used in rear end suspensions of automobiles prior to 1953.

19. The...

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