Diamond Rubber Company of New York v. Consolidated Rubber Tire Company

• Decision Date: 10 April 1911
• Docket Number: No. 36,36
• Citation: 220 U.S. 428,55 L.Ed. 527,31 S.Ct. 444
• Parties: DIAMOND RUBBER COMPANY OF NEW YORK, Petitioner, v. CONSOLIDATED RUBBER TIRE COMPANY and Rubber Tire Wheel Company
• Court: U.S. Supreme Court

220 U.S. 428

31 S.Ct. 444

55 L.Ed. 527

DIAMOND RUBBER COMPANY OF NEW YORK, Petitioner,

v CONSOLIDATED RUBBER TIRE COMPANY and Rubber Tire Wheel Company.

No. 36.

Argued February 28 and March 1, 1911.

Decided April 10, 1911.

Mr. Charles K. Offield for petitioner.

Messrs. Frederick P. Fish, C. W. Stapleton, J. L. Stackpole, Thomas W. Bakewell, and Staley & Bowman for respondents.

Mr. Justice McKenna delivered the opinion of the court:

Writ of certiorari to review a decree of the circuit court of appeals of the second circuit, sustaining a patent for an improvement in rubber tires, issued to Arthur W. Grant, February 18, 1896. The patent, and those which it is contended anticipate it, have received full exposition in the opinion of that court. 85 C. C. A. 349, 157 Fed. 677, and 89 C. C. A. 582, 162 Fed. 892, affirming 147 Fed. 739. It and they were also passed upon and the patent sustained in Rubber Tire Wheel Co. v. Columbia Pneumatic Wagon Wheel Co. 91 Fed. 978, and in Consolidated Rubber Tire Co. v. Finley Rubber Tire Co. 116 Fed. 629; Consolidated Rubber Tire Co. v. Firestone Tire & Rubber Co. 80 C. C. A. 589, 151 Fed. 237. See also Rubber Tire Wheel Co. v. Milwaukee Rubber Works Co. 142 Fed. 531, 533, and the same case, 83 C. C. A. 336, 154, Fed. 358, 362. It was held invalid in Goodyear Tire & Rubber Co. v. Rubber Tire Wheel Co. (C. C. App. 6th C.) 53 C. C. A. 583, 116 Fed. 363, reversing the circuit court, Judge Wing presiding. It was also declared invalid in Rubber-Tire Wheel Co. v. Victor Rubber-Tire Co. 59 C. C. A. 215, 123 Fed. 85, following 116 Fed. 363, supra.

A further display of the patent and of its alleged anticipating devices would seem to be unnecessary, and that we might immediately take up a review of the divergent decisions. There is controversy as to whether they are divergent and irreconcilable in fundamental conceptions of the patent as well as in result.

We may say at the outset of this asserted conflict between the cases that the court of appeals of the second circuit considered that there was no antagonism between its decision and that of the court of appeals of the sixth circuit. It proceeded, as it in effect said, upon 'new facts and features which have been added to or developed from the records in the earlier cases.' However, something more is required of us than the reconcilation of other cases,—some consideration of the patent and the state of the art prior to it.

The patent was issued to Arthur W. Grant, February 18, 1896, and he declares in the specification he has invented 'certain new and useful improvements in rubber tire wheels . . . designed for use on ordinary vehicles, such as wagons, buggies, and carriages, . . . and consist in the construction of parts hereinafter described and set forth in the claim.' The claims are as follows:

'1. A vehicle wheel having a metallic rim with angularly propelling flanges to form a channel or groove with tapered or inclined sides, a rubber tire, the inner portion of which is adapted to fit in said groove or channel, and the outer portion having sides at an angle to the inner portion, the angle or corner between the outer and inner portions being located within the outer periphery of the flanges, and independent retaining wires passing entirely through the inner portions of said tire and also within the outer peripheries of the flanges, substantially as described.

'2. A vehicle wheel having a metallic rim with outwardly projecting flanges at an angle to the plane of said wheel, so as to form a channel or groove having tapered or inclined sides, a rubber tire, the inner portion of which is adapted to fit in said tapered groove or channel, and the outer or exposed portions formed at an angle thereto, the angle or corner between the said portions being placed within the outer periphery of said flanges, openings extending entirely through the unexposed portion of said tire, and independent retaining wires in said openings, and a reinforcing strip of fibrous material placed at the bottom of said tire and wholly within said flanges, substantially as specified.'

It will be observed that the tire is composed of three elements: First, the channel or groove with tapered or inclined sides; second, the rubber tire adapted to fit into the channel or groove, and shaped as described; third, the fastening device; that is, the independent retaining wires located as indicated.

The shape and relation of the parts are illustrated in the following figures taken from the patent:

[NOTE: MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (GRAPHIC OR TABULAR MATERIAL)]

These figures explain themselves, but we copy the following from the specifications:

'In the accompanying drawings, Fig. 1 is a side elevation of a wheel embodying my invention. Fig. 2 is a sectional elevation of the wheel rim, shown partly in perspective. Fig. 3 is a partial longitudinal section through the tire, showing the openings for the retaining wires. Fig. 4 is a transverse sectional view of the rubber tire in detail.'

It is conceded that the claims are narrow, counsel saying that they are 'limited closely to the specific construction of the Grant tire as it is actually shown and described in the patent.' And a right to equivalents is disclaimed. Indeed, a certain merit is made of this as exhibiting at once the simplicity and perfection of the invention and the tribute paid to its excellence by respondent by exactly imitating it, instead of attempting to evade it. It is pointed out that the coaction of the parts is so dependent upon their shape and relation that any alteration destroys their co-operation and the utility of the tire. There is strength in the contention, as we shall presently see.

Anticipating somewhat, we may say that the tire has utility is not disputed; to what its utility is to be attributed is in controversy. The respondents the tire company contend that the tire is at once firm and mobile in its channel, 'creeps' (moves slowly around the edge of the rim), and will yield laterally, and thus the lateral blows against it will be cushioned. It is further contended that if the tire be 'tipped from its seat in the channel by a side blow' it 'automatically restores itself to normal position when the side pressure is released.' In other words, and in the language of one of the expert witnesses, the tire has the capacity to rise and fall and reseat itself under lateral strain; that is, to rise slightly from the rim on one side, independently of the other, when subjected to very great strain, and immediately reseat itself when such strain is removed. 'It must be borne in mind,' counsel say, 'that the Grant tire is not cemented into the channel. This is an essential and important point. Any tire that is cemented in its channel is rigid and cannot 'creep' or yield to lateral blows. It is therefore easily and quickly destroyed. The absence of cement in the Grant tire is a vital characteristic.' And, further, that Grant 'by omitting the cement, and by permitting the tire to tip, to creep, and to move in its channel, obtained a radically new and useful result.' And it is insisted that this results because the tire is a new and patentable combination of parts, coacting in the manner of a true combination to produce a new and useful result, and is not an aggregation of old elements or parts, each performing its own function and nothing more. These propositions are combated by the rubber company, and it is insisted that the testimony is 'conclusive and uncontradicted that the Grant tire, clamped to the tire or rim by the straining tension of the two wires,' has not the capacity attributed to it, 'and never could have.' And it is said that 'it is manifest that this question can be easily determined as a question of fact,' and that the testimony 'proves such asserted movement a myth and a fallacy.' And it is urged that such capacity in the tire is not recited in the specifications of the patent, and was unknown to Grant.

This tipping capacity is made the pivot of the controversy. It was as to that that the courts of appeals of the sixth and second circuits disagreed either upon the difference of the testimony in the cases, or more deeply, on principle. The controversy and Grant's alleged ignorance of the tipping characteristic of the tire really present some anomaly. The tire has utility, a utility that has secured an almost universal acceptance and employment of it, as will subsequently appear. It was certainly not an exact repetition of the prior art. It attained an end not attained by anything in the prior art, and has been accepted as the termination of the struggle for a completely successful tire. It possesses such amount of change from the prior art as to have received the approval of the Patent Office, and is entitled to the presumption of invention which attaches to a patent. Its simplicity should not blind us as to its character. Many things and the patent law abounds in illustrations, seem obvious after they have been done, and, 'in the light of the accomplished result,' it is often a matter of wonder how they so long 'eluded the search of the discoverer and set at definance the speculations of inventive genius.' Pearl v. Ocean Mills, 2 Bann. & Ard. 469, Fed. Cas. No. 10,876, 11 Off. Gaz. 2. Knowledge after the event is always easy, and problems once solved present no difficulties, indeed, may be represented as never having had any, and expert witnesses may be brought forward to show that the new thing which seemed to have eluded the search of the world was always ready at hand and easy to be seen by a merely skillful attention. But the law has other tests of the invention tha subtle conjectures of what might have been seen and yet was not. It regards a change as evidence of novelty, the acceptance and utility of change as a further evidence, even as demonstration. And it recognizes degrees of change, dividing inventions into primary and secondary, and as the...