220 U.S. 428 (1911), 36, Diamond Rubber Company v. Consolidated Rubber Tire Company

Docket Nº:No. 36
Citation:220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527
Party Name:Diamond Rubber Company v. Consolidated Rubber Tire Company
Case Date:April 10, 1911
Court:United States Supreme Court

Page 428

220 U.S. 428 (1911)

31 S.Ct. 444, 55 L.Ed. 527

Diamond Rubber Company


Consolidated Rubber Tire Company

No. 36

United States Supreme Court

April 10, 1911

Argued February 28, March 1, 1911




Where a device possesses such amount of change from the prior art as to receive approval of the Patent Office, it is entitled to the presumption of invention which attaches to a patent.

An inventor is entitled to all that his patent fairly covers, even though its complete capacity is not recited in the specifications and was unknown to the inventor prior to the patent's issuing.

The law regards a change as a novelty, and the acceptance and utility of the change as further evidence, even as a demonstration, of novelty.

The rubber carriage tire involved in this case and patented to Grant attained a degree of utility not reached by any prior patent, and, although only a step beyond the prior art, is entitled to be patented as an invention.

Utility of a device may be attested by litigation over it showing and measuring the existence of public demand for its use.

While extensive use of an article beyond that of its rivals may be induced by advertising, where the use becomes practically exclusive, a presumption of law will attribute that result to its essential excellence and its superiority over other forms in use.

Elements of a combination may all be old, for in making a combination, the inventor has the whole field of mechanics to draw from. Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. p. 318.

On the evidence, this Court finds that the improvement on rubber tires involved in this case possesses the power ascribed to it by the inventor and denied by those using it without authority, and holds that this power was not the result of chance, but was achieved by careful study of scientific and mechanical problems necessary to overcome defects in all other existing articles of that class.

In the courts below, defendants relied on invalidity of complainant's patent, and did not press the defense of noninfringement, and also conceded that infringement existed in prior litigation, and this Court holds that infringement exists.

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Quaere whether, under Kessler v. Eldred, 206 U.S. 285, the injunction can extend to sale of articles in other circuits in which complainant's patent has been held invalid.

157 F. 677 and 162 F. 892, affirming 147 F. 739, affirmed.

The facts, which involve the validity of certain letters patent for improvement in rubber tires, are stated in the opinion.

MCKENNA, J., lead opinion

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. 157 F. 677, and 162 F. 892, aff'g 147 F. 739. It and they were also passed upon and the patent sustained in Rubber Tire Wheel Co. v. Columbia Pneumatic Wagon Wheel Co., 91 F. 978, and in Consolidated Rubber Tire Co. v. Finley Rubber Tire Co., 116 F. 629; Consolidated Rubber Tire Co. v. Firestone Tire & Rubber Co., 151 F. 237. See also Rubber Tire Wheel Co. v. Milwaukee Rubber Works Co., 142 F. 531, 533, and the same case, 154, F. 358, 362. It was held invalid in Goodyear Tire & Rubber Co. v. Rubber Tire Wheel Co., 116 F. 363, reversing the circuit court, Judge Wing presiding. It was also declared invalid in Rubber-Tire Wheel Co. v. Victor Rubber-Tire Co., 123 F. 85, following 116 F. 363, supra.

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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 [31 S.Ct. 445] 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 reconciliation 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

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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:

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[31 S.Ct. 446] 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.

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Fig. 4 is a transversal 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 cooperation and the utility of the tire. There is strength in the contention, as we shall presently see.

Anticipating somewhet, 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 [31 S.Ct. 447] 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,

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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...

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