Goodbody v. Firestone Steel Products Co.

• Citation: 23 F.2d 625
• Decision Date: 03 January 1928
• Docket Number: No. 4940.,4940.
• Parties: GOODBODY et al. v. FIRESTONE STEEL PRODUCTS CO.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

23 F.2d 625 (1928)

GOODBODY et al. v. FIRESTONE STEEL PRODUCTS CO.

No. 4940.

Circuit Court of Appeals, Sixth Circuit.

January 3, 1928.

John F. Oberlin, of Cleveland, Ohio (Baker, Hostetler & Sidlo, Fay, Oberlin & Fay, and Jos. C. Hostetler, all of Cleveland, Ohio, on the brief), for appellants.

A. L. Ely, of Akron, Ohio, and F. O. Richey, of Cleveland, Ohio (Ely & Barrow, of Akron, Ohio, on the brief), for appellee.

Before DENISON and MOORMAN, Circuit Judges, and RAYMOND, District Judge.

RAYMOND, District Judge.

This appeal involves the validity and infringement of United States letters patent No. 1,031,236, issued to the Firestone Tire & Rubber Company, July 2, 1912, on application of P. B. Bosworth, for vehicle wheel rims. Applicant assigned to patentee prior to issuance of patent, and plaintiff appellee is now the owner thereof by assignment in 1918. The infringement charged is alleged to have been by defendant as receiver while operating the plants of the Hydraulic Steel Company and the Cleveland Welding & Manufacturing Company. The District Court held the patent valid and infringed, and the usual interlocutory decree for injunction and accounting was entered.

The claimed invention pertains essentially to a means to permit the quick detachment of pneumatic or other tires from vehicle wheel rims. The important element is a split locking ring specially formed to hold in place a removable tire flange. The objects of the invention are stated to be "the production of a construction in which the locking ring for holding the removable tire flange in operative position and the co-operating parts of the rim proper shall be such as to secure a maximum of strength and security with a minimum amount of metal * * * to hold the flange most securely in place, to reduce to the lowest limit the tendency of the locking ring to leave its groove in the rim, and to obtain the best bracing effect by the ring on the flange."

In addition to the usual defenses of invalidity by reason of anticipation and for lack of invention, a supplemental defense of estoppel is urged which arises from the proceedings in the Patent Office. The application was filed June 4, 1910, and was a division of an original application filed December 24, 1909. The first four claims of the patent as finally issued were rejected upon Bryant 772,209, Baker 913,253, Litchfield 943,029, and Evans 949,888. No appeal was taken from the final rejection, but instead an affidavit, which claimed February 14, 1907, as the date of invention, was filed under Patent Office rule 75, and thereby priority was sought over all citations except Bryant. Thereupon the patent was issued. Defendant asserts that the patentee thereby admitted the pertinence of the citations and acquiesced in the rejection of his claims as originally filed. It is argued that plaintiff, not having established priority over such references upon the trial, is not entitled to the presumption of validity, and that the claims secured thereby are ab initio invalid. No attempt was made by plaintiff at the trial to establish the truth of the affidavit, lapse of time and destruction of records providing the alleged reason for this failure.

To place upon a patentee the burden of establishing the truth of an affidavit after a lapse of over 14 years would in our judgment be unreasonable. To do so would be to raise a presumption of fraud, and to lose sight of that principle which recognizes as probable the loss of proof by lapse of time upon which statutes of limitation commonly rest. The authorities cited by defendant deal with cases of estoppel in which applicant's claims had been either amended or canceled as the result of rejection and a narrower claim substituted as a condition of the grant. For over 14 years prior to this suit plaintiff had been in the possession of a patent. An extensive industry in a highly competitive field has been based upon it. Heretofore its validity has not been questioned. It may be conceded that patents which issue without due consideration of the prior art are entitled to the minimum presumption of validity (see American, etc., v. Sample C. C. A. 3 130 F. 145, 149), and that patents issued because of misrepresentation, fraud, or mistake are in the same category; but it does not follow that any of these conditions may rest upon presumption instead of proof.

We agree with the trial court that the most that can be contended is that the presumption of validity flowing from the issue of the patent is of little practical aid, and that whether invention and patentable novelty exist must be determined by this court from the prior art here cited. Neither the truth nor the sufficiency of the affidavit is properly within the issues for our consideration. We therefore disregard it, and consider the prior art unaffected by the affidavit.

This principle was recognized in the case of W. S. Godwin Co. v. International Steel Tie Co. (C. C. A.) 2 F.(2d) 198, wherein it was said: "The conclusion of the examiner to grant a particular claim, like the conclusion of an equity trial court to enter a particular decree, will be approved, if it was right, although the reason given is not sound. See Campbell Co. v. Pomeroy Co. (D. C.) 300 F. 872, 873, Learned Hand, District Judge."

The conclusion that there is no estoppel is also supported by our holding in Permutit Co. v. Wadham, 13 F.(2d) 454, 457, that a disclaimer to avoid a reference does not estop the patentee from later contending that the reference was not pertinent. This holding has been approved in Perkins Glue Co. v. Holland Furniture Co. et al. (C. C. A.) 18 F.(2d) 387, 394.

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