233 F.2d 915 (6th Cir. 1956), 12420, Coats Loaders & Stackers, Inc. v. Henderson
|Docket Nº:||12420, 12421.|
|Citation:||233 F.2d 915, 109 U.S.P.Q. 332|
|Party Name:||COATS LOADERS & STACKERS, Inc., whose name has been changed to Coats Company (a co-partnership consisting of G. E. Coats, Wonnie Coats, Bonnie Semprini, and Evelyn Nordstrom), Appellant, v. Robert D. HENDERSON and Big Four Industries, Inc., Appellees. Naomi F. TEEGARDEN, Verne Stephenson and Coats Company (a co-partnership consisting of G. E. Coats|
|Case Date:||May 17, 1956|
|Court:||United States Courts of Appeals, Court of Appeals for the Sixth Circuit|
Charles F. Meroni, Chicago, Ill., Rudolph L. Lowell, Des Moines, Iowa (George P. Comfort, Des Moines, Iowa, John M. McCaslin, Cincinnati, Ohio, on the brief), for appellants.
Truman A. Herron, J. Warren Kinney Jr., Cincinnati, Ohio (Edward B. Evans, Cincinnati, Ohio, on the brief), for appellees.
Before MARTIN, MILLER and STEWART, Circuit Judges.
STEWART, Circuit Judge.
These are joint appeals from judgments of the district court in two related patent cases.
The first was an action for a declaratory judgment filed by Coats against Henderson and Henderson's licensee Big Four to establish the right of Coats to make, use, and sell tire dismounting devices which had been alleged to infringe Henderson patent 2, 609, 039. Henderson and Big Four filed a counterclaim alleging infringement of that patent by Coats. The district court, filing findings of fact and conclusions of law but no opinion, concluded that the Henderson patent was valid and infringed, and accordingly entered judgment for Henderson and Big Four.
The second action was brought against Big Four by Coats and others as the owners of Teegarden patent 2, 413, 010 for infringement of that patent by Big Four in making, using, and selling the Henderson devices. In that case the district court, also without opinion, concluded that there was no infringement, and accordingly also entered judgment for Big Four. 1
No separate trial of the second case was had in the district court. After the conclusion of the hearing in the first action the two cases were consolidated, and it was agreed by the parties that the evidence in the first action was to apply with equal force and effect in the second. The appeals were heard together in this court.
The underlying facts can be briefly stated, and the relevant history of the tire changing art briefly told.
For the last twenty years or so the manufacturers of all passenger automobiles and of many trucks have standardized on so-called 'drop center' wheel rims. On a drop center rim the circumferential surface (that is, the surface upon which the tire is placed) is terraced progressively downward and inward from each side to a circumferential well at the center. (Thus a cross-section of this surface of the rim looks like a valley with both slopes terraced.) A modification
of the drop center rim which some manufacturers have used for the last ten years or so is the so-called 'safety rim, ' which is a conventional drop center rim having a peripheral ridge on the rim flange to hold the tire on the rim in the event of a blow-out.
The reinforced edges of the tire which seat on the rim are called the 'beads' of the tire. It is impossible to stretch the beads because they are reinforced with steel wire. To remove the tire from the rim it is therefore necessary to 'break the bead' on one side by pushing or prying it inwardly toward and finally into the drop center. This permits the bead on the other side to be likewise dislodged from the rim.
Prior to 1947 the means most commonly used by operators of commercial garages and others to remove a tire from a rim were relatively simple hand tools, such as a broad-faced chisel and a sledge hammer. In the hands of an experienced person this method was adequate, but the job was not easy, and there existed a risk of damage to the sidewalls of the tire. Removal of a tire from a safety rim was particularly difficult. There were also in use some mechanical devices and various semi-mechanical hand tools, many of them covered by various patents, but none acquired wide commercial acceptance for any length of time.
On December 10, 1946, Henderson filed an application for a patent on an 'Axially Compressing Type Tire Dismounting Apparatus.' This application was substantially amended on January 28, 1949, and patent 2, 609, 039 finally issued to Henderson on September 2, 1952. Commercial embodiments of the structure of the Henderson patent were first introduced on the market in early 1947 by Henderson's licensee, Big Four. These devices met immediate and widespread commercial acceptance.
On the Henderson device, the wheel is centered and locked horizontally on a round table standing a few feet off the floor on a single pedestal. A rotatable bracket is mounted on the pedestal below the surface of the table. To this bracket are attached the 'upper bead breaker' and 'lower bead breaker.' Each bead breaker consists of a curved pry bar hinged to a lever so that when the lever is raised the tips of the pry bars rest against and follow the contour of the rim inwardly from each side towards the drop center. The tire is dislodged from the rim by the action of these bead breakers, applied successively at various points around the circumference of the tire. The lower bead breaker can be operated either independently of or simultaneously with the upper bead breaker, since the latter is positioned manually, while the lower bead breaker is both positioned and operated automatically by raising the lever.
In 1950, while Henderson's application was still pending in the Patent Office, Coats began manufacturing and selling mechanical tire removers similar to those being manufactured by Big Four, and it was manufacturing and selling these devices at the time Henderson's patent issued in 1952. Thereafter Coats manufactured and sold three successive modifications of its device. It was these Coats devices, both the original model and the three successive models, which the district court in the first case found infringed the Henderson patent.
In 1943 Teegarden had applied for a patent on a 'Tire Handling Stand, ' which on December 24, 1946, issued as patent 2, 413, 010. On the rather complex Teegarden device, the wheel is mounted vertically on a center post and held rigid by rim clamps. An inner bead engaging bar and an outer bead engaging bar are then hydraulically operated so as to push the tire beads inwardly toward the drop center of the rim. The bead engaging bar cannot be rotated around the wheel as in the Henderson device, but, as in Henderson, the two bead engaging elements can be operated either simultaneously or sequentially. Only one structure was ever built under this patent, a machine owned and operated by Mr. Teegarden himself in his commercial garage at Goshen, Indiana. Efforts to commercialize
the device were unsuccessful, and its operation was abandoned by Mr. Teegarden during his lifetime.
It is not claimed that the Coats tire removers were manufactured under the Teegarden patent, nor indeed that Coats ever manufactured or sold devices similar to the Teegarden combination. Coats, however, did acquire an exclusive license under the Teegarden patent after the Henderson case had been initiated, and it was this patent which the district court in the second case held was not infringed by Big Four in manufacturing the Henderson tire removers.
At the time of the district court hearing, Big Four and Coats each had an approximately equal share of the United States market in mechanical tire removers. Together they accounted for ninety per cent of all such devices sold. The market has become a substantial one since 1947. The dollar volume of the tire removers sold by Big Four alone had exceeded $7, 000, 000 at the time of the district court hearing.
As stated, the devices of each of the patents in suit provide means for dislodging both beads of the tire from the rim. At issue here, however, are only those claims of each patent which relate to the operation of the 'inner bead breaker' or 'lower bead breaker.'
While the several questions presented on these appeals are to some extent interrelated, it will promote intelligible discussion to isolate them for consideration.
The Issues as to the Validity of Henderson Patent 2, 609, 039.
The Henderson claims in issue are claims 1, 2, 3, 6 and 7. Claims 2 and 7 are typical and are set out in the margin. 2 The basic inventive concept of the
Henderson claims in issue is, according to the appellees, 'to break the bead on any type or size of vehicle tire by inserting a bead breaking shoe into the juncture between the tire and the rim and beneath the tire bead, and then advancing this shoe under direct guidance of the rim until the bead itself has been forced completely into the drop center of the rim. A secondary concept is to accomplish this operation by a circumferentially rotatable shoe adapted to be inserted successively at various points around the bead and rim juncture.'
Coats argues that the district court was in error in not holding these claims invalid on one or more of the following separate grounds: (a) that they were fully anticipated by the prior art; (b) that they lack invention; (c) that they are indefinite, ambiguous, and functional; and (d) that there was a public use of the device covered by the claims more than a year before the first disclosure thereof to the Patent Office. These contentions will be discussed in the order stated.
Coats bases its claim of anticipation primarily upon three prior patents, in addition to Teegarden: Toles, 2, 449, 960, Butterfield, 2, 534...
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