Trane Co. v. Nash Engineering Co.

• Decision Date: 26 March 1928
• Docket Number: No. 2181.,2181.
• Citation: 25 F.2d 267
• Parties: TRANE CO. v. NASH ENGINEERING CO.
• Court: U.S. Court of Appeals — First Circuit

25 F.2d 267 (1928)

TRANE CO. v. NASH ENGINEERING CO.

No. 2181.

Circuit Court of Appeals, First Circuit.

March 26, 1928.

Fred L. Chappell, of Kalamazoo, Mich., and Arthur T. Holmes, of Lacrosse, Wis. (Samuel D. Elmore, of Boston, Mass., on the brief), for appellant.

Louis W. Southgate, of Worcester, Mass. (Charles T. Hawley, of Worcester, Mass., on the brief), for appellee.

Before BINGHAM, JOHNSON, and ANDERSON, Circuit Judges.

ANDERSON, Circuit Judge.

In this patent infringement suit, the District Court (Morton, J.) held claims 2 and 11 of the Jennings reissue patent (No. 15,637, granted June 26, 1923) and claim 13 of the second Nash patent (No. 1,091,529, granted March 31, 1914) valid and infringed. The main issue is the validity of claim 2 of the Jennings patent, covering a combination of old elements for a wet vacuum pumping apparatus and reading:

"The combination, with the separating chamber of a vacuum steam-heating system, of a rotary gas pump employing water for its pumping action and having a rotor provided with displacement chambers, said pump being connected and operating to exhaust the gas from the system by the suction and displacement action of the water in said chambers, and a water pump connected and operating to withdraw water of condensation from the separating chamber."

This patent was the basis of the suit by the present plaintiff against Cashin and others in 3 F.(2d) 686 (D. C.), and 13 F.(2d) 718 (C. C. A.), disposed of in both courts on the issue of infringement only. But both courts assumed, without expressly finding, the patent valid. The history of the art and the apparatus involved were described in both opinions in considerable detail. The bulky Cashin record is by stipulation a part of the present record; it contains an elaborate attack on the validity of claim 2 of the Jennings patent.

The present case was tried at length in open court, with a full presentation of the operative apparatus of both plaintiff and defendant and all sorts of illustrative drawings and models of the devices used. After full trial, the case was reopened to permit the defendant to put in evidence an alleged German patent of May 20, 1890; further evidence was received, and the case fully reargued, orally and on briefs. Judge Morton's final opinion of June 7, 1927, is in 20 F.(2d) 439 (D. C.). The course of the trial gives more than usual weight to this obviously careful and considered opinion of the learned and experienced judge, whose findings appellant now asks us to hold unwarranted. His frequent questions to experts and counsel show extraordinary acumen in grasping the many rather puzzling functional aspects of the devices before him — devices evoking from expert engineers views widely diverse. This is the sort of case in which the trial judge is in a substantially better position to reach sound and confident conclusions than is an appellate court. Judge Morton had, for days before him, the apparatus of both sides, and all the illustrative models and drawings, with trained experts — including counsel of caliber and large experience in patents — to whom he could and did present his doubts and difficulties for immediate solution. We have no equal resource, in the printed record and mass of models and drawings. And the issues here are of fact, to be determined on the evidence. Eibel Co. v. Paper Co., 261 U. S. 45, 52, 43 S. Ct. 322, 67 L. Ed. 523; Kimball v. Noesting (C. C. A.) 262, F. 148.

The original Jennings patent (No. 1,447,854, issued March 6, 1923, on an application filed June 15, 1917) had, as pointed out in the Cashin Case (C. C. A.) 13 F.(2d) 718, a long and rather stormy passage through the Patent Office. The Primary Examiner was critical, and cited against the applicant some of the prior art patents now relied upon. After appeal to the Board of Examiners in Chief, the conclusion was in favor of Jennings' chief claims. Under these circumstances, the presumption of validity (Diamond Rubber Co. v. Con., etc., Tire Co., 220 U. S. 428, 434, 31 S. Ct. 444, 55 L. Ed. 527) is strengthened. Walker on Patents (5th Ed.) § 491; Fairbanks, Morse & Co. v. Stickney (C. C. A.) 123 F. 79, 82. Our approach is thus to a problem which has already been carefully considered by two tribunals, having the same duty as has this court: To protect the public against ill-grounded, private monopoly, and to secure to the inventor of a new and useful device the reward contemplated by our patent law.

The history of the art of vacuum steam heating and Jennings' remedy for the difficulties encountered, as stated in the three previous published opinions cited, may be regarded as here incorporated by reference. As this will be the fourth published opinion, dealing (in large part) with the same apparatus and devices, it is unnecessary here to repeat the descriptions and explanations otherwise essential. This opinion should be read with the previous opinions, cited supra.

It is certainly significant that, with Williames' invention at least as early as 1882 (Williames v. Barnard C. C. A. 41 F. 359; Warren, Webster & Co. v. Dunham Co. C. C. A. 181 F. 836), of vacuum steam heating as a great improvement over circulation by pressure from the boiler, 35 years elapsed before the problem was really solved. The old pressure system, with its disagreeable "water hammering" and many other defects described in the record, had, all these years, remained in almost general use. Engineers merely groped for a better result. Compare The Barbed Wire Patent, 143 U. S. 275, 283, 12 S. Ct. 450, 36 L. Ed. 154; Webster Loom Co. v. Higgins, 105 U. S. 580, 591, 26 L. Ed. 1177; Con. Valve Co. v. Crosby Valve Co., 113 U. S. 157, 179, 5 S. Ct. 513, 28 L. Ed. 939.

Even more significant is the immediate and substantial success achieved by the Jennings combination, due, as the record plainly shows, to its intrinsic merit, and not to "advertising and other energetic business methods." Hubbell, Inc. v. Gen. Electric Co. (C. C. A.) 267 F. 564, 569. When Jennings, about 1914 or 1915, began experimenting with a combination of the Nash pump in a vacuum steam-heating system, the Nash Company was a small, struggling concern, with but meager equipment of plant, staff, and capital. It was in no position to push to success, in a highly competitive field, anything but a superior product. But before the patent (applied for in June, 1917) was granted in March, 1923, over 5,000 of these combinations had been installed in the United States alone. This fact, as pointed out in our opinion in the Cashin Case, presumably helped to convince the Patent Office that Jennings had made a real invention. By November, 1926, over 17,000 of these systems had been installed. This is strong evidence, from market overt, of the value of this combination; it met a long-felt want. As pointed out by Judge Morton (20 F.2d 439), the defendant and its predecessors had long been in the heating business and none of their engineers had ever solved the problem. David v. Harris (C. C. A.) 206 F. 902; Kurtz v. Belle Co. (C. C. A.) 280 F. 277. Jennings substantially changed the art of vacuum steam heating.

This case is, in that aspect (and in fact in all other aspects), much clearer than the Eibel Case, 261 U. S. 45, 43 S. Ct. 322, 67 L. Ed. 523. In that case the Supreme Court held it invention, overruling this court, to increase the pitch of the old Fourdrinier paper machine, so as to speed up the operation. On paper, this was nothing but an application of the law of gravity to make fluid stock move more rapidly. But the court pointed out (Taft, C. J.) that speed had long been the quest of paper manufacturers, and that Eibel's scheme for getting it had been widely adopted. The conclusion in favor of Eibel rests mainly (if not entirely) on the success of his simple method of adjusting the old machine. He provided no new combination, as Jennings did. The Eibel Case certainly admonishes this court to give great weight to the practical results from a claimed invention; to look beyond the paper expression to the state of the art, before and after an alleged invention which is tested in actual practice. Dubilier Condenser Corp. v. N. Y. Coil Co. (C. C. A.) 20 F.(2d) 723, 725; Minerals Separation v. Hyde, 242 U. S. 261, 270, 37 S. Ct. 82, 61 L. Ed. 286.

An invention is a real thing; a patent is the description of it in words and/or drawings. McClain v. Ortmayer, 141 U. S. 419, 12 S. Ct. 76, 35 L. Ed. 800. The description must be reasonably adequate, in order to warn the public and competitors of the nature and extent of the monopoly claimed. But the essence of the matter is a new and useful reality, frequently best tested and demonstrated by actual experience. Smith v. Goodyear Co., 93 U. S. 486, 495, 23 L. Ed. 952; Marconi Co. v. DeForest Co. (C. C. A.) 243 F. 560, 564; Kurtz v. Belle Co. (C. C. A.)...