Wire Wheel Corp. of America v. Budd Wheel Co.

• Decision Date: 31 March 1923
• Docket Number: 1997.
• Citation: 288 F. 308
• Parties: WIRE WHEEL CORPORATION OF AMERICA v. BUDD WHEEL CO.
• Court: U.S. Court of Appeals — Fourth Circuit

288 F. 308

WIRE WHEEL CORPORATION OF AMERICA v. BUDD WHEEL CO.

No. 1997.

United States Court of Appeals, Fourth Circuit.

March 31, 1923

Frank P. Davis, of Chicago, Ill. (Clarence S. Walker, of Jamestown N.Y., and Leake & Buford, of Richmond, Va., on the brief) for appellant and cross-appellee.

Melville Church, of Washington, D.C., and Clarence B. Des Jardins, of Philadelphia, Pa. (Munford, Hunton, Williams & Anderson, of Richmond, Va., on the brief), for appellee and cross-appellant.

Before TAFT, Circuit Justice, and WOODS and ROSE, Circuit Judges.

ROSE Circuit Judge.

The parties to this cause are the Wire Wheel Corporation of America and the Budd Wheel Company, both corporations, the former of New York, the latter of Virginia. For brevity, they will be referred to as the Wire and the Budd. The former filed the original bill below. It alleged infringement by the latter of letters patent of the United States No. 1,030,428 issued June 25, 1912, to one Pugh, as well as of a number of other patents all owned by the Wire. Apparently no attempt was made to establish the allegations of the bill except as to the Pugh patent. The Budd in its answer set up the usual defenses of invalidity and noninfringement and by counterclaim charged that the Wire had knowingly contributed to the infringement of claim nine of reissue No. 14,461 dated April 23, 1918, of letters patent No. 1,092,494 originally issued April 7, 1914, to a certain Thomas J. Lindsay, to which reissue the Budd had acquired title. The Pugh patent related to rims for wire spoked wheels; the Lindsay, to driving axles. There was no connection between the infringement set up in the bill and that charged in the counterclaim. Many courts had held that nothing could properly be made the basis of a counterclaim under equity rule No. 30 (201 F. v, 118 C.C.A. v), unless it would have sustained a cross-bill under the old practice. Christensen v. Westinghouse Traction Brake Co. (D.C.) 235 F. 898, and cases there cited. The learned judge, however, followed those decisions, such as the Buffalo Specialty Co. v. Vancleef (D.C.) 217 F. 91, which took the view that the rule permitted the defendant to set up as a counterclaim any equitable demand which he had against the plaintiff, provided a federal court would have had jurisdiction of an independent suit in equity upon it.

Subsequent to the date of the decree below, but before the hearing at this bar, the Supreme Court had declared that the latter construction of the purpose and effect of the rule is correct. American Mills Co. v. American Surety Co., 43 Sup.Ct. 149, 67 L.Ed. . . . decided December 11, 1922. In the instant case, in the court below, the parties finished the trial of the issues concerning one patent so far at least as concerned the presentation of evidence before taking up the other; a course which, under similar circumstances, will usually prove the more convenient for all the parties concerned. In this opinion, also, the two patents in suit will be separately dealt with.

Pugh Patent, No. 1,030,428.

The Pugh patent, No. 1,030,428, is for a process of manufacturing wire spoke rims, or more specifically of preparing such rims to receive the spokes. A wire wheel for an automobile requires many spokes. In order that they shall furnish the requisite strength to resist the varied sorts of stresses to which they are subject, they must come to the rim from a number of different angles. It is nevertheless best that they should pass through it without bend or deflection. It follows that the holes punched in it should pierce it, not at one angle, but at many. In actual practice, it is not easy to make holes in a piece of metal of substantial thickness, unless the punching tool is driven into it at what is approximately a right angle to its surface. If the attempt is made under other conditions, there is a chance that the tool will be deflected from the desired direction, or will be subject to undue strain, or both. After the hole is made, the threaded end of the spoke must be drawn into it, and a nipple screwed over it. The head of this nipple may not project above the outer surface of the rim, even slightly, for, if it does, it will speedily destroy the tires. It follows that there must be provided some place below that surface in which it may be housed.

Sufficient room for the heads may be provided by cutting away the metal; but, if that is done, the rim may be weakened at precisely those points at which the strain upon it is most severe. It is desirable to keep water out of the tires, and Pugh wanted to make sure that the nipple heads should have so snug a fit that water could not get through between them and the rim. His method of attaining these various ends was to begin by making hemispherical indentations in the metal of the rims. Every line passing through the center of the sphere of which they formed a part would be at right angles to a line tangent to whatever point on the inner or concave surface of the sphere or indentation through which it was necessary to pierce a hole, and as a practical matter such line would be near enough to a right angle to that surface to insure accuracy of direction and exemption of the punching tool from unnecessary strain. If the indentations are made first and the hole punched through afterwards, there is danger of pushing the metal around the hole out of place or of making its edge broken and irregular. Pugh feared that his process, so far as it has as yet been stated, would not provide a snug seat for the nipple head and a substantially water-tight joint between it and the rim. He accordingly provided for a further countersinking in the portion of the hemispherical indentation lying around the hole. The patent in suit has but one claim. It is for--

'the process of making metal rims for wire spoked wheels in which the spokes are to be inclined at various angles consisting in forming substantially hemispherical concave indentations at the points of location of the spokes, perforating the same on lines radical to the concave surface of the indentations and providing recesses for the heads of the spoke nipples without substantially reducing the thickness of metal at the edges of the holes.' The question raised by this claim is as to whether it is for a two or a three step process. In other words, does it call for making (1) indentations, (2) holes, and (3) recesses, in the order stated, or is its reference to the last named intended merely as a description of one of the uses of the first. It is admitted that all the Budd does is to make the hemispherical indentations and then punch radical holes in them. In no other way are recesses for the nipple heads supplied. It follows that, if the claim is for a...