American Chain Co. v. Franklin New York Co.

• Citation: 34 F.2d 551
• Decision Date: 06 August 1929
• Docket Number: 3636.,3616,No. 3612,3612
• Parties: AMERICAN CHAIN CO., Inc., v. FRANKLIN NEW YORK CO., Inc., et al. SAME v. GRABIE BERGER CO., Inc. SAME v. STEWART-WARNER SPEEDOMETER CORPORATION et al.
• Court: United States District Courts. 2nd Circuit. United States District Court (Eastern District of New York)

34 F.2d 551 (1929)

AMERICAN CHAIN CO., Inc., v. FRANKLIN NEW YORK CO., Inc., et al.

SAME v. GRABIE BERGER CO., Inc.

SAME v. STEWART-WARNER SPEEDOMETER CORPORATION et al.

Nos. 3612, 3616, 3636.

District Court, E. D. New York.

August 6, 1929.

Frederick S. Duncan, of New York City, for plaintiff.

Darby & Darby, of New York City (Samuel E. Darby, Jr., of New York City, of counsel), for defendants.

CAMPBELL, District Judge.

The three above-entitled suits in equity by stipulation were tried together.

They are brought because of alleged infringement of patent No. 1,191,306, issued to Thomas A. Hoover, for bumper for vehicles, dated July 18, 1916, on application filed January 24, 1912; patent No. 1,221,800, issued to Thomas A. Hoover, for automobile bumper, dated April 3, 1917, on a divisional application filed July 12, 1916, of an original application filed January 24, 1912; and patent No. 1,198,246, issued to George Albert Lyon, assignor to Lyon Non-Skid Company, for buffer for motor vehicles, dated September 12, 1916, on a divisional application filed June 30, 1916, on an original application filed April 21, 1913 — all of which relate to elongated loop-end spring bar bumpers for automobiles.

The formal defendants are either automobile companies or dealers or jobbers in automobile supplies, located in Brooklyn, and handling Stewart-Warner bumpers manufactured by the Stewart-Warner Speedometer Corporation, a Virginia corporation, with a factory in Chicago, and sold by the Stewart-Warner Speedometer Corporation, a New York corporation.

The defense of these suits is conducted by Stewart-Warner Speedometer Corporation of New York.

The alleged infringing structures are the so-called Stewart-Warner bumpers.

The defendants have interposed the defenses of invalidity and noninfringement.

The Hoover patent, No. 1,191,306, shows two forms of the Hoover invention, and both of these involve the elongated loop-end spring bar feature.

The general features of both forms are the same, and the result produced in the way of shock absorption is the same.

In each the resilient but resistant action of the spring loops and other spring portions of the bumper gradually bring the car to a stop.

This suit is based on claims 1, 3, and 6 of Hoover patent, No. 1,191,306, which read as follows:

"1. In a fender, the combination with a vehicle frame, of a continuous spring arranged transversely in front of the frame, the ends of the spring being bent upon itself to the rear and inwardly, the bends in said spring forming the ends of the fender, and means secured to the frame and to the said ends of the spring at a distance from the said bends and in rear of the main portion of the spring whereby the spring is supported."

"3. A bumper for vehicles comprising a continuous spring buffer bar for extension transversely of the vehicle, said bar having integral spring-supporting members, the said supporting members constituting a continuation of the body member and being extended laterally therefrom, and then rearwardly."

"6. A bumper for vehicles comprising a spring buffer bar for extension transversely of the vehicle, said bar being of continuous spring material throughout the entire length thereof, the ends of the bar being bent first upon itself to the rear and then inwardly to form integral spring supporting members, the bends in said bar forming the ends of the bumper."

And claims 2, 3, 6, and 7 of the Hoover patent, No. 1,221,800, which read as follows:

"2. A spring bumper comprising a front and rear spring bar, said bars being interspaced and positioned parallel with relation to each other, and means securing the outer ends of the bars together.

"3. A bumper comprising a pair of spring bars disposed parallel with each other and having their outer ends united, said bars being bent near their outer ends, and a block interposed between the bars."

"6. A spring bumper embodying spaced resilient front and rear bars, set on edge and joined at their ends, a spacing block interposed between the bars midway between their ends, and yieldable brackets removably secured to one bar at spaced points one between each end of the bar and the block, said brackets comprising spring bars set on edge and having their outer ends outturned to lie flat against the bar.

"7. A spring bumper embodying a pair of continuous parallel spaced spring bars connected at their ends, and means formed independent of the bars for attaching the bumper to a vehicle."

And claims 9, 14, and 18 of the Lyon patent, No. 1,198,246, which read as follows:

"9. The automobile buffer comprising horizontally yielding and substantially vertically rigid elements including transversely extending impact receiving members and open-ended lateral loops, connected attaching members to be attached to the vehicle, connecting means connecting said impact receiving members and holding them against substantial relative vertical movement and means providing for the lateral adjustment of said attaching members to adapt them for attachment to parts of vehicles located at different distances apart."

"14. The automobile buffer comprising a vertically rigid spring having a transversely extending member and a rearwardly extending attaching member adapted to be attached to a side bar of the vehicle frame, said transversely extending member being arranged adjacent another transversely extending spring member of the buffer, and means for securing together said adjacent transversely extending members."

"18. The automobile buffer comprising open-ended loops extending outwardly at the transverse ends of the buffer and an impact receiving portion forming a continuation of said loops and spacing them apart, said loops and impact receiving portion being vertically rigid but horizontally yieldable and rearwardly extending attaching means to mount said buffer on the vehicle frame and relatively adjustable to fit the supporting members of the vehicle which are at different distances apart."

The validity and scope of the Hoover patent, No. 1,191,306, has been passed upon by the courts in several cases, particularly in American Chain Co., Inc., v. Weaver, in the United States District Court, Northern District of California 1 F.(2d) 590, and in the same case by the Circuit Court of Appeals 9th Circuit 9 F.(2d) 369.

In these cases the said patent was held to be of a pioneer nature and to have created a revolutionary advance in the bumper art.

The Hoover patent, No. 1,221,800, has been adjudicated only by this court in American Chain Co., Inc., v. Bethlehem Bumper Corp., 25 F.(2d) 759, which it must be admitted was not contested with the same vigor as the instant suit; but I do not believe that it can be truly said that it was not actually contested.

The Lyon patent, No. 1,198,246, has been before the Circuit Court of Appeals of this circuit in Lyon Non-Skid Co. v. Hartford, 250 F. 1021, Lyon v. Boh, 10 F.(2d) 30, and Hilditch and American Chain Co. v. Bethlehem Bumper Co., 25 F.(2d) 355, in which the Circuit Court of Appeals affirmed without opinion the decision of Judge Inch in the District Court 25 F.(2d) 353.

Both the Hoover patent, No. 1,191,306, and the Lyon patent, No. 1,198,246, have been before this court in a number of cases, either on motions for preliminary injunctions or at final hearing.

No prior art has been offered in the instant suits, in an attack upon the validity and scope of the patents in suit, that is not identical or substantially identical with the prior arts proofs shown before the Circuit Court of Appeals of the Ninth Circuit, or of the Second Circuit, or both of them; but still the defendants are entitled to a fair consideration of all the evidence offered, notwithstanding the fact that the patents have been previously adjudicated.

I will therefore, so far as I consider of moment, refer to the patents and publications offered in evidence as prior art.

The Abresch-Cramer truck fender, made and used in Milwaukee in 1910, was much more elaborately presented as a defense in American Chain Co. v. Weaver (D. C.) 1 F.(2d) 590, and (C. C. A.) 9 F.(2d) 369, but was held to have no bearing upon the scope or validity of the Hoover patent, No. 1,191,306, and was also urged in Lyon v. Boh (C. C. A.) 10 F.(2d) 30, in spite of which fact the Lyon patent was broadly sustained.

The Jones patent, No. 20,070, buffer for railroad cars, presents no new features over many other railway car buffer patents offered in other suits, among them being French patent to Doulait, in Hilditch-Bethlehem suit.

The Hawkins patent, No. 72,035, for improvement in elliptic carriage-springs, taught nothing in the bumper art, and presents nothing which has not been considered in prior cases and requires no further consideration.

The Wilkerson patent, No. 205,162, for improvement in sleds, discloses bobsled fenders, as does also the German patent to Seyerlen, and they were before the Circuit Courts of Appeals of the Ninth and Second Circuits, in American-Weaver and the Hilditch-Bethlehem Cases, and before this court in the American-Bethlehem suit, and certainly did not suggest the elongated loop-end spring bar or open-ended loop spring for bumpers of the patents in suit.

The Simms patent, No. 814,171, for buffer for use on motor vehicles, has been offered in evidence in other cases, particularly Lyon v. Boh, and American Chain Co. v. Weaver; but it certainly taught nothing to the patentees of either of the patents in suit and requires no extended comment.

The Welton patent, No. 955,624, for fender for automobile, has been cited before the courts as prior art in the Circuit Courts of Appeal in the Ninth and Second Circuits, in American Chain Co. v. Weaver, Lyon v. Boh, and Hilditch v. Bethlehem Bumper Co.; but it does not teach the principle underlying the inventions of the elongated loop and spring bar or open-ended loop.

The Newcomb patent, No. 969,143, for car buffer fender, and other trolley car...