Stewart-Warner Corporation v. Jiffy Lubricator Co.

• Decision Date: 14 March 1936
• Docket Number: No. 10332.,10332.
• Citation: 81 F.2d 786
• Parties: STEWART-WARNER CORPORATION v. JIFFY LUBRICATOR CO.
• Court: U.S. Court of Appeals — Eighth Circuit

81 F.2d 786 (1936)

STEWART-WARNER CORPORATION v. JIFFY LUBRICATOR CO.

No. 10332.

Circuit Court of Appeals, Eighth Circuit.

February 11, 1936.

Rehearing Denied March 14, 1936.

Lynn A. Williams, of Chicago, Ill. (Nilles, Oehlert & Nilles, of Fargo, N. D., and Williams, Bradbury, McCaleb & Hinkle, of Chicago, Ill., on the brief), for appellant.

William C. Green, of St. Paul, Minn. (Edgerton, Green & Edgerton, of St. Paul, Minn., on the brief), for appellee.

Before GARDNER, WOODROUGH, and VAN VALKENBURGH, Circuit Judges.

WOODROUGH, Circuit Judge.

In a suit limited on the trial to alleged infringement of claim 1 of patent No. 1,593,791, filed February 19, 1923, and issued July 27, 1926, to Clyde G. Butler, the trial court held that the claim 1 of the patent was valid if limited to the precise form shown in the patent specifications and drawing (Fig. 2) or their clear mechanical equivalents, and not otherwise, and that unless it was so limited it would be invalid for lack of novelty and invention over the prior art. It held further that the patent as so limited was not infringed by defendant and the suit was dismissed. The plaintiff in the suit has appealed.

The Butler patent, belonging to the plaintiff, relates to improvements in lubricating apparatus for force feed lubrication of bearings on automobiles and other machinery, and both the plaintiff and the defendant make apparatus for that purpose. It appears that three appliances are necessary in a force feed lubricating apparatus — a grease gun from which grease may be forced, a hollow fitting or nipple attached to the bearing, and a coupler to make a connection between the grease gun and the nipple during the operation of lubrication — and prior to the date of the Butler invention a number of such lubricating appliances combining grease guns connected by means of couplers with hollow nipples attached to the bearings to be lubricated were in general use. Some of them also included apertured gaskets movable within a cylinder which were acted upon in the operation of the coupler by the pressure of the lubricant to seal the joint between the coupler and the nipple, to prevent the leakage of grease. But none of the prior art patents relating to the art of lubrication disclosed an automatic mechanism actuated by the grease pressure for gripping and holding the coupler to the nipple while the contacting ends were automatically kept sealed and the grease was being injected from the compressor into the nipple.

That such was the state of the art was shown by references, including the following patents, among others, which have been fully considered: British patent No. 21,893, issued to Alley and Woodvine, October 4, 1906, showing in combination a lubricating device; No. 927,337, issued to Dupre, July 6, 1909, being for a combination of a lubricant compressor, coupler, and nipple; No. 15,667, issued to Winkley, June 10, 1919, being for a combination of lubricant compressor, nipple, and coupler, said coupler having yieldingly mounted means for forming a tight joint between the nipple and coupler; No. 1,307,734, issued to Gullborg, June 24, 1919, showing the combination of a lubricant compressor, nipple, and coupler, the coupler comprising among other elements a perforated sealing disk slidably mounted in the bore of said coupler for sealing the connection between coupler and nipple, said sealing disk being held against the nipple by the pressure of lubricant; No. 1,465,254, issued August 21, 1923, to Davis upon application filed March 17, 1920, for a combination of lubricant compressor, nipple, and coupler, said coupler comprising among other elements a cup leather or gasket, slidably mounted in said coupler for the purpose of sealing the connection between said coupler and nipple; No. 1,383,306 issued to Jacques July 5, 1921, for the combination of a lubricant coupler and nipple, said coupler having radially movable locking elements co-acting with a recess in said nipple, the locking action of said elements being controlled by a manually operated locking sleeve, said coupler also comprising slidable sealing means; No. 1,435,103, issued November 7, 1922, to Bruce for a lubricating system comprising among other elements a coupler containing a packing member and including a locking member mounted on said cylinder to engage with a slot in the wall of a nipple for holding said coupler and nipple together during the process of lubrication; No. 1,711,870, issued May 7, 1929, on application filed May 29, 1922, to Zerk for lubricating apparatus comprising a coupler or nozzle and nipple, said coupler including in its elements a lubricant seal and quick releaseable wedging clamp means for holding said coupler and nipple firmly pressed together during lubrication, said clamping elements being locked upon said nipple by manually operated means.

In his application for patent Butler declared his object, among other things, to provide in combination a self-sealing bearing lubricant valve and also an automatic means of connection between the bearing valve and lubricant pressure means or grease gun, so-called.

The claim of the patent involved is as follows: "1. The combination with a nipple for receiving lubricant, of a lubricant compressor having a coupling for connecting said compressor and nipple the coupling comprising a cylinder, a piston movable within the cylinder, and having an aperture for the discharge of lubricant therethrough and an apertured seat for engagement with the end of the nipple, and means carried by the cylinder for compressively engaging about the nipple for locking said parts together against longitudinal displacement and actuated by said piston whereby the pressure of the lubricant on said piston will move the piston to forcibly compress said means, while the lubricant is passing through said connecting parts."

It will be observed that claim 1 does not describe the grease gun element of the apparatus nor the bearing nipple, but it does set out the elements of the coupler, and it is in those elements that novelty and invention are claimed to reside.

Although several drawings were submitted with the patent application, the drawing upon which the above claim reads is Fig. 2, which appears as follows:

The patent specifications which relate particularly to the means referred to in claim 1 as "means carried by the cylinder for compressively engaging about the nipple for locking said parts together against longitudinal displacement and actuated by said piston" and their mode of operation contain first a description of the nipple of the apparatus as follows: "This member 35 is composed generally of two parts, a conical head proper, 38, and a restricted portion or throat 39," and proceed:

"A plurality of segments 40 slightly spaced from one another are adapted to slip over the head 38 and embrace the slot 39. The shoulder 41 on 38 prevents the retraction of these segments 40 due to the fact that they are held in position on the throat by the spring fingers 42, a plurality of which are mounted upon a base 43 which forms a part of a piston head that consists of 43, a metalic washer 44 embracing between it and 43 a leather sealing washer 45. This union of parts 45, 44 and 43 is effected by 43 having a tubular member 46 projecting through 45 and 44 and bent over at 47 upon 44. A passage-way 48 is left through 46 for the passage of lubricant. The lubricant comes through the tubular member 25, through the passage-way 49 into the expanded area 50 within 31. The area 50 will fill up with lubricant because the delivery of lubricant to 50 will be at a greater rate than the lubricant can pass through 48. This will result in 44, 45 and 43, together with the fingers 42, being forced forwardly, maintaining the segments 40 in close engagement with 39. The washer 51 provides a ready means of adjusting the junction of 38 with the remainder of the mechanism and effectively seals the connection so that the lubricant will pass through 48 into 52 after having pushed back the rivet or stud 36, or the clear mechanical equivalent of said structure."

"Returning to Fig. 2 and its operation, it will be understood that the coupling on the end of 25 is thus pushed over 35, the segments 40 engage with the throat and are maintained in engagement by the pressure being greater on the piston within the coupling than any relief of the pressure that will be possible through the passage of the lubricant through 48.

"As soon as the pressure is relieved it is then possible to withdraw the coupling from the member 35 as the pressure on the fingers 42 will be relieved and the spaced segments 40 will slip over the shoulders 41 due to the pressure of 33 against the ends of the several segments 40."

The plaintiff has not made or sold any coupler constructed according to the above drawing and specifications of its Butler patent, nor had it made or sold any couplers in which the pressure of the lubricant actuated the compression or gripping of the parts upon the bearing nipple until long after it had received examples of the defendant's so-called Jiffy lubricator.

It appears that the defendant Jiffy Lubricator Company was organized in 1930 and that there were at that time millions of automobiles equipped with bearing nipples of plaintiff's manufacture of the so-called Alemite-Gullborg type. The connecting parts of those nipples were straight tubes about five-eighths of an inch long with a pin extended through and projecting from the opposite sides. They were made by the plaintiff for use with its Gullborg coupler. That coupler was provided with so-called bayonet slots and in operation was pushed over the end of the nipple and manually turned so that the angular bayonet slots of the coupler engaged over the projecting ends of the pin of the nipple and a connection was formed which prevented separation of the coupler from the nipple when grease pressure was applied.

Shortly after its organization...