WF & John Barnes Co. v. International Harvester Co.

• Citation: 51 F. Supp. 254
• Decision Date: 17 June 1943
• Docket Number: Civil Action No. 2907.
• Court: U.S. District Court — Northern District of Illinois
• Parties: W. F. & JOHN BARNES CO. et al. v. INTERNATIONAL HARVESTER CO. et al.

51 F. Supp. 254

W. F. & JOHN BARNES CO. et al. v. INTERNATIONAL HARVESTER CO. et al.

Civil Action No. 2907.

District Court, N. D. Illinois, E. D.

June 17, 1943.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Spencer, Marzall, Johnston & Cook and Haight, Goldstein & Hobbs, all of Chicago, Ill., for plaintiffs.

C. Paul Parker, Ira J. Wilson, Alwin F. Pitzner, Richard Russell Wolfe, and Parker, Carlson, Pitzner & Hubbard, all of Chicago, Ill., for defendants.

BARNES, District Judge.

This consolidated cause came on for hearing on two amended complaints, both filed on February 16, 1942, one by W. F. & John Barnes Company and Odin Corporation against International Harvester Company and Ex-Cell-O Corporation, and the other by John S. Barnes Corporation and Odin Corporation against the same defendants, and on an amended answer thereto, filed June 19, 1942, and two amendments to said amended answer filed, respectively, on July 2, 1942, and August 29, 1942.

The amended complaints charge infringement of eleven United States patents on certain machine tools, hydraulic systems used in machine tools, and valves for directing the flow of fluid in such systems.

The patents involved are:

1. Svenson 1,924,422, for a "Valve Construction," issued August 29, 1933, on an application filed November 16, 1929, and containing 43 claims, of which 16 are in suit;

2. Svenson 1,986,862, for a "Fluid Controlling Means," issued January 8, 1935, on an application filed November 16, 1929, and containing 29 claims, of which 22 are in suit;

3. Svenson 2,036,162 for a "Machine Tool Unit," issued March 31, 1936, on an application filed September 13, 1930, and containing 28 claims, of which 11 are in suit;

4. Svenson 2,178,364 for a "Material Working Apparatus," issued October 31, 1939, on an application filed September 13, 1930, and containing 15 claims, of which 3 are in suit;

5. Svenson 2,174,850, for an "Hydraulic Control and Actuator Mechanism," issued October 3, 1939, on an application filed December 21, 1931, and containing 37 claims, of which 2 are in suit (two were dismissed out during the trial);

6. Barnes, Guirl & Johnson 2,098,220 for a "Material Working Apparatus," issued November 9, 1937, on an application filed August 12, 1932, and containing 48 claims, of which 7 are in suit;

7. Svenson 2,078,695 for an "Automobile Lathe and Fluid Circuit," issued April 27, 1937, on an application filed March 27, 1930, and containing 219 claims, of which 18 are in suit;

8. Svenson 2,215,257 for a "Material Working Apparatus and Control Therefor," issued September 17, 1940, on an application filed August 11, 1933, and containing 90 claims, of which 13 are in suit;

9. Barnes & Guirl 2,020,868 for a "Boring Machine and the Like," issued November 12, 1935, on an application filed January 18, 1930, and containing 35 claims, of which 21 are in suit;

10. Walker 1,493,301 for a "Power Control for Boring Machines," issued May 6, 1924, on an application filed July 30, 1921, and containing 43 claims, of which 6 are in suit; and

11. Barnes & Guirl 2,042,379 for a "Metalworking Apparatus," issued May 26, 1936, on an application filed February 14, 1931, and containing 44 claims, of which 10 are in suit.

The principal subject of study during the trial has been the hydraulic systems used in machine tools. A hydraulic system may be a volumetric system or a constant pressure system. A volumetric system is one in which all the fluid that is pumped by the pump goes to the actuator or actuators, and in such a system the speed of the actuator may be controlled by means of a variable delivery pump. Figure 1, hereinafter set forth, illustrates a simple volumetric system.

A constant pressure system is one in which a certain maximum pressure is not permitted to be exceeded. This result is accomplished by placing in the system between the pump and the actuator a working pressure relief valve set to let liquid pass out of the system at the predetermined maximum pressure. In such a system the speed of the actuator may be controlled by means of a restricted orifice and the working pressure relief valve. The restricted orifice may be in the flow line, as in Figure 2 hereinafter set forth.

The restricted orifice may be in the return line, as in Figure 3, hereinafter set forth:

A simple hydraulic system comprises a sump or tank, a pump, and (in the jargon of the machine tool trade) an actuator, which may be a cylinder and piston, together with the pipes or conduits connecting all of the foregoing. A slightly less simple system might include (in addition to the foregoing) a reversing valve to direct the fluid to one end or the other of the actuator. A slightly less simple system might include (in addition to the foregoing) a restricted orifice in the flow line either between the pump and the reversing valve, or between the reversing valve and the actuator, or in the return line either between the actuator and the reversing valve, or between the reversing valve and the sump, and a "working pressure relief valve." A less simple system might include (in addition to the foregoing) a selector valve for cutting the restricted orifice into or out of the system. A less simple system might include (in addition to the foregoing) a larger or smaller orifice (so as to provide two feed rates) and a selector valve to cut one or the other of them in and out of the system. The system may be made somewhat more complicated by using two pumps — a large volume, low pressure pump and a small volume, high pressure pump — the former for the purpose principally of supplying a large quantity of liquid at low pressure for moving the tool head in so-called "rapid forward traverse" or "rapid reverse traverse," and the latter for the purpose principally of supplying a small quantity of liquid at high pressure for moving the tool head in "feed forward" or "feed reverse." The relationship of the flows of the two pumps may vary in respect of volume, pressure, and particularly, source of supply and time of flow. Different systems may have different so-called "cycles" and a given system may be so devised that its "cycle" may be changed. A simple cycle might have the following sequence: Neutral, rapid forward traverse, feed forward, rapid reverse traverse, and neutral. A single actuator may advance and retract the tool head in a machine having a single tool head. A system may be greatly complicated by adding one or more additional actuators. Many actuators may each advance and retract a tool head in machines having many tool heads. An actuator may advance and retract the platen holding the work piece (jargon for the material to be worked). The relationship of the movements of the tool head to the movements of the platen holding the work piece may be varied in many particulars.

With so many elements which may be put together, it is obvious that the possible combinations or aggregations which may be assembled are innumerable.

Many of the questions of validity in the case at bar are questions as to whether or not the putting together in one system or machine of a few or many of the foregoing elements involved invention at the time the patentee put them together and claimed them in the patents in suit.

Of the Effect as Estoppels or Otherwise of Certain Interference Proceedings in the Patent Office.

On the facts next hereinafter set forth, plaintiffs contend that the defendant Ex-Cell-O Corporation suffers the constraints and embarrassments of (a) inconsistency, (b) admissions, and (c) estoppel in its arguments as to validity and infringement of Svenson 1,924,422 and 1,986,862.

Svenson 1,924,422 issued August 22, 1933, on an application filed November 16, 1929. Svenson 1,986,862, issued January 8, 1935, on an application filed November 16, 1929. Alden application Ser. No. 690,525, was filed September 22, 1933, as a division of Alden 2,000,553, filed March 17, 1932, and issued May 7, 1935. The filing date of each of the Svenson patents is, therefore, prior to the effective filing date of Alden, namely, March 17, 1932. The Svenson patents were assigned to John S. Barnes Corporation, one of the parties, and were owned by that corporation during all of the interference and until recently, when they were assigned to Odin Corporation, another of the plaintiffs. The Alden application was assigned to Ex-Cell-O Corporation, one of the defendants. The Alden application in interference makes substantially the same disclosure as does Alden 2,000,553, the parent. Generally speaking, the unissued application makes claims to hydraulic features, while the issued patent claims mechanical features. Alden 2,000,553 is conceded by the defendants to be a correct representation of their so-called First Senior System. So far as infringement of Svenson 1,986,862 is concerned, there is no substantial difference between the First Senior System and other structures accused under that patent.

An interference, No. 71,653, was declared by the Patent Office between Svenson 1,924,422, on the one hand, and the Alden application 690,525, on the other. The record in that interference has been made, briefed, and was argued on May 26, 1942, but no decision by the Primary Examiner has been rendered. Svenson 1,924,422 was cited against the Alden application on December 12, 1933, four months after the Svenson patent issued. On June 18, 1934, Alden filed an affidavit under Rule 75 of the Patent Office to swear back of Svenson's filing date. In its action of May 27, 1935, the Patent Office again cited Svenson 1,924,422, stating that reference could not be overcome by affidavit under Rule 75 because certain claims of Svenson 1,924,422 were readable upon the disclosure of the Alden application. Alden was given until June 27, 1935, to make the claims of Svenson if he desired to contest the issue of priority. On June 22, 1935, and again on July 8, 1935, Alden filed request for extension of time, and, after three months'...