Payne Furnace & Supply Co. v. Williams-Wallace Co.

• Court: U.S. Court of Appeals — Ninth Circuit
• Writing for the Court: DENMAN, MATHEWS, and HEALY, Circuit
• Citation: Payne Furnace & Supply Co. v. Williams-Wallace Co., 117 F.2d 823 (9th Cir. 1941)
• Decision Date: 14 February 1941
• Docket Number: No. 9327.,9327.
• Parties: PAYNE FURNACE & SUPPLY CO., Inc., v. WILLIAMS-WALLACE CO.

117 F.2d 823 (1941)

PAYNE FURNACE & SUPPLY CO., Inc., v. WILLIAMS-WALLACE CO.

No. 9327.

Circuit Court of Appeals, Ninth Circuit.

February 14, 1941.

Lyon & Lyon, Frederick S. Lyon, and R. E. Caughey, all of Los Angeles, Cal., for appellant.

A. Donham Owen, of San Francisco, Cal., for appellee.

Before DENMAN, MATHEWS, and HEALY, Circuit Judges.

HEALY, Circuit Judge.

The appeal is from an interlocutory decree sustaining the validity of Letters Patent No. 2,013,193 of Stadtfeld and holding it infringed.

It is conceded that the patent, if valid, was infringed. The questions argued concern the validity of the patent and the effect of a disclaimer filed during the progress of the suit.

The Stadtfeld patent was granted September 3, 1935. The invention relates to improvements in composite pipe construction of the kind used in conveying gases or fluids of combustion. An object of the invention, as stated in the patent, is to provide a composite pipe consisting of an inner core pipe of non-corrosive material, preferably aluminum, an outer metallic pipe or casing spaced from the core pipe, and an intermediate filler of air cell heat insulating material interposed between the inner and outer pipes. The insulating material is described as having a plurality of air cells extending through it longitudinally. The specifications describe the core pipe as telescopically arranged with respect to the outer pipe and the insulating material.

The drawings of the patent, as elucidated in the specifications, depict a sectional flue pipe consisting of the three elements mentioned and show the manner of joining one section with another. One end of each pipe is crimped so as to provide a male end. The opposite end, untouched, provides the female end. Each section is assembled with the crimped end of the inner pipe adjacent to opposite the uncrimped end of the outer pipe. The crimped end of the inner pipe points downward to fit inside the end of the adjoining lower section, while the reverse is true in respect of the outer pipe, the crimped end of the outer pipe pointing upwardly to be inserted in the untouched end of the superimposed outer pipe. By these means, the specifications point out, moisture, such as rain, running down the exterior surface of the outer pipe, and condensates forming inside the inner pipe, are carried over the joints so that no moisture or corrosive fluid comes in contact with the insulating material either from the inside or from the outside of the composite structure. In assembling the sections, the crimped end of the inner tube of one section is pulled out far enough to facilitate its easy insertion into the uncrimped end of the inner tube of the section below. Thereafter the adjacent end of the outer pipe of the section is more readily connected with its mate while the ends of the inner pipes are maintained in connected relationship with each other. The telescopic arrangement of the inner pipe not only facilitates the joining of the sections but permits of cutting the sections to any desired length. The construction, as described in the specifications and pictured in the drawings, is thus seen to provide an independently supported inner tube insulated and spaced from the outer tube and slidable in the insulation.

The claims of the patent are as follows:

"1. A composite pipe construction comprising an outer tube, one or more layers of insulating material located around the inside surface of the said tube, and an inner tube slidably located inside the insulating material.

"2. A composite pipe construction comprising an outer tube, a layer of insulating material formed into a tube and positioned inside the outer tube with its outside surface in contact with the inner surface of the outer tube, and an inner tube slidably positioned inside the tube of insulating material with its outer surface in contact with the inner surface of the said tube of insulating material.

"3. A composite pipe construction comprising an inner core pipe, an external pipe spaced from the inner pipe, and insulating material interposed between the two pipes, the said pipes being telescopically arranged with respect to one another."

It will be seen that the claims do not advert to the matter of male and female fittings so as to provide leak-proof joints. Obviously, as witness the ordinary stovepipe, there is no novelty in a mere leak-proof flue pipe made up of sections having crimped and uncrimped ends. Nor do the claims specifically describe, although they suggest, the manner of assembling the sections together to form a flue pipe. The claims of a patent are to be understood and interpreted in the light of its specifications. Schriber-Schroth Company v. Cleveland Trust Co., December 9, 1940, 61 S.Ct. 235, 85 L.Ed. ___; Smith v. Snow et al., 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721; Jewell Filter Company v. Jackson, 8 Cir., 140 F. 340, 344. The invention disclosed, if invention there be, resides in the combination of known elements — namely, in a composite pipe section comprising an inner core pipe, an external pipe, and insulating material interposed between the two, plus the functional relationship of slidability of the inner pipe providing a construction in which, necessarily, the inner and outer stacks are supported independently of each other when the unit sections are joined together.

The combination claimed as invention is as simple as it has proved useful. The labor cost of installation is small. Secure joints are obtainable, thus lowering the fire hazard and preventing escape into the building of noxious fumes as well as preserving the life of the insulating material. The inner core stack, being insulated and of metal, heats rapidly and maintains its heat, thus producing a quick and adequate draft and at the same time preventing excessive condensation or deposit of the residual products of combustion, such as acids or soot.

The flue pipe art is old, yet has its problems; and it would seem that Stadtfeld's combination has overcome a number of important difficulties in this field. His pipe, as the trial court found, has gone into wide and successful use in the building industry. Appellant, with Stadtfeld's work before it, has manufactured and put on the market an exact copy, and in its advertising matter has proclaimed as novel the features relied on by the patentee as disclosing invention. Appellant contends here, however, that the device was anticipated, citing as examples of the prior art the patents to Savage No. 500,779 of 1893; O'Toole No. 878,014 of 1908; Hammill No. 311,750 of 1885; Aldrich No. 340,691 of 1886; Harvey No. 534,473 of 1895; Meade No. 1,428,294 of 1922; and Welch No. 1,927,105 of 1933. It cites, also, three installations in buildings in Los Angeles in which all the elements of the contested patent are said to be present.

We will notice the latter practice first. Only one of the Los Angeles installations is referred to in the brief and it is said to be typical. So far as we are able to understand it, this installation is a flue pipe consisting of a single tube, passed through a ventilated sleeve or thimble extended between the ceiling and the roof. No insulation is placed around the flue pipe at any point, the contrivance being designed to provide an air space around the pipe where it passes through the sleeve. The purpose of the ventilation is to cool the flue pipe. A different principle is involved in Stadtfeld's teaching. Los Alamitos Sugar Company v. Carroll, 9 Cir., 173 F. 280, 284. It seems to be conceded that the so-called Los Angeles installations were banned some years ago by ordinance.

The Savage patent was issued in 1893 and the device appears never to have been used. It shows a chimney smoke-stack for use in connection with a fireplace. The flue pipe comprised an inner and outer tube with asbestos packing tamped or forced between them. The inner sections are spaced apart vertically to allow for expansion so that there is no continuous inner wall. The inner tube is not slidable in the insulation and there appear to be no means of assuring a proper alignment of the inner pipes. Too, these are supported only by the insulation which, in turn, is subject to shrinkage. The contrivance appears unworkable.

The other patents cited relate to a different art. Hammill and Aldrich show the familiar asbestos coating for steam pipes or boilers, the insulating material being wrapped around the pipes. The problem here is different and it is not contended that an insulated steam pipe would function as a flue pipe. The Meade patent shows a thimble, which is a device used to space a stovepipe away from a flooring or roof through which the flue passes. Harvey shows an underground conduit for steam or hot water. Welch's invention relates also to a water pipe. O'Toole's design relates to hot air or furnace pipes intended to confine heat during the process of transmission from furnace to register. None of these discloses apparatus suitable or useful as a flue pipe. In none are found in combination all the essential elements of the present patent. Prior patents "cannot be reconstructed in the light of the invention in suit, and then used as a part of the prior art." Mohr & Son v. Alliance Securities Company, 9 Cir., 14 F.2d 799, 800.

Stadtfeld's improvement occurred within the confines of an ancient art. Its immediate and wide commercial adoption is powerful evidence of invention as contrasted with the exercise of mere mechanical ingenuity. Compare Paramount Publix Corporation v. American Tri-Ergon Corporation, 294 U.S. 464, 474, 55 S.Ct. 449, 79 L.Ed. 997. The patent is entitled to the presumption of validity; and the citations to the prior art fail to overcome the presumption.

We consider now the effect of a disclaimer made after joinder of issue in the suit below. The disclaimer was filed by appellee, as assignee of the patent, and reads as follows:

"Hereby makes disclaimer of any combination of the...