O'BRIEN v. Howard & Lewis Motor Sales

• Decision Date: 19 December 1941
• Docket Number: No. 567.,567.
• Citation: 42 F. Supp. 329
• Court: U.S. District Court — District of Rhode Island
• Parties: O'BRIEN et al. v. HOWARD & LEWIS MOTOR SALES, Inc.

42 F. Supp. 329

O'BRIEN et al. v. HOWARD & LEWIS MOTOR SALES, Inc.

No. 567.

District Court, D. Rhode Island.

December 19, 1941.

Louis V. Jackvony, John L. Curran, and Perley H. Plant, all of Providence, R. I. (Ira Lloyd Letts, of Providence, R. I., of counsel), for plaintiffs.

S. Everett Wilkins, Jr., and Roger T. Clapp, both of Providence, R. I., and I. Joseph Farley, of Detroit, Mich., for defendant.

HARTIGAN, District Judge.

This is a patent infringement suit seeking an injunction and accounting for profits and damages. The defenses are that the patent in suit is invalid and has not been infringed by the defendant.

United States Letters Patent No. 1,677,789 were granted July 17, 1928, to Clinton L. Mabey for a battery box clamp, and this is the patent in which infringement is charged.

The plaintiffs are the patentee Clinton L. Mabey and Robert P. O'Brien, the latter being an assignee of one-half interest in and to the patent in suit by an assignment executed by the patentee on March 11, 1937, and recorded in the United States Patent Office June 2, 1937.

The defendant is Howard & Lewis Motor Sales, Inc., a corporation organized under the laws of the State of Rhode Island, which has its regular place of business in the City of Providence, where it is a distributor of Ford automobiles. It was stipulated by and between counsel for the parties that the defense of this case has been assumed entirely by the Ford Motor Company, of Dearborn, Michigan.

For the purpose of this suit the plaintiffs rely entirely upon claim 3 of Patent No. 1,677,789, which reads as follows: "In a device of the character described, a battery box holder, a battery box in said holder, and a clamp therefor comprising a skeleton frame provided with corner plates adapted to bear against the upper edges of the battery box adjacent to the corners thereof, and having depending lugs engaging the sides of said battery box adjacent to the corners thereof whereby lateral movement of said battery box in said holder is prevented, and means carried by said holder for drawing the clamp into close engagment with said battery box."

The parties entered into three stipulations which in substance are to the effect that within six years preceding the date of the filing of the complaint, Howard & Lewis Motor Sales, Inc., sold within the State of Rhode Island, 1934, 1935, 1936 and 1937 models of automobiles made by Ford Motor Company, of Dearborn, Michigan, which contained and had embodied in the chassis structures thereof, battery box holders as shown in the drawings attached to said stipulations.

Mabey testified that in June or July, 1926, he made a metal frame member, Plaintiffs' Exhibit C, the purpose of which was to clamp the battery in an automobile. Mabey, in explaining the operation of Exhibit C, said (Tr. p. 17): "Well, I bought a new battery for my automobile, and the battery I had in it was good, but it had broken apart through the clamping process, so I bought a new battery, and I didn't want to use it on the clamps, because they at that time destroyed or broke the old one, so I decided that I would make a clamp that would do the job, so after looking the thing all over carefully, and thinking it out, I made this frame; and the frame goes over the top of the battery, engages the corners to hold it down and stop it from shaking, and these holes I put in there so it would go over the posts that were in the car at that present time. Those were the posts that were in there with the old clamps on, with this patent model." He admitted that Exhibit C did not have depending lugs.

The Mabey patent application, as originally prepared, contained five claims. Claim 4 is "A battery box clamp comprising a frame the contour of which substantially conforms to the upper face of the battery box and which is provided with bearing plates adapted to bear against the upper edges of the battery box, the plates located at each end of said frame being spaced from each other to provide a free space for the handles of said box therebetween;" and Claim 5 is "A battery box clamp comprising a frame provided with plates engaging the upper edges of the battery box at spaced points and provided with means engaging the sides of said battery box to prevent horizontal movement thereof, and means for forcing the said clamp against the upper face of said battery box whereby the box is held against vertical movement relative to the clamp."

Defendant's Exhibit 13 discloses the following official action of the Patent Office on the application in the following language:

"Claims 1, 4 and 5 are completely anticipated by Hawthorne, (1,174,571), whose cover, although not perforated is equivalent.

"As to claim 3, parts 21 may be considered the corner plates.

"Claim 2 is allowed.

"The others are rejected."

The patent in suit contained three claims each of which specified a rectangular open frame or skeleton frame having downwardly extending lugs engaging the sides of the battery box adjacent to the corners thereof. The lugs are shown in Figs. 4 and 5 of the patent and are described in the text of the specification in lines 95 to 98 on page 1 of the patent specification (Plaintiffs' Exhibit A) as follows: "* * * and the frame has downwardly extending lugs 18 adapted to engage the side and end portions of the battery box to hold the same against horizontal movement." There is further textual description of lugs beginning in line 105 and continuing to the end of the specification.

The defendant adopted for its 1934 models an open rectangular frame (Defendant's Exhibit C), made out of strips of flat steel and which in the frame for the 1934 and 1935 models had an angular shaped reinforcing member at the ends thereof with the vertical wall or flange 35 (Drawing Exhibit I) of the angle lying adjacent to the end of the open frame and with the horizontal wall, 32, of the angle being adapted to bear against the top of the battery box and clamp it in position, the side edges 31, of the horizontal portion of the angle extending at an angle at the corners of the frame and being bent around the outer side edges thereof. This construction was stipulated during the trial and is shown in the drawing, Plaintiffs' Exhibit I, particularly Figs. 1 and 4 thereof attached to and forming part of the stipulation.

Substantially the same construction (see physical exhibits, Plaintiffs' E and Defendant's 16) was used by the defendant throughout the years 1936 and 1937, also shown in drawings Exhibit J and K forming part of the stipulations with the exception that the strip was no longer made of angular cross-section but was provided with a vertical section designated by the reference character 15 in Fig. 4 of Exhibit K and the end thereof was bent, or crimped, around to form, what might be termed, the angular corner clamping plates 18.

The plaintiffs contend that every element recited in claim 3 of the patent in suit is present in the structures shown in Exhibit G and each of the drawings, Exhibits I, J and K and in the photo prints of these drawings and performs the same identical function and bears the same relation to the remaining elements recited in the claim as the corresponding element shown and described in the patent in suit, and each of the exhibits and drawings referred to in this paragraph contains the same combination of elements correspondingly arranged and co-operating each with the other in a manner identical with that of their corresponding elements in the patent in suit and that the defendant has infringed claim 3 of the patent in suit within six years preceding the date of filing suit.

The defendant's testimony showed that the Willard Storage Battery Company as far back as 1904 and 1905 manufactured storage batteries (Defendant's Exhibits 1 to 7, inclusive) for railroad car lighting. These storage batteries were manufactured principally for the Pennsylvania Railroad Company and some for electrical automobiles from 1903 or 1904 up until the years 1907 and 1908. They were provided with a rectangular open clamping frame as shown by Physical Exhibit 18 and Willard Drawings Exhibits 1 to 7 and were constructed of malleable iron and were shaped to conform to the contour of the top of the battery to be clamped.

An electrician employed by the Pennsylvania Railroad Company produced drawings of that company, Exhibits 9, 10 and 11, which show the same type of rectangular open battery clamping frame that was shown in the drawings of the Willard Storage Battery Company, Exhibits 1 to 7. He also testified that the frame when secured in position on the battery would prevent any horizontal or lateral movement of the box relative to the frame.

A consulting engineer specializing in automotive work for many years testified that on August 6, 1927, when application for the Mabey patent was filed, clamping devices of the type shown in Fig. 1 of the Mabey drawing were not the only type of clamping devices existing in the automobile industry.

He testified that the W. H. Wright Patent No. 667,755, patented February 12, 1901, discloses a frame particularly for crating such things as a group of cans, and the expedient of an open frame using a clamp is shown, in which the clamped material is clamped between two such open frame clamps, and which are drawn together to give the package stability; that the E. A. Hawthorne Patent No. 1,188,649, ...