Hy-Lo Unit & Metal Products Co. v. Remote C. Mfg. Co.

• Decision Date: 13 April 1936
• Docket Number: No. 7833.,7833.
• Parties: HY-LO UNIT & METAL PRODUCTS CO. v. REMOTE CONTROL MFG. CO., Inc.
• Court: U.S. Court of Appeals — Ninth Circuit

83 F.2d 345 (1936)

HY-LO UNIT & METAL PRODUCTS CO. v. REMOTE CONTROL MFG. CO., Inc.

No. 7833.

Circuit Court of Appeals, Ninth Circuit.

April 13, 1936.

Miller & Boyken, A. W. Boyken, and Carroll A. Gordon, all of San Francisco, Cal. (Samuel E. Fouts, of Los Angeles, Cal., of counsel), for appellant.

William L. Connor, of Los Angeles, Cal., for appellee.

Before WILBUR, GARRECHT, and MATHEWS, Circuit Judges.

WILBUR, Circuit Judge.

Appellant is the owner of patent No. 1,617,094, issued to it as assignee of Charles Atherton in February, 1927, for a remote control gas valve to be operated in connection with a heating furnace. It brought this action against the appellee for the infringement of that patent.

Appellee admits that the device manufactured by it would infringe the patent if valid, but denies the validity of the patent on the ground that the same was anticipated by an invention by one El Roy L. Payne. Payne had applied for a patent on his invention before Atherton had applied for the patent in question, but the latter patent was issued by inadvertence. Later interference proceedings were instituted which ultimately resulted in the decision by the Court of Customs and Patent Appeals, Atherton v. Payne, 54 F.(2d) 821, hereinafter referred to. The trial of the issues was referred to a master, and subsequent to such reference the appellant sought to file a supplemental complaint alleging that the appellee was estopped to assert the invalidity of the Atherton patent upon the ground that the appellee was in privity with the defendant in a prior infringement suit instituted by appellee against the Potter Radiator Corporation. The application was denied, and the denial of the application is assigned as error.

The first question to be considered is whether or not under the doctrine of equivalence the combination claimed in the Atherton patent is the same as that covered in the Payne application, hereinafter referred to as the Payne patent. It is not questioned but that the Payne invention accomplished the same general result as the Atherton patent. Every element in the Atherton patent as disclosed by the claims in issue is found in the Payne invention if it appears, as appellee contends, that certain elements in the Atherton combination are merely the equivalents of corresponding elements of the Payne combination. We will deal first with the Payne patent because that invention is prior in point of time.

The Payne combination involves a gas valve mounted on a shaft in a valve casing and capable of continuous rotation, which opens to admit predetermined quantities of gas to the heater at each stage of its rotation, as follows: Upon rotation of the valve, different numbers of port openings in it come into apposition with corresponding numbers of inlet and outlet openings in the valve seat and casing connecting with the gas supply pipe. Rotation of the valve is accomplished by means of a solenoid magnet having a core pivotally connected with a lever. The lever has a pawl on its other end connected pivotally to it and positioned so as to engage a ratchet wheel connected with the valve and valve shaft. When the solenoid is energized by an electric current the core plunges into it, pulling the lever and pawl forward, and the latter engaging the ratchet wheel rotates the valve. The core and the lever and pawl attached thereto are returned to their original position by a spring when released by the magnet. Thus each operation of the plunger moves the ratchet wheel and valve through the arc of the circle occupied by the tooth of the ratchet wheel. The position of the ratchet wheel and valve is indicated by lights of different color located at the switchboard established for remote control. The different lighting circuits to the respective lights are closed by the contact of metal pins with contact arms. The metal pins project through an insulated disc which is mounted on the shaft of the valve and rotates with the valve. The contact arms are mounted adjacent to the disc. Rotation of the disc brings different metal pins into contact with different contact arms; thus closing the different light circuits and indicating to the operator the position of the valve and the amount of gas flowing through it.

Claims 1, 2, and 3 of the Atherton patent, in issue in this case, are as follows:

"1. A remote control valve comprising in combination a valve adapted for continuous rotation in one direction, an operating stem connected to the valve to rotate therewith, contact pins on the stem, brushes supported adjacent the stem to form an electric circuit by contact with the pins, electrical means to rotate the valve step by step and cause the pins to make and break an electric circuit at various positions of the valve.

"2. A remote control valve comprising in combination a valve fitting having a rotary cylindrical valve plug mounted therein, a web in the fitting surrounding the plug and having ports therethrough to form an inlet and outlet side, ports in the plug adapted to register with the ports in the web, a stem forming an extension of the valve plug, contact pins attached to the stem, electric brushes positioned adjacent the stem and means to rotate the valve plug and stem step by step — to open and close various ports in succession and to make and break an electric circuit between the brushes and the said pins.

"3. A remote control valve comprising in combination a valve fitting, a box secured thereto, a rotary valve mounted in the fitting and having ports therethrough, webs in the fitting on each side of the valve plug having ports therethrough, a stem attached to the plug and rotatably mounted in the box, a series of pins secured to the stem, electrical brushes mounted in the box, electrical means positioned in the box having an operative connection with the stem to rotate the stem and the plug step by step in a continuous rotary direction, opening and closing the various ports in succession and causing the pins to make and break electric circuits with the brushes."

The appellant claims that there are differences between the drawings and specifications of the Atherton patent and those of the Payne application. But these differences in the Atherton patent are immaterial unless they are parts of the claimed combination. For illustration, the appellant claims that drawings of the Payne patent show that the transformer in his patented device is so arranged as to increase the voltage over that of the house circuit while a similar drawing of the Atherton patent shows a decrease in voltage. No point is made upon this difference in the Atherton claims nor is the point mentioned in the Payne claims. The point arises solely from an interpretation of the drawings which apparently in the Payne patent were not in accordance with the actual construction which Payne had made and put in use. The same is true with reference to the difference pointed out by appellant concerning the stop arm on the lever of his invention to avoid "forward spinning of the valve beyond proper position," whereas appellant contends that in the Payne invention improper movement is prevented only by frictional engagement between the valve and its seat. However, it may be pointed out that an inspection of the Payne patent discloses that Payne does not rely entirely upon "frictional engagement," for, "to prevent overthrow of the valve by quick action of the lever," a block is adjustably mounted upon a rod which is pivotally secured to the lever so as to be moved into and out of the notches of the ratchet wheel during oscillatory movement of the lever. This is a mechanical equivalent of the stop arm extending from the lever to engage pins and hold the valve from spinning employed in the Atherton invention.

The main difference claimed by the appellant between the two combinations arises from the use in the Atherton patent of the contact points, used to close the signal light circuits, attached directly to the stem of the valve, whereas in the Payne patent the contact points are located on an insulated disc attached to the stem. By placing his contact points directly on the stem, Atherton closes his light circuits by grounding them through the stem on the metal valve box, while Payne uses an extra contact arm and piece of wire to close his circuits. It is clear that contact points consisting of pins attached to a stem and contact points consisting of small brass discs projecting through insulating substance attached to a stem are equivalent. Furthermore, the mere substitution of the stem and part of the iron of the container in the Atherton patent for an extra contact arm and a segment of wire in the circuits of the Payne patent is the substitution of equivalents.

Another difference much emphasized by appellant is the fact that in the Payne patent the ratchet wheel is attached directly to the valve, while in the Atherton patent the wheel corresponding to the ratchet wheel in the Payne patent is only attached to the stem. This difference amounts to only a variation in the mechanical construction of equivalents, although the advantages claimed for it are discussed in great detail in the briefs. The ratchet wheel in the Payne patent, besides being attached directly to the valve, is also secured to the shaft or stem as in the Atherton patent. In both inventions the valve wheel and stem rotate together as integral parts.

The principal difference between the structure disclosed in the patent application of Payne and that of Atherton is the use of a disc instead of a cylinder, but a disc is a cylinder, the thickness of the disc being the altitude. Thus considered, the difference between the two structures is that Payne has the contact points on the end of his cylinder instead of on the circumference insulated from the cylinder by means of some insulating material, while on the cylinder of the Atherton patent the insulation is accomplished by means of air. In the...