Montgomery Ward & Co. v. Clair

Decision Date31 December 1941
Docket Number12091.,No. 12090,12090
Citation123 F.2d 878
PartiesMONTGOMERY WARD & CO. v. CLAIR et al. SEARS ROEBUCK & CO. v. SAME.
CourtU.S. Court of Appeals — Eighth Circuit

Armand E. Lackenbach, of New York City, and Thomas E. Scofield, of Kansas City, Mo., for appellants.

C. W. Prince, of Kansas City Mo. (William R. Ross, of Kansas City, Mo., on the brief), for appellees.

Before GARDNER, SANBORN, and THOMAS, Circuit Judges.

THOMAS, Circuit Judge.

These are patent infringement cases. The patented devices and the accused devices are the same in each. The cases were consolidated for trial and appeal and are presented here on a single record. For this reason they may appropriately be disposed of in one opinion.

The appeals by the defendants are from final decrees granting injunctions and judgments for damages. See opinion of the district court in 36 F.Supp. 664. The defenses are invalidity, non-infringement, and laches.

The petitions each alleged infringement of two patents owned by plaintiffs: the Dyer patent, No. 1,317,912, issued October 7, 1919, and the Campbell patent, No. 1,577,821, issued March 23, 1926. Appellants' accused devices are designated No. 73 and No. 74 by the manufacturer. No. 73 was patented by Perkins August 10, 1928 (No. 1,791,972), and No. 74 by Stark June 29, 1934 (No. 1,993,572).

The patented devices in suit are steering stabilizers for automotive vehicles. Their primary purpose is to prevent wobbling or shimmy of the front wheels. Other purposes are to prevent rattle and to hold the vehicle in a straight course when moving forward.

Only claim 1 of the Dyer patent and claim 2 of the Campbell patent are involved in these suits. Claim 1 of the Dyer patent reads:

"In combination with an axle, knuckle, and knuckle arm, a member slidably engaging the axle and operatively connected to the arm, and means holding said member frictionally to the axle."

Claim 2 of the Campbell patent reads:

"In a device of the kind described, the combination with the front axle, the spindle pivoted thereto having a steering arm, and steering connecting rod pivoted to said steering arm, of a spring having portions disposed respectively above and below the connecting rod and having a bearing against said spindle arm and having a sliding bearing against said axle by which the spindle arm is opposed by a substantially uniform pressure against movement in either direction."

In both patents it is sought to prevent wobbling by means of a device used in combination with the conventional parts of an automobile. The parts of the vehicle utilized in both patents are the front axle, the knuckle part of the spindle, the steering arm (also called the spindle arm and the knuckle arm), and the rod connecting the steering arms.

The Dyer device consists of a (1) "member bar of metal (a) slidably engaging the axle and (b) operatively connected to the arm" and (2) "means a tension spring holding said member frictionally to the axle."

The Campbell device consists of "a spring * * * (a) having a bearing against the spindle arm and (b) a sliding bearing against the axle." By means of the spring "the spindle arm is opposed by a substantially uniform pressure against movement in either direction."

The accused devices, No. 73 and No. 74, are manufactured by Kastar, Incorporated, and sold to and by the appellants.

Device No. 73 consists of a friction member, namely, a U-shaped wire spring clamped in the middle to the center of the connecting rod. The two side arms each having a resilient coil are brought together crosswise and extended to lie with opposing frictional pressure against the axle.

Device No. 74 is similar to No. 73 in reverse, that is, the ends of the wire comprising the springs are clamped to the center of the axle and the U-shaped center is bent over at right angles to form a yoke which straddles and bears frictionally against the connecting rod.

Wobbling or shimmy is ascribed to many causes. The most common cause is said by the appellees to be the result of looseness in the joints of the steering mechanism and by the appellants to be due to the vibration of the connecting rod which in turn is due to other causes. All parties agree that wobbling is frequently engendered when a front wheel strikes a bump or other obstruction which deflects the direction of the front wheel from a straight course. The movement thus begun in one of the front wheels is communicated through the spindle, spindle knuckle, steering arms and connecting rod to the opposite front wheel, and the two wheels then shimmy in unison. After this action begins, in cases induced by worn and loose joints, the joints about the king bolt and at the end of the steering arm rattle and the connecting rod vibrates both lengthwise and sidewise in time with the wobble of the wheels.

The Dyer and Campbell patents are devised upon the principle that wobbling or shimmy of the front wheels due to loose joints in the steering mechanism can be prevented by maintaining the joints in a tight or close-fitting position, and that this condition can be effected by exerting a constant pressure upon the ends of the steering arms. This is accomplished in both devices without hampering the normal movement of the steering mechanism by means of the member slidably and frictionally engaging the axle and thereby "yieldably" resisting the movement of the spindle arm.

The first defense urged to the charge of infringement is invalidity of appellees' patents because of anticipation. The appellants rely upon the prior art. "* * * the prior art is a field not open to discovery. Novelty, justifying a patent, must be found outside that field." Smith v. Mid-Continent Inv. Co., 8 Cir., 106 F.2d 622, 624. See, also, Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U. S. 477, 486, 55 S.Ct. 455, 79 L.Ed. 1005; McKays Co. v. Penn Electric Switch Co., 8 Cir., 60 F.2d 762, 767. It is true that neither Dyer nor Campbell were the first to conceive the idea that shimmy or wobble can be prevented by tightening the joints of the steering mechanism and holding the joints in that position by exerting pressure upon the ends of the steering arms. A similar principle had been applied in the prior art: Exley and Field (1915), 1,158,469; Miller (1915), 1,144,771; Huffman (1920), 1,378,542; Beal (1921), 1,428,515; Hepler (1915), 1,163,406; Hunt (1915), 1,164,522; Yager (1916), 1,193,331; Perry (1914), 1,103,538; Afanador (1917), 1,213,057. These patents have for their primary object the returning to and holding of the front wheels in a straight ahead position. Beal's device by holding the spring under tension at all times is designed also "to overcome undesirable looseness and wobbling of the front wheels of the vehicle." The function in these prior art patents of returning the front wheels to a straight ahead position and holding the vehicle in a straight course is achieved by the application of springs to the steering arms so that tension initiated by any turning movement of the vehicle will exert an increasing pressure upon the arms. To the extent that pressure is applied, all of these devices tend to tighten the joints and to overcome wobble or shimmy; but in all of them, except perhaps in Beal, as pressure is increased upon one arm it is relaxed upon the other. The novel feature of the Campbell patent, and to some extent of Dyer, is that the slidable and frictional "member" which engages the axle maintains a constant and uniform pressure at all times upon both arms. This feature both by the means employed and the function performed distinguishes the Campbell patent, and to some extent the Dyer patent, from the means employed and the functions performed by the prior art patents referred to above. The patents to Stahl (1916), 1,183,600; Flint (1916), 1,176,356; Griffeth (1917), 1,238,135, and Griffeth (1919), 1,317,017, relied upon by appellants as anticipating the Campbell device, are all single wire spring stabilizers which have no bearing upon the axle and which tighten only the joint between the connecting rod and the spindle arm. None of these devices exerts pressure upon the spindle joint. In this respect their function differs from that of the Campbell device whose slidable frictional bearing on the axle exerts a constant pressure on both the connecting rod and spindle joints.

It is claimed by appellants that in so far as the patents in suit employ a "slidably frictional" bearing upon the axle to secure a "yielding" pressure upon the steering arms they are anticipated by Lowe (1915), 1,146,631, and by Witting (1916), 1,174,924. These patents neither perform the same function nor employ the same means of the patents in suit. Both structures are complicated devices rigidly attached to the front axle and slidably and frictionally engaging the connecting rod. They exert no pressure upon the arms, except in a turning movement of the vehicle, and they embody no means of tightening the joints at both ends of the axle at the same time. By retarding the endwise movement of the connecting rod they would no doubt prevent rattling in the connections and tighten the joints (at one end of the axle) after a turning motion is initiated. The important disclosure of these devices is that when it is desired to retard but not prevent the free movement of one of the parts of a combination, a "slidable frictional" means to secure the necessary resistance is not new or novel. In that way the scope of the patents in suit at this point is limited to the specific means employed.

The law is that whoever finally perfects and improves a device and renders it capable of practical, useful and effective operation is entitled to a patent although others had the idea and made experiments toward putting it into practice. See The Barbed Wire Patent, 143 U.S. 275, 283, 12 S.Ct. 443, 36 L.Ed. 154; Wine Ry. Appliance Co. v. Baltimore & O. R. Co., 4 Cir., 78 F.2d 312; Thomson v....

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