Specialty Equipment & Mach. Corp. v. Zell Motor Car Co.

• Decision Date: 09 January 1952
• Docket Number: No. 6307.,6307.
• Citation: 193 F.2d 515
• Court: U.S. Court of Appeals — Fourth Circuit
• Parties: SPECIALTY EQUIPMENT & MACHINERY CORP. v. ZELL MOTOR CAR CO. et al.

193 F.2d 515 (1952)

SPECIALTY EQUIPMENT & MACHINERY CORP. v. ZELL MOTOR CAR CO. et al.

No. 6307.

United States Court of Appeals Fourth Circuit.

Argued November 7, 1951.

Decided January 9, 1952.

Nelson Moore and William D. Hall, Washington D. C. (Richard S. Wright, Baltimore, Md., on brief), for appellant.

Harry W. Lindsey, Jr., Chicago, Ill. and Carlyle Barton, Jr., Baltimore, Md. (George N. Hibben, Chicago, Ill., on brief), for appellees.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

PARKER, Chief Judge.

This is an appeal in a patent case involving Fleischel Patent No. 2,203,296 and Reissue thereof No. 23,236 relating to automatic gear shift for automobiles. The judge below, without considering the prior art, held that the accused Packard device did not infringe the patent and entered judgment for the defendants. 96 F.Supp. 904. He taxed as costs against plaintiff $7,000 of disbursements by defendants for costs of models used in the presentation of its case. The appeal questions this order as well as the decree finding non-infringement.

The invention of the patent in suit consists in using servo-motors operated by oil under pressure to engage and disengage the clutch and shift the gears of an automobile. The pressure of the oil on the servo-motors is regulated by a valve which is so constructed that a force generated by a governor attached to the engine, and dependent upon the speed of the engine, presses upon the valve from one direction and is opposed by another force or forces pressing upon it from the opposite direction. When the speed of the engine has increased to the point that the force generated by the governor is sufficient to overcome the opposing force, the valve permits the oil pressure to operate the servo-motors in such way as to engage the clutch or shift the gears. When the speed is decreased, the gears are shifted to the lower ratios and the clutch is finally disengaged as the result of the force exerted on the valve by the governor becoming less than the opposing force. The patent is a combination patent and one feature of the combination is the use on the valve of two pistons in such way as to utilize the pressure of the oil in the operation of the valve. This achieves a "progressive" engagement of the clutch, which is of great importance in the starting of the car.

The principle of the patent is the application of force derived from the speed of the engine to control the operation of a valve, which will in turn regulate the application of oil pressure in such way as to cause the servo-motors to engage or disengage the clutch or shift the gears when a certain speed is attained. The claims particularly relied on by plaintiff are claims 6 and 27 which are as follows:

"6. In the combination of an engine, a mechanism operatively connected thereto, and means including a servo-motor to operate said mechanism, means to supply fluid to said servo-motor, and control means for said fluid including a casing, a valve slidable in said casing, a source of fluid under pressure, an inlet opening from said source into said casing, outlet openings from said casing, one of said outlet openings constituting a discharge, said openings being spaced along said casing in the direction of movement of said valve, said valve having obturating portions adapted to close the two end openings or to uncover said openings selectively and having a part of less cross section connecting said obturating portions opposite the intermediate opening, one of said end openings being the discharge opening, said obturating portions having different effective areas so that pressure fluid within the space between said obturating portions tends to move said valve in one direction, and means to exert on said valve a force which varies with variations in the operating conditions of the engine.

"27. In the combination of an engine, a mechanism operatively connected thereto, and means including a servo-motor to operate said mechanism, means to supply fluid to said servo-motor, and control means for said fluid including a distributor, said distributor being so constructed and arranged that the fluid controlled thereby exerts a force on the distributor, and means to exert on said distributor an opposing force which varies with variations in the operating conditions of the engine and normally increases when the charge to the engine increases from meagre to full charge, said engine being an internal combustion engine having means which jointly varies the charge to the engine and influences the means that exerts said opposing force."

The ultramatic drive of Packard is claimed by plaintiff to infringe, because it is said that the device of the patent or its equivalent is used to engage the direct drive clutch and the high range clutch of the Packard ensemble. Packard does not use the ordinary friction clutch for starting nor for shifting gears. The car is started by the use of the "Torque Converter", a device which uses oil and the principle of the turbine to transmit the speed of the engine to the shaft which runs the car. This torque converter puts the car in motion when the engine attains a minimum speed and could be used as the sole means of power transmission. More economical operation results, however, in shifting to direct drive by means of a friction clutch when a good going speed has been attained by the car; and the Packard mechanism is so arranged that it automatically shifts from the torque converter to direct drive by the friction clutch when a speed of 15 miles per hour is attained by the car, if there is an easing of the pressure on the throttle, and drops back to the torque converter if the speed is allowed to fall below 13 miles per hour. By not easing the pressure on the throttle the torque converter can be held in operation until a speed of 55 miles per hour is obtained, but at this point the direct drive goes in whether there is an easing of the throttle or not.

For shifting from the torque converter to the direct drive. Packard uses a servo-motor to engage the direct drive clutch and uses oil under pressure to operate the servo-motor. The pressure of the oil which controls the servo-motor is controlled by a valve with two pistons operated on at one end by the force of a governor attached to the shaft of the car and at the other by an opposing force generated by the throttle. When the force generated by the governor as the result of the increasing speed of the car is sufficient to overcome the opposing force, the valve shifts and affects the oil pressure in such way as to operate the servo-motor and thus engage the clutch. By means of a "modulating" valve, which works in conjunction with the valve controlling the servo-motor, the oil under pressure is used to affect the operation of the latter valve.

Plaintiff does not contend that there is an infringement of its patents by the use of the torque converter or in anything that Packard does in the starting of the car. It contends, however, that its patent is infringed by the mechanism used in engaging and disengaging the direct drive clutch and the high range clutch. It says that the valves used by Packard to control oil pressure and operate the servo-motor operating the clutch are the equivalent of the valve of the patent used for that purpose; that, where the starting of the car is not involved, a governor operated by the speed of the shaft is the equivalent of a governor operated by the speed of the engine; and that there is no difference in principle between using centrifugal force and the force of a liquid under pressure as the force applied by the governor. A neutral expert, appointed by the court with the consent of the parties, agreed with these contentions of plaintiff. The trial judge did not agree but found that there was no infringement, basing this finding upon certain differences in operation referred to in his opinion without reference to the prior art.

We are not prepared to say upon the record before us, and without consideration of the prior art, whether the device of Packard does or does not infringe. Certainly infringement is not necessarily avoided because Packard does not use progressive engagement in starting the car, which is important only when starting is effected by a friction clutch, or because the governor is operated by a force generated by the drive shaft instead of by the engine, which of course operates the drive shaft, or because the governor uses the force of a compressed liquid instead of centrifugal force, or because the Packard device is "tailored" to the torque converter, or because the mechanism described in the drawings and specification of the patent would not operate on the Packard mechanism without substantial changes in detail not amounting to a change in principle. If infringement is avoided, it is because the claims of the patent are so limited and the range of equivalents is so narrowed by the prior art that what Packard does is not reasonably covered by the invention which it was the purpose of the patent to protect. While it is true that the function of a machine is not patentable and that there is infringement only where the same result is reached by substantially the same or similar means, Westinghouse v. Boydon Power Brake Co., 170 U.S. 537, 569, 18 S.Ct. 707, 42 L.Ed. 1136, it is also true that one using the substance and essentials of a patented combination does not avoid infringement by varying nonessential details. Neither the joinder of different elements of a patented combination into one, nor the separation of one integral part into two or more doing together substantially what was done by the single element will evade a charge of infringement. Nathan v. Howard, 6 Cir., 143 F. 889. Nor is infringement avoided by the substitution for parts of a patented device other devices which are known equivalents in the prior art; and this is true even though the patent be a combination patent....