FE Myers & Brother Co. v. Goulds Pumps

• Citation: 91 F. Supp. 475
• Decision Date: 31 May 1950
• Docket Number: Civ. A. No. 2625.
• Parties: F. E. MYERS & BROTHER CO. v. GOULDS PUMPS, Inc.
• Court: U.S. District Court — Western District of New York

91 F. Supp. 475

F. E. MYERS & BROTHER CO. v. GOULDS PUMPS, Inc.

Civ. A. No. 2625.

United States District Court W. D. New York.

May 31, 1950.

COPYRIGHT MATERIAL OMITTED

Toulmin & Toulmin, Dayton, Ohio (H. A. Toulmin, Jr., Clayton E. Crafts, Herbert H. Brown, all of Dayton, Ohio, and John S. Powers, Buffalo, N. Y., of counsel), for plaintiff.

Winslow E. Thomson, Rochester, N. Y. (Edwin T. Bean, of Buffalo, N. Y., of counsel), for defendant.

KNIGHT, Chief Judge.

This is an action originally brought for a Declaratory Judgment adjudging certain patents owned by the defendant invalid and not infringed by the plaintiff. The Complaint charges unfair competition and asks for an injunction and damages, but the charge has been dismissed. The defendant herein joins issue by alleging the patent valid and counterclaiming alleges infringement by plaintiff of certain claims in defendant's patents.

The patents in suit are Patent No. 2,257,507 (hereinafter called Patent No. 507), filed March 27, 1940, and issued on September 30, 1941, and Patent No. 2,375,571 (hereinafter called Patent No. 571), filed September 5, 1941, and issued on May 5, 1945, both to John Mann and assigned to the defendant; and Patent No. 2,235,109 (hereinafter called Patent No. 109), filed June 2, 1942, and issued on November 23, 1943, to one Conery, and assigned to this plaintiff.

The defendant on the trial limited its infringement charges to Claims 6, 8, 9, 24, 25, 26 and 27 of Patent No. 507 and Claims 2 and 3 of Patent No. 571. All these patents relate to domestic water pump systems.

Each of the parties herein has been long established; is well known as an extensive manufacturer of pumps for domestic and commercial use. They are competitors and for a number of years last past have manufactured and sold a pump, of comparatively recent origin, known as the "jet-centrifugal pump". From the simple hand pump and windmill pump there has been much development in the pump art. They were followed by the so-called displacement pump, piston pump, centrifugal, rotary and other types to the present jet-centrifugal pump. The plaintiff presently manufactures a pump called the "Ejecto" and the defendant presently manufactures what it calls the "Jet-O-Matic" pump for shallow and deep well and what it calls the "Balanced Flow" pump for shallow wells.

The trial of this suit consumed nearly four weeks. This does not include the time used in taking depositions out of court and the days employed in making numerous pump tests. Consideration of the case by the Court has necessitated the reading of 3000 pages of testimony, the examination of 484 physical exhibits, scores of drawings, catalogues and many other documents; reference to many of more than 250 citations of authorities, examination of many alleged anticipating and prior art patents, thirty-seven claims in the patents in suit, and last, but not by any means the least of the task of the Court, a study of 700 pages of printed briefs. The great length to which some of the briefs have extended show much repetition and this has tended to much confusion.

We are here concerned with a greatly crowded art. It is apparent, and it is not denied, that many of the elements in the Mann patents aforesaid are old in the art. The use of jet pumps is old, as is the centrifugal pump, but the combination of the two found its origin in comparably recent years. Defendant claims that "Mann invented a new and patentable combination by which a new and useful result was obtained in a new way". Plaintiff asserts that Mann has only an aggregation of old parts, performing no new or different function than was shown in the earlier art.

In the last decade the courts have been held to strict rules in the determination of patentability. The law is now well established that "the new device, however useful it may be, must reveal the flash of creative genius not merely the skill of the calling." Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 41, 86 L.Ed. 58, decided in 1941. A combination of old elements must demonstrate a new and useful use. Marconi Wireless Co. v. United States, 320 U.S. 1, 63 S.Ct. 1393, 87 L.Ed. 1731; Lincoln Eng. Co. of Illinois v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008; Westinghouse Air Brake Co. v. Schwartz Electric Co., 6 Cir., 108 F.2d 352; Trico Products Corp. v. APCO-Mossberg Corp., 1 Cir., 45 F.2d 594. What would readily occur to one acquainted with the prior art and skilled in that art involves mere mechanical skill. Mechanical skill is but the display of expected skill which would readily occur to one acquainted with prior art and skilled therein, and involves only the exercise of ordinary faculties and reasoning aided by special knowledge and facility of manipulation which is acquired through habitual and intelligent practice of the art.

The specifications of a patent are addressed primarily to persons "skilled in the art", by which is meant, not those having very great technical knowledge relating to the subject-matter of the invention, but rather those having ordinary and fair information; and if to these latter the specifications sufficiently describe the invention or process, it is all that is required. Vol. 39, Words and Phrases, Perm.Ed., p. 359. Tannage Patent Co. v. Zahn, C.C., 66 F. 986.

"Although every element of a patent combination is old, invention still exists if the combination either produces a new and useful result, or effects an old result in a new and materially better way." N. O. Nelson Mfg. Co. v. F. E. Myers & Bro. Co., 6 Cir., 25 F.2d 659, 663. Novelty is not impeached by the fact that like results may be accomplished in another way. Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527; Leeds & Catlin Co. v. Victor Talking Machine Co., 213 U.S. 301, 29 S.Ct. 495, 53 L.Ed. 805.

The issuance of the patent is prima facie evidence of validity and the burden rests on one contesting to overcome such presumption by clear and satisfactory proof. Cantrell v. Wallick, 117 U.S. 689, 6 S.Ct. 970; Radio Corp. of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163; Bianchi v. Barili, 9 Cir., 168 F.2d 793; 3 Walker on Patents, (Deller's Ed.) p. 2009.

This presumption is stronger where the alleged prior art of the alleged anticipating patent was considered in the Patent Office. Mohr & Son v. Alliance Securities Co., 9 Cir., 14 F.2d 799; Stevens v. Carl Schmid, Inc., 2 Cir., 73 F.2d 54; Ensign Carburetor Co. v. Zenith-Detroit Corp., 2 Cir., 36 F.2d 684.

In the instant case, the Patent Office Examiner made an exhaustive examination of numerous patents, and among these are the principal patents now put forth as anticipating or as in the prior art. Such principal patents are: Lauchenauer No. 1,855,061; Horvath No. 2,196,453; Maffie-Schwartzkopff (German Patent) No. 494,877; Jacuzzi No. 2,205,121; Carpenter No. 2,203,077; Smith No. 1,791,292; and Conery (plaintiff's patent) No. 2,077,213.

Commercial success may "make weight in support of a patent". Warner Bros. Co. v. American Lady Corset Co., 2 Cir., 136 F.2d 93, 95. It does not, however, take the place of invention. The defendant has had great commercial success in the Mann Patent No. 507 invention. It is not claimed that this fact was proof of invention. It was offered to show the patent was not a mere paper patent without utility. Electric Machinery Co. v. General Electric Co., D.C., 13 F.Supp. 940, Id., 2 Cir., 88 F.2d 11; Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523; Lincoln Stores, Inc. v. Nashua Mfg. Co., 1 Cir., 157 F.2d 154; Walker on Patents (Deller's Ed.) Vol. 1, p. 234. 35,000 of the Goulds pumps were sold in a six months' period.

It is true that, in cases where the question of patentable invention is a close one, such success has weight in tipping the scales of judgment toward patentability. Jungerson v. Baden Co., 2 Cir., 166 F.2d 807; Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 64 S.Ct. 593, 88 L.Ed. 721; Walker on Patents (Deller's Ed. 1937) Vol. 1, Sec. 44.

Obviously the device must be useful. A function or mode of operation is not patentable. It is the structure, the substantive thing, that produces the result. A claim for the function of the invention is void. Trico Products Corp. v. Apco-Mossberg Co., 1 Cir., 45 F.2d 594; Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 18 S.Ct. 707, 42 L.Ed. 1136; Walker on Patents (6th Ed.) Vol. 1, sec. 162 b.

"Anticipation results only when all the elements of the combination or their mechanical equivalence are found." Union Simplex Train Control v. Gen. Ry. Signal Co., D.C., 11 F.Supp. 854, 859; Id., 2 Cir., 91 F.2d 950.

Now the prior art admittedly shows jet centrifugal pump systems. It is undoubtedly true that the device which most fully separates the air or gas from the water to prevent its re-circulation through the system is better than the one which does this to a lesser extent. It makes for greater efficiency and economy in operation. The problem of the removal of air and gas from the water in the operation of the jet centrifugal pump is one which has long been recognized and sought to be answered. Air or gas in the system adversely affects the efficiency of operation. This is disclosed in various patents. In some wells more air is drawn in than others, and this is the same with gas. It appears that percent of air or of gas in the water may run as high as 10%.

A new combination which increases efficiency strongly indicates the presence of invention. Richmond Screw Anchor Co. v. United States, 275 U.S. 331, 48 S.Ct. 194, 72 L.Ed. 303; Cantrell v. Wallick, 117 U.S. 689, 6 S.Ct. 970, 29 L.Ed. 1017; Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L. Ed. 523.

Does Mann disclose...