Cleveland Trust Co. v. Schriber-Schroth Co.

• Decision Date: 08 October 1937
• Docket Number: No. 7223-7225.,7223-7225.
• Citation: 92 F.2d 330
• Parties: CLEVELAND TRUST CO. et al. v. SCHRIBER-SCHROTH CO. SAME v. ABERDEEN MOTOR SUPPLY CO. SAME v. F. E. ROWE SALES CO.
• Court: U.S. Court of Appeals — Sixth Circuit

92 F.2d 330 (1937)

CLEVELAND TRUST CO. et al. v. SCHRIBER-SCHROTH CO.

SAME v. ABERDEEN MOTOR SUPPLY CO.

SAME v. F. E. ROWE SALES CO.

Nos. 7223-7225.

Circuit Court of Appeals, Sixth Circuit.

October 8, 1937.

Newton D. Baker and F. O. Richey, both of Cleveland, Ohio (A. C. Denison, W. C. McCoy, Baker, Hostetler, Sidlo & Patterson, Richey & Watts, and Evans & McCoy, all of Cleveland, Ohio, on the brief), for appellants.

J. H. Bruninga and J. H. Sutherland, both of St. Louis, Mo. (Bert M. Kent, of Cleveland, Ohio, on the brief), for appellees.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

SIMONS, Circuit Judge.

In a study of the patents and prior art involved in Waukesha Motor Co. v. Willys-Overland, Inc. (C.C.A.) 77 F.(2d) 906, and Perfect Circle Co. v. Hastings Mfg. Co. (C.C.A.) 88 F.(2d) 813, we learned something of the principles of operation and the mechanics employed in the conventional four-cycle internal combustion engine of the modern motor car. It will therefore be unnecessary here to repeat what was there said in reference thereto. In the first we considered the explosion chamber, and in the second the piston ring. In the present infringement suit we deal with the piston.

In the rapid reciprocation of a piston within the cylinder, as in the references described, the desirability of maintaining a close fit was obvious and had long been recognized. This was necessary to avoid waste of power through gases being permitted to pass below the piston from the explosion chamber, a condition known as "blow-by," to prevent lubricating oil passing above the piston into the explosion chamber, a condition known as "pumping oil," and to prevent the slapping of the piston in the cylinder, making for a noisy engine and tending to break its parts. On the other hand a too close fit would, because of the expansion of the piston by the great heat generated in the cylinder, cause it to bind or "seize" therein, thus stalling the engine or perhaps even wrecking it.

Cylinders were, and generally still are, cast of iron, and prior to the period we are here considering pistons were likewise so cast. The disadvantages in this organization were early recognized. Since iron is a poor conductor of heat, the particles of carbon that would form on the piston head would become overheated and cause premature explosion in the combustion chamber. Iron is also heavy, and with the great acceleration of piston reciprocation, due to the ever increasing demand for speed, the industry began to cast about for expedients to lighten the pistons. There were numerous efforts and failures in this respect with the conventional iron trunk piston. Lighter metals were considered, but, since strength and durability to withstand the great force of rapid explosions upon the piston head and the powerful thrust imparted to its bearing faces by the power stroke of the piston as it imparted energy to the crank shaft were prerequisites, the art was limited to metal that was both strong and durable. It turned, therefore, quite naturally and inevitably, to aluminum. A new and for a long time seemingly insuperable problem at once confronted the automotive engineers, due to the fact that the coefficient of expansion differs greatly in the two metals, and that under heat aluminum will expand much more rapidly than iron. Since the desirable clearance is minute, approximating one one-thousandth of an inch, it was at once clear that an aluminum piston, installed when cold with required clearance in an iron cylinder, would, when heated by operation, seize, and that a piston with clearance sufficient to avoid seizing would waste power, pump oil, cause undesirable noises, and lack durability.

Ingenious, numerous, and varied were the expedients resorted to in an effort to achieve the clearly recognized advantages of aluminum pistons, while at the same time avoiding troublesome results, and equally numerous were the failures, by reason of which a prejudice had developed in the industry against them, and it was said they had had a "black eye."

The Cleveland Trust Company, appellant, is the repository of numerous patent rights assigned to it by inventors and by piston and automobile manufacturers, and it is its contention that the aluminum piston problem was completely solved by some of its assignors, and that a structure embodying the disclosures of the patent to Jardine, No. 1,763,523, granted June 10, 1930, but in a more specific and improved form described in Maynard, No. 1,655,968, granted January 10, 1928, but on an application later than Jardine's, had gone into wide commercial use, being accepted by the industry, with the exception of some divisions of the General Motors Corporation, had sold in the tens of millions, and is now infringed by pistons of the appellees. The Jardine and Maynard patents belong to the Trust Company. Conceiving, however, that a Gulick application, which was being prosecuted by the Packard Motor Car Company, would, with its broader claims, dominate both Jardine and Maynard, the Trust Company purchased it and prosecuted it to successful conclusion after numerous interferences, the patent issuing as Gulick No. 1,815,733, on July 21, 1931. The Trust Company also owns Schmiedeknecht patent, No. 1,256,265, granted February 12, 1918, and Mooers, No. 1,402,309, granted January 3, 1922, both for pistons, and seven accused devices are all alleged to infringe some of the claims of some or all of the five patents.

The appellees are three Cleveland dealers who have sold alleged infringing pistons manufactured by the Sterling Products Corporation of St. Louis, Mo. While the manufacturer was named in the original bills of complaint, they were dismissed as to it, it being understood, however, that Sterling Products Corporation was conducting the defense of the three suits. By stipulation they were consolidated below, and all are before this court upon the same record. At the outset only two alleged infringing devices were involved, one a Sterling piston known as Exhibit 1, and the other a Ray-Day piston known as Exhibit 8. During the progress of the trial five additional structures were introduced as infringements. While there is no finding to that effect, it seems to have been assumed that all of the alleged infringing devices were sold by each of the three defendants. The consolidated cause was referred to a master, whose very detailed findings of fact and conclusions of law were affirmed by the district judge without discussion and decrees entered dismissing the bills. While the Chrysler Corporation appears as party plaintiff below and as co-appellant here, it has never entered its appearance, and its presence in the case as a nominal plaintiff is due to the fact that it owns a half interest in the Maynard patent and was therefore joined as party plaintiff. An issue raised below as to the propriety of Chrysler being made a nominal party is abandoned here, since the defendants have not appealed.

The controversy is involved and has been bitterly fought. The record is voluminous, the exhibits, physical and otherwise, numerous, the Patent Office history discloses persistent challenge, and of eighty-odd claims fifty-two are said to be infringed. While we have given careful consideration to the briefs and record, it is manifest that the necessities of the case and the desirable limit of an opinion will permit us to discuss only the more salient features of the controversy, with perhaps summary disposition of its lesser issues, for the challenge to the validity of the patents and to the fact of their infringement includes most, if not all, of the defenses known to the patent law.

We deal first with the patent to Gulick, in agreement with the contention that if valid it is basic. Gulick had been connected with various motorcar and motorcycle manufacturing companies in a number of capacities, including that of factory manager. He was also an inventor, having prosecuted some fifty applications in the Patent Office. As early as 1908 he had a conception of a split and flexible piston, but did nothing more for several years than to make sketches. In 1911 he made some experiments with modified standard iron pistons, giving them block tests in a motorcycle and in an Excelsior motor. The motor was later put into a Renault car and given a substantial road test. These early pistons were scrapped. In 1914 he made his first test with aluminum pistons in an Amplex car, which he used personally for some 4,500 to 5,300 miles. In 1917, along with other patents and patent applications, Gulick assigned his inchoate rights to the Packard Motor Car Company, and the application for the piston patent was filed by it on November 30th of that year. There followed long discussions with the examiners, administrative reviews, bitterly contested interferences, and appeals to the Court of Appeals of the District of Columbia (Long v. Gulick, 57 App.D.C. 98, 17 F. (2d) 686), and to the Court of Customs and Patent Appeals (Hartog v. Long, 47 F.(2d) 369). There had also been amendments to the original application at the instance of the inventor's assignee. It was not until July 21, 1931, that the Gulick patent issued with its forty-three claims.

The Gulick patent is for a combination of elements, many, if not indeed all of which, are to be found in the prior art. Nowhere, however, is found his precise organization, and the question at once presents itself as to whether there was exercise of the inventive faculty in the concept of their combination, for that a new result was achieved and a new mode of operation of an aluminum piston in its iron cylinder brought about is not successfully challenged on this record. Gulick separated the smaller ring carrying head of the piston from the somewhat larger skirt by a groove or air gap. This tends to prevent the passage of heat from the head directly to the skirt and permits the bearing faces of the skirt to yield to pressure...