Alemite Co. v. Jiffy Lubricator Co.

• Decision Date: 31 October 1949
• Docket Number: No. 13835,13840.,13835
• Citation: 176 F.2d 444
• Parties: ALEMITE CO. v. JIFFY LUBRICATOR CO. JIFFY LUBRICATOR CO. v. ALEMITE CO.
• Court: U.S. Court of Appeals — Eighth Circuit

176 F.2d 444 (1949)

ALEMITE CO. v. JIFFY LUBRICATOR CO.

JIFFY LUBRICATOR CO. v. ALEMITE CO.

Nos. 13835, 13840.

United States Court of Appeals Eighth Circuit.

August 17, 1949.

Rehearing Denied October 31, 1949.

Herbert G. Nilles, Fargo, N. D., and Casper W. Ooms, Chicago, Ill. (John D. Black, Elwood Hansmann and Thomas F. McWilliams, Chicago, Ill. on the briefs), for Alemite Co.

Leonard L. Kalish, Philadelphia, Pa. (C. A. Taney, Jr., Minneapolis, Minn., on the briefs), for Jiffy Lubricator Co.

Before SANBORN, WOODROUGH, and JOHNSEN, Circuit Judges.

SANBORN, Circuit Judge.

The action out of which these appeals arose was brought by the Jiffy Lubricator Company, as plaintiff, against The Alemite Company, as defendant, in 1938.¹ The defendant was charged with having infringed the plaintiff's patent No. 2,040,177 issued to it on May 12, 1936, upon an application filed by August Johnson and John S. Johnson on October 30, 1930. The patent is for a "Hydraulic Lubricating Connection" for greasing the bearings of "motor vehicles and the like." The alleged infringing devices were "Alemite hydraulic couplers" manufactured by the Stewart- Warner Corporation, of Chicago, or one of its subsidiaries, and sold by the defendant. The defendant denied infringement, denied that the Johnsons were the first inventors of the coupler disclosed by the patent in suit, and asserted that the patent was void because of anticipation and lack of invention. The issues, which involved all of the nine claims of the patent in suit except claim 2,² were tried to a jury, which returned a verdict for the plaintiff. A motion of the defendant for a directed verdict had been denied by the court. After verdict, the defendant moved for judgment notwithstanding. That motion was denied. The plaintiff moved the court to increase the damages awarded by the jury, as authorized by § 67 of Title 35 U.S.C.A., and to allow the plaintiff attorneys' fees under § 70, Title 35 U.S.C.A. as amended. The court denied the plaintiff's motion. Judgment was entered for the amount of damages allowed by the jury, plus $12,000 costs and $468.73 interest, a total of $23,840.53. These appeals followed.

The defendant, in its appeal, challenges the validity of the judgment and the fairness of the trial. The plaintiff, in its appeal, charges the court with an abuse of discretion in not increasing the jury's award and in not adding attorneys' fees to the judgment.

The vital question for decision is, we think, whether the patent in suit (referred to as the Johnson patent) is clearly invalid for lack of patentable invention over the prior art. If the patent is clearly void, the verdict of the jury is, of course, of no help to the plaintiff and other questions need not be considered.

This controversy purports to be, and is of record, one between two North Dakota corporations. In reality it is mainly between two large manufacturers of lubricating equipment, the Lincoln Engineering Company, of St. Louis, Missouri, which has financed the prosecution of the action for infringement, and the Stewart-Warner Corporation, of Chicago, which makes and markets the "Alemite Hydraulic Coupler," and which has contributed to the defense. The action was brought in the Eighth Circuit, no doubt, because plaintiff's counsel were of the view that the opinion of this Court in Stewart-Warner Corporation v. Jiffy Lubricator Co., 81 F.2d 786, would be helpful to the plaintiff.

We do not propose in this opinion to go into a detailed description of the prior art and the history of greasing equipment for motor vehicles. For approximately thirty years the manufacturers of such vehicles have equipped them with tubular nipples or pin fittings at points. where greasing was necessary. The nipples are of a type which can be connected by a coupler with a grease gun capable of forcing grease, under high pressure, to the bearing to be lubricated. The patent which revolutionized the method of greasing the bearings of automobiles was the Gullborg patent No. 1,307,734, issued in 1919, for a combination consisting of a pin fitting, a grease pump or grease gun, a hose to connect the two, and a bayonet type of coupler for manually connecting the hose to the pin fitting. All of the elements of the combination were old in the art, the only novel features being the means provided by Gullborg for preventing the exudation of grease upon release of the grease pressure and the disconnection of the coupler, and his use of the transverse pin of the pin fitting as the base for the spring which effected a closure of the orifice of the fitting after the greasing operation was completed. The validity of the Gullborg patent as to certain of its claims was sustained by the Circuit Court of Appeals of the Sixth Circuit in Lyman Manufacturing Co. v. Bassick Manufacturing Co., 1927, 18 F.2d 29.

The owner of the Gullborg patent took the position that anyone making, using or selling any kind of grease gun to be connected with the Gullborg pin fitting, or making, using or selling a pin fitting to be connected with the Gullborg coupler, was guilty of contributory infringement. The market for grease guns, couplers and pin fittings was large and lucrative. Much patent litigation ensued. The question of contributory infringement reached the Supreme Court in 1935 and was decided on May 18, 1936, in the cases of Bassick Manufacturing Co. v. R. M. Hollingshead Co., and Rogers et al. v. Alemite Corporation, 298 U.S. 415, 56 S.Ct. 787, 80 L.Ed. 1251. The Supreme Court held, in substance, that, since the combination of a grease pump, connecting conduit, coupler, and pin fitting was old in the art, Gullborg could not, by inventing a new and improved type of coupler or pin fitting, claim either of these in combination with the old forms of the other elements so as to exclude the public from the use and sale of the old forms of fittings or grease guns even though these might be used respectively with Gullborg's improved coupler or his improved pin fittings, because, in the combinations claimed, an old-type fitting or an old-type coupler had no novel function over those of the prior art. See Lincoln Engineering Co. v. Stewart-Warner Corporation, 1938, 303 U.S. 545, 547-548, 58 S.Ct. 662, 82 L. Ed. 1008.

It is safe to say that in or about 1930, when the Johnsons devised their so called "Jiffy hydraulic coupler" and applied for the patent in suit, virtually all automobiles were equipped with Gullborg pin fittings, and the makers of grease guns with bayonet type couplers, as well as those who made pin fittings which could be used in Gullborg's combination, were being sued as contributory infringers of Gullborg patent No. 1,307,734. August Johnson and his brother "wanted to get a coupler where we would not have to depend on the pin to hold the coupler on the fitting." What they wanted "to get away from" was "an Alemite Gullborg pin connector." This was "on account of all our trouble in these inventions of ours, which was on account of the coupler using a fitting that would hook on a pin." It appears that August Johnson told an automobile mechanic in or about 1928 about making something to do away with the old type of connector so that he (Johnson) would not have to use the pin on the Alemite fitting, and that he thought he could make something that would work like a drill chuck, utilizing the force from the grease gun to grip the fitting during the greasing operation. The mechanic understood what Johnson was talking about, and thought it would work.

The production and sale by the plaintiff of the Jiffy hydraulic coupler was followed by the action of Stewart-Warner Corporation v. Jiffy Lubricator Co., which was considered by this Court on appeal in 81 F.2d 786, decided February 11, 1936. In that case the Jiffy Lubricator Company was charged with the infringement of claim 1 of the Butler patent No. 1,593,791, issued July 27, 1926, upon an application filed February 19, 1923, claiming a combination of a headed nipple and a coupler for attachment to the throat of the nipple, for lubricating bearings, especially those of automobiles. The Butler patent disclosed a chuck type of coupler, the fingers or jaws of the chuck being actuated by a piston within a cylinder, "whereby the pressure of the lubricant on said piston will move the piston to forcibly compress said means the fingers or jaws provided for locking the coupler to the nipple, while the lubricant is passing through said connecting parts." The District Court in that case had held that claim 1 of the Butler patent was valid if the device covered by that claim was limited to its exact form or its clear mechanical equivalents, and that unless it was so limited it would be invalid for lack of novelty over the prior art. This Court affirmed. In its opinion it said, page 791 of 81 F.2d: "Reviewing the prior art, however, we find that it is an old idea to make a chuck whose jaws or gripping elements are segments carried by a cylinder; the segments being drawn together into firm grip upon an object by wedging action between the cylinder and the segments. It is also an old idea to...