Allen v. STANDARD CRANKSHAFT & HYDRAULIC COMPANY

• Decision Date: 07 November 1962
• Docket Number: Civ. No. 1607.
• Citation: 210 F. Supp. 844
• Court: U.S. District Court — Western District of North Carolina
• Parties: Charles J. ALLEN, Jr., and American Crankshaft Company, Plaintiffs, v. STANDARD CRANKSHAFT & HYDRAULIC COMPANY, Inc., Parts Warehouse, Inc., and Homer H. Brackett, Defendants.

210 F. Supp. 844

Charles J. ALLEN, Jr., and American Crankshaft Company, Plaintiffs, v. STANDARD CRANKSHAFT & HYDRAULIC COMPANY, Inc., Parts Warehouse, Inc., and Homer H. Brackett, Defendants.

Civ. No. 1607.

United States District Court W. D. North Carolina, Charlotte Division.

Argued May 18, 1962.

Decided November 7, 1962.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Channing L. Richards, Frank H. Kennedy, Clarence W. Walker, Charlotte, N. C., for plaintiffs.

William J. Waggoner, Paul L. Muilenburg, Charlotte, N. C., Joseph Y. Houghton, Washington, D. C., for defendants.

CRAVEN, Chief Judge.

This case presents a cause of action for patent infringement with which there have been joined a second cause of action for trademark infringement and a third for unfair competition. The court has jurisdiction of the parties as to all three causes of action. Jurisdiction as to the causes of action is accorded by statute — the cause for unfair competition being related to the claims asserted under the patent and trademark laws. 28 U.S.C. § 1338(b).

Co-temporaneously with the filing of this opinion, the court has filed detailed findings of fact and conclusions of law.

The patent in suit, about which the controversy principally involves, is United States Patent No. 2,567,685 issued on September 11, 1951 to the plaintiff Charles J. Allen, Jr., who presently owns the patent and who was the inventor. Plaintiff American Crankshaft Company operates as a licensee under the patent.

The invention covered by the patent in suit is a process for rebuilding worn automotive crankshafts and the like by welding and regrinding. The inventor, Mr. Allen, had previously been engaged in the "undersized" grinding business which consisted of grinding the bearing surfaces of a worn crankshaft to a smaller diameter. Undersize grinding has at least two disadvantages: the process cannot be repeated many times, and the thrust bearing surface cannot be reworked so that any lateral play due to wear is left uncorrected causing mechanical difficulty when the reconditioned shaft is installed in an engine block.¹ Mr. Allen considered alternative methods of reconditioning crankshafts, including chrome plating and metalizing, eventually abandoning them in favor of the patented method.

The main impetus for beginning this business was the shortage of new crankshafts occasioned by World War II.

All four of the Allen patent claims are comparable statements or definitions of the patent concept. Basically, all four claims may be separated into two parts: namely, (1) rebuilding and stabilization of the crankshafts for finishing and (2) finishing the stabilized crankshafts while establishing lineal relations that must be observed. The basic steps involved are:

(1) The fusing or welding of metal surface coatings at the crankshaft bearing areas; and

The rough grinding of the rod throws for relieving to a substantial extent the internal distortion stresses that result from the application of the surface coatings.

(2) Finish grinding the rod throws first so as to relieve fully any residual or remaining internal stress before the mains are finish ground; and

Carrying out the finish grinding as a whole to provide an ultimate compensation for any residual welding distortion so that the rebuilt bearing areas are all located in proper lineal relation with respect to the crankshaft thrust surface by which the operating position of the crankshaft will be fixed.

Location of the thrust bearing surface is perhaps the most important phase of the process of the present invention.² This is true because the thrust bearing surface controls the location of the shaft in the engine block. The form and arrangement of a crankshaft present unusual difficulties in machine work. The shaft has a tendency to spring and run out of true while it is being machined. These problems are magnified in the rebuilding of a worn crankshaft because the heat of the welding operation causes warpage and distortion. According to the Allen patent, the welding operation also destroys the identity of the original bearing surfaces so that they must be relocated.³

VALIDITY OF THE PATENT

It is conceded by the plaintiffs that the patent is no more than a new combination of old elements. The application for the patent contained the premise that no practical method had been previously developed for applying welding and grinding techniques to the rebuilding or reconditioning of crankshafts.⁴ This premise was erroneous. Volume 88, no. 9, September 1930 issue of the magazine Industrial Engineering contained an article entitled "Arc Welding Adds Life To Large Crankshafts". The article contained the following: "By means of the arc welding process it is possible to build up large shafts that are worn and thereby save money for a company whose equipment includes these large engines. After welding they can then be turned down again to the proper diameter."

The publication "Mechanical Handling" of July 1945 contains an article about building up worn machine parts by welding, metalizing, or electrical plating, with the warning that a crankshaft should not be built up by electrical welding unless subsequent heat treatment is possible.

The Welding Encyclopedia published in 1943 disclosed the use of automatic welding machines to repair crankshaft journals.

The August 1926 issue of the magazine Abrasive Industry contains information about the proper sequence in the grinding of crankshafts, listing seven steps and showing the proper sequence to be the grinding of rod throws and finish grind the bearings. Patent No. 2,182,228 for a method of machining crankshafts, issued to W. F. Groene in 1939, also indicates a grinding sequence similar to that taught in the Allen patent, i. e., to finish grind the rod throws (crankpins) before finishing the main bearings. The above-referenced article in Abrasive Industry also indicated the previous use of a spacing bar to correctly locate the grinding of bearings in a lineal relationship.

It is apparent all the elements were either "patented or described in a printed publication in this * * * country, before the invention thereof by the applicant for patent". See 35 U.S.C. § 102 (a).

The real problem with which the inventor wrestled was the distortion of the crankshaft caused by the heat of the welding operation and inherent in the peculiar shape of the shaft itself. Metal expands when heated but contracts in almost like degree so that "shrinkage" is not appreciable. It is warpage or distortion that causes the trouble, and in the case of automobile crankshafts the trouble consists almost entirely of getting the reconditioned shaft to fit back in the engine block.

All of the evidence tends to show that very little compensation needs to be made at the thrust bearing surface to compensate for distortion so that the shaft will fit into the block. Usually it is less than 20/1000 of an inch. The Allen patent itself says that the dimensional change will amount to only a slight shortening or lengthening of the shaft for which compensation may be made readily in grinding the thrust bearing surface.

It is difficult to accept plaintiffs' contention that a measuring gauge made of connecting rod steel is sufficiently fine and accurate to permit measurements accurate to 20/1000 of an inch and even less. It is more likely that such a gauge would indicate merely whether the shaft has lengthened or shortened during the conditioning process.

In any event, it does not seem to the court that the measuring of the lineal relationship of component parts of a crankshaft is patentable — by whatever method. It would seem obvious to one skilled in the art that if a shaft won't fit in an engine block that a minute lineal change in the location of the thrust bearing would likely solve the problem. This is so because an engine block has relatively wide tolerance for the component parts of a shaft. The rod throws can appreciably vary from their original position and still work well in an automotive engine.

Since 1948 the gross sales of American Crankshaft Company have amounted to more than $2,750,000.00 by the date this suit was filed. If this be deemed remarkable commercial success, it is due not to the teaching of the patent so much as to hard work and mechanical expertness and know-how. Commercial success alone, although entitled to consideration, does not make valid a patent. Great A & P Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162. And see: Universal, Inc. v. Kay Manufacturing Co., 301 F.2d 140 (4 Cir., 1962).

By way of summary, it is not invention in the light of the prior art to fuse a surface coating of metal on the main journals and rod throws and thrust bearing surfaces of a crankshaft; nor is it invention to rough and finish grind said rod throws and journals in any particular sequence in view of the prior art; nor is it invention to measure one's work in any manner to be sure that the shaft will fit in the engine block; nor is it invention to change the location of the thrust bearing surface so as to, in effect, "lengthen" or "shorten" the shaft so that it will fit into an engine block for the reason that this is an obvious expedient to a mechanic skilled in automotive work.

Are these old skills combined in a new method to achieve a new and useful result? No. Whether a combination of old skills has that impalpable something which distinguishes invention from simple mechanical skill cannot be answered by applying the test of any general definition of invention. 40 Am.Jur. Patents sec. 41. Patentability does not exist in the application of an old process to a new subject. The grinding of old crankshafts is closely analagous to the grinding of new ones; even the basic problem of distortion is the same. If the Allen patent advances the art, it is an advance plainly indicated by the prior art. See: Triumph Hosiery Mills v. Alamance Industries, Inc.,...