Alliance Securities Co. v. De Vilbiss Mfg. Co.

• Decision Date: 13 June 1930
• Docket Number: No. 5212.,5212.
• Citation: 41 F.2d 668
• Parties: ALLIANCE SECURITIES CO. v. DE VILBISS MFG. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

41 F.2d 668 (1930)

ALLIANCE SECURITIES CO. v. DE VILBISS MFG. CO.

No. 5212.

Circuit Court of Appeals, Sixth Circuit.

June 13, 1930.

Samuel E. Darby, of New York City (Darby & Darby, of New York City, and Byron Coleman, of San Francisco, Cal., on the brief), for appellant.

Wilber Owen, of Toledo, Ohio (Owen & Owen and Charles W. Owen, all of Toledo, Ohio, on the brief), for appellee.

Before DENISON, MOORMAN, and HICKENLOOPER, Circuit Judges.

DENISON, Circuit Judge.

Infringement suit upon patent No. 1,196,691, issued August 29, 1916, to Hopkins, for a paint-spraying apparatus. In 1924, Hopkins began suit on this patent in California against one Mohr, who was using what is known in this record as the first form of apparatus manufactured by the De Vilbiss Company, of Toledo, the defendant and appellee herein. It assumed the defense of the Mohr Case, with the knowledge of plaintiff. There was a decree in plaintiff's favor, entered in 1925 and affirmed by the Ninth Circuit Court of Appeals in 1926. 14 F.(2d) 793, affirmed 14 F.(2d) 799. The plaintiff in that case and this, the owner of the Hopkins patent, then brought this suit against the De Vilbiss Company at Toledo. After the Mohr suit it had been making the forms known as its second and third. The court below held that these two forms did not infringe the patent, and that plaintiff's right to accounting and for damages for the manufacture of the first form had been lost by laches and because plaintiff had used unfair means in the assertion against the trade of its rights based on that decree. The court below further held that defendant was entitled to an injunction against such unfair means and an accounting of its damages caused thereby.

The De Vilbiss Company does not deny that it was privy to the California suit, and that the decree therein is an adjudication concluding it as to the validity of the Hopkins patent and its infringement by the first form. It is, however, clear that the scope of the Hopkins patent, as extending its monopoly beyond the first form, and the specific questions of infringement by forms two and three were not involved or decided in that case, and are therefore now open.

Since the original decree in California, and in subsequent suits brought by plaintiff against Ford and the Roman Company, the Ninth Circuit Court of Appeals has decided that forms similar to 2 and 3 are not infringements. 31 F.(2d) 278, 279. The same result has been reached by the Eighth Circuit Court of Appeals in the Matthews Case, 40 F.(2d) 879, decided April 5, 1930. The point is so well discussed in the master's report, which was the basis of the Ford and Roman decisions, and in Judge Stone's opinion in the Eighth Circuit Court of Appeals, that we can add little, and will not take the space for a detailed discussion of the facts. We concur in the results reached by these two courts on this subject.¹

The question turns on the meaning of the mutual independence of the two air valves called for in the claim. Upon the face of the specification and claims, infringement can plausibly be asserted, for within a certain range of operation (a range perhaps covering the ordinary practical field) the two valves in forms 2 and 3 are mutually independent; but the file wrapper strongly indicates that Hopkins had in mind a more complete independence; and — more important in our view — to give the broad construction necessary to make out infringement by forms 2 and 3 would seem to include prior art structures and thus invalidate the claims.

Hopkins interposed in each of his lines means for reducing or controlling the air pressure. In his specifications he refers to this as a "reducer," or an "air reducer." He does not specify what form this reducer shall take, except as in his drawing numerals 6 and 9 indicate, merely conventionally, what he calls in one case a reducer and in the other case a reducing valve. With each of these he shows a gage "for the purpose of observing the pressure passing through." In the claims, this element is described as "controllable reducing means," "controlled reducing means," "a pressure regulator," or "means to vary the pressure." These terms are all very general, and plainly cover such regulating valve or relief or controlling valve as was in common use upon the main air line after it left the original or main compressor or pressure tank or on the tank itself. To construe Hopkins' claims as covering a device where a reducing valve, anywhere on the main line above the branching point, controlled all the air pressure, and when there was in addition only a controlling valve on the branch leading to the paint tank, would make the claims read upon the old art. It is therefore necessary to the validity of the patent that the "independent control" of the claims should be construed as referring to a completely independent control, so that neither one, no matter how varied, can affect the other.

We are not able to concur in the view that plaintiff's right to maintain this suit and to have the ordinary remedies have been lost by laches. Defendant was a large manufacturer, if not the leading one, of this general type of apparatus. In 1917 it changed from its old gravity feed form to a pressure feed form, which developed into the first form here involved. In the California field, this device was put out by Mohr; and Hopkins says that he did not, until 1920 or 1921, know of any substantial infringement by Mohr. In January, 1921, he gave notice to the defendant, through Mohr, that he claimed infringement. There were negotiations between the parties for the next few months; and it does not seem that defendant had any good reason for supposing the infringement claim was abandoned. A suit on the patent was commenced in August, 1923, but went by default. Then Mohr was sued in January, 1924. Hopkins shows that from 1920 to 1923 he was personally financially unable to go into litigation with a strong opponent, and that the corporation which owned the patent had financial troubles and internal dissensions; in practical effect, the control of the company and of the patent was in controversy. It has been frequently held that the unusual years during and immediately after the great war constitute a period in which all reasonable postponement and suspension of litigation was a public duty. Further, the defendant only pursued the course of business it had adopted before it knew of this patent, and, when suit was brought, made no change until compelled by the decree. Still further, if the defense of laches was ever good it could have been made in the Mohr Case where the facts were fresher in the minds of all; but it was not there successfully made. It is not seriously suggested that after commencing the Mohr Case, the plaintiff has not been diligent in prosecution; it was under no obligation to bring a separate suit against the De Vilbiss Company at Toledo, while that company was defending the case in California; nor was Hopkins under any duty, legal or equitable, to go across the country to sue an infringing manufacturer at its home, when he could prosecute the same infringement in his home district. After the final termination...