Banker v. Ford Motor Co.

• Decision Date: 07 March 1933
• Docket Number: No. 6763.,6763.
• Citation: 3 F. Supp. 737
• Parties: BANKER v. FORD MOTOR CO.
• Court: U.S. District Court — Western District of Pennsylvania

3 F. Supp. 737

BANKER v. FORD MOTOR CO.

No. 6763.

District Court, W. D. Pennsylvania.

March 7, 1933.

Wm. B. Jaspert, of Pittsburgh, Pa., for plaintiff.

John Weld Peck, of Cincinnati, Ohio, I. Jos. Farley, of Detroit, Mich., Reed, Smith, Shaw & McClay, of Pittsburgh, Pa., and Longley, Bogle & Middleton, of Detroit, Mich., for defendant.

McVICAR, District Judge.

Findings of Fact.

(1) The patent involved, 1,005,135, is for an improvement in windshields in relation to hinging the upper and lower sections together, and for the holding of the upper section in a folded position.

(2) Arthur L. Banker, the plaintiff, made application for the patent on December 19, 1907, which was granted October 10, 1911, and which expired October 10, 1928. This action was brought October 7, 1931.

(3) The defendant, a corporation of the state of Delaware, was incorporated in 1919. It purchased the assets of the Ford Motor Company, a Michigan corporation, in 1920. The stockholders of the Ford Motor Company of Michigan differed substantially from those of the Ford Motor Company of Delaware.

(4) Prior to 1915, the Ford Motor Company purchased its windshields from others; since that time, it has manufactured most of the windshields used on its cars.

(5) The windshields purchased by the Ford Motor Company and manufactured by it prior to 1925, were of the type that plaintiff alleges infringes the patent in suit. Such windshields were in common and general use throughout the United States prior to 1925.

(6) The Ford Motor Company constructed its first windshield department in the early part of 1915. The building occupied 10,000 square feet. The machinery and equipment cost approximately $20,000, and the space occupied by the building had an approximate value of $20,000. It employed about seventy-five persons therein. The Ford Motor Company constructed its second windshield department in the latter part of the year 1915. It occupied 20,000 square feet. The machinery and equipment cost approximately $40,000; the space occupied had an approximate value of $70,000; the number of persons employed was three hundred and fifty. The Ford Motor Company constructed its third windshield department in the year 1928. It occupies a space of 20,000 square feet; the machinery and equipment cost $135,000; the space occupied has an approximate value of $100,000; and three hundred persons are engaged as employees therein.

(7) The plaintiff knew of the defendant's use of the alleged infringing device prior to April 10, 1915, and knew of the continued use thereof by defendant from that date until this action was brought. He also knew, during the same time, that the same device was in general public use on many various types of automobiles made by different manufacturers.

(8) On April 10, 1915, plaintiff mailed at Pittsburgh to the defendant at Detroit a letter of which the following is a copy:

"April 10, 1915.

"The Ford Motor Co., Detroit, Michigan.

"Gentlemen: You will find enclosed copies of patents 1,005,135 and 1,005,136 covering features of wind shield construction which are embodied in shields used on the late models of your cars. The applications for these patents, you will note, were filed in December 1907 and July 1910.

"You will note that 1,005,135 covers the means of supporting the upper and lower glass by means of metal shelf extending in towards the center from the frame. By means of this construction a shield can be made without a binding strip between the two lights of glass which would be an obstruction to clear vision.

"No. 1,005,136 covers a windshield construction in which the upper glass overlaps the lower glass. The advantage in this construction being in the fact that it prevents rain or wind blowing into the car between the two lights of glass, prevents the whistling of wind at this point, and at the same time permits a clear view unobstructed by any binding or engaging strips between the two sides of the shield.

"If you will take the trouble to look over these patents, you will find that they are complete in every respect.

"Considering the large number of cars you manufacture, all of the shields on which embody the above patented features, I thought you might be interested in purchasing these patents. Failing that you may have something to suggest in the way of royalty.

"Your early advice will be much appreciated.

"Very truly yours "ALB:CC."

Defendant was notified to produce the original letter, and made reply thereto that, after diligent search, it could not find it, nor did it have any record thereof.

(9) There was no evidence of any other communication between the plaintiff and the defendant, other than the letter above. There was no evidence of any threatened action against the defendant, or any other manufacturer or user, prior to the bringing of this action. No action was brought by plaintiff against defendant, or any other person, for infringement of the patent aforesaid, prior to the present action.

(10) During the period from April 10, 1915, to October 7, 1931, material witnesses for defendant have died; memories have been impaired by sickness and advanced age; records and material papers have been destroyed.

(11) The plaintiff, during said period, was actively engaged in the automobile business on a large scale in the city of Pittsburgh. He had offices in New York and Philadelphia. He has died since the time of bringing this action of a disease of the heart, known as an "athletic" heart. He had this trouble for twenty-three years prior to his death. During the period from April 10, 1915, to October 7, 1931, he personally managed his business; he visited his New York and Philadelphia offices. He drove his automobile to his business until about two years before his death. He was absent from his office occasionally for a few days on account of his heart trouble. He was physically capable of bringing action for the alleged infringement of his patent from the time he admits knowing of the defendant's structure, April 10, 1915, down to the time he brought this action.

(12) Plaintiff, prior to the bringing of this action, did not deem that defendant's windshields and those of a like type manufactured and used by others, were an infringement of the patent in suit. He acquiesced in such manufacture, and use, from April 10, 1915, to October 7, 1931.

Conclusion of Law.

Plaintiff is not entitled to recover, and should be restrained from proceeding in the present action, by reason of his laches and other acts, which create an estoppel in favor of the defendant.

Opinion.

This is an action to recover $18,000,000 damages alleged to have been caused by defendant through its violation of the patent in suit, from October 10, 1925, to October 10, 1928.

The defendant, in its affidavit of defense, set up the legal defenses of invalidity and infringement, and the equitable defense of laches and estoppel. A hearing of the equitable defense was had by the court, at which the evidence of the parties was heard. The court has made the foregoing findings of fact and conclusions of law. For the purpose of this opinion, the facts are briefly stated as follows:

The patent in suit, 1,005,135, is for an improvement in windshields. The invention claimed relates to the hinging of the upper and lower sections, and for the holding of the upper section in a folded position. Plaintiff made application for a patent December 18, 1907; it was granted October 10, 1911; it expired October 10, 1928. This action was brought October 7, 1931.

The defendant is a Delaware corporation, incorporated in 1919. It purchased, in March, 1920, from the Ford Motor Company, a Michigan corporation, its assets. The stockholders of the Ford Motor Company, the Delaware corporation, are substantially different from the stockholders of the Ford Motor Company, the Michigan corporation.

Prior to 1915, the Ford Motor Company purchased its windshield requirements from others. Since that time, it has manufactured the most of the windshields that it used upon its cars. The windshields purchased and manufactured by the Ford Motor Company, prior to 1925, were of the type which plaintiff alleges infringed the patent in suit. Such windshields were made by other manufacturers, and were in public use throughout the United States prior to 1925.

In the early part of the year 1915, the Ford Motor Company constructed its first windshield department; the building occupied 10,000 square feet; the machinery and equipment cost approximately $20,000; the space had an approximate value of $20,000; it engaged seventy-five employees. Defendant constructed its second windshield department in the latter part of the year 1915; it occupied a space of 20,000 square feet; the machinery and equipment cost approximately $40,000; the space had an approximate value of $70,000; three hundred and fifty employees were engaged therein. Defendant constructed its third windshield department in 1928. It occupies 20,000 square feet; machinery and equipment cost approximately $135,000; the space occupied has an approximate value of $100,000; the number of employees is three hundred.

Plaintiff knew of the windshield that the Ford Motor Company was manufacturing prior to April 10, 1915. He has known of the windshield manufactured, sold, and used by defendant from said time until the bringing of this action. During the same time he has known that such windshields were manufactured by others, and were in general use throughout the United States.

On April 10, 1915, the plaintiff mailed a letter to the Ford Motor Company (see finding of fact 8), in which he stated that he inclosed two patents, one being the patent in suit. He also gave a brief description of said patents. He also stated therein that these patents covered features of windshields "embodied in windshields used on the old models of your cars." In concluding his letter, he said: "I thought you might be interested in purchasing these...