Barber v. Reo Motor Car Sales Co.

• Decision Date: 12 June 1917
• Citation: Barber v. Reo Motor Car Sales Co., 245 F. 938 (S.D. N.Y. 1917)
• Parties: BARBER v. REO MOTOR CAR SALES CO.
• Court: U.S. District Court — Southern District of New York

245 F. 938

BARBER v. REO MOTOR CAR SALES CO.

United States District Court, S.D. New York.

June 12, 1917

Fred Francis Weiss, of New York City(Samuel E. Darby, of New York City, of counsel), for plaintiff.

Wetmore & Jenner, of New York City(Edmund Wetmore, Lawrence E Sexton, and Robert D. Eggleston, all of New York City, of counsel), for defendant.

HAZELDistrict Judge.

The Barber patent, No. 781,802, dated February 7, 1905, on application filed February 24, 1902, for improvements in valves and valve gear for explosive engines, is asserted by complainant to be infringed by the defendant company as to claim 9 only, which is for an exhaust valve and operating mechanism in its adaptation and use of an inlet valve in combination with an explosion motor.The case was tried before me in open court, and evidence taken relating to infringements of claims 8 and 9 for the inlet and exhaust valve, respectively; but after the summing up of counsel was completed complainant offered to withdraw claim 8, relating to the inlet valve, from further consideration, and to rely solely on claim 9.Defendant objected to the proposed withdrawal, and nothing further was done at the time; but since then complainant has notified defendant's solicitor in writing that he elected to withdraw claim 8 as an issue herein.Defendant, still opposing such withdrawal, contends that, as much of the evidence taken related to claim 8, its validity should be determined by the court.

Ordinarily a plaintiff has the undoubted right to dismiss his bill at any time upon the payment of costs, even where the case has been tried and the defense made; but, when it appears that during the progress of a trial rights of a defendant have been established, it is not, it has been held, just to deprive him of them.Chicago & Alton R.R. Co. v. Union Rolling Mill Co.,109 U.S. 702, 3 Sup.Ct. 594, 27 L.Ed 1081.In Georgia Pine Turpentine Co. v. Bilfinger et al (C.C.)129 F. 131, the trial court held that, where a preliminary injunction had previously been granted, the plaintiff would not be permitted, after the case was tried to dismiss the bill without prejudice, and as it appeared that infringement was not proven the defendant was entitled to a decree on the merits.But no such extreme condition is here presented.The withdrawal of a single claim after the taking of evidence and the summing up of counsel was not prejudicial to the rights of the defendant, and is an expedient not infrequently resorted to in patent litigation.In Thomson-Houston Electric Co. v. Elmira & H. Ry. Co. (C.C.)71 F. 886, Judge Coxe distinctly approved such procedure, remarking that the practice should be encouraged.

Therefore, without ruling as to claim 8, though incidental reference thereto is necessary, the issues will be narrowed to claim 9, which reads as follows:

'9.In an explosion motor, the combination with an explosion chamber having a T-shaped gas passage, the main central or stem portion of which forms the exhaust orifice of the explosion chamber of a screw plug closed at the outer end, open at the inner end, and having a perforated peripheral wall, so as to give free communication between the central hollow thereof and the main stem or central passage and the explosion chamber located in the head portion of the T-shaped passage, a puppet valve, the stem of which projects outward through the head of the plug seated upon the inner end of the plug, so as to cut off communication between the main stem portion of the T-passage and the explosion chamber, except when the same is forced away from the seat and toward the explosion chamber, a spring for normally keeping the valve in the closed position and means for forcing the valve stem inward, so as to open the valve actuated by the motor and adapted to be removed from contact with the valve stem without removal from the support thereof, so as to permit of removal of the plug and valve by the unscrewing of the plug, substantially as shown and described.'

Said claim relates wholly to an exhaust valve structure having a screw plug and valve cage and mechanism for taking it out of its casing by unscrewing the plug.It has five elements: (1) The explosion chamber, with a T-shaped gas passage forming the exhaust orifice of the explosion chamber; (2) a screw plug; (3) a puppet valve; (4) a spring for keeping the valve closed; (5) means for opening the valve by forcing the valve stem inward and for removal of the stem by unscrewing the plug, as is more particularly described therein.

Valves of different kinds and appearances are necessary appliances for combustion engines.A comparison of claims 8 and 9 discloses an additional element in the latter for removing the exhaust valve without disconnecting any operating mechanism.The desired result, according to the specification, is secured by first taking out the set screw 42 to permit turning aside cam rod 40, journaled at the lower end, thus bringing the extension arm 41 out of line or jointure with the valve stem and allowing the covering for the valve to be unscrewed.To replace the exhaust valve it is necessary simply to screw the screw plug back into the casing and turn the cam rod back in line with the under portion of the valve stem, thus joining them, and to hold the cam rod in contact with the valve stem at the elongated slot, permitting its reciprocation.

The Barber patent in suit was held valid and infringed in a prior litigation between the patentee and the Otis Motor Sales Company (D.C.)231 F. 755(affirmed240 F. 723, . . . C.C.A. . . .), and in that case the issues were substantially the same as here, involving the same operating mechanisms.The evidence, however, as to the validity or scope of the involved claim, is more complete, and a different prior art is submitted herein, which persuades me to another conclusion.An understanding of the inlet valve would, I think, be helpful to an understanding of the essential features of claim 9.The inlet valve is used in connection with an explosive motor having the usual cylinder and piston operated by a crank shaft, the gas entering the cylinder through openings in the wall of a screw plug or valve cage, which incloses or covers a valve ordinarily kept closed by a spring around its stem.It is opened by air pressure, and the vapor allowed to pass into the explosion chamber of the motor; it is seated on a ring and firmly held in position by the screw-threaded valve cage, which screws into the inlet orifice and may be locked therein.The exhaust valve, although made somewhat differently, also has a screw plug valve cage with perforated side walls, closed at the lower end and open at the upper end.The valve cage, covering the valve, is made to screw into the exhaust orifice, and is preferably located underneath the inlet orifice; the valve stem extending through and out of the valve plug at its inner side, while the puppet valve is kept in continuous contact by a spring with the valve seat.There is also a T-shaped gas passage, as specified in the claim.

The evidence does not show that the patentee herein was the first to invent a mechanism for screwing the exhaust valve to the casing of the explosion chamber to render removal easy.Nor was he the first to connect a screw plug and valve by its stem to a cam rod, which operated the valve in its reciprocation.In the litigation before Judge Ray, involving this patent, no prior art structures or combinations, like those in the patents to Hirsch, Hall, and Jerram, to which reference is hereinafter made, were shown.Indeed, the learned court in his opinion expressly said that each and every prior patent in evidence disclosed a valve cage which had one or more obstructions to its ready removal, and that no one had fully solved the problem of ready removability until Barber came into the field.The evidence before me is persuasively to the contrary, unless the testimony offered by complainant to antedate the invention is sufficiently convincing to establish the fact.

It is undeniable that a new combination or arrangement of parts to achieve a new result constitutes a new invention, and this is true, even though the principal elements of the combination or subcombination are old, provided they have not before been assembled in a single device to produce the same result.The prior patents to...