Bemis Car Box Co. v. J. G. Brill Co.

• Decision Date: 07 November 1912
• Docket Number: 49.
• Citation: 200 F. 749
• Parties: BEMIS CAR BOX CO. v. J. G. BRILL CO.
• Court: U.S. Court of Appeals — Third Circuit

200 F. 749

BEMIS CAR BOX CO. v. J. G. BRILL CO.

No. 49.

United States Court of Appeals, Third Circuit.

November 7, 1912

Francis Rawle and Alexander Simpson, Jr., both of Philadelphia, Pa and J. Edgar Bull, of New York City, for plaintiff in error.

Antonio Knauth, of New York City, and Henry P. Brown and John G Johnson, both of Philadelphia, Pa., for defendant in error.

Before GRAY, BUFFINGTON, and McPHERSON. Circuit Judges.

BUFFINGTON Circuit Judge.

In the court below the Bemis Car Box Company, owner of patent No 239,702, issued April, 1881, to Summer A. Bemis, for a car axle box, brought an action at law against the J. G. Brill Company to recover the alleged damages suffered by it through infringement of said patent. The case having proceeded to issue, it was by consent referred to a referee, who by stipulation was to--

'hear and determine the case and report his conclusions thereon the court. His rulings on the admission or rejection of testimony and his findings of fact and conclusions of law shall be reviewable on exception by the United States Circuit Court and his findings of fact shall have the same force and effect as the verdict of a jury.'

After taking proofs, the referee found the plaintiff had sustained damages in $186,642.24. The parties consented to a pro forma judgment in favor of plaintiff, the Brill Company sued out this writ, and the court now hears the case as if at first instance.

From the proofs in the case it appears that in June, 1890, the Bemis Company brought a suit in equity against a street railway company in the Circuit Court of the United States for the District of Massachusetts, charging it with infringing said patent in the use of certain axle boxes made by the Brill Company. Thereafter the latter defended the suit and became the real defendant therein. The case was so proceeded with that in August, 1896, a decree was entered adjudging said patent valid and that the boxes in question infringed the same. Bemis Car Box Co. v. Boston & R. Electric St. Ry. Co., 75 F. 403. From such decree the Brill Company caused an appeal to be entered to the Circuit Court of Appeals of the First Circuit, which court in April, 1897, affirmed the decree below. 80 F. 287, 25 C.C.A. 420. Thereafter the latter court (98 F. 121, 38 C.C.A. 661) denied a petition of the Brill Company for leave to file a bill of review and permit the defendant in said cause to set up and prove the defense, now sought to be set up in the case now before us, of two years' public use and abandonment to the public of the device covered by said patent. Subsequently the present suit was brought, and resulted in the judgment above recited.

An examination of the record of the recited litigation in the First circuit shows that the validity of the first claim of the Bemis patent, was then in issue, and that such litigation resulted in a decree adjudging the title of the patent was in the complainant, that said patent, so far as the first claim thereof was concerned, was valid, and that it was infringed by the particular device of the Brill Company involved in that cause. On well-established principles it is clear that all the questions involved in that issue were, as between the parties to such litigation, merged and concluded in the final decree therein entered. The validity of the claim therefore became res adjudicata, and could not be called in question in any subsequent litigation between the parties. When, therefore, the Brill Company, in the present suit, sought to raise the questions of prior use and abandonment-- questions which went to the validity of the patent-- the referee properly held that as between these parties that question was concluded by the Massachusetts decree. The defendant herein there had an opportunity to litigate that issue, and in point of fact by its petition for a bill of review had contested the very question it now seeks to relitigate. The referee, therefore, was right in holding that the prior litigation had, as between those litigants, finally settled the validity of the claim. But whether a particular form of device, which was not passed upon in the preceding suit, was covered by that claim, was, of course, an unadjudicated question, and therefore open in the present suit. This question of infringement we think the referee rightly decided against the defendant.

The car box of the Bemis patent is so fully described in the opinions of Judge Carpenter (75 F. 403) and of Judge Putnam (80 F. 287, 25 C.C.A. 420) that we avoid repetition by reference thereto. To us it is clear the patent disclosed, in its field, a generic device, in that it first gave to the art a washer which by its elasticity, its contact with the flange on the box, and a tapered periphery surface, in connection with the flange on the wall, so operated that, in the language of the specification:

'There is always contact between the end of the flange and the wall and the side of the washer, and also contact between the inner rim of the washer and the outer surface of the sleeve and the housing.'

Indeed, the generic character of Bemis' device and the differentiation of the infringing device as a species are to our mind impliedly conceded in Brill's patent No. 418,439, granted December 31, 1899, under which the defendant sought to justify its infringement, and wherein the patentee, in disclaiming the Bemis patent, said:

'I am aware that a car axle box shield, in which the axle box has in its rear end an annular chamber, with open end toward the wheel, and said chamber having an inclined step or ledge, against which a ring or shield is pressed by a flanged collar, is old; but the same differs from my invention in that the flanged collar is either secured to the wheel or forms an integral part thereof, and as this location or securement of the collar flange is open to many disadvantages, which are fully set forth in said patent, I distinctly disclaim the same.'

Moreover, it will be noted that the Brill patent refers to its second ring as a mere duplication of the first or alternative construction, thus:

'In some cases, where only one ring or shield is necessary or required, the ring or shield G may alone be used, as shown in Fig. 2, or the ring or shield E may correspondingly be employed, as indicated in Fig. 3.'

In the Massachusetts case the court had before it the Bemis device, embodying as its distinguishing feature a single elastic washer. The Brill patent, as we have seen, had two elastic washers. In his opinion Judge Putnam describes that element of Bemis' claim as '(4) the location of the washer so as to be confined by contact,' and says:

'The word 'crowd,' found in the specification, relied on by the appellant, is at the most only descriptive, and is sufficiently apt to indicate crowding against the taper of the sleeve merely to make a close joint, exactly as the appellant crowds the washer against its 'abutment' for the same purpose. If it be conceded, however, that the appellant does not use the 'tapered sleeve,' or the flange projecting out from the side of the wheel, in precisely the forms as described in the appellee's patent, the case becomes a question of equivalents. * * * This invention did not relate to a matter of mere simplicity of form, or of mere convenience, or to cheapening the cost. It involved a new and useful function, although, perhaps, in view of what the record shows of the art, in a limited field of operation. It is therefore entitled to some aid from the doctrine of equivalents; and we cannot conceive of any case where it could be so entitled, unless it is in the present one, where the departures are only in matters of form, and of such character as to suggest that they are studied evasions of those described in the claim in issue.'

This estimate of the Bemis device and construction of the claim in question commend themselves to us. Applying them to the device the Brill Company subsequently adopted, having a single washer, the referee was justified in holding it still infringed. The Brill patent, with its two alternative washers was before the Massachusetts court, and a device made with two was enjoined by that court. That a defendant in such case should relieve itself by using one, and especially when that one was by its own specification-admission an optional construction, is a proposition to which we cannot assent.

It is also contended that, inasmuch as the claim in question embodies 'a washer placed upon said tapered sleeve and the box and there confined by contact with the end of the flange and the wall, substantially as described, ' and as defendant's point of contact is not at the end of the flange, but intermediate, it thereby avoids infringement. But it is clear this location is wholly one of form to escape infringement, while it utilizes the infringing function to appropriate the substance of the claim. The point of contact in defendant's device is, when viewed from result, the functional end of the flange; for, as conceded at bar, the part of the flange beyond had no functional part in the operation of the device. To say that a shoulder or abutment which by its flange relation efficiently effects the elastic connection covered by the patent can be shorn of its infringing character by adding functionless further length to the flange is to make form without substance the equivalent of substantial form. Such a contention is answered by this court, speaking by Judge Gray, in Carnegie v. Brislin, 124 F. 221, 59 C.C.A. 659:

'Again, the claim of the patent in suit, as well as the description in the specification, requires a feed roller table pivoted at its outer end. Interpreted reasonably, this, of course, does not mean the very tip of the outer end, but the functional

...