BF Goodrich Co. v. United States Rubber Co.

• Decision Date: 12 December 1956
• Docket Number: Civ. No. 7501.
• Citation: 147 F. Supp. 40
• Parties: The B. F. GOODRICH COMPANY, Plaintiff, v. UNITED STATES RUBBER COMPANY, Defendant.
• Court: U.S. District Court — District of Maryland

147 F. Supp. 40

The B. F. GOODRICH COMPANY, Plaintiff, v. UNITED STATES RUBBER COMPANY, Defendant.

Civ. No. 7501.

United States District Court D. Maryland.

December 12, 1956.

Fish, Richardson & Neave, Stephen H. Philbin, William K. Kerr, New York City, Semmes, Bowen & Semmes, Lawrence Perin, Baltimore, Md., for plaintiff.

Kenyon & Kenyon, Theodore S. Kenyon, Malvin R. Mandelbaum, Arthur, Dry & Dole, Paul H. Arthur, Frederick W. Wood, New York City, Venable, Baetjer & Howard, H. Vernon Eney, Baltimore, Md., for defendant.

R. DORSEY WATKINS, District Judge.

This is an action for alleged infringement by defendant of plaintiff's¹ patent No. 2,587,470, issued February 26, 1952, on an application filed in the Patent Office on December 14, 1946. For convenience, the patent in suit will sometimes be referred to as the Herzegh patent.

The answer denied infringement and set up the usual² defenses of prior knowledge and use; disclosures in printed publications more than one year prior to the application date; lack of novelty; and that the claims are directed to an aggregation of old and well-known elements, obvious to a person having the ordinary skill of the art.

Jurisdiction under the patent laws, including sale and use by defendant within the District of Maryland of products allegedly embodying the invention of the Herzegh patent, and maintenance by defendant of a regular and established place of business within the District, was asserted and proved. 28 U.S.C. § 1338; 28 U.S.C. § 1400(b).

A brief description³ of a typical tire is necessary to an understanding of the state of the art at the time of plaintiff's alleged invention, and the improvements claimed in the Herzegh patent.

A conventional tire assembly pertinent to this suit consists of a tire casing (usually called simply a tire), together with an inner-tube, and a one-piece metal rim.

The tire has a tread or wearing surface and a sidewall covering the outer part of the tire to protect the body of the tire, on a carcass containing plies, cords and beads.

The tread runs on the road, and may be either integral with the sidewall covers or a separate part adjoining the sidewall covers. Usually, the tread and sidewall covers are composed wholly or mostly of natural rubber or of butadiene-styrene synthetic rubber (until recently known as GR-S). Both of these are more abrasive resisting than butyl rubber.

GR-S rubber is a synthetic rubber very like natural rubber, with which it is compatible, so that they can be blended or adhered one to another. Butyl rubber is also synthetic, but less abrasive resistant than either natural or GR-S rubber, and is incompatible with them. Butyl rubber also has a higher "permanent set" and less resiliency than natural rubber or GR-S; that is, it tends to remain in the shape in which it may have been deformed or distorted, rather than returning to its previous shape. Butyl is, however, only about one-tenth as permeable by air as natural rubber.

The carcass is composed of plies (sheets of cord fabric, coated with rubber) containing cords. There are usually four, but sometimes six, plies in passenger car tires. Each ply is a layer of parallel cords coated and surrounded by rubber. The cords are strong, flexible threads, which may be made of cotton, nylon, or other fabric, or wire, but at present are usually rayon. The plies lie on top of each other, the innermost ply being inside the carcass, and the outermost ply is on the outside of the carcass just under the tread. They are numbered in that order, the innermost being referred to as the first ply. The cords in adjacent plies cross the center line of the tire at the same angle, but in opposite directions.

The beads contain bundles of wires, bound together and placed in the margins of the sidewalls, which rest against the flanges of the metal wheel rim. The wire beads form a non-extensible anchorage for the plies, which are anchored by wrapping them around, or partially around, the bead. This is known as a "ply lock". In the "conventional" ply lock, plies 1 and 2 come underneath the bead on the inner side of the tire and then turn up around it on the outside. Ply 3 comes down the outer side of the tire, turns under the bead and up on the inner side a short distance. Ply 4 follows the same course, except that it terminates under the bead.

The bead portion of the tire is the portion in which the beads are located. The bead toe is the sharp corner on the inside of the tire, and the bead heel is on the outside where the bead rests against the rim flange.

Terminology is not completely consistent. Thus the word "sidewall" is sometimes used to refer to the sidewall cover, which is actually the surface layer only of the sidewall. Similarly, the word "bead" is sometimes used to refer to the wire ring only, or to the wire, together with its wrappings, and the word "grommet" is sometimes used with the same meaning.

Sometimes a "chafer" or "finishing" or "rim seal" or "bead sealing" strip is placed between the beads and the rim flange to prevent the plies around the beads from being chafed or rubbed during operation.

The ordinary rim on passenger car tires is now, and for many years had been, of the one-piece drop-center straight-side flange type.

In the conventional commercial automobile tire produced before 1948, an inner tube was used. This, and not the carcass, was designed to be the air retaining member. But at least until the advent of the butyl rubber inner tube,⁴ substantial loss of air occurred through the inner tube. As the rubber elements of the tread and plies were generally of the same basic material as the inner tube and their combined thickness of rubber was greater than that of the inner tube, and as the permeability of rubber is directly proportional to its thickness, such air escaping from the inner tube would be trapped, unless some venting was provided. Trapped air would tend to diffuse into the plies, and cause the formation of blisters and the separation of the plies, resulting in early failure of the tire. It was therefore customary to provide grooves in the base of the beads, or ribs on the surface of the inner tube, all leading to the valve stem, to allow the escape of trapped air.

A satisfactory tubeless tire required a lining more nearly impermeable to air than the carcass of the tire, and an effective air seal between the tire beads and the rim.⁵ Claim 19 was selected by plaintiff as typical of the claims in suit.⁶ It reads as follows:

"19. A one-piece pneumatic tubeless tire comprising an open-bellied hollow annular body of arcuate cross section having a tread portion and outwardly bowed side walls terminating in spaced-apart bead portions adapted to seat on the flanges of an annular rim of straight-side flange construction, the arcuate extent of said body from bead portion to bead portion being such that upon inflation of said body with the bead portions seated on said rim flanges the maximum width of the body lies in a zone intermediate the bead and tread portions thereof and is substantially greater than the bead spacing, means for sealing the joints between the bead portions of said body and the flanges of said rim against the escape of air from within said body when the tire is inflated comprising a plurality of circumferentially continuous ribs molded integrally with said bead portions and extending outwardly from the axially outer face of said bead portions, said ribs being of the same material as the side walls of said body and being urged into sealing engagement with the rim flanges by the air pressure within said body when the tire is inflated and said ribs in their undistorted shape prior to being pressed against the rim flanges having an outwardly convex, approximately semi-circular cross-section, and a relatively thin lining of substantially impervious butyl type rubber composition adherent to and completely covering the inner surface of said body, said lining extending continuously from one bead portion to the other and terminating short of the outer surfaces of said ribs on said bead portions."

The attached exhibit-diagram of plaintiff's present⁷ tubeless tire will be helpful to an understanding of the problems in this case.

Plaintiff frankly admits that the Herzegh patent is not broadly for a tubeless tire and could not be, because of the many types of tubeless tires previously patented.

As stated by plaintiff's counsel:

"The invention of this claim 19 consists of a tire of ordinary body and sidewall construction on an ordinary wheel rim with flanges, which, when inflated with air, will operate satisfactorily, because of the specific kind of sealing ribs and the specific kind of liner described in the claims."⁸

Again:

"* * * There is no doubt that each feature in the Herzegh combination was known to the art. However, it is clear that the specific arrangement and placement in combination, which he taught and embraced in his claims and which the proof will show has solved factually the obviously difficult problem that confronted tire manufacturers, had never been suggested. Herzegh demonstrated that his specific placement and prescribed relationship of conventional tire, conventional rim, impervious liner and sealing ribs furnished a complete answer to the problem. This produced a new and useful result which had not been previously accomplished."⁹

It is therefore unfortunately necessary¹⁰ to consider in some detail just what are the "specific kind of sealing ribs"; the "specific kind of liner"; and the "specific arrangement and placement in combination" which Herzegh taught.

An object of the invention is "to provide a high resistance to diffusion of air into and through the wall of the tire; and to provide this high degree of impermeability" without objectionable heat.¹¹

A further object of the invention is "to provide for sealing * * * between the tire bead portions and the rim flanges * * *."¹²

The specifications describe...