Borg-Warner Corporation v. Mall Tool Company, 11032.
Decision Date | 18 January 1955 |
Docket Number | No. 11032.,11032. |
Parties | BORG-WARNER CORPORATION, Plaintiff-Appellant, v. MALL TOOL COMPANY, Defendant-Appellee. |
Court | U.S. Court of Appeals — Seventh Circuit |
Casper William Ooms, Chicago, Ill., Carl G. Stallings, Herbert J. Schmid, Robert C. Williams, Chicago, Ill., of counsel, for appellant.
Horace Dawson, Chicago, Ill., Timothy L. Tilton, Chicago, Ill., Madison P. Neilson, John Bundock, Jr., Chicago, Ill., of counsel, for appellee.
Before MAJOR, LINDLEY and SWAIM, Circuit Judges.
Plaintiff, owner of patent to Hassler, No. 2,326,854, issued August 17, 1943, charged defendant with infringement of claims 1, 2, 9, 10, 11, 12, 13, and 14. The Court found claims 1 and 2 valid and infringed by exhibits 5 and 6, devices produced by defendant, but not infringed by exhibits 1, 2, 3, and 4, likewise manufactured by defendant, concluding that the claims properly construed did not cover the latter mentioned devices, but adding that, if claims 1 and 2 should be read as the plaintiff contended they should be, then exhibits 1, 2, 3, and 4 do infringe. The Court was of the opinion, however, that to construe them as covering the latter devices would invalidate them. It held claims 11 and 12 valid and infringed and declared claims 9, 10, 13 and 14 invalid. It found, however, that if they should be determined to be valid, they are infringed by exhibits 1, 2, 3, 4, 5, and 6 manufactured by defendant.
There is no cross appeal. Consequently the questions presented to us are: (1) Can claims 1 and 2 be properly construed to include exhibits 1, 2, 3, and 4, or, speaking otherwise, if those claims be so interpreted as to cover the mentioned exhibits, are they invalid because of anticipation or lack of invention? (2) Are claims 9, 10, 13, and 14 invalid as the District Court held?
Claim 1 which, for all essential purposes, is the same as 2 is as follows: "In a chain saw, a plurality of pivotally joined links, certain of said links having formed thereon angularly disposed slicing elements extending from one marginal edge of said chain saw towards the longitudinal center-line of said chain saw, said slicing elements having transverse, bottom routing edges formed thereon, said slicing elements being arranged in pairs oppositely disposed and spaced laterally apart, and others of said links having formed thereon side cutters having cutting edges lying at the marginal edges of said chain saw."
Included in the Court's findings was the following: It is evident from the claims and the District Court's unchallenged finding that the essential novel feature contributed by Hassler in his saw chain combination was an L-shaped tooth having both its shank and lower horizontal edge sharpened so as to cut off and under the wood fibers, respectively, leaving the debris behind to be pulled away by a drag element following the tooth, thus preventing clogging, which had been so troublesome in earlier devices.
The chain saw with which Hassler dealt is used principally in lumbering. Essential parts include a physical structure to support the chain, which in turn carries a series of cutting elements or teeth, motive power, a drag chain and proper guides. Prior to the time of what Judge Barnes said was Hassler's novel contribution to the art, chain saws had employed the same teeth as other saws, none of which included the specific type prescribed by Hassler or anything like it. The difficulties encountered in operation of the old devices largely disappeared in the utilization of his contribution. As the trial court found, he was the first to conceive of this idea. The beneficent results of his invention are reflected in the Court's findings and upon them we need not enlarge.
As we have observed, though the trial court found claims 1 and 2 valid and infringed by two of plaintiff's exhibits 5 and 6, it held further, that exhibits 1, 2, 3, and 4 were not within the teachings of the claims, but that if the latter should be construed, as the plaintiff insisted they should be, to cover exhibits 1, 2, 3, and 4, then they were invalid, for this would give to them a construction not justified by their language and so broad as to invalidate them for lack of invention over the patents to Bailey, 834, 251, Bens, 1,652,295, Barnes et al., 261,197 and Barnes, 749,603. It is upon this ruling that our question as to claims 1 and 2 is presented.
Defendant's position is that claims 1 and 2 require the slicing elements to be arranged in pairs oppositely disposed and spaced laterally apart, while others of the links have cutting edges lying at the level of the edge of the chain saw. It insists that its commercial chains do not contain such slicing elements so "arranged in pairs", as called for in the claims; that, whereas Hassler prescribed one left-hand and one right-hand L-shaped tooth mounted on the same link with no intervening tooth element and each of the pair of L-shaped teeth separated from the next adjacent pair by a link bearing a pair of side cutting teeth, defendant's commercial saws, in contrast, contain a succession of left and right-hand cutting teeth, not arranged in pairs as described by Hassler but individually arranged, each cutting tooth being mounted on a separate link. This arrangement, defendant insists, is not the equivalent of the Hassler structure. Defendant asserts that, under the patent's teaching, one left and one right-hand cutting tooth must be found on a single link of the chain. We think it clear, however, from an examination of the claims that Hassler's conception included the attachment of each pair of teeth to a common link. From an examination of the evidence and the Court's finding, it seems clear that defendant's variation from Hassler's teaching in this respect represents merely the improvement of a skilled mechanic, while still adopting the exact teaching of Hassler.
Whether one or two factors are employed to accomplish the same result, whether in combination or singly, is not, under the claims here, necessarily a matter of vital importance in determining whether there was invention, and whether there is infringement. The District Court in its memorandum made this statement: "Since every tooth of the accused structures includes a slicing element and a side cutter, it follows necessarily that some of the teeth have slicing elements and other of the teeth have side cutters, and that thus, the language, as well as the spirit, of the claims is satisfied in the accused structures." However, it later concluded: "that because no separate side cutting teeth, devoid of laterally extending toes, are embodied in Plaintiff's Exhibits 1, 2, 3, 4, or 5, they do not infringe claims 1 or 2."
In reaching this conclusion we think the Court was misled into the belief that though the same result was accomplished by defendant, the elimination of one component prevented defendant's devices from being the equivalents of Hassler's. Our language, in Sears, Roebuck & Co. v. Delta Mfg. Co., 7 Cir., 78 F.2d 745, 747, is pertinent: (citing cases) To the same effect is Apex Electrical Mfg. Co. v. Maytag Co., 7 Cir., 122 F.2d 182. In Graver Tank & Mfg. Co. v. Linde Air Products Co., 339 U.S. 605, at page 608, 70 S.Ct. 854, at page 856, 94...
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