Byron Jackson Co. v. Wilson

• Decision Date: 13 February 1942
• Docket Number: No. 685-Y Civ.,685-Y Civ.
• Citation: 43 F. Supp. 392
• Court: U.S. District Court — Southern District of California
• Parties: BYRON JACKSON CO. v. WILSON.

43 F. Supp. 392

BYRON JACKSON CO. v. WILSON.

No. 685-Y Civ.

District Court, S. D. California, Central Division.

February 13, 1942.

Lyon & Lyon by Leonard S. Lyon, all of Los Angeles, Cal., for plaintiff.

R. Welton Whann, of Los Angeles, Cal., for defendant.

YANKWICH, District Judge.

Letters Patent No. 1,871,825, issued on August 16, 1932, to Nelson K. Smith, "for an elevator latch" deal with an invention which, as the specifications declare, "relates to side door elevators of the type used in the raising and lowering of well casing, tubing, and the like, in the operations of drilling a well and maintaining the same in production." One of the declared objects of the invention "is to provide a latch that operates in a vertical plane, the path of movement of said latch also being in a vertical plane."

The defendant is charged in the amended complaint filed by the plaintiff, the assignee of the original inventor, with infringement of Claims 1, 4 and 11 of the Letters Patent. These claims read:

"(1) An elevator comprising a body provided with members pivoted together and recessed to form the bore of the elevator, one of said members provided with a horizontal pivot projecting forwardly therefrom and offset from the bore of the elevator, the other member provided with a lug, and a latch mounted on said pivot engageable with the lug.

"(4) An elevator comprising a body and a door pivoted together and recessed to form the bore of the elevator, a horizontal pivot projecting forwardly from the body, the axis of said pivot being in a plane that is offset from the bore of the elevator, a lug projecting laterally from one end portion of the door and provided with a shoulder, and a latch hung on said pivot and adapted to engage behind said shoulder.

"(11) An elevator comprising a body provided with (1) members pivoted together and recessed to form the bore of the elevator, one of said members being provided with a lug at its free end and the other member being provided with a horizontal forwardly pivot adjacent its free end, the axis of said pivot lying substantially parallel to the direction of initial movement of said lug when said body members are moved from their closed to their open position, and a latch mounted on said pivot having a face engageable with a face of said lug and being rotatable about said pivot into either latched or unlatched position."

The defendant has countered by denying infringement and by challenging the validity of the Letters Patent.

I am of the view that the claims are valid and infringed.

In what follows I state briefly the bases for these conclusions.

1. As to Infringement:

The patented device consists, substantially, of the following elements, as expressed in one of the claims in suit, — Claim 11. (1) An elevator comprising a body provided with members pivoted together and recessed to form the bore of the elevator, one of said members being provided with (2) a lug at its free end and the other member being provided with (3) a horizontal forwardly projecting pivot adjacent its free end, (4) the axis of said pivot lying substantially parallel to the direction of initial movement of said lug when said body members are moved from their closed to their open position, and (5) a latch mounted on said pivot having a face engageable with a face of said lug and being rotatable about said pivot into either latched or unlatched position.

The only real difference between the patented device and the accused device lies in the last element. In the patented device, the latch is rotatable on the pin, i. e., it turns on the pin. In the accused device, the latch and the shaft are integral, the latch turning with the pin.

But, as the patent does not limit the element to either method of construction, infringement cannot be avoided by choosing one instead of the other. See McClain v. Ortmayer, 1891, 141 U.S. 419, 12 S.Ct. 76, 35 L.Ed. 800; and see my opinion in Kammerer Corp. v. McCullough, D. C.Cal.1941, 39 F.Supp. 213, 219. This is especially true when one skilled in the art could, consistently with the teachings of the patent, adopt either construction. As a rule, in an ordinary action, admissions do not, of themselves, determine the ultimate fact in a case. This because they may be made when their legal effect may not be readily understood by a litigant. And they are very easily explained away. West v. Smith, 1879, 101 U.S. 263, 270, 25 L.Ed. 809. But in a suit involving a patent, especially where, as here, the litigant is an engineer and owner of inventions in the same field, who has appeared as a patent expert in many cases in the field of oil well machinery, his admissions acquire a special significance. At the trial, the defendant conceded both of the facts just alluded to. He designated the only element in which lay the difference between the patented device and the accused device. He also admitted that, under the specifications, this element could be constructed either in the manner in which it was embodied in plaintiff's device or in the manner in which the defendant built it in the accused device. We quote from the record:

"Q. By Mr. Leonard S. Lyon: In your deposition taken last week I believe you deny infringement of the Smith patent here in suit, on the ground that this latch pin does not serve as a pivot for the latch. Is that correct? A. I don't think I said anything about infringement, did I?

"The Court: Well, put it differently. Wherein do you think is there dissimilarity between your device and the Smith device? Put it that way. A. That is right. I do.

"The Court. Well, in what? In what Mr. Lyon just said? A. In the Smith device as shown in the patent and in the elevator in the case here, there is a partition that comes around from the body out to the side and then forward over the latch. The latch fits back inside of that. There is a solid bolt that goes through and locks solidly from this outside stationary partition to the inside of the elevator upon itself, and a flat latch member fits over that bolt and rotates above the bolt. * * * The elevator body has a section which comes forward and then turns over at a point in here where the latch bolt goes through. That also has another partition inside the latch which is integral with the body, and the bolt stocks through that inner wall. The bolt is permanently attached and passes through the outer wall, and has a nut inside the inner wall which screws up solidly and holds that bolt rigidly to each wall, both of which walls are integral with the body. The latch itself is mounted freely on the bolt and turns around the bolt, so that there is a short bearing which is simply the width of the latch at that point, and that allows the latch to wobble and possibly rotate somewhat; so that that is the way that latch is mounted. As described in the patent, there is a pivot pin projecting forward about which the latch rotates or is hung.

"Q. By Mr. Leonard S. Lyon: The pin in your device, in your elevators, of the AU and the A type, which carries the latch, projects forward, does it not? A. Yes, it projects forward, but it rotates with the latch.

"Q. And projects forward in exactly the same position and in the same direction as the pin in Exhibit 5, does it not? A. Yes, that is right. It is in roughly the same position.

"Q. The distinction that you are making is that in the Smith patented device, Exhibit 5, the latch rotates on the pin or around that pin, whereas in your device the pin and the latch move together and the pin rotates in the body; is that right? A. That is right. * * *

"The Court: Are you obtaining a different functional result or merely longer wearing? A. It would be longer wearing and avoid one of the difficulties of elevator latches. When heavy stress is on them, they have been known to open, that is to say, open the door while the elevator is on load.

"Q. By Mr. Leonard S. Lyon: Do you base your denial of infringement of the patent in suit on the fact that the latch in the Smith patent rotates about the pin, whereas in your elevator the latch rotates with the pin? A. I don't know. I think that is a function of the court. It isn't for me to say.

"The Court: Is that the essential difference between the structures, in your opinion? A. Yes, I think that is one of the essential differences in the structures."

"Q. By the Court: When the specifications are so worded that you cannot deduct from the teaching whether one thing is permissible or is not or whether or not a thing could be done in either way, then you, in reading that patent or constructing a device according to its teachings, would be free and feel that you were within the patent in constructing it either way? A. That is right. The only thing I am doing is to point out the differences and allow the court to use his judgment on that.

"Q. I am just asking the question. This question arises quite often. A. That is correct."

There is no showing that the construction of the accused device achieves a different result. On the contrary, the physical exhibits show clearly identity of function. As to construction, the accused device may show a colorable departure. It does not show a substantial departure from the patented device. There is, therefore, infringement here. See, Sanitary Refrigerator Co. v. Winters, 1929, 280 U. S. 30, 42, 50 S.Ct. 9, 74 L.Ed. 147; Highway Appliances Co. v. American Concrete Expansion Joint Co., 7 Cir., 1938, 93 F.2d 113, 117, 118; Williams Iron Works Co. v. Hughes Tool Co., 10 Cir., 1940, 109 F. 2d 500, 502; E. H. Bardes Range & Foundry Co. v. American Engineering Co., 6 Cir., 1940, 109 F.2d 696, 698.

2. As To The Validity of The Patent.

The question of validity, which seemed to present some difficulty at the argument, is, on full consideration, easy of solution.

The seeming difficulty arises from the fact that the claims in suit do read on the prior art. One of the witnesses for the plaintiff corporation, a trained patent...