Cleveland Trust Co. v. Schriber-Schroth Co., 7223-7225

• Decision Date: 13 December 1939
• Docket Number: 8094-8096.,No. 7223-7225,7223-7225
• Citation: 108 F.2d 109
• Parties: CLEVELAND TRUST CO. et al. v. SCHRIBER-SCHROTH CO., and five other cases.
• Court: U.S. Court of Appeals — Sixth Circuit

108 F.2d 109 (1939)

CLEVELAND TRUST CO. et al. v. SCHRIBER-SCHROTH CO., and five other cases.

Nos. 7223-7225, 8094-8096.

Circuit Court of Appeals, Sixth Circuit.

October 6, 1939.

Supplemental Opinion December 13, 1939.

Arthur C. Denison and F. O. Richey, both of Cleveland, Ohio (Wm. C. McCoy, of Cleveland, Ohio, Milton Tibbetts, of Detroit, Mich., and Baker, Hostetler & Patterson, Richey & Watts and Evans & McCoy, all of Cleveland, Ohio, on the briefs), for Cleveland Trust Co. and Chrysler Corporation.

John H. Sutherland and John H. Bruninga, both of St. Louis, Mo., for Schriber-Schroth, Aberdeen Motor Supply Co., and F. E. Rowe Sales Co.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

SIMONS, Circuit Judge.

Our former opinion in this much litigated patent controversy involving automobile pistons is reported at 92 F.2d 330, under identical style, but including disposition of the companion cases brought by appellants against the Aberdeen Motor Supply Company, No. 7024, and the F. E. Rowe Sales Company, No. 7025. The Supreme Court, after denying certiorari and a petition for rehearing, received the cases upon a second rehearing petition and reversed with remand to us for consideration of questions presented and not determined, Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47, 59 S.Ct. 8, 83 L.Ed. 34; directions amended, 305 U.S. 573, 59 S.Ct. 8, 83 L.Ed. 34;¹ A second group of appeals (8094, 8095, 8096) from decrees against appellees in the first case, responsive to our decision therein, is now consolidated for consideration with the reconsideration required by the order of remand.

The claims of five patents, and a number of infringing devices, were in the first instance presented for adjudication. In their consideration we were greatly impressed by the story disclosed by the record of the long search and sustained effort on the part of exceptionally competent automotive engineers to completely solve the problem of a successful aluminum piston operating freely with minute clearances in an iron cylinder. There had been advances, "foreshadowing," perhaps, that solution would not always defy inventive genius, though on the whole the aluminum piston as heretofore noted had received a "black eye" in the industry. Much had been expected of a piston invented by one Jardine, and it was about to be put into commercial production when a design disclosed by Maynard, which seemed an improvement thereon, was produced by the appellants' licensee, was accepted by major companies in the industry, and went into use to the number of many millions. In analyzing the Maynard invention it appeared to us that however meritorious certain structural improvements might be, it nevertheless embodied the basic concept of the patent to Gulick owned by the appellant and in suit. We held certain claims of Gulick and Maynard to be valid and infringed without passing upon the intermediate disclosure of Jardine, though recognizing that Jardine may have made substantial contribution to the art.

Observing that many if not all of the elements of the Gulick combination were old, we held his precise combination to be novel and to have the quality of invention, and that its reproduction by the appellees in the specific form disclosed by Maynard was infringement of both. In a recital of the Gulick achievement in terms of elements, function and result, we assigned to the webs of Gulick the rigidity proclaimed by his specification in the dimension in which they furnished "a particularly strong support for the bosses," but a lateral flexibility in the dimension wherein rigidity appears not to have been required, where it would not serve the purpose announced, and where it would appear to interpose an obstacle to the expected functioning of a split skirt. There was assumption that since the specification was addressed to those skilled in the art, a purpose to provide a particularly strong support for the bosses was fully served by vertical rigidity, and made implicit in the original specification a lack of rigidity otherwise. With this view we found no difficulty in agreeing with the tribunals that sustained the Gulick amendment reciting lateral flexibility as mere clarification.

The Supreme Court, concluding that Gulick's failure to describe the flexible web element as a feature of his invention, and his failure in this respect to explain the principle of his machine so as to distinguish it from prior art, did not conform to R.S. § 4888, 35 U.S.C.A. § 33, held that his amendment added new matter beyond the scope of the device described in the application as filed, in consequence of which the appellant might take no benefit therefrom. Assuming that we sustained certain claims of his patent only by reading into them the flexible web element, it reversed our decision as to Gulick, and since Maynard neither claims nor describes flexible webs, it likewise reversed our decision as to its validity and infringement. Reciting, however, that since it had been thought by us that full recovery could be had by the appellants under the two patents adjudicated, we did not decide other questions involved in the appeals, it remanded the causes to us for further proceedings "with respect to such claims of the patents in suit as appellant below submitted to that court for adjudication." 305 U.S. 47, 59 S.Ct. 14, 83 L.Ed. 34. Upon petition for rehearing and clarification, it added to the direction for judgment the following: "On the remand the Court of Appeals will be free to consider whether the amendments to the Gulick application rendered void the patent issued upon it, and to consider all questions affecting the validity and infringement of the claims in suit of the Gulick and Maynard patents, but without including web flexibility or laterally flexible webs as an element in the combinations patented by them."

Controversy has arisen over the scope of the remand, the appellees contending that we are precluded from consideration of the Jardine, Schmiedeknecht and Mooers patents since the bills stand dismissed as to them, albeit without prejudice, so that they may be brought to us for consideration only by new actions. The order of remand is, however, specific, requiring no interpretation. We are directed to take further proceedings with respect to such claims of the patents in suit as appellants submitted to us for adjudication, not merely in respect to those adjudicated. The phrasing of the amended direction is one of enlargement and clarification and not of limitation. That decrees have been entered below dismissing the bills as to the three patents not considered is of no moment. These decrees are brought into question in appeals 8094, 8095 and 8096 here involved. If they are in conflict with conclusions now reached they must be set aside and our mandates recalled, just as they must be set aside as in conflict with decision above. We hold that the remand operates to reopen the entire cause except insofar as questions necessary to decision have been decided by the Supreme Court and insofar as our own conclusions have not there been held erroneous and so constitute the law of the case.

The first question that confronts us is in respect to the validity of the claims of the Gulick and Maynard patents as circumscribed since we are now obliged to consider them without reading into them web flexibility or laterally flexible webs as an element, and in this connection it seems immaterial whether we read an element into them or merely construed an existing element as having in its environment a given characteristic. We recognized in our first opinion that Gulick was for a combination of elements, many if not all of which were old. Yet the combination appeared to us to be novel and to denote invention since a new result was secured in consequence of a nicely balanced flexibility of piston skirt, permitting successful operation at minute clearances without bending concentration at any point to impair ruggedness, and so distinguishing from Franquist and other pistons. In a case not free from doubt, since probably no one has seen an automobile piston reciprocating in its cylinder under operating conditions, the success of the commercial embodiment of Maynard, comprehending what was then conceived to be Gulick's basic concept, after so much failure, clearly appeared to denote that somewhere was invention. But the Gulick conception as we then considered it was of balanced flexibility derived from interplay of yielding skirt periphery and flexing supporting webs in response to the mechanical force of the cylinder wall and the thermal expansion of the piston head. The combination we are now obliged to consider is one with rigid webs opposing their rigidity to the resiliency of a skirt slotted to accommodate itself to forces to which practically it may not yield. This is not the combination we held to be valid. It is not the combination to which those most captious and skilled in the industry gave tribute, to the end that all our doubt as to validity was resolved. We are constrained to hold all of the claims in suit of Gulick invalid as marking no inventive step over prior art. It therefore becomes unnecessary to consider whether his amendments voided his patent since the direction in this respect is but permissive and not imperative. It likewise becomes unnecessary to consider the effect of the disclaimer filed since decision above.

In Maynard there was no emphasis on rigidity of web construction such as was found by the Supreme Court in Gulick, but we are compelled nevertheless to view the Maynard combination as one failing to disclose cooperation of flexible webs with vertical and longitudinal slotting to secure the balanced flexibility conceived to reside in Gulick, and constituting therein a basic achievement, and since it is apparent that details of construction recited by us as disclosing a piston lighter and more economical of manufacture than Gulick and...