Co v. Cleveland Trust Co Chrysler Corporation Aberdeen Motor Supply Co v. Same Rowe Sales Co v. Same 8212

• Decision Date: 07 November 1938
• Docket Number: SCHRIBER-SCHROTH,Nos. 3,s. 3
• Parties: CO. v. CLEVELAND TRUST CO., CHRYSLER CORPORATION. ABERDEEN MOTOR SUPPLY CO. v. SAME. F. E. ROWE SALES CO. v. SAME. —5
• Court: U.S. Supreme Court

305 U.S. 47

59 S.Ct. 8

305 U.S. 573

83 L.Ed. 34

SCHRIBER-SCHROTH CO.

v CLEVELAND TRUST CO., CHRYSLER CORPORATION.

ABERDEEN MOTOR SUPPLY CO.

v. SAME.

F. E. ROWE SALES CO.

v. SAME.

Nos. 3—5.

Argued Oct. 18, 19, 1938.

Decided Nov. 7, 1938.

As Modified on Denial of Rehearing Dec. 12, 1938.

[Syllabus from pages 47-49 intentionally omitted] Messrs. Thomas G. Haight, of Jersey City, N.J., and John H. Bruninga and John H. Sutherland, both of St. Louis, Mo., for plaintiffs.

Messrs. A. C. Denison and F. O. Richey, both of Cleveland, Ohio, for respondent.

Mr. Justice STONE delivered the opinion of the Court.

The principal question for decision is whether the court below rightly sustained the validity of two patents by including in the combination constituting the alleged invention of each an element which was not in terms described in one, and the description of which in the other was added only by amendment to the application after it was filed.

Respondent, the Cleveland Trust Company, is the assignee in trust of some eighty patents relating to pistons of the type employed in internal combustion engines for automobiles, under a pooling agreement to which an automobile manufacturer and a number of manufacturers of pistons are parties. It brought the present suits in the District Court for Northern Ohio to enjoin infringement of five of the assigned patents. The case was tried before a special master who, upon the basis of elaborate findings, held that the Gulick patent, No. 1,815,733, applied for November 30, 1917, and allowed July 31, 1931, was invalid for want of invention and because of the addition to the application by amendment in 1922 of a new element of the alleged invention. In reaching this conclusion he relied on this Court's decisions in Powers-Kennedy Contracting Corporation v. Concrete Mixing & Conveying Co., 282 U.S. 175, 51 S.Ct. 95, 75 L.Ed. 278, and Permutit Co. v. Graver Corporation, 284 U.S. 52, 52 S.Ct. 53, 76 L.Ed. 163, as inconsistent with the result of interference proceedings in which Gulick's amendments were sustained, Long v. Gulick, 57 App.D.C. 98, 17 F.2d 686; Hartog v. Long, Cust. & Pat.App., 47 F.2d 369. The master also held that the Maynard patent No. 1,655,968, applied for January 3, 1921, and allowed January 10, 1928, was invalid for want of invention and for failure to describe and claim the alleged invention. He held invalid upon various grounds the other patents, which are not presently involved.

The District Court adopted the findings and conclusions of the master and gave its decree for petitioners. The Circuit Court of Appeals for the Sixth Circuit reversed, as to the Gulick and Maynard patents only, holding that they were valid and infringed. 92 F.2d 330.¹ As the court regarded the claims which it sustained as basic and thought that a full recovery could be had by respondent under them, it did not pass upon the validity of the other patents or decide other questions involved in the appeal.

Petition for certiorari raising the question, among others, whether the Circuit Court of Appeals had erred in holding patentable a combination including one element not described in the original application for the Gulick patent and later added to it by amendment, and not described at all in the Maynard patent, was at first denied, there being no conflict of decision. 303 U.S. 639, 58 S.Ct. 609, 82 L.Ed. 1099. We later granted certiorari, 304 U.S. 587, 58 S.Ct. 1052, 82 L.Ed. 1548, on a petition for rehearing showing that, notwithstanding the doubtful validity of the patents, litigation elsewhere with a resulting conflict of decision was improbable because of the concentration of the automobile industry in the Sixth Circuit. Cf. Paramount Publix Corporation v. American Tri-Ergon Corporation, 294 U.S. 464, 55 S.Ct. 449, 79 L.Ed. 997; Altoona Publix Theatres, Inc., v. American Tri-Ergon Corporation, 294 U.S. 477, 55 S.Ct. 455, 79 L.Ed. 1005.

It is important for the proper functioning of the piston in a gas engine that it should fit the explosion chamber closely so as to conserve power, prevent the passage of lubricating oil around the piston into the chamber, and insure the smooth and noiseless movement of the piston within the cylinder. In designing gas engines for automobiles and other purposes requiring a high speed piston reciprocation with the accompanying development of high temperature in the explosion chamber, it is desirable to avoid thermal expansion of the close fitting piston, which will result in loss of power and possible injury to the mechanism through increased friction, which may cause the piston to seize or stick. The danger of undue expansion is increased when, as is advantageous in automobile engines, the piston is of aluminum, which has a higher coefficient of expansion than the iron or steel chamber within which the piston moves.

Both the Gulick and Maynard patents are for combinations in the structure of a piston for gas engines designed to prevent or restrict undue expansion of the piston when in operation. The Gulick patent exhibits a piston in which the ring-carrying head is separated by an air space at its periphery from the cylindrically shaped skirt or guide wall, whose surface engages the inner surface of the cylinder. The piston head and skirt are connected by two 'webs' or walls extending longitudinally through the interior of the skirt. The webs are pierced at right angles for wrist pin bearings and support, at the bearings, piston pin bosses formed with integral flanges extending laterally from their respective bosses to form the webs, which in turn are integrally connected on either side with the interior wall of the lower part of the skirt and at their ends with the piston head. The skirt is longitudinally split on one side at a point in its circumference approximately midway between the pin bosses, with the edges of the skirt formed by the split separated so as to admit of the free movement of the edges toward each other.

The structure is thus designed to minimize the expansion resulting from high temperatures developed in the chamber and to avoid the effects of thermal expansion of the skirt. The webs, which afford at the wrist pin bearings the means for connecting the piston rod with the piston, serve to hold the head and skirt in proper relation to each other so that the air space between them retards flow of heat from the head to the skirt, undue expansion of the skirt, and the consequent increase of friction between piston and enveloping cylinder. Undue expansion of the piston is said by the patent's specifications to be avoided by the separation of the skirt by the longitudinal split in order to admit of unrestrained movement of the edges of the skirt toward each other. Elsewhere they state that 'when the longitudinal split is used, as shown, the web structure has sufficient lateral flexibility to permit the split to close more or less under the action of the expansion forces incident to the heating of the piston.'

The elements of the combination as enumerated in Claim 39 are: 'A piston, open at one end, for an engine cylinder comprising a skirt and head separated from the skirt wall around its entire periphery, said skirt being longitudinally split to render the skirt wall yieldable on every diameter in response to cylinder wall pressure, wrist pin bosses, and means rigidly connecting said bosses to the head and yieldingly connecting said bosses to the skirt whereby said skirt is yieldable in response to cylinder wall pressure.' Reference to a combination including, with other elements, web connections, 'whereby said piston skirt, is rendered yieldable during operation in response to cylinder wall pressure,' appears in Claim 18.

The combination of piston head separated from a slitted skirt by an air space, the two being connected by webs supporting wrist pin bearings with bosses which do not come directly in contact with the walls of the skirt, was plainly foreshadowed by the prior art as a practicable means of minimizing the flow of heat from head to skirt and of securing lateral flexibility in the skirt. The expired Spillman and Mooers patent No. 1,092,870, of April 14, 1914, pooled with the patents in suit, showed a piston with head separated by an air space from the skirt, the two being connected by a web separated from the skirt except at the point of integral connection with it at the lower end of the cylinder, and providing bearings for a wrist pin connection with bosses not in direct contact with the wall of the skirt.

Flexibility of the skirt attained by longitudinal slits was old, as shown by the Ebbs patent No. 700,309 of 1902, and Van Bever, No. 1,031,212 of 1912. The Franquist piston, patent No. 1,153,902 of 1915, another of the pooled patents, which showed piston head partially separated from skirt by air spaces, attained flexibility of the piston wall by longitudinal grooves in the skirt which interrupted its outer periphery though connected at the inner edges of the groove by a fold of the metal on the accordion principle. The Long piston, patent No. 1,872,772 of 1932, which the master and the District Court found was in commercial use from 1917 on, and before the amendment of the Gulick application, presently to be discussed, showed longitudinal slits cut through the skirt, which was separated by air spaces from the piston head, the two being connected by parallel webs pierced for wrist pin bearings.

The court below found invention in the Gulick disclosure in a combination of elements, of which one was webs 'laterally flexible', which were not specifically so described in the Gulick application until the amendment of 1922. Conceding that the deceleration of the flow of heat from head to skirt by an air gap might be an obvious expedient of the art, and that to slit the skirt vertically so as to compensate for thermal expansion might not be beyond the skill of the art, the court added: 'But to combine insulation of...