Coffield Motor Washer Co. v. A.D. Howe Mach. Co.

• Decision Date: 27 June 1911
• Citation: 190 F. 42
• Parties: COFFIELD MOTOR WASHER CO. v. A. D. HOWE MACH. CO.
• Court: U.S. Court of Appeals — Fourth Circuit

190 F. 42

COFFIELD MOTOR WASHER CO. v. A. D. HOWE MACH. CO.

United States Circuit Court, N.D. West Virginia.

June 27, 1911

Richard J. McCarty, for plaintiff.

H. E Dunlap and John J. Coniff, for defendant.

DAYTON District Judge.

For the fourth time I am now called upon to pass upon the validity of complainant's reissue letters patent No. 12,719. In the case of Peter T. Coffield & Son v. Spears & Riddle (C.C.) 169 F. 641, the patent is fully described. In that case I considered the questions of infringement, the state of the prior art, the alleged irregularities in the Patent Office in the issue of the original and reissue patents, and whether the reissue was an unwarranted expansion of the original patent. I there determined that in his motor 'Coffield, the patentee, was the first to use, in connection with the elements of the mechanism, springs which complete the stroke of the valve, and that, taken as a whole the device is new, useful, and patentable. ' I called attention to the fact that the board of appeals in the Patent Office had twice considered this patent and sustained it. After this case had been so determined by me upon full hearing, this suit was brought, and the validity of this patent has been again very bitterly contested. The complainant filed its bill and the defendant an 'answer and cross-bill.' Affidavits were filed by both, and on September 8, 1909, I passed upon the motion for preliminary injunction, filing an opinion which will be found in 172 F 668. The defenses set forth in the original answer were the same as those made in the Spears & Riddle Case, and in this second opinion, after careful reconsideration, I confirmed my rulings in the Spears & Riddle Case as to the novelty and patentability of the Coffield device, as to the alleged irregularities in the Patent Office in the issue of the original and reissue patents, and found that the defendant company was infringing such reissue patent. After the preliminary injunction had been granted, by order entered, a time agreed upon by the parties was fixed within which to take proofs and mature the cause for final hearing. After complainant had taken its testimony in chief, the defendant claimed to have discovered for the first time the existence of what is known as the Bergstrom and Hayes patents. Thereupon, without taking any testimony in rebuttal, the defendant appeared before this court with certain affidavits setting forth the Bergstrom and Hayes patents, and alleging that they were prior anticipations of the Coffield patent, moved this court upon such affidavits to dissolve the preliminary injunction. Upon hearing of this motion it was overruled, I holding that such defense, having arisen after the taking of complainant's testimony, would have to be presented formally by proper pleading and made out by independent proof by the defendant, and, in order that this might be done, the court allowed the defendant to file an amended answer, setting up in defense these patents.

Two exceptions were taken to the amended answer so filed, and leave was asked by defendant to recross-examine one of complainant's witnesses. In passing upon these matters I again considered the case, and filed on June 11, 1910, a memorandum opinion (not published) sustaining the exceptions to the answer and overruling the motion for leave to recross-examine. By this action the issue was finally narrowed down to the question of whether the Bergstrom and Hayes patents were prior anticipations of the Coffield one, rendering it void. In the very recent case of the Diamond Rubber Company of New York v. Consolidated Rubber Tire Company et al., decided April 10, 1911, 220 U.S. 428, 31 Sup.Ct. 444, 55 L.Ed. 527, dated May 15, 1911, the Supreme Court has held:

(1) The widespread commercial success of a patented device should be taken into consideration in determining the question of invention.

(2) A combination patent for an article which when constructed in accordance with the specifications has proved a great commercial success may not be held devoid of invention because the inventor may not have known all of the forces which he had brought into operation.

(5) The utility of a patented device may be attested by the litigation over it.

These propositions have been repeatedly maintained and upheld in a vast number of patent cases, among which are: Gandy v. Main Belting Co., 143 U.S. 587, 12 Sup.Ct. 598, 36 L.Ed. 272; Krementz v. S. Cottle Co., 148 U.S. 556, 13 Sup.Ct. 719, 37 L.Ed. 558; Holmes v. Truman, 14 C.C.A. 517, 67 F. 542; Davis v. Parkman, 18 C.C.A. 398, 71 F. 961; Strobridge v. Lindsay (C.C) 2 Fed. 692; Washburn & Moen Mfg. Co. v. Haish (C.C.) 4 Fed. 900; Wilson Packing Co. v. Chicago P. & P. Co. (C.C.) 9 Fed. 547; Lindsay v. Stein (C.C.) 10 F. 907; Miller v. Pickering (C.C.) 16 F. 540; Washburn & Moen Mfg. Co. v. Grinnell Wire Co. (C.C.) 24 F. 23; Hill v. Biddle (C.C.) 27 F. 560; Guarantee T. & S. Deposit Co. v. New Haven Gaslight Co. (C.C.) 39 F. 268; Chicopee Folding Box Co. v. Nugent (C.C.) 41 F. 139, affirmed in American Paper Pail & Box Co. v. National Folding Box & Paper Co., 2 C.C.A. 165, 51 F. 229; Stearns v. Phillips (C.C.) 43 F. 792; Featherstone v. George R. Bidwell Cycle Co. (C.C.) 53 F. 113; Lalance & Grosjean Mfg. Co. v. Haberman Mfg. Co. (C.C.) 53 F. 375; National Co. v. Belcher (C.C.) 68 F. 665; Brownson v. Dodson, etc., Co. (C.C.) 71 F. 517; Kalamazoo Ry. Supply Co. v. Duff Mfg. Co., 51 C.C.A. 221, 113 F. 264; National Hollow Brake Beam Co. v. Interchangeable Brake Beam Co., 45 C.C.A. 544, 106 F. 693; Kinloch Tel. Co. v. Western Electric Co., 51 C.C.A. 369, 113 F. 659; O'Rourke Eng. Const. Co. v. McMullen, 88 C.C.A. 115, 160 F. 933; Beckwith v. Malleable Iron Range Co. (C.C.) 174 F. 1001.

In view of these principles, it is entirely proper in solving the question of whether these Bergstrom and Hayes patents forestalled the Coffield one to consider the situation of the parties as disclosed by this record. It seems that Coffield, after securing his patents for his water motor, applied it in use to the manipulation of washing machines. This application could be very easily and quickly made. Its power could be supplied by attachment by rubber hose to any ordinary water faucet. By reason of its internal mechanism, it mattered not whether the water pressure thus afforded was high or low. This use practically dispensed with, and to a great extent superseded, hand manipulation of these washing machines. It became a great commercial success, and it is stated that several hundred thousand of them have been installed in the homes of this country.

Ornold was a selling agent of the Coffields, and as such became thoroughly familiar with this motor, its mechanism, its achievements, and its popularity. He left their employ and associated himself with Howe, and they two set to work to devise a motor that would perform the same functions as the Coffield one without infringing its patent. They admit two failures in attempts to accomplish this, and their third one which is charged in this suit to be an infringement, I do not find the least trouble in ascertaining to be so for the reasons set forth in my former opinion in this case. ...