Collins v. Hupp Motor Car Corporation

• Decision Date: 19 October 1927
• Docket Number: 4799.,No. 4793,4793
• Citation: 22 F.2d 27
• Parties: COLLINS et al. v. HUPP MOTOR CAR CORPORATION.
• Court: U.S. Court of Appeals — Sixth Circuit

22 F.2d 27 (1927)

COLLINS et al. v. HUPP MOTOR CAR CORPORATION.

Nos. 4793, 4799.

Circuit Court of Appeals, Sixth Circuit.

October 19, 1927.

Stuart C. Barnes, of Detroit, Mich. (John F. Henigan, of Jackson, Mich., on the brief), for plaintiffs.

Fred P. Fish and J. L. Stackpole, both of Boston, Mass. (Robert A. Brannigan, of New York City, Hector M. Holmes, of Boston, Mass., and Whittemore, Hulbert, Whittemore & Belknap, of Detroit, Mich., on the brief), for defendant.

Before DENISON, MOORMAN, and KNAPPEN, Circuit Judges.

KNAPPEN, Circuit Judge.

This suit was brought by Collins against the Hupp Motor Car Corporation for infringement of claims 1, 2, and 3 of United States patent No. 855,970, June 4, 1907, to Pearson, assignor to Blackmore, on side curtain supports for vehicles, with special reference to open canopy top automobiles. Collins' right to sue is based upon an alleged exclusive license given him by Blackmore to manufacture, sell, and use, or grant to others the right to manufacture, sell, and use, the invention of the patent as applied to automobile manufacture. Blackmore was accordingly made coplaintiff. He formally ratified the suit before defendant's testimony was closed. The District Court found the patent valid and infringed, and awarded plaintiffs, by way of damages and profits, the sum found by the master on the basis of a reasonable royalty. 4 F.(2d) 272. The patent having expired pending suit, no injunction issued. Each party appeals.

Claim 2 reads as follows:

"2. The combination with a vehicle body, comprising an inclosed portion provided with a suitable entrance, a door for said entrance, a canopy for said vehicle body and curtains comprising a door section secured to a canopy or other support at one edge beyond the line of the door hinge and a support for the opposite edge of said door section consisting of a rod or standard detachably secured to said door so as to be movable therewith and removable therefrom."

Claim 1 differs from claim 2 only in omitting the detachable feature of the supporting rod and in designating the curtains as "side curtains." Claim 3 differs from claim 1 only in calling for an offsetting of the rod at its lower end to bring it in desired relative position.

We agree with the District Court that the claims in suit are valid. The specification states that "the primary object of the invention is to provide side curtains for the canopies of automobiles and other vehicles the bodies of which comprise tonneaus which are provided with an entrance or entrances and a door or doors for closing the same, said side curtains comprising sections so supported that they form, in effect, upward extensions of said doors which will open and close therewith, to provide for conveniently opening and closing the entrance to the tonneau when the side curtains are in position, thus entirely eliminating the objectionable feature above described,"¹ which plainly refers to the necessity "that the section of the said curtain covering the entrance to the tonneau be unfastened each time a person desires to enter or leave said tonneau." The specification further declares "that the invention resides primarily in the means for supporting the intermediate section 2 of the side curtains, whereby they may be opened with and practically as a part of the doors C which close the entrance to the tonneau."

The prominent and new element referred to is in reality a door curtain opener, which consists of an upright rod or standard removably attached to the lock edge of the door and movable with it, and to which rod or standard the curtain is removably secured. The curtain structure is thus self-contained. The curtain is not supported by or attached to any part of the automobile except its own door and the rod or standard which is a component part of the curtain structure and (at the rear edge of the curtain) to the canopy support. It appears by testimony of competent witnesses that the invention of this patent was revolutionary. The device of the patent is highly useful and meritorious. It has been adopted by practically all the automobile manufacturers in this country except Ford. In addition to its merit as a mere curtain carrier, it is adaptable to ready disassembling when curtains are not needed. That this was recognized by the patentee is evidenced by the statements in the specification not only of his preference to secure the rods or standards to the doors "so that they may be readily attached when wanted for use and detached and removed when not wanted for use," but also that the openings between the body of the vehicle and the canopy "are adapted to be closed by removable side curtains comprising front section 1, intermediate section 2, and rear sections 3"; also by the provision for buttoning or otherwise securing the rear edge of the curtain section to the canopy support to which the front edge of the rear section of the side curtain is fastened in the usual manner, and by attaching in like manner the upper edge of the curtain section to the lower member of the canopy frame in the rear of the line of the door hinge; and by similarly attaching the curtain section to the upper edge of the body and door. The specification states that, "with this construction, it is obvious that the section 2 of the side curtain, in front of the hinge of the door, will be free to swing or turn with the door, thus providing for opening and closing the entrance to the tonneau by merely opening and closing the door C."

We find nothing in the prior art destroying the novelty or patentability of the claims in suit. The patent art specially relied on consists of Wright, No. 121,922, December 12, 1871, and Gale, No. 204,807, June 11, 1878. Neither of these patents directly relates to the automobile art, which in fact came later. Both patents relate to carriage doors, not to door curtain openers. Wright's contribution consists in fastening a strip of wood to the upper part of the iron frame so that it can be easily adjusted in case of repairing the curtain. The stated object of the invention is to make a more substantial and neater door job, and to give the door a lasting grip to keep it from rattling. Gale discloses a recess in the upper rail extending from the front canopy post rearward, and of sufficient length to receive the top rail of the door. To our minds, neither of these patents suggests anything resembling in form or function the "rod or standard" of the door curtain opener of the patent in suit.

As to prior public use: Defendant introduced considerable testimony of claimed prior use on certain automobile station wagons of various manufacture. So far as definitely shown, these station wagons had a permanent door structure reaching from the sill to the side rail of the top, and hinged at both the top and bottom of the rear edge of the door. We cannot accept the contention that these permanent door structures were the equivalent of the "rod or standard" of the patent in suit. We think the words "rod" and "standard" mean substantially the same thing. The station wagon curtains were not readily removable, but when not in use were rolled up, and, as such roll projected over the rear edge of the door, it was naturally subjected to a bending when the door was opened. There is persuasive testimony, from competent witnesses, that these structures were impracticable. We think it clear that they did not anticipate the Pearson invention or suggest its nature. There is also evidence of a so-called Glesenkamp use which is alleged to anticipate Pearson. Whether, if antedating, it would anticipate, we need not determine, for we think the testimony regarding dates too uncertain to support a conclusion of priority. It is a common place, that, as respects an unpatented device claimed to be a complete anticipation of a patent in suit, and depending as to its existence and use upon oral testimony, the proof must be clear, satisfactory, and beyond reasonable doubt. 20th Century Co. v. Loew (C. C. A. 6) 243 F. 373, 379, and cases there cited. Pearson's application was filed April 2, 1906. The testimony as to the date of the Glesenkamp use ranges from 1902 to 1906. The alleged dates are not supported by documentary evidence of any kind. There is produced no structure appearing to have been made prior to the granting of the patent in suit.

If there were otherwise doubt of the novelty and patentability of Pearson's device, the doubt would be removed by the evidence of its general acceptance by the trade. There is apparently undisputed evidence that 6 prominent manufacturers² have made their own irons under license agreement from plaintiffs, and that 38 body trimmers, trimming and top companies (perhaps 75 per cent. of the entire number) have purchased the irons from the company which made them under contract with one or the other of the plaintiffs.

The record also indicates that defendant here took from Blackmore, through Collins as agent, in 1914, a license to use certain openers under the patent in suit, as well as under another patent granted in 1911.

The fact that the Pearson device was not put upon the market for several years after the patent issued does not seriously impair the effect of general public acceptance when it was actually put out. The same observation is true as to the fact that the great majority of users bought the irons manufactured under the patent in suit, instead of manufacturing them under royalty license. The same we think is true of several other considerations urged by defendant as indicating lack of a long-felt want.

We have not discussed each and every contention made by defendant against the validity of the patent in suit, but we have considered all of them, with the result already generally stated.

We also agree with the District Court that defendant has infringed the three claims in suit. While its structure is not identical with the device of the Pearson patent, we think it embodies...