Columbia Motor Car Co. v. C.A. Duerr & Co.

• Decision Date: 09 January 1911
• Docket Number: 173,174.,168-170
• Citation: 184 F. 893
• Parties: COLUMBIA MOTOR CAR CO. et al. v. C. A. DUERR & CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

184 F. 893

COLUMBIA MOTOR CAR CO. et al. v. C. A. DUERR & CO. et al.

Nos. 168-170, 173, 174.

United States Court of Appeals, Second Circuit.

January 9, 1911

On Taxation of Costs, February 8, 1911.

Livingston Gifford, Frederic R. Coudert, and Edmund Wetmore (W. Benton Crisp, R. A. Parker, John P. Murray, and Charles K. Offield on the briefs), for appellants.

Samuel R. Betts, William A. Redding, and Frederick P. Fish (Edward Rector and John W. Peters, on the briefs), for appellees.

Before LACOMBE, WARD, and NOYES, Circuit Judges.

NOYES Circuit Judge.

Although the title of the alleged invention as stated in the preamble of the patent is an 'improved road engine,' it is claimed to embrace the essential elements of the modern automobile and has been sustained as being 'so fundamental and far reaching as to cover every modern car driven in any way by petroleum vapor and as yet commercially successful.'

The subject is most important; the interests involved, of great magnitude; the record, phenomenally long; and the questions presented, complex. In examining these questions we have been greatly aided by the work of the judge of the Circuit Court in blazing the way through the mass of testimony and defining the issues to be decided. While we may be unable to adopt the conclusions stated in his very able opinion, we must at the outset acknowledge our indebtedness to it.

Ordinarily the first thing to be looked at in a patent suit is the patent. That is the source and measure of the patentee's rights. But in this case it seems desirable before we examine the patent to take up some preliminary considerations, the disposition of which may serve to indicate the standpoints from which the patent should be regarded in the examination to follow.

This patent was applied for in 1879 and granted in 1895. For over 16 years the application lay in the Patent Office and the applicant took full advantage of the periods of inactivity permitted by the rules and statutes. It is apparent that he delayed just as long as possible the issue of the patent to him. During this long time the automobile art made marked advances along different lines, and when, in 1895, the patent was granted, it disclosed nothing new. Others had then made the patentee's discovery and had reduced it to practice in ignorance of what he had done. While he withheld his patent, the public learned from independent inventors all that it could teach. For the monopoly granted by his patent he had nothing to offer in return. The public gained absolutely nothing from his invention, whatever it was. From the point of view of public interest it were even better that the patent had never been granted. Judge Hough was quite within bounds in saying:

'No litigation closely resembling these cases has been shown to the court, and no instance is known to me of an idea being buried in the Patent Office while the world caught up to and passed it, and then embodied in a patent only useful for tribute.'

It is urged that we should regard unfavorably the patent on account of this delay in the Patent Office, should seek to avoid giving it a broad construction, and should permit the alleged abuse of the law to weigh against the standing of the complainants in a court of equity. But the patentee acted wholly within his rights. He merely took advantage of the delays which the law permitted him. He followed strictly the statutes and rules of procedure, and the courts cannot exact a greater measure of diligence from him. When the patent was granted under the authority of the law, it became entitled to the consideration accorded to any other patent. If the statutes and rules permit unnecessary delays, they should be changed; but we reject the view that this court owes any duty to relieve against their operation. This patent, even if it be useful only for tribute, must be viewed without prejudice and with absolute judicial impartiality.

But, while we should be careful to avoid viewing the patent with disfavor, we should be equally careful to avoid considering it with too much favor on account of its subject-matter. Fifteen years ago hardly any one had seen an automobile. Ten years ago they were rare. To-day they are in use by tens of thousands, and tens of millions of dollars are invested in them and in their manufacture. The development of the automobile has been nothing short of phenomenal, and every one is inevitably impressed with its importance. Consequently, when we see that 30 years ago an application for a patent was filed which even pointed the way to the modern automobile, we can hardly fail to receive the impression that an idea of great importance must have been embodied in it. But, as we shall later see, the development of the automobile was not so sudden as we have thought. It developed step by step at the beginning; the startling activity has come at the end. Moreover, a great idea may be embodied in a patent, and yet the patentee take nothing of value by it. That which he takes is that which he describes and claims. His discovery may be of importance, but he may limit it by his claim, and his claim may proceed in the wrong direction.

So, from any standpoint, we come in this as in other patent causes to the patent in suit in which at its commencement the patentee thus states the object of his invention:

'The object of my invention is the production of a safe, simple and cheap road locomotive, light in weight, easy to control, and possessed of sufficient power to overcome any ordinary inclination.' The patentee then states the difficulties encountered, his manner of overcoming them, and the advantages arising therefrom:

'The difficulties heretofore encountered in the application of steam to common roads are the great weight of the boiler, engine, water, and water tanks, the complicated apparatus necessary to adapt the machine to the roughness of the roads which it must traverse, the necessity of the attendance of a skilled engineer to prevent accidents, and the unsightly appearance of the locomotives built on this plan. I have succeeded in overcoming these difficulties by the construction of a road locomotive propelled by a liquid hydrocarbon engine of the compression type, of a design which permits it to be operated in connection with the running gear, so that the full carrying capacity of the body of the vehicle can be utilized for the transport of persons or goods, and which, by dispensing with skilled attendance and with steam boilers, water, water tanks, coal, and coal bunkers, very largely reduces the weight of the machine in proportion to the power produced and enables me, while employing the most condensed form of fuel, to produce a power road wagon which differs but little in appearance from and is not materially heavier than the carriages in common use, is capable of being managed by persons of ordinary skill at a minimum of trouble and expense, and which possesses sufficient power to overcome any usual inclination.'

The patent then describes-- as we shall later see with more particularity--the body, wheels, and connections of the vehicle and the engine furnishing the motive power.

The first claim of the patent is the broadest, and the questions of validity and infringement have been presented wholly with respect to it. It is the vital claim in the case and is as follows:

'The combination with a road locomotive, provided with suitable running gear including a propelling wheel and steering mechanism, of a liquid hydrocarbon gas engine of the compression type, comprising one or more power cylinders, a suitable liquid-fuel receptacle, a power shaft connected with and arranged to run faster than the propelling wheel, an intermediate clutch or disconnecting device, and a suitable carriage body adapted to the conveyance of persons or goods, substantially as described.'

The defenses are:

(1) That if the patent be broadly construed it is invalid.

(2) That if it be construed less broadly, but according to legitimate rules of construction, the defendants do not infringe.

In considering the validity of the patent, we are met, at the outset, with contentions of some of the defendants that prior uses anticipate, and that that which it discloses is an aggregation rather than a combination. But the questions of novelty and invention often run together, and the inquiry whether a given association of elements is more than an aggregation is only a phase of the question of invention. We shall primarily test the question of the validity of the patent by the answer to the inquiry, whether it discloses the exercise of the inventive faculties in view of the prior art.

This requires an examination of the state of the art in 1879-- the date of the application and, consequently, of the alleged invention. ^[1] In tracing its development we shall find that the combination described in the claim developed, to some extent, along with its elements. But this was by no means entirely so, and we think that a correct appreciation of the subject can best be obtained by considering

(a) The development of the elements of the combination;

(b) The development of the combination itself-- the motor vehicle.

The claim is for a combination possessing six elements:

(1) 'a road locomotive provided with suitable running gear, including a propelling wheel and steering mechanism.'

(2) 'A liquid hydrocarbon gas engine of the compression type, comprising one or more power cylinders.'

(3) 'A suitable liquid fluid receptacle.'

(4) 'A power shaft connected with and arranged to run faster than the propelling wheel.'

(5) 'An intermediate clutch or disconnecting device.'

(6) 'A suitable carrying body adapted to the conveyance of persons or goods.'

Or departing from the language of...