Consolidated Rubber Tire Co. v. B.F. Goodrich Co.

• Decision Date: 11 April 1912
• Docket Number: 29,176.
• Citation: 195 F. 764
• Parties: CONSOLIDATED RUBBER TIRE CO. et al. v. B. F. GOODRICH CO.
• Court: U.S. District Court — Northern District of Illinois

195 F. 764

CONSOLIDATED RUBBER TIRE CO. et al. v. B. F. GOODRICH CO.

No. 29,176.

United States District Court, N.D. Illinois, Eastern Division.

April 11, 1912

Charles W. Stapleton, Staley & Bowman, John G. Campbell, Border Bowman, and Lawrence Maxwell, for complainants.

Samuel E. Hibben, Edward Rector, and Charles Neave, for defendant.

KOHLSAAT Circuit Judge.

This bill was filed to enjoin infringement of the two claims of patent No. 554,675, granted to A. W. Grant, February 18 1896, for a rubber tired wheel. The claims read as follows viz.:

'1. A vehicle-wheel having a metallic rim with angularly-projecting flanges to form a channel or groove with tapered or inclined sides, a rubber tire, the inner portion of which is adapted to fit in said groove or channel and the outer portion having sides at an angle to the inner portion, the angle or corner between the outer and inner portions being located within the outer periphery of the flanges, and independent retaining-wires passing entirely through the inner portions of said tire and also within the outer peripheries of the flanges, substantially as described.

'2. A vehicle-wheel having a metallic rim with outwardly-projecting flanges at an angle to the plane of said wheel so as to form a channel or groove having tapered or inclined sides, a rubber tire, the inner portion of which is adapted to fit in said tapered groove or channel and the outer or exposed portions formed at an angle thereto, the angle or corner between the said portions being placed within the outer periphery of said flanges, openings extending entirely through the unexposed portion of said tire, and independent retaining-wires in said openings, and a reinforcing-strip of fibrous material placed at the bottom of said tire and wholly within said flanges, substantially as specified.'

Prima facie proofs were made by complainant. Defendant introduced no evidence. No defense is made as to the issue and validity of the patent, and these facts are found by the court to be satisfactorily established by the evidence. Strenuous defense is, however, made to the sufficiency of the evidence as to title and infringement. On the hearing, the following stipulation was entered into, viz.:

'It is hereby stipulated that prior to the commencement of this suit the defendant had a regular and established place of business in the Northern District of Illinois, to wit, in the city of Chicago, in said district, at which place of business prior to the commencement of this suit defendant sold rubber vehicle tires, made by it in Akron, Ohio, such as those illustrated by the section of rubber vehicle tire marked 'Complainants' Exhibit, Section of Defendant's Tire,' which correctly represents and shows the type of rubber tires so sold by defendant at its regular place of business in said Chicago prior to the commencement of this suit. Further stipulated that in the pamphlet submitted herewith and marked, 'Complainants' Exhibit, Illustrations of Defendant's Tires,' the cuts shown therein at the top of page 1 and the cut shown on page 5 correctly illustrate, and show the type, construction, and character of the rubber tires so made and sold by defendant prior to the commencement of this suit, and that the cuts on page 16 of said pamphlet illustrate the shape of the rubber tire, and the cuts shown on page 20 of said pamphlet the shape of the channel used in connection with said rubber tires which were sold by defendant as aforesaid. Further stipulated that the defendant is a corporation organized under the laws of the state of Ohio.'

It appears that the first-named complainant is a New Jersey corporation; that the second-named complainant is an Ohio corporation; that the defendant is also an Ohio corporation; and that the alleged infringing act took place in this district, where defendant has a regular and established place of business. Both claims in suit call for a vehicle-wheel. The drawings show both a wheel and sectional parts thereof.

The bill sets up two adjudications of the claims in suit, one by the Circuit Court for the Southern District of New York sustaining the patent, in a case against the Firestone Tire & Rubber Company (147 F. 739), which was affirmed by the Circuit Court of Appeals for the Second Judicial Circuit (151 F. 237, 80 C.C.A. 589), and the other by the same courts in a case against the Diamond Rubber Company (157 F. 677, 85 C.C.A. 349), wherein said patent was again sustained. This latter decision seems to have been taken to and affirmed by the Supreme Court (220 U.S. 428, 31 Sup.Ct. 444, 55 L.Ed. 527). In both of said causes complainants' title was sustained, though it does not seem to have been placed in issue. Defendant's answer sets out that it is not advised whether the said causes were identical with the present one or whether they were adequately contested. No attempt was made to introduce the proceedings in those suits in evidence, or to connect defendant therewith.

The assignment in question was made on November 7, 1895, while application was pending and before issue of patent, and the commissioner was authorized to issue the patent to the Rubber Tire Wheel Company. For some reason, the commissioner was not advised thereof, and issued the patent to the inventor. Under the authority of Gayler v. Wilder, 10 How. 477, 13 L.Ed. 504, and De La Vergne Co. v. Featherstone, 147 U.S. 209, 13 Sup.Ct. 283, 37 L.Ed. 138, provided such assignment is duly shown, the title vested in the Rubber Tire Wheel Company.

The original assignment has not been produced in evidence on this hearing, and it is contended by defendant that the attempt to establish the same by the introduction of oral evidence of the loss thereof, and by the production of a certified copy of the record thereof in the Patent Office, does not comply with the requirements of the law in such cases. The Consolidated Rubber Tire Company is interested herein as licensee of the Rubber Tire Wheel Company. A great deal of evidence was taken to show that it was impossible to find the original. It has been introduced in evidence in several cases, and was traced into the hands of various counsel in those and other cases. In the judgment of the court this evidence, notwithstanding defenda...