Detroit Motor Appliance Co. v. Burke

• Decision Date: 06 January 1925
• Citation: Detroit Motor Appliance Co. v. Burke, 4 F.2d 118 (D. Minn. 1925)
• Parties: DETROIT MOTOR APPLIANCE CO. v. BURKE et al.
• Court: U.S. District Court — District of Minnesota

4 F.2d 118 (1925)

DETROIT MOTOR APPLIANCE CO. v. BURKE et al.

District Court, D. Minnesota, Fourth Division.

January 6, 1925.

Paul, Paul & Moore, of Minneapolis, Minn., and C. B. Belknap, of Detroit, Mich., for plaintiff.

F. A. Whiteley, of Minneapolis, Minn., and Charles W. Hills and Charles W. Hills, Jr., both of Chicago, Ill., for defendants.

BOOTH, District Judge.

The above-entitled cause came regularly on, and was duly heard and submitted upon bill, answer, and proof. The suit is for an injunction and for an accounting, for damages and profits on account of alleged infringement of United States patent No. 1,114,246, to F. N. Furber, entitled "temperature controlling apparatus for internal combustion engines."

The patent was issued October 20, 1914; application filed March 31, 1914. Plaintiff became the owner of said patent by mesne assignments from the inventor. One of the purposes or aims of the alleged invention is stated in the specification as follows:

"When an automobile is operated in cold weather, it is found that the cooling system carries the heat away from the engine so rapidly that its temperature is reduced below the point at which it can operate at its highest efficiency. * * * The present invention has for its primary object to devise means for controlling, automatically, the rate of radiation of heat by the watercooling system in such a manner as to maintain the engine at substantially all times during its operation, at an efficiently operative temperature."

There are eight claims in the patent, all of which are relied upon, excepting the seventh, which was withdrawn during the trial. The second claim, which is fairly typical of the first four, reads as follows:

"In an automobile, the combination with an internal combustion engine and a watercooling system therefor, including a radiator, of means adjustable to obstruct more or less the flow of air through the radiator and mechanism for adjusting said means automatically in accordance with the temperature of the water in said system."

The sixth claim, which is typical of the remaining ones, reads as follows:

"In an automobile, the combination with an internal combustion engine and a watercooling system therefor, including a radiator, of a series of adjustable shutters arranged to obstruct more or less the flow of air through the radiator, depending upon their adjustment, and a thermostat in said cooling system, connected with said shutters, to adjust them in accordance with changes in the temperature of the water in said system."

The elements involved are: (1) An internal combustion engine. (2) A water cooling system therefor. (3) A radiator (being part of the cooling system). (4) Shutters, which are adjustable, to regulate the flow of air through the radiator. (5) The thermostat, which is controlled by the temperature of the cooling water, and which in turn controls the adjustment of the shutters. All of these elements are to be combined in an automobile.

It is apparent that each of the claims are combination claims. It is therefore presumed that all of the elements are old or not patentable. Richards v. Chase Elev. Co., 159 U. S. 477, 486, 16 S. Ct. 53, 40 L. Ed. 225; Hay v. Heath Cycle Co., 71 F. 411, 413, 18 C. C. A. 157; Campbell v. Conde Imp. Co. (C. C.) 74 F. 745.

But the fact that all of the elements are old is not conclusive against patentable novelty. Allen v. Grimes (C. C.) 89 F. 869. Nor does the fact that all of the elements are old preclude the possibility of invention. Expanded Metal Co. v. Bradford, 214 U. S. 366, 381, 29 S. Ct. 652, 53 L. Ed. 1034; Steiner, etc., Co. v. Tabor Co. (C. C.) 178 F. 831, 839; St. Louis Street Flushing Co. v. American Street Flushing Co., 156 F. 574, 84 C. C. A. 340. In the last cited case, the court said:

"To accomplish a new and useful result within the meaning of the patent law (section 4886, Rev. St. U. S. Comp. St. 1901, p. 3382), it is not necessary that a result before unknown should be brought about, but it is sufficient if an old result is accomplished in a new and more effective way. If the value and effectiveness of a machine are substantially increased, the new combination of old elements, which does it, is patentable."

The issuance of the patent raises the presumption that it is valid; that the device possesses utility and embodies invention. Lehnbeuter v. Holthaus, 105 U. S. 94, 26 L. Ed. 939; Wilkins Shoe-Button Fastener Co. v. Webb et al. (C. C.) 89 F. 982.

The foregoing principles are elementary and should be borne in mind in considering the defenses. The answer sets up three main defenses: (1) Anticipation. (2) Want of invention in view of the prior art. (3) Noninfringement.

Anticipation.

The anticipation relied upon is by three prior patents, viz.: Patent No. 46,898, Hammond, March 21, 1865; patent No. 1,079,765, Hoiland, November 25, 1913; French letters patent No. 317,521, FouchÈ and Bochet, published September 8, 1902. Inasmuch as both anticipation and lack of invention are set up as defenses, it will be assumed that the term "anticipation" is used in its strict sense, and that by it is meant the disclosure in the prior art of a thing which is substantially identical with the device against which it is cited.

Hammond, No. 46,898, March 21, 1865.

This is a device for regulating a house ventilator. There is no internal combustion engine, no water cooling system, and no shutters to regulate the flow of air through a radiator. The main similarity between Hammond and Furber is that both make use of a thermostatic element for the operation of levers. Such an element, however, is concededly old in the prior art; but the particular art to which the Hammond patent relates is entirely different from the art to which the Furber patent relates, and the structures are entirely dissimilar.

Hoiland, No. 1,079,765, November 25, 1913.

This is a patent for a wind shield for an automobile radiator. It is in the same art as the Furber patent. It differs, however, from Furber in many respects:

(1) It has no independent thermostatic element, but makes use of the whole volume of water in the cooling system, in lieu of such independent thermostatic element. The expansion of this water, caused by being heated by the engine, operates a piston, which in turn operates a shutter in front of the automobile radiator.

(2) Hoiland is dependent on the volume of water, so far as it is operative as a thermo-motor device. When the volume of water decreases slightly, Hoiland can operate only as a steam pressure device.

(3) Hoiland will not operate with a leaky radiator. This is expressly stated in the specifications.

(4) Hoiland has no vent, but the cooling system is a closed one.

According to the testimony of experts in the case, this makes the Hoiland device impracticable to use in the modern automobile, owing to the danger of causing the radiator to explode or collapse. The evidence shows that the radiators of all modern automobiles have vents.

French Patent No. 317,521, Fouche and Bochet, 1902.

This is described as a new system of regulating the temperature of a fluid by means of a surface heat changer. The device consists of a hermetically sealed cooling receptacle, surrounded by a box, having a fan at one end and a shutter at the other end of the box, to regulate the flow of air. The shutter may be operated by hand or automatically by means of a lever attached at one of its ends to the movable core of a solenoid. The specification states:

"The electric current, which actuates the solenoid, may come from any suitable source of electricity carried by means of a system of suitable contacts placed on a thermometer. These contacts are established by the mercury of the thermometer when the mercury rises at a predetermined temperature."

It is apparent, from the whole description of the device given in the specifications, that it was intended to supply a means of cooling a stationary engine, without wasting the cooling water.

In this French patent, as in Hoiland, the hermetically sealed receptacle renders the device inapplicable to an automobile, and therefore prevents the French patent from responding to the claims of the Furber patent. In my judgment, no one of the foregoing patents can be regarded as an anticipation of Furber.

It must be borne in mind, in considering these prior patents as anticipations, that it is not permissible to modify the structures disclosed by such patents, and then claim the modified structure as an anticipation. Eames v. Andrews, 122 U. S. 40, 66, 7 S. Ct. 1073, 30 L. Ed. 1064; Topliff v. Topliff, 145 U. S. 156, 161, 12 S. Ct. 825, 36 L. Ed. 658; Hobbs v. Beach, 180 U. S. 383, 392, 21 S. Ct. 409, 45 L. Ed. 586; Canda v. Michigan Mallable Co., 124 F. 486, 61 C. C. A. 194; Ideal Stopper Co. v. Crown Cork & Seal Co., 131 F. 244, 65 C. C. A. 436; J. L. Owens Co. v. Twin City Separator Co., 168 F. 259, 265, 93 C. C. A. 561.

Nor is it permissible to put together the disclosures of several different patents, to produce an anticipating structure. Imhaeuser v. Buerk, 101 U. S. 647, 660, 25 L. Ed. 945; Parks v. Booth, 102 U. S. 96, 104, 26 L. Ed. 54; J. L. Owens Co. v. Twin City Separator Co., 168 F. 259, 93 C. C. A. 561; St. Louis Street Flushing Mach. Co. v. American Street Flushing Mach. Co., 156 F. 574, 579, 84 C. C. A. 340.

Was There Invention in View of the Prior Art?

The foregoing patents, as well as the following patents, were offered in evidence as part of the prior art: Brock, No. 774,556, November 8, 1904. Lanchester, No. 596,271, December 28, 1897. Pike, No. 367,660, August 2, 1887. Westinghouse, No. 710,385, September 30, 1902.

Brock and Lanchester were before the Patent Office during the prosecution of the Furber application, and it is not necessary to discuss them in detail. I have examined them, however, together with the evidence relating to them, and concur in the result reached by the Patent Office, differentiating and approving the...