Dooley Improvements v. Motor Improvements

• Decision Date: 27 January 1937
• Docket Number: No. 957.,957.
• Citation: 18 F. Supp. 340
• Parties: DOOLEY IMPROVEMENTS, Inc., v. MOTOR IMPROVEMENTS, Inc.
• Court: U.S. District Court — District of Delaware

18 F. Supp. 340

DOOLEY IMPROVEMENTS, Inc., v. MOTOR IMPROVEMENTS, Inc.

No. 957.

District Court, D. Delaware.

January 27, 1937.

Hugh M. Morris, of Wilmington, Del., and John M. Zane and Harold W. Norman (of Zane, Morse, Zimmerman & Norman), both of Chicago, Ill., for plaintiff.

Robert H. Richards (of Richards, Layton & Finger), of Wilmington, Del., and Theodore S. Kenyon and Frederick Bachmann (of Kenyon & Kenyon), both of New York City, for defendant.

NIELDS, District Judge.

This is a patent suit charging Motor Improvements, Inc., with infringement of United States letters patent No. 1,847,817 granted on March 1, 1932 to Don Cole, assignor to Dooley Improvements, Inc., the plaintiff. The patent is entitled "Lubricating System." The answer denies infringement and challenges the validity of the patent. The answer also asserts a counterclaim charging plaintiff with unfair practices.

There is no evidence as to the character of plaintiff's business, if any. There is no evidence that plaintiff ever made or sold the lubricating system of its patent.

Defendant was organized in 1923. For eleven years, as exclusive licensee under the Sweetland patents it has manufactured and sold an oil filter called "PurOlator" to the number of 9,000,000. These filters are standard equipment on Chrysler, Buick, Oakland, and other cars. Defendant's filter consists of a casing containing a canton flannel bag compactly arranged into a spiral or helix. Thus there is provided a filtering area which is many times the cross-sectional area of the casing itself. In addition, defendant's filters are sold for use in lubricating systems so arranged that at a given time only a minor portion of the oil from the engine is passed through the filter. As a result, defendant's filters achieve the slow seepage of oil over an extensive area which produces true filtration.

History of Cole Patent.

The application for the Cole patent in suit was filed December 18, 1918. It was prosecuted fruitlessly for nine years. A variety of claims were asserted, none of which were addressed to the subject-matter of the claim now appearing in the patent. A study of the file wrapper shows the unrelated and unimportant things Cole was seeking to patent during the ten years before the interference was declared. It is an extraordinary record of versatility.

In the original Cole application the claims were for a filter directly in the line of the bearings, i. e., for a device filtering the entire flow of oil from the engine to the bearings.

On rejection, new claims were filed in January, 1920, featuring the withdrawal of water.

On rejection, all the claims were canceled and in May, 1920, a single claim was presented and characterized with the statement that "there is one clean cut novel idea in this case and the present single claim has been drawn to that idea." The idea was to force "the filtered lubricant directly upon the bearing surfaces to lubricate the same and wash out any grit."

On rejection, four new claims were inserted in May, 1921, featuring the filter in closed circuit with the bearings. Two of these claims brought in the matter of water separation. Accompanying this, Cole said: "Applicant is not aware that he has invented an improvement in filters."

On rejection, every one of these claims was canceled and a new effort was made in July, 1922, to obtain a single claim for a gravity filter in the direct line to the bearings.

On rejection, Cole clung to the gravity filter idea and reasserted in August, 1923, the matter of water separation. This was seven months after the publication in this country of the Sweetland French patent.

On rejection, additional claims were added in October, 1924, reciting the separation of water. This was months after the adoption of defendant's PurOlator as standard equipment on Chrysler cars and the national advertising of the event.

On rejection, all previous claims were canceled and three new claims inserted in October, 1925, limited to water removal and to means for delivering oil from the filter to the engine independently of any removed water. At this time defendant's PurOlators had been on the market for two years. They had been sold in large quantities and had been nationally advertised. Defendant's president testified: "During the year 1924 there were 34,000 delivered to Chrysler. In 1925 the combined number to all manufacturers was 380,000." Upwards of $200,000 had been spent in development work and in advertising. With knowledge of defendant's product Cole deliberately abandoned all of his earlier claims and limited his entire claim of invention to water removal. His claims remained so limited for over two years.

In July, 1926, the United States Sweetland patent issued. November 8, 1927, Cole copied claim 3 of the Sweetland patent into his application. Up to that time Cole had never claimed a "fine texture filter" or anything like it. He had never made any claim respecting the "area" of his filter, or its "capacity," or any suggestion of "correlation" as set forth in this claim.

For nine years Cole had been grasping at straws while defendant's business in PurOlators had grown by leaps and bounds. Outside of the manufacturing business promotion expense amounted to $687,000. Defendant's patents had then issued both in this country and abroad.

Cole's file wrapper demonstrates his complete ignorance of any such invention as plaintiff alleges until he copied claim 3 of Sweetland's patent in 1927. That was fifteen months after the Sweetland patent had issued. It was nearly four years after defendant's PurOlator, here alleged to infringe, had come upon the market. It was more than four years after the publication in the United States of the corresponding French patent to Sweetland. During the four years, before November 8, 1927, defendant's filter had been widely advertised and sold in great quantities. Over a million had gone into commercial use.

When Cole copied claim 3 of the Sweetland patent into his application he demanded an interference with the Sweetland patent. The Primary Examiner at first rejected the claim "for non-disclosure and as misdescriptive" but after oral argument he declared the interference. Sweetland opposed the declaration of the interference on the sole ground that Cole had no right to make the claim because of insufficiency of his disclosure. This issue was decide against Sweetland by the Patent Office, and, on appeal, by the Court of Customs and Patent Appeals. Sweetland v. Cole, 53 F.(2d) 709. The decision of the Court of Customs and Patent Appeals did not involve the issues respecting the validity of the Cole patent urged by defendant here. Validity was not and could not be questioned in the interference proceeding.

The sole question before the Patent Office in an interference proceeding is the question of priority of invention.

"The question in interference proceedings is which of the contestants was the prior inventor. The question of invention is not involved and is in fact conceded. Each party contends for the prize of being declared the first inventor. * * * We see no reason why the defendant may not avail itself fully of the defenses of lack of invention and non-infringement." Hillard v. Remington Typewriter Co. (C.C.A.) 186 F. 334, 336.

"An interference proceeding involves no question, except priority of invention as between the parties to the proceeding. * * * The opinion passed in that proceeding is therefore ineffectual to establish the construction to be given plaintiff's patent." Dunkley Co. v. Central California Canneries (C.C.A.) 7 F.(2d) 972, 977.

The decision of the Court of Customs and Patent Appeals rendered between different parties in a proceeding of limited statutory jurisdiction where the questions of validity and infringement were not involved is of no effect here.

Cole Patent.

The Cole patent was granted March 1, 1932, more than a dozen years after application filed. In his specification, Cole declares that lubricating systems do not provide adequate means for freeing the oil from foreign matter such as "metallic particles and sand, nor do they provide adequate means for separating the oil from any water which accumulates with the oil."

He briefly describes his invention:

"In my improved system I provide an associated oil filter to which I continuously pump the oil from the engine and from which I continuously pump or force the oil under pressure, after filtering, to the several points of delivery, i. e., the bearings to be lubricated.

"I am thus enabled to provide filtering means of ample capacity * * * to continuously remove from the engine the intaken sand, and at the same time to force the oil to the bearings in sufficient quantity and at sufficient pressure to cause them to be thoroughly flooded with oil."

His gravity filter, illustrated in Fig. 1, he describes:

"The oil is filtered slowly with a high pressure oil delivery means. * * *

"I provide a suitable gravity oil filter 3 of sufficient capacity so that the oil will not have to be forced through the filter in order to filter it fast enough to supply a sufficient quantity for the force feed system. * * *

"I have shown it as having a metal casing 8 in the upper part of which I arrange two coned filter partitions 9 and 10, carrying suitable filtering material and through both of which the oil must pass to reach the bottom of the casing. * * *

"The lower part 12 of the casing 8 constitutes an oil storage space in which the clean filtered oil accumulates after it has passed through the filter partitions. This lower part 12 also constitutes a separator in which the oil separates from any water carried with it. * * *"

The pressure filter system, illustrated in Fig. 2, Cole describes:

"The filtering partitions or walls comprise a plurality of cones 32 arranged in nested relation within the casing * * *. Preferably the cones are arranged with their smaller ends up so that the sand or grit...