Eclipse Mach. Co. v. JH Specialty Mfg. Co.

• Decision Date: 07 April 1933
• Docket Number: No. 6034.,6034.
• Citation: 4 F. Supp. 306
• Parties: ECLIPSE MACH. CO. et al. v. J. H. SPECIALTY MFG. CO.
• Court: U.S. District Court — Eastern District of New York

4 F. Supp. 306

ECLIPSE MACH. CO. et al. v. J. H. SPECIALTY MFG. CO.

No. 6034.

District Court, E. D. New York.

April 7, 1933.

Thomas J. Byrne, of New York City (W. B. Kerkam and L. H. Sutton, both of Washington, D. C., of counsel), for plaintiffs.

Kenyon & Kenyon, of New York City (Wm. Houston Kenyon, Frederick Bachmann, and W. Houston Kenyon, Jr., all of New York City, of counsel), for defendant.

CAMPBELL, District Judge.

This is a suit brought by the plaintiffs for relief by injunction and damages for the alleged infringement by the defendant of patent No. 1,258,302, issued to Vincent Bendix, for starter, granted March 5, 1918, on an application filed March 15, 1916.

The plaintiffs are the Bendix Aviation Corporation, holder of the legal title to the patent, and the Eclipse Machine Company, the exclusive licensee thereunder.

The defendant is a New York corporation, with its principal place of business in this district.

The defendant has interposed the defenses of invalidity, noninfringement, and unclean hands.

The patent in suit relates to the well-known Bendix drive, employing an automatically meshing and demeshing pinion, equipped with a flattened spring, as therein described.

Plaintiffs charge infringement of all of the eleven claims of the patent in suit, of which claims 1, 2, and 3 are contended to be per se claims covering the spring "for use in transmission mechanism in engine starting apparatus," and the remaining claims are for the combination of which the spring is a part.

Claims 1 and 4 of said patent read as follows:

"1. For use in transmission mechanism in engine starting apparatus, a spring cooperating with such mechanism and forming a yielding driving connection therein in the line of transmission of power, said spring being of the coiled type and having its coils flattened in a direction at right angles to the axis of the coil."

"4. In engine starting apparatus, a transmission mechanism including two rotatable members, one of which has a longitudinal movement, and a yielding driving connection between such members consisting of a coiled spring having its coils flattened in a direction at right angles to the axis of the coil and arranged for torsional and for extension and compression actions."

The patent in suit was adjudicated after a full trial on the merits in the suit brought by Eclipse Machine Company v. Eclipse Tool Co., Inc., Hubert McGinnis and David Ferguson, in the United States District Court for the District of Indiana, Indianapolis Division, decree dated June 30, 1926.

In the suit brought by Eclipse Machine Company and Bendix Corporation v. Brown & Green Ignition Sales Co., Inc., in the United States District Court for the Southern District of New York, decree dated April 2, 1929, the decree is in the form of a consent decree, but was made after proceedings on a preliminary injunction motion, exchange of expert affidavits, and the putting in of the prima facie case on the trial when the defendant's counsel became ill and an adjournment of the trial was granted. Whereupon the real defendant in that suit, the Wickwire Spencer Steel Corporation, solicited and procured a license from plaintiffs, which is still in effect, and on which the licensee has paid plaintiffs as royalties a sum in excess of $131,000.

Consent decrees have also been made in the following suits:

Eclipse Machine Company v. Automotive Manufacturers Outlet, Inc., Hy. Mendelson, Charles R. Dietz, Harry Porte, and Joseph Porte, in the District Court for the Southern District of New York, decree dated November 21, 1925.

Eclipse Machine Company v. Alfred S. Lukens, trading under the name of A. S. Lukens Co., in the United States District Court for the District of Indiana, Indianapolis Division, decree dated December 21, 1925.

Eclipse Machine Company v. Charles Fischer Spring Company, Inc., in the United States District Court for the Eastern District of New York, decree dated October 11, 1926.

Eclipse Machine Company v. Welworth Auto Supply Company, Inc., Philip Frankel, and Benjamin Frankel, in the United States District Court for the Eastern District of New York, decree dated November 20, 1925.

The litigation on the patent attests the utility of the device. Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U. S. 441, 31 S. Ct. 444, 55 L. Ed. 527; Eames v. Andrews, 122 U. S. 40, 7 S. Ct. 1073, 30 L. Ed. 1064; Benbow-Brammer Mfg. Co. v. Straus (C. C. A.) 166 F. 114.

The Bendix drive from the time of its appearance on the market in 1914, when about 5,000 were sold, has been sold in increasing numbers, over 6,000,000 having been produced in 1929, and over 40,000,000 in all having been sold to date, aggregating a sum of over 80,000,000.

As originally produced by Bendix, there was no yielding driving connection or spring between the starting motor and the pinion.

That construction was found to be non-commercial, due to the tremendous shock and strain involved in instantaneously applying the electrical torque of the motor and the kinetic energy of rotation of the armature and connected parts to a stationary engine having great inertia.

To solve the problem, Bendix conceived of the use of a spring interposed between the starting motor and the pinion that meshed with the flywheel gear, and for that purpose first employed a spring round in cross-section such as is shown in Bendix United States patent, No. 1,125,935. It appears that a drive equipped with such a spring was shown at the Automobile Show in New York in January, 1914.

This worked satisfactorily on light and relatively small engines but not on large ones, either in single or double reduction installation, as in that use the springs were distorted and broken.

The engineers of the Westinghouse Electric & Manufacturing Company, which had been approached by the plaintiff Eclipse Machine Company in an effort to interest it in the drive, were opposed to the use of a spring as a yielding driving connection, and recommended that a friction clutch like that of the Conrad patent, No. 1,413,829, be substituted therefor.

This presented a serious problem, as success depended upon capacitating the drive for universal use on light and heavy installations, and single and double reductions.

Bendix, assisted by the two Elletts, devoted his time for about six months in an attempt to solve the problem and, first, by following the suggestion of the Westinghouse engineers, they built and tried clutches. This, of course, overcame the breaking of the springs, as there were none in the transmission of torque in those constructions.

The clutch, however, lacked the capacity to perform other necessary functions of mesh enforcement.

Other efforts were made without success, until in May, 1914, Bendix suggested the use of a spring that was square in cross-section, each side being 7/32 of an inch. That spring developed sufficient torsional strength but did not solve the difficulty with respect to end to end binding of the pinion against the fly-wheel gear.

In June, 1914, Bendix solved the problem by the flattened spring of the patent in suit. A drive equipped with that form of flattened spring was successfully tested at Westinghouse on the double reduction installation.

The application for the patent in suit was originally rejected under date of April 26, 1916, on the ground that Bendix patent, No. 1,125,935, showed a spring round in cross-section in the same relation as the spring in the application of the patent in suit, that it showed the same combination, the only difference being in the specific spring structure.

The claims were rejected as being drawn to old combinations.

By letter of April 23, 1917, the patentee set forth reasons for approving his application, and thereafter, under date of May 18, 1917, the examiner made this statement: "Upon further consideration, the rejection of the claims on the ground of old combination is waived on the ground that it is novel to associate the particular spring in a starter mechanism, the spring was specially designed with the requirements of its use in mind, and the association of the particular spring with the other elements is apparently productive of improved results in this art."

By amendment of November 26, 1917, claims 1 to 8 of the patent in suit were introduced and the case allowed on December 26, 1917.

Defendant, comparing the starter of the patent in suit with the starter of the prior Bendix patent, No. 1,125,935, contends that the concrete thing achieved is merely a substitution of one form of power-transmitting and shock-absorbing coiled spring for another, in a combination that is otherwise unchanged in any particular, either in its elements or their dimensions, or in the mode of their combination, and that develops the same functions and operation in kind, and produces the same results in kind; and that the differences are merely in degree and are such as characterize and accompany the substituted form of spring as such when compared with the spring for which it is substituted.

In support of this contention the defendant refers to the testimony of its expert Rockefeller, who says that mechanically the only structural change from the starter of the earlier Bendix patent, No. 1,125,935, to the starter of the patent in suit, is the substitution of spring 7 of the latter, made out of flat wire, for spring 5 of the former, made out of round wire, and that the change was merely good engineering. He further says that both forms of coiled spring were old and well-known tools of the art, interchangeably in general use, to be selected for particular uses according to their known characteristics and special fitness for that use. And by way of illustration refers to certain publications and patents, and discusses in detail the following patents: Henry, No. 686,065; Swan, British, No. 2634, of 1913; Pitt, British, No. 1278, of 1877; Browne, No. 359,841; Leaman, No. 350,631.

Defendant cites, as authority...