Eclipse Mach Co. v. Harley-Davidson Motor Co.

• Decision Date: 20 August 1917
• Docket Number: 1321.
• Citation: 244 F. 463
• Parties: ECLIPSE MACH. CO. et al. v. HARLEY-DAVIDSON MOTOR CO. et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

244 F. 463

ECLIPSE MACH. CO. et al. v. HARLEY-DAVIDSON MOTOR CO. et al.

No. 1321.

United States District Court, E.D. Pennsylvania.

August 20, 1917

Duane Morris & Heckscher, of Philadelphia, Pa., Robert W. Byerly of New York City, C. L. Sturtevant, of Washington, D.C., and Archibald Cox, of New York City, for plaintiffs.

J Bonsall Taylor and E. Hayward Fairbanks, both of Philadelphia, Pa., for defendants.

DICKINSON District Judge.

The discussion of the merits of this cause has taken such a wide range and there have been brought into it so many and such various features that there is danger of the mind being swamped by the mass of details. It is further, because of this, difficult to get a firm grasp of the features which present the points really in controversy. The fact that there are three patents involved (one of which has been surrendered and reissued), and that the device as manufactured and used by neither the plaintiff nor the defendant embodies all the patented features of all the different patents, adds to the difficulties of an adequate presentation in small compass of the dispute. The fact is that the device as used is not the device patented by any one of the patents, nor even described in the application except in so far as it is the device described in the third patent application, some features of which are patented. These patented features do not lend themselves to conjoint use in any proper sense of the term.

The complaint of the plaintiff is really three causes of complaint voiced in one bill, and is that the defendants have infringed upon rights granted to the plaintiffs, some by one patent and some by each of the other patents. This is a wholly different thing from the complaint of one trespass upon the rights of plaintiffs granted by three patents capable of conjoint use and conjointly used. We see, however no need for the averment in the bill of a conjoint use and no defense in the denial of it by the answer. Before the new equity rules went into effect such a bill as that filed in this case would have been bad for multifariousness. The long list of cases cited by counsel headed with National Manuf. Co. v. Meyers (C.C.) 7 Fed. 355, confirms this, but would not be needed because it is clear that devices made in accordance with these different patents would be wholly different constructions, and that the features of each do not lend themselves to conjoint use. Under rule 26 (201 F. v, 118 C.C.A. v), however, a plaintiff may now join (upon proper occasion) as many different causes of action as he may have. The only restrictions are that each cause must be one cognizable in equity; that the different rights of action all belong to the plaintiff, or, if more than one, to the plaintiffs jointly, and that if there are several defendants sufficient grounds for joining them must appear. All these features are present in this bill. Under rule 26, it is difficult to see how a bill can be objectionable merely because several causes of complaint are incorporated in one bill, and, even if it were, the objection could be made only in the way pointed out by rule 29 (198 F. xxvi, 115 C.C.A. xxvi). This so far as concerns this court disposes of the question of multifariousness.

There is another branch of the defense which is directed against the first or reissued patent. Reissues are provided for in R.S. 4916 (Comp. St. 1916, Sec. 9461). The question raised is the propriety of the act of the Patent Office in granting the reissue, or more directly the validity of the rights thus in form granted. A view of the obvious purpose of this legislation and its limitations will aid us to see the proper scope of its effects. An inventor may describe his invention and claim such exclusive proprietary rights therein as he may have the right to claim. There is no requirement that he shall claim all which he might claim. If he claims less, two results follow. One is that he gets no more than what is claimed and allowed; the other is that there is a dedication to the public of all which is disclosed and not claimed. The omission of a possible claim may have been deliberate and intentional in fact or in legal intendment. If so, the act is irrevocable. It may have been, however, that the omission was due to 'inadvertence, accident, or mistake.' For such cases the act of Congress provides by permitting the patentee to surrender the granted patent and to receive a reissue. The proceeding is essentially an amendment, and within the rules applicable to amendments generally. It is a self-evident proposition that the patentee has no exclusive proprietary right beyond what is granted, nor until it is granted, and that the real basis of the validity of the original and of the amended grant is the original application, and this is not affected by the amendment beyond the formal fact of the reissue and the occasion for it. This part of the defense loses all practical value because the claim of proprietary rights made by the plaintiffs might have been based upon the original, if no reissued patent had been granted. A claim allowed under the original application and for which a patent issued, if valid, loses nothing in validity because reincorporated in a reissued patent. Ward v. Weber, 230 F. 142, 144 C.C.A. 440.

This brings us to the consideration of plaintiffs' claimed invention. There are, as already stated, three patents issued and now belonging to plaintiffs. They are using a device which is not described in any of the applications, except the third, the claims of which are limited to a specific feature of construction in combination with other elements admittedly old. The defendants' device is likewise protected by a patent, the claims of which are in like manner restricted. There can be no plausible pretense made that the plaintiffs' patentee invented either clutch or motorcycle clutch. Convincing evidence of this is afforded by the first and every of the applications. The invention claimed in each instance is for 'improvements in motorcycle clutches.' There were motorcycle clutches, as well as clutches for other uses which antedated the entrance of plaintiff's invention upon the field. The defense broadly stated, is that the plaintiffs did precisely what the defendants did in the exercise of precisely the same right. Each went to the ample store of the prior art, extracting therefrom the ideas which were adapted to his purpose, and through and by the application of mechanical knowledge and skill constructed a device which answered to his needs. There could be in this no room for any possible claim to invention beyond the hitting upon a combination in which some special construction might enter as a novel element. Such were in fact the claims which the Patent Office allowed to each applicant in issuing the patents under which the respective devices of the plaintiff and defendant are manufactured. There is no conflict between these patents, and in consequence no question of infringement involved. If such a defense is made good, the plaintiff has no case. If the plaintiffs' patents are valid, each invention claimed is an advancement upon the prior art. Let us see if this be true and in what the advance consists and wherein the defendants have appropriated the invention of the plaintiffs. The advance from a clutch to a motorcycle clutch is clear enough. The differences between them are real because functional. Features which are not only of merit, but necessary in the one, are or may be of no value and even positive defects in the other. A motorcycle clutch may, because of this, be a new thing when compared with the other clutches. An illustration of what is meant by this is afforded by the slippage feature. In clutches designed for many uses this feature is of no advantage, and in others is positively detrimental to efficient operation. In motorcycle clutches, it is so far from being objectionable as to be an indispensable characteristic. This slipping in the grip of the clutch is, in consequence, eliminated so far as possible in some clutches, but is encouraged in motorcycle clutches. This thought of the advantage of having, and because of this promoting slippage, makes a call for the exercise of a different quality of the mind from that demanded in the application of mere mechanical skill to the problems of construction involved. Moreover, slippage implies friction, and the necessity of guarding against the undue heating and wearing of the parts affected, so that the slippage must be under control and be regulated to meet the changing needs of varying conditions of travel. The designed device must further be kept within the limitations of space and weight and cost of construction which motorcycle use imposed and yet meet all the demands of strain and speed and durability made upon such machines. There is again in illustration the feature (claimed to be characteristic of plaintiffs' machine) of superposed rotary numbers, resulting in mechanical gains in length of shaft and otherwise. There was room also for judgment in selection and in finding the proper combination of elements. The prior...