EIM CO. v. Philadelphia Gear Works, Civ. No. 5549.

• Decision Date: 26 December 1951
• Docket Number: Civ. No. 5549.
• Citation: 92 USPQ 420,102 F. Supp. 14
• Parties: E. I. M. CO., Inc. v. PHILADELPHIA GEAR WORKS, Inc.
• Court: U.S. District Court — Southern District of Texas

102 F. Supp. 14

92 USPQ 420

E. I. M. CO., Inc. v. PHILADELPHIA GEAR WORKS, Inc.

Civ. No. 5549.

United States District Court S. D. Texas, Houston Division.

December 26, 1951.

Berry, Richards & Baker, T. E. Richards, Jr., Browning & Simms, Ralph Browning and James B. Simms, Houston, Tex., for plaintiff.

McGregor & Sewell and Douglas W. McGregor, Houston, Tex., Henry N. Paul and Francis W. Sullivan, Philadelphia, Pa., for defendant.

HANNAY, District Judge.

This action is brought by E. I. M. Company, a Texas corporation, seeking a Declaratory Judgment of non-infringement and invalidity of patents Nos. 2,114,013; 2,150,813; 2,203,233; 2,222,699; 2,315,389; and 2,319,842, owned and controlled by the defendant, Philadelphia Gear Works, Inc., a Pennsylvania corporation. Plaintiff further asserts a cause of action for unfair competition based on defendant's alleged malicious threats of alleged patent infringement addressed to plaintiff's customers. Defendant has answered, denying plaintiff's allegations and praying for: (1) dismissal of the Complaint; (2) for final injunction against further infringement of certain Letters Patent owned and controlled by it; (3) for an accounting for profits and damages arising because of such infringement; (4) for assessment of costs, and (5) for such other and further relief to which it may be entitled.

By stipulations entered into between plaintiff and defendant on April 19, 1951, plaintiff has withdrawn its request for Declaratory Judgment with respect to all of the patents listed in the Complaint except the Ball patent No. 2,114,013, and defendant has acknowledged that plaintiff's valve controls, as shown and described in Joint Exhibits I, II, and III attached to such stipulations, do not infringe any claim of the patents listed in the Complaint, except Claim 2 of the Ball patent No. 2,114,013.

Findings of Fact.

Title and Constructive Notice.

1.

Defendant, Philadelphia Gear Works, Inc., is the owner by assignment, dated March 17, 1950, of United States Letters Patent 2,114,013 issued to Russell C. Ball, "together with all claims, demands and causes of action for the past infringement of said Letters Patent, wheresoever and by whomsoever committed."

(See assignment, Def's Ex. 34.)

2.

Defendant has attached to all valve controls made and sold by it, embodying the invention of the Ball patent in suit, a plate bearing the number of said patent.

(Def's Ex. 41: Testimony of Ball, Tr. p. 831.)

Issue of Invention.

3.

Prior to his invention, Ball was confronted with a two-fold problem: (1) To provide a valve control capable of both manual and power operation and having adequate safeguards avoiding a coincidence of manual and power operation, thereby preventing the possibility of injury to an operator turning the handwheel and also preventing interference between manual and power operation; and (2) to provide in such a valve control a device whereby when the motor was started, as by remote control, the handwheel would be automatically released and the motor would be automatically engaged to actuate the valve spindle.

(Patent in suit, Pl's Ex. 117, page 1, col. 1, lines 1 to 31; Testimony of Panish, Tr. pp. 963-4.)

4.

The need for an improved valve control satisfying the above mentioned requirements had existed since the introduction of dual control valves, such as shown in the King Patent No. 705,250 of 1902. Numerous patents had issued in this field of inventive activity between 1902 and 1935, and during this period various inventors, including Dean, Panish and Clinedinst, had made statements in patents or publications showing that they were aware of the problem and were seeking a satisfactory solution thereof. Their efforts to find a solution of one aspect of the problem (non-co-incidental manual and power drive) invariably resulted in a sacrifice of the other aspect (automatic handwheel release and power drive engagement). Until Ball's invention, no satisfactory solution was found.

(King patent, Def's Ex. 66; Testimony of Panish, Tr. pp. 962-969, 973-976; see also Dean's Article, Def's Ex. 68, p. 16, Panish patent, Pl's Ex. 120, p. 3, lines 24-27, Clinedinst patent, Pl's Ex. 119, p. 1, col. 1, lines 36-52; old "Limitorque" operators designed by Dean, Def's Ex. 35, and Def's Ex. 59, p. 18.)

5.

The first successful solution of the twofold problem outlined above is found in the Ball patent.

(Deposition of Hertrich, Pl's Ex. 142, p. 51; Testimony of Panish, Tr. p. 965.)

6.

It was a novel concept on the part of Ball to provide, in a valve control capable of selective manual or power operation, a means whereby the impulse of the power-driven mechanism would serve, first, to release the hand operated drive and, secondly, to connect the motor operated drive.

(Testimony of Gignoux, Tr. pp. 568-569.)

7.

Clutch detent mechanism for maintaining or securing a clutch in handwheel engagement was, per se, old in the valve control art. Such mechanism is shown, for example, in the prior Panish patent No. 1,747,594.

(Pl's Ex. 120, p. 2, line 11. 129-130, see also, detent 38a in Figure 3.)

8.

Ball, however, was the first to provide a clutch holding mechanism in combination with means for allowing the clutch to be released automatically from handwheel engagement by the impulse of the motor driven mechanism and thereafter shifted automatically into operative engagement with the power-driven mechanism. The novel combination of elements for achieving the new result is expressed in Claim 2 of the Ball patent.

(Testimony of Gignoux, Tr. p. 569; of Panish, Tr. pp. 1010-1.)

Commercial Success.

9.

The total sales of valve controls made and sold by defendant from 1936 to and through 1950, embodying the invention of the Ball patent in suit, has amounted to $8,264,011. Said valve controls have been sold to practically all of the water works, petroleum refineries, central stations, power plants, chemical engineering plants, paper making plants, steel manufacturing plants, pipe lines and other companies listed on pages 19-8 to 19-10 of defendant's Catalog L-50, and have been used in many foreign countries. One government installation involves between 2,500 and 3,000 of defendant's patented valve controls. The patented valve control has been highly successful and such success has been due in large measure to the merit of Ball's invention.

(Catalog L-50, Pl's Ex. 132, Testimony of Walker, Tr. pp. 613-617.)

Issue of Anticipation by Prior Art.

10.

Jones (British) Patent No. 307,444 does not disclose of the following elements called for in claim 2 of the Ball patent:

"a rotary member adapted to surround the spindle for axially moving the same when rotated" (red); or

"means responsive to the operation of the power-driven mechanism for automatically rendering effective", etc. (green).

(Pl's Ex. 122; Testimony of Gignoux, Tr. pp. 556-562; of Panish, Tr. p. 1015.)

11.

Jones (British) Patent No. 307,444 shows a friction clutch m 3 and centrifugal members m 10 "to ensure that before * * * the power operated means are connected, and the load applied to the electric motor the latter shall be free to rotate and speedup." According to Jones' specification energization of solenoid S pulls down ends s4 of the lever s5 to disengage the handwheel H, and subsequently the weighted arms fly out and motor torque is transmitted through the gearing m7 and m8 to screw v1 to actuate the valve. Hence, in Jones' patent neither the release of the hand-operated driving means nor the operative engagement of the power-driven means are affected "in response to the operation of the power-driven mechanism," as called for in the claim in suit. On the contrary, such operations are responsive to the electrical impulse which energizes the solenoid S and are unrelated to the operation of the power-driven mechanism.

(Pl's Ex. 122, p. 2, lines 55-86; Testimony of Gignoux, Tr. pp. 561-2; of Panish, Tr. pp. 1015-1018).

12.

Jones (British) Patent No. 307,444, regardless of the type of valve V which may be operated by the control mechanism, neither discloses nor suggests the use of any rotary member adapted to surround a valve spindle for axially moving the same. To provide such rotary member in Jones would necessitate substantial reconstruction of the control mechanism. Furthermore, the use of a friction clutch, such as shown in the Jones patent, renders the device inoperative for opening large valves, which require a hammer blow to open, and the use of clutch jaws, such as shown in Jones, is impracticable, because of the difficulties of alignment of such jaws.

(Testimony of Gignoux, Tr. pp. 504, 557-8; of Panish, Tr. pp. 1018-1020.)

13.

Jones U. S. Patent No. 1,864,653 does not contain as full a disclosure as Jones British Patent, but the two devices operate in the same manner. The same deficiencies of disclosure, indicated above with respect to the British patent, apply also to the Jones United States Patent.

(Testimony of Gignoux, Tr. pp. 555-6; of Panish, Tr. p. 1023.)

14.

Panish Patent No. 1,747,594 shows a clutch mechanism 38 which is operated manually by means of a hand knob 41. It contains no automatic clutch shifting device. If the clutch is left in hand-operated position and the motor is started, the valve will not move. Panish does not disclose any of the following elements called for in claim 2 of the Ball patent: "means responsive to the operation of the power-driven mechanism for automatically rendering ineffective" etc. (green).

(Pl's Ex. 120; Testimony of Gignoux, Tr. p. 554; of Panish, Tr. pp. 1012-1014.)

15.

Haas Patent No. 1,850,392 relates to a machine tool, such as a grinding machine. It does not disclose any of the following elements called for in claim 2 of the Ball patent:

"a valve actuating spindle," etc. (brown);

"a rotary member adapted to surround the spindle" (red);

"a power-driven mechanism adapted for selective driving connection with said rotary member" (blue);

"clutch...