Folberth Auto Specialty Co. v. Mayo-Skinner Mfg. Co.

• Decision Date: 11 August 1923
• Docket Number: 2576.
• Citation: 292 F. 883
• Parties: FOLBERTH AUTO SPECIALTY CO. v. MAYO-SKINNER MFG. CO.
• Court: U.S. District Court — Northern District of Illinois

292 F. 883

FOLBERTH AUTO SPECIALTY CO. v. MAYO-SKINNER MFG. CO.

No. 2576.

United States District Court, N.D. Illinois, Eastern Division.

August 11, 1923

[Copyrighted Material Omitted] [Copyrighted Material Omitted]

The following is the report of Special Master John W. Hill:

This is a patent case in the usual form, brought on the equity side of the court, charging infringement of three letters patent issued to William M. Folberth, of Cleveland, Ohio, for improvements in wind shield cleaners. The subject-matter is a small, highly developed, and specially constructed vacuum motor, particularly designed to operate a movable part or squeegee to keep the wind shield of an automobile clean and clear of obstructions that would interfere with the vision of the driver. It is specially formed to be mounted upon the windshield, being of such a size and form as not to interfere with the vision of the driver.

In connection with this was the conception and discovery by the inventor that in such a small, specially constructed motor the motive power could be secured by connection with the intake manifold of an internal combustion engine at a point above the carburetor, without interfering with the normal operation of the engine. This idea of connection with the intake manifold at a point above the carburetor was contrary to the teachings of the art, as fully disclosed by the opinions of a number of the leading experts in that line of business in this country, who were called and examined by the plaintiff.

The patents involved are letters patent to William M. Folberth No. 1,405,773, granted February 7, 1922, for wind shield cleaning apparatus, sometimes referred to as the A patent letters patent issued to the same patentee, No. 1,438,229, granted December 12, 1922 (this patent is based upon a divisional application from the patent above mentioned); and reissue letters patent to the same inventor, No. 15,502, dated December 5, 1922. The reissue is based upon original letters patent No. 1,424,890, issued August 8, 1922.

All the patents above mentioned, involved in this case, have been duly assigned to the plaintiff. The basis of the suit is found in the amended bill of complaint, filed May 25, 1923, and the answer to the amended bill, filed June 13, 1923.

The Only Defense.

The only defense relied upon in this case is that of invalidity of the several claims sued upon, and all other issues are excluded, so far as this suit is concerned, by the statements and admissions of counsel upon the record.

The defendant admits that it has manufactured and sold two forms of wind shield cleaners; one known as the 'piston type,' which is clearly shown and illustrated in 'Plaintiff's Exhibit No. 1, Defendant's Alleged Infringing Device,' and more clearly shown in 'Plaintiff's Exhibit No. 57, skeletonized Form Defendant's Cylinder and Piston Type Alleged Infringing Device. ' The other is known as the 'vane type,' clearly shown in the device marked 'Plaintiff's Exhibit Defendant's No. 8a Vane Type Alleged Infringing Device, ' and 'Plaintiff's Exhibit No. 6, Skeletonized Form Defendant's Vane Type Alleged Infringing Device. ' Defendant admits that, after the issue of all said letters patents herein and before the beginning of this suit, it manufactured and sold both of these types of wind shield cleaners within this district.

The plaintiff contends that the so-called 'piston type' of cleaner infringes all the claims of patent No. 1,405,773 (9 in number), all of the claims of reissue patent No. 15,502 (18 in number) and claim 4 of patent No. 1,438,229--a total of 28 claims. It also contends that the defendant, by its manufacture and sale of the 'vane type' of wind shield cleaner, has infringed claims 8 and 9 of patent No. 1,405,773, claim 4 of patent No. 1,438,229, and claim 13 of reissue patent No. 15,502--a total of 4 claims.

As set forth in the record, the defendant admits that all of said claims of patent No. 1,405,773, are descriptive of defendant's 'piston type' cleaner, that claim 4 of patent No. 1,438,229 is also descriptive of defendant's 'piston type' cleaner, and that each of the claims of the reissued patent 'is descriptive of defendant's piston type device. ' Defendant's counsel also admits on the record that claims 8 and 9 of letters patent No. 1,405,773, are descriptive of defendant's cleaner, which has been called the 'vane type,' stating: 'Our defense, so far as this patent is concerned, is directed solely to the validity of the claims. In other words, if the claims are held valid, the defendant has infringed this patent. "DPDefendant's counsel also admits that claim 4 of patent No.

1,438,229 is descriptive of defendant's 'vane type' of cleaner; that claim 13 of reissue patent No. 15,502 is descriptive of both of the defendant's cleaners and 'is infringed by the defendant, if the claim is valid. ' Defendant's counsel, after having carefully examined the reissue patent referred to, further stated that 'the defendant will admit that each of the claims of this patent is descriptive of defendant's piston type device.'

The defendant in defining its defense on the record says: 'I shall insist that the two valves called for by the claims of that patent (1,309,724) will find their equivalent in a single valve. I will say at this time that I am going to urge that patent in suit No. 1,405,773 is invalid, because the invention covered by such patent in all substantial parts thereof were covered by claims of the prior patent 1,309,724, which, by the way, is not in suit.'

The amended answer sets up an extensive list of prior art patents, together with the usual defenses, but, as heretofore stated, all these defenses were wiped aside and abandoned, with the single exception of the defense of invalidity of the several claims sued on. As shown in paragraph 15 of the amended answer, the defense of double patenting, mentioned in the quotation above, is also set forth. In paragraph 16 of the amended answer, the defense of inoperativeness of the device disclosed in patent No. 1,405,773 is set forth.

In paragraph 17 of the answer, the defendant charges that patent No. 1,438,229 is invalid and void for the reason that the subject-matter claimed therein was disclosed, but not claimed, in the prior patents, No. 1,309,724 and No. 1,352,504, both granted to the said William M. Folberth. Said paragraph also contains the statement that: 'Neither patent No. 1,309,724 nor patent No. 1,352,504, nor patent No. 1,405,773 (of which patent No. 1,438,229 purports to be a division) contained any notice that William M. Folberth was claiming or intending to claim the subject-matter to which the claims of patent No. 1,438,229 are now directed. ' By reason of this lack of notice, and the whole matter set forth in said paragraph, defendant charges that as a matter of law and fact said William M. Folberth abandoned the subject-matter claimed in said patent No. 1,438,229, and is estopped from asserting the same against this defendant.

Paragraph 18 of the answer charges that said patent No. 1,438,229 is invalid and void, because the subject-matter thereof had been put in use by the plaintiff and had been disclosed in patent No. 1,309,724 more than two years before the application for said patent No. 1,438,229 was filed. Paragraph 19 charges false and fraudulent marking of the wind shield cleaner marketed by the plaintiff, by reason of marking the same 'Patented September 14, 1920'; whereas, the said wind shield cleaner as thus marked was not within the scope of the said letters patent issued on September 14, 1920.

Therefore, as stated, the defendant bases its whole defense upon the invalidity of the several claims sued on, relying in its effort to maintain this defense upon the prior art specifically referred to, and upon the several defenses above set forth. Both parties have been represented by able counsel, who have presented the case in all its aspects in a most commendable manner.

The Facts.

The main facts in relation to the inventions of the several patents sued on are not disputed and may be as briefly stated as possible, as follows:

At or about the year 1903 transparent wind shields began to be employed on automobiles, first, as an accessory, and about three years later, to wit, 1906, they were adopted as 'standard equipment'; that is, the cars as sold to the purchaser included the wind shield in place as a part of the car. From the beginning of the use of the wind shield it was found that under certain conditions vision through the wind shield was so interfered with as to render it dangerous to drive the car. The falling of rain and snow upon the wind shield was the principal cause of this difficulty, and this has been experienced by every one who has ever had anything to do with automobiles.

When this difficulty first occurred, the crudest methods were employed to remove the obstruction from a sufficient space on the wind shield, so that the driver could secure an unobstructed view therethrough. The record shows what some of these methods were. Originally the bare hand was used by many to wipe off the snow or rain; some used a cloth or other similar means for the same purpose. As the rain and snow fell upon the outside of the shield, this would necessitate reaching around the end of the wind shield to wipe away a spot as nearly in front of the driver as possible. Obviously, this could be safely done only by stopping the car, and when the rain and snow were falling abundantly it would no sooner be wiped off than the wind shield would be again covered, and therefore the necessity was constant at such periods.

This practically made it imperative that on such occasions the car should be stopped entirely, thus putting it out of commission for the...