Frank Adam Electric Co. v. COLT'S PATENT FIRE A. MFG. CO.

• Decision Date: 04 April 1945
• Docket Number: 12907.,No. 12906,12906
• Citation: 148 F.2d 497
• Parties: FRANK ADAM ELECTRIC CO. v. COLT'S PATENT FIRE ARMS MFG. CO. (two cases).
• Court: U.S. Court of Appeals — Eighth Circuit

148 F.2d 497 (1945)

FRANK ADAM ELECTRIC CO. v. COLT'S PATENT FIRE ARMS MFG. CO. (two cases).

Nos. 12906, 12907.

Circuit Court of Appeals, Eighth Circuit.

April 4, 1945.

Edwin E. Huffman, of St. Louis, Mo., for Colt's Patent Fire Arms Mfg. Co.

John H. Sutherland, of St. Louis, Mo. (Clarence T. Case, of St. Louis, Mo., on the brief), for Frank Adam Electric Co.

Before SANBORN, JOHNSEN, and RIDDICK, Circuit Judges.

SANBORN, Circuit Judge.

These appeals are from a decree in an action brought by Colt's Patent Fire Arms Manufacturing Company, as plaintiff, against Frank Adam Electric Company, as defendant, for the alleged infringement of three patents issued to Joseph Sachs for automatic circuit breakers. The patents belong to the plaintiff. The decree appealed from determines that Claims 9 and 11 of United States Reissue Patent No. 20,018, granted June 23, 1936 (based on original Patent No. 1,812,842 dated June 30, 1931), are valid and infringed, and that Claims 7 and 17 of United States Patent No. 2,020,333, issued November 12, 1935, and Claims 8 and 13 of United States Patent No. 2,094,963, issued October 5, 1937, are invalid and not infringed. Each party has appealed from the portions of the decree which are unfavorable to it.

This case was tried before Judge Charles B. Davis, who died after the evidence had been taken but before the case was argued. The parties stipulated that the case be referred to a Special Master for decision upon the record made before Judge Davis. The District Court referred the case to Lawrence C. Kingsland, Esq., as Special Master. It was submitted to him upon the record and the briefs and arguments of the parties. Thereafter the Special Master filed his report, containing a detailed discussion and analysis of the issues, his findings of fact and conclusions of law, and his recommendation for a decree. The District Court, after overruling the objections of the parties to the Special Master's report and denying a motion of the defendant for a new trial, entered the decree appealed from, which is in exact conformity with the findings and recommendation of the Special Master.

Each of the patents in suit is for an automatic circuit breaker for use in protecting small motors, household electric appliances and lighting circuits against current overload. Such a circuit breaker is a substitute for the well-known switch and fuse plug and has the advantage of permitting easy restoration of an electric circuit which has been automatically broken. The plaintiff makes and sells circuit breakers conforming to its patents. The defendant makes and sells a competing device, which the plaintiff regards as an infringement of its patents.

The defenses urged by the defendant against the charge of infringement are (1) invalidity, for anticipation and want of invention; (2) noninfringement; and (3) unclean hands. The defendant contends that, under the evidence and the applicable law, it was entitled to a decree dismissing the complaint upon the grounds: (1) that none of the claims in issue of the patents in suit is valid or infringed; and (2) that the evidence shows that the plaintiff had come into court with unclean hands. The plaintiff contends that it was entitled to a decree determining that each patent is valid and was infringed by the defendant.

While the Special Master, who tried this case upon the written transcript taken before Judge Davis, had no better opportunity to weigh the evidence than we have, this court will not try the case de novo. The findings of fact of the Special Master, which have been approved by the District Court, are conclusive upon this court in so far as they are not clearly erroneous. Stilz v. United States, 269 U.S. 144, 147-148, 46 S.Ct. 37, 70 L.Ed. 202; Williams Mfg. Co. v. United Shoe Machinery Corporation, 316 U.S. 364, 367, 62 S.Ct. 1179, 86 L.Ed. 1537; Goodyear Tire & Rubber Co., Inc. v. Ray-O-Vac Co., 321 U.S. 275, 278, 64 S.Ct. 593, 88 L.Ed. 721; Strong-Scott Mfg. Co. v. Weller, 8 Cir., 112 F.2d 389, 395; Gasifier Mfg. Co. v. General Motors Corporation, 8 Cir., 138 F.2d 197, 199; Sears, Roebuck & Co. v. Talge, 8 Cir., 140 F.2d 395, 396; Sbicca-Del Mac, Inc. v. Milius Shoe Co., 8 Cir., 145 F.2d 389, 395-396.

With respect to the special defense of unclean hands, the Special Master found as a fact "That the plaintiff has not used the patents here in suit in any manner to disentitle plaintiff to maintain the suit, and that the defendant has failed to establish any facts in support of the defense of unclean hands." This finding, we think, is clearly justified by the evidence and is not erroneous.

We are also of the opinion that the findings and conclusions of the Special Master that Claims 7 and 17 of Patent No. 2,020,333 and Claims 8 and 13 of Patent No. 2,094,963 are invalid and not infringed, are sustained by the evidence. The careful analysis of the claims of these patents made by the Special Master in his report is convincing that they embodied no patentable subject matter over the prior art and constituted mere adaptations of prior art disclosures.

The vital questions in this case are whether the subject matter of Claims 9 and 11 of Reissue Patent No. 20,018 constituted invention in view of the prior art, and, if so, whether the accused device of the defendant infringed those claims.

The devices involved can more easily be visualized than described. The following are illustrations of the accused device and of the device covered by the Sachs Reissue Patent No. 20,018:

Since Claims 9 and 11 of Reissue Patent No. 20,018 are, in substance, the same, we shall quote only claim 11, which reads as follows:

"11. An automatic circuit breaker comprising in combination, a movable contact member biased toward its open-circuit position, a movable actuating member normally adapted to move the contact member to open or close the circuit, and a thermostatic bi-metallic strip serving in and of itself as a releasable latch normally movable with the actuating and contact members and normally operative for mechanically connecting them to enable the former to effect the movement of the latter, the said thermostatic bi-metallic latch being connected in the circuit so as to be automatically deflected from its normal position upon the attainment of an abnormal current condition in the said circuit and to thus mechanically disconnect the contact member from the actuating member and permit the said contact member to automatically move to its open-circuit position independently of the actuating member."

Of Claims 9 and 11 of Reissue Patent No. 20,018, the Special Master in his report says:

"In simple language both claims are directed to a circuit breaker that comprises a specific means to make and break an electric circuit. The structure includes a movable contact member normally tending to open. The movable contact member is operatively connected with an actuating member by which it may be normally manually moved to open and close the circuit. A thermostat, connected for movement with the movable contact carrier, alone constitutes a latch to connect the actuator with the movable contact member whereby the actuator may move the movable contact carrier.

"The theromstat is in the circuit controlled by the device, and by deflection due to a current overload unlatches the connection between the actuator and movable contact carrier to permit the contact carrier to move to open the circuit independently of the actuator.

"The critical element of the claims is the arrangement of the thermostat. It serves as the releasing latch permitting independent movement of the movable contact carrier when the condition of the circuit warps the thermostat under abnormal condition of the circuit, and connects the actuator and movable contact carrier during normal operation."

The Special Master also says: "Plaintiff's claim to patentable novelty is based upon the contention that the patent now considered is the first disclosure of the concept of an automatic circuit breaker including an electro-thermally affected element mounted in the circuit, that is carried by the movable contact member and which element acts itself as the means for normally latching the movable contact member with an actuator for manual operation; and which latch is released when subjected to an abnormal condition, so that upon release of the thermal element itself, the switch opens at once, and other movements of other parts are not required to effect the opening, and do not influence it."

The releasable latch of the patented device and its operation are illustrated by the following drawings:

The state of the art at the time Sachs entered the field is accurately described by the Special Master in his report as follows:

"It is entirely clear from this record that at the time of the advent of the patent under consideration, the circuit breaker art was crowded almost to the point of suffocation. There were many workers in this field, and the patentee here was only one of many. The art fully understood that any circuit breaker of the general automatic type here involved required some means for manually opening and closing the circuit, by manipulating the device to bring a movable contact into and out of closed circuit position; and some form of releasable latch mechanism was commonly provided, which was controlled by an electro-responsive element in the circuit, operable to release upon an abnormal condition in the circuit. Speaking generally, it was also recognized that the electro-responsive element could optionally be of the fuse, magnetic or thermostatic type. It was also common to provide means to prevent reclosing of the circuit during an abnormal circuit...