Frick Co. v. Lindsay

• Citation: 27 F.2d 59
• Decision Date: 12 June 1928
• Docket Number: No. 2686.,2686.
• Parties: FRICK CO. v. LINDSAY et ux.
• Court: United States Courts of Appeals. United States Court of Appeals (4th Circuit)

27 F.2d 59 (1928)

FRICK CO. v. LINDSAY et ux.

No. 2686.

Circuit Court of Appeals, Fourth Circuit.

June 12, 1928.

Charles Neave, of New York City, and Ernest W. Bradford, of Washington, D. C. (Stephen Nettles, of Greenville, S. C., on the brief), for appellant.

James T. Newton, of Washington, D. C. (Siggers & Adams, of Washington, D. C., on the brief), for appellees.

Before PARKER and NORTHCOTT, Circuit Judges, and GRONER, District Judge.

PARKER, Circuit Judge.

This suit was instituted in the court below to restrain defendants from alleged infringement of reissue patent No. 15,895, covering an air-agitating tube for refrigerating systems, and for an accounting of profits derived from the infringement. The court held that the patent was not infringed, and entered a decree dismissing the bill. Complainant is the Frick Company, a corporation of Pennsylvania, engaged in the manufacture of ice making machinery, and the owner by mesne assignments of the patent in suit, which was originally issued to defendant Robert F. Lindsay and Robert H. Hemphill. Defendants are Robert F. Lindsay and wife, Effa S. Lindsay, owners of patents 1,567,523 and 1,606,087, under which they are manufacturing machinery alleged to infringe the patent of complainant. We shall refer to the parties in accordance with the positions occupied by them in the court below.

The original patent, the reissue of which is owned by complainant, is No. 1,442,410, issued January 16, 1923, on an application of Lindsay and Hemphill. Prior to its issuance Lindsay assigned his interest therein to one Carroll. Complainant obtained a license from Hemphill and Carroll, granting the exclusive right to manufacture and sell the invention covered thereby, with an option to purchase at the price of $25,000. After operating under the license for a few months, complainant exercised its rights under the option and the patent was assigned to it. Application for reissue of the patent was filed April 24, 1924, defendant Robert F. Lindsay joining in the application; and it was reissued August 19, 1924. Applications for the patents held by the Lindsays were filed July 3, 1924. The principal contention of defendants is that the patent of complainant is for a mere improvement in the apparatus used for manufacturing ice, and that, in view of the disclosures of the prior art, it must be given so narrow an interpretation as not to be infringed by the device manufactured by defendants.

The patent of complainant covers an air-agitating tube for use in manufacturing ice. As is well known, the process of ice manufacture is to immerse cans of water in brine the temperature of which is lowered below the freezing point of the water. This causes the water in the cans to freeze, and the freezing naturally begins at the sides of the can and proceeds inward. Impurities in the water result in a cloudiness of the ice, which is very undesirable, and it has been discovered that, by blowing air into the water in the can and allowing it to bubble to the top, the advancing walls of ice may be washed clean of impurities, which are caused to collect in the center. These may be pumped out before the freezing of the ice cake is completed, and a clear and transparent product may thus be obtained.

How properly to introduce the air, so as to accomplish the result desired, is a problem which has caused much difficulty. Its introduction by means of a perforated tube extending nearly to the bottom of the can, so as to allow the air to escape at the perforations in the sides and also at the bottom, was well known in the prior art. This tube was in some cases fixed rigidly and in some cases allowed to swing freely in the can of water, but in neither case were the results entirely satisfactory. If fixed rigidly, it was likely to become frozen in the advancing wall of ice, if it did not freeze evenly on all sides. If allowed to swing freely, it was likely to be caught in the crevices of the ice and frozen in. In either case its usefulness was likely to be destroyed before the freezing of the ice cake was completed.

The invention covered by complainant's patent was designed to secure the benefit of the swinging of the tube in the can of water, and at the same time avoid the danger of its being caught in the crevices of the advancing walls of ice. It was known that, because the can was much longer than it was wide, the ice froze toward the center in the form of an ellipse, that the freely moving tube became caught in the crevices of the ice when it was swinging lengthwise the can, and that because of the currents set up in the water it had a tendency to swing lengthwise. The problem was to cause it to swing crosswise. The problem was solved by attaching the tube to a support fastened to the side of the can, so that it would swing on a pivot or hinge crosswise the can, but would be allowed little or no motion in any other direction. There are 19 claims in the patent, but 2 and 12 may be taken as typical and as correctly describing the invention. They are as follows:

"2. A support for air agitator tubes for ice cans, having means for detachable engagement with the ice can, and also having means for swingingly connecting the tube to the support so that the tube hangs pendently from the support and may swing freely to and fro in one plane and is restrained from motion in any other plane."

"12. The combination of an air agitator tube for ice cans, a support on which the tube is bodily swingable in a plane extending transversely of the can, means for opposing movement of the tube away from said plane, and means to secure the support detachably to an ice can, substantially as set forth."

Although the construction of this device seems not to have involved any high order of invention, we think that the patent granted therefor is valid. The patentee undoubtedly solved a troublesome problem connected with the manufacture of ice; and, although the device appears very simple, now that former difficulties have been analyzed and a means devised for solving them, we must not lose sight of the fact that it not only involved change, but also met a real need, as is attested by its extensive use and commercial success. Knowledge after the event is always easy; but, as said by Mr. Justice McKenna in the Grant Tire Case, "the law has other tests of the invention than subtle conjectures of what might have been seen and was not. It regards a change as evidence of novelty; the acceptance and utility of change as a further evidence, even as demonstration." Diamond Rubber Co. v. Consol. Tire Co., 220 U. S. 428, 435, 31 S. Ct. 444, 447 (55 L. Ed. 527); U. S. Industrial Chemical Co. et al. v. Theroz Co. (C. C. A. 4th) 25 F.(2d) 387. And if there be doubt as to whether the device should be treated as an invention, or as a mere mechanical improvement, this doubt should be resolved in favor of the validity of the patent, in view of the fact that it filled a recognized need in the industry, that it came immediately into extensive use, and that the Patent Office has issued a patent covering it. The Barbed Wire Patent, 143 U. S. 275, 12 S. Ct. 443, 36 L. Ed. 154; Pangborn Corp. v. W. W. Sly Mfg. Co. (C. C. A. 4th) 284 F. 217; Zip Mfg. Co. v. Pusch (C. C. A. 8th) 2 F.(2d) 828.

And so far as defendants are concerned they are not in a position to question the validity of the patent. Complainant claims under the assignment made by defendant Robert F. Lindsay, and the rule is well settled that the assignor of a patent is estopped to contest its validity against the assignee. Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U. S. 342, 45 S. Ct. 117, 69 L. Ed. 316; Carper v. Crown Cork & Seal Co. of Baltimore City (C. C. A. 4th) 243 F. 200, Id. (D. C.) 229 F. 748; Leader Plow Co. v. Bridgewater Plow Co. (C. C. A. 4th) 237 F. 376. And we think that Mrs. Lindsay is bound by this estoppel as well as her husband. It appears that she and he not only sustain towards each other the relation of husband and wife, but also as partners are engaged in carrying on the business which is alleged to infringe the patent in suit. She is certainly doing business "in such association and privity" with her husband as to be subject to the same estoppel which binds him. Leader Plow Co. v. Bridgewater Plow Co. supra; Crown Cork & Seal Co. v. Carper Automatic Bottling Mach. Co. (D. C.) 229 F. 748, 749. One cannot evade an estoppel by the simple expedient of going into business with his wife.

And even though the patent be given a narrow construction, as being a patent for a mere improvement, we have no doubt that the device manufactured and sold by defendants constitutes an infringement of it. In their device the tube is suspended in the ice can in such a way that, as in the patent of complainant, it can swing freely crosswise the can, but its swinging lengthwise the can is retarded. It is true that no pivot or hinge device is used, but the device used to secure the crosswise and retard the lengthwise motion of the tube is the mechanical equivalent of the pivot or hinge device of complainant. It may be roughly described as follows: Extending crosswise the top of the can and fastened to its sides is a piece of metal containing a groove or channel, with the sides of the groove projecting upwards. In the bottom of this groove and over the center of the can is an elongated or oval hole, with its long axis parallel with the groove and crosswise the can. Attached to the top of the tube is a rectangular block of metal which fits into the groove, with a raised ring or "boss" on the underside and around the tube. The tube is suspended through the hole, and the rectangular block of metal attached to the tube fits into the groove or channel and supports...