Fruehauf Trailer Co. v. Highway Trailer Co.

• Decision Date: 21 August 1931
• Docket Number: No. 2486.,2486.
• Citation: 54 F.2d 691
• Parties: FRUEHAUF TRAILER CO. v. HIGHWAY TRAILER CO.
• Court: U.S. District Court — Western District of Michigan

54 F.2d 691 (1931)

FRUEHAUF TRAILER CO. v. HIGHWAY TRAILER CO.

No. 2486.

District Court, E. D. Michigan, S. D.

August 21, 1931.

Barnes & Kisselle, of Detroit, Mich. (by Stuart C. Barnes and Lacy Laughlin, both of Detroit, Mich.), Rector, Hibben, Davis & Macauley, of Chicago, Ill. (by Frank Parker Davis, of Chicago, Ill.), and Stevenson, Butzel, Eaman & Long, of Detroit, Mich. (by Rockwell T. Gust, of Detroit, Mich.), for plaintiff.

Robb & Robb, of Cleveland, Ohio (by John F. Robb, of Cleveland, Ohio, and Harry C. Robb, of Washington, D. C.), Robert N. Burton, of Chicago, Ill., and Whittemore, Hulbert, Whittemore & Belknap, of Detroit, Mich. (by Clarence B. Zewadski, of Detroit, Mich.), for defendant.

TUTTLE, District Judge.

The plaintiff sues upon five patents, and the defendant counterclaims upon one patent.

The plaintiff's patents as they are distinguished in the record are Borst patent, No. 1,374,352, issued April 12, 1921 (the first Borst patent); Borst patent, No. 1,383,381, issued July 5, 1921 (the second Borst patent); Land patent, No. 1,400,752, issued December 20, 1921; Hartwick patent, No. 1,351,245, issued August 31, 1920; and Schneider and Fruehauf patent, No. 1,613,728, issued January 11, 1927.

The first four of plaintiff's patents relate to what are known in the art as six-wheel trailer type automotive vehicles, and particularly involve connecting and controlling means whereby a tractor vehicle, usually a four-wheel truck of some type, is associated in operating pulling relation to the trailer vehicle. The trailer vehicle carries the pay load and is ordinarily known in the art as a semitrailer, and comprises a two-wheeled trailer chassis or body equipped with supports of one kind or another at its front end, for in part supporting the body, or the body and its payload, when the trailer is detached from the traction vehicle. The fifth patent of plaintiff, that of Schneider and Fruehauf, is not for the same specific type of trailer as employed in the inventions of the first four patents, but involves primarily a construction of so-called four-wheel trailer in which the trailer body is mounted upon dolly or truck frames, one of which is provided at each end of the trailer body beneath its main chassis frame. The claims of the fifth patent relate primarily to the spring and shackle mountings between the axles and the so-called dolly or truck frames, certain radius rod parts, and specific stop contrivances for limiting the turning of the truck frames relatively to the chassis frame or body of the trailer.

Before entering upon the merits of this controversy in detail in respect to each individual patent, as I propose to do in regular course, I note that in the first Borst patent, No. 1,374,352, and the second Borst patent, No. 1,383,381, disclaimers were filed just one month, and defendant was advised of them about twenty days, before the date this cause was set for trial. This was after all issues had been raised in the pleadings, and all depositions, of which there were a great many taken by both parties, were completed.

In expressing my views about disclaimers, I do so because I am interested in the subject and should be glad to be helpful in solving some of the troublesome problems presented by disclaimers. There is no inclination on my part to avoid the decisions which ought to guide this court. Every one interested in the subject of disclaimers recognizes that the law applicable thereto is still in a very unsettled state. Individual courts have not satisfied themselves as to just what are to be the final holdings upon this subject. Taking the decisions of the courts as a whole, we are still in greater confusion. Until certain questions have been definitely decided, I desire to stamp on the records that go up from my section of this court some of the dangers which I think I see in disclaimers as now used. They are becoming more and more common. They are getting to be not the anusual, but the usual, thing to find in patent suits, and, as their use becomes more common, their form is becoming extreme and complicated.

Of the six patents here in suit, the first two that I shall have to consider in detail later, upon their full merits, involve claims which have been finally shaped by disclaimers. The question of the effect of a disclaimer on a claim in suit, and especially whether or not such a claim after modification by disclaimer still retains its presumption of validity, arises in this present case and requires determination by me. I had hoped that nothing would come out of the practice relative to disclaimers which would prevent every patent suit coming to the court with the presumption of validity for each and every claim of the patent. That is the general rule. I had hoped that it might be the universal ever-present rule. The reason for that presumption has heretofore been based upon the fact that a particular patent of which the claim or claims represent a definite part has been before the Patent Office, a bureau of our government, and has been considered carefully by that bureau. The particular claim has been given the presumption of validity because that department of our government, after examination, consideration, and search, even though it is ex parte, has decided that the claim is valid. Therefore the courts coming to review the claim have given to the tribunal the presumption that it has done its job well, lawfully, properly, and has reached a right decision, and this presumption passes to the grant or patent itself.

I had thought that perhaps the test as to whether or not a particular disclaimer should be allowed and the resulting claim permitted to stand could be determined by a consideration of the original claim, the claim as reshaped by the disclaimer, and the specification and drawings of the patent. I had the further thought that the court could then say whether or not, in truth and in fact, what was claimed as new and useful in that claim then presented to the court, as worded after the disclaimer was entered, had been before the Patent Office for consideration, and that, if it had not, then it would not be a proper disclaimer. The Patent Office does not consider any disclaimer as to the merits of its subject-matter. If the courts are to give approval to disclaimers which so alter the claim that the resulting novelty disclosed by the modified claim is never passed upon by the Patent Office, then such claims should come to the court without any presumption whatever of validity. Thus the burden rests upon the plaintiff, the proposer of a disclaimer claim in such a patent, to prove it to be valid without the assistance of any presumption in that respect. If the law is to be that such disclaimers are to be permitted, and such claims are susceptible of being held valid, then they should come to the court without any presumption of validity.

By way of illustration, I refer to Permutit Company v. Wadham et al. (C. C. A.) 13 F.(2d) 454. It was plain that the Patent Office had erred and allowed a claim which read directly on the prior art. The Patent Office thought it was new in that particular form of apparatus for the water to pass through the zeolite in any direction. The Patent Office, believing that long step to be entirely new, decided it to be worthy of a patent. The specifications and drawings showed that in the particular structure of the patent the water passed downwardly through the zeolite, and the disclaimer disclaimed all methods of flow except the downward flow. In other words, the novelty claimed in court after the disclaimer was not what had been allowed by the Patent Examiners, or what they considered, but was in fact something that was never before them. Whatever genius, skill, and value there may have been in the step to downward flow of water, the Patent Office did not consider it; the Patent Office had no knowledge of a claim for that particular direction of flow. The Patent Office erroneously thought that it was new to flow the water through the zeolite in any direction, and, weighing that broad step, thought it long enough and important enough to reward it with a patent. We do not know what the Patent Office would have decided had it known that it was old in the art to flow the water up through the zeolite and that the only novelty was a change of direction. Such a claim disclosing such short step and little novelty was never considered by the Patent Office. Now so long as the Patent Office never considered that specific thing, namely, the step to downward flow, it would seem that in a case like that there should be no presumption on the part of the court that the step covered by the claim after the entry of the disclaimer was new and useful, that it involved genius, or that the claim was valid.

For another illustration, let us pass to what is known as the Welch Plug Case. Hudson Motor Car Co. v. American Plug Co. et al. (C. C. A.) 41 F.(2d) 672, 673. There was a claim allowed in that patent for a concave metal disc to be put into a hole in an engine casting, which hole was desired to be closed. When placed in the hole, the disc was hit with a hammer, thereby pressing out the edges causing the latter to engage the walls of the hole. The claim as originally shaped showed plainly that the Patent Office thought that the prior art was so unoccupied that there should be allowed a claim for any plug of that kind used in that way. It turned out that the prior art was such that the thing which the Patent Office had weighed and considered was old, and the only thing that was new, if it was properly shown in the patent, was the forming of the edges of the disc cylindrical by cutting the disc after it was first concaved. It was finally held that this construction was not shown at all, or at any rate the Court of Appeals was not satisfied that the drawing illustrated the thing attempted to be covered by the disclaimer claim. Suppose the drawings had shown...