Fruehauf Trailer Co. v. Highway Trailer Co.

• Decision Date: 17 November 1933
• Docket Number: No. 6292.,6292.
• Citation: 67 F.2d 558
• Parties: FRUEHAUF TRAILER CO. v. HIGHWAY TRAILER CO.
• Court: U.S. Court of Appeals — Sixth Circuit

67 F.2d 558 (1933)

FRUEHAUF TRAILER CO. v. HIGHWAY TRAILER CO.

No. 6292.

Circuit Court of Appeals, Sixth Circuit.

November 17, 1933.

Frank Parker Davis, of Chicago, Ill., and S. C. Barnes, of Detroit, Mich. (Lacey Laughlin and Barnes, Kisselle & Laughlin, all of Detroit, Mich., on the brief), for appellant.

J. F. Robb, of Cleveland, Ohio (Harry C. Robb, Sr., of Cleveland, Ohio, and Clarence B. Zewadski and Whittemore, Hulbert, Whittemore & Belknap, all of Detroit, Mich., on the brief), for appellee.

Before HICKS, HICKENLOOPER, and SIMONS, Circuit Judges.

HICKENLOOPER, Circuit Judge.

This is the ordinary patent infringement action in which appellant originally sued appellee for the alleged infringement of five patents. The issues have now been contracted to those of validity and infringement of claims 2 and 8 of patent No. 1,374,352, granted April 12, 1921, upon application of A. J. Borst, Jr., and claims 1, 4, and 22 of patent No. 1,383,381, issued July 5, 1921, also upon application of A. J. Borst, Jr. Both patents relate to six-wheel or semitrailers, in the motortruck art, in which a two-wheeled trailer body is coupled at its forward end to a four-wheeled tractor. The two patents will be referred to as Borst's first and his second patent. The first patent is directed principally to a specific form of coupling means, while the second covers a means or device, carried by the trailer body, whereby a wheeled support for the forward end of the trailer body may be lowered before the tractor is uncoupled, and raised out of the way and to a convenient position when the tractor is being, or has been, recoupled.

There is not a great deal of difference between claims 2 and 8 of patent No. 1,374,352, and we shall therefore consider only claim 2 because a disclaimer was filed in connection with it, and none was filed applicable to claim 8. Both the claim and the disclaimer are printed in the margin.¹ Claim 22 of the second patent is typical of the three claims of that patent in suit, as they stood before the filing of another disclaimer on May 8, 1931, and we therefore also select that claim for discussion because, of the claims in suit, the disclaimer in question affects it only. This claim, with the disclaimer applicable thereto, is likewise printed in the margin.² The District Court held the disclaimers invalid as to both patents, that the claims of the first Borst patent, as unaffected by the disclaimer, were invalid in view of the prior art, and that the claims of the second patent, similarly considered with reference to the disclaimer, were not infringed. 54 F.(2d) 691.

We quite agree with the views expressed by the learned trial judge upon the subject of the disclaimers. The enactment of Rev. St. § 4917 (35 USCA § 65), was never intended to permit the revamping and rephrasing of claims to the end that they might cover structures upon which they did not before read, or to the end that, by the addition of a new element in combination, the disclaimer might validate a claim which would otherwise be invalid under the prior art. This is not limiting the combination already claimed; it is in effect claiming a new and a different combination. General Motors Corp. v. Rubsam Corp., 65 F.(2d) 217 (C. C. A. 6); Linville v. Milberger, 34 F.(2d) 386, 390 (C. C. A. 10); Albany Steam Trap Co. v. Worthington, 79 F. 966, 969 (C. C. A. 2). The function of a disclaimer is well stated in the leading case of Hailes v. Albany Stove Co., 123 U. S. 582, 587, 8 S. Ct. 262, 265, 31 L. Ed. 284. It must cover "a separate claim in a patent, or some other distinct and separable matter, which can be exscinded without mutilating or changing what is left standing." It cannot be used to change the character of the invention, or, in effect, to make for the patentee a new patent. This is fundamental. As to the distinction between disclaimer and reissue, we approve and adopt the position of the Circuit Court of Appeals for the Second Circuit that such "distinction is between disclaiming a part separated in the patent itself as opposed to something comprehended in its general language." Grasselli Chemical Co. v. National Aniline & Chemical Co., 26 F.(2d) 305, 310 (C. C. A. 2). Compare also Corn Products Ref. Co. v. Penick & Ford, 63 F.(2d) 26, 30 (C. C. A. 7); Strause Gas Iron Co. v. William M. Crane Co., 235 F. 126, 130 (C. C. A. 2); Hudson Motor Car Co. v. American Plug Co., 41 F.(2d) 672 (C. C. A. 6).

Tested by these standards, both disclaimers are invalid. That to the first patent disclaims matter which is not separated in the patent itself, and which in fact is not expressly referred to in the patent, and its obvious purpose is to add to the claim description the structural feature that the horizontal level of the platform upon the tractor shall be slightly higher than the plane of the lower surfaces of the "skid-like member" when the trailer is uncoupled, whereby the supports which hold up the forward end of the trailer body, when so uncoupled, are raised slightly from the ground by the coupling operation itself, and may be lowered, before uncoupling, to receive the weight of the trailer body when the uncoupling operation is completed. There is nothing in the claims or in the specification to show that Borst did not have in mind an organization of elements analogous to that found in the French patent to Jagenberg, No. 355,154, June 10, 1905, where the planes of the fifth wheel coupling elements upon the tractor and the trailer are held at...