General Motors Corporation v. Swan Carburetor Co.

• Decision Date: 14 April 1937
• Docket Number: 7102.,7108,No. 6933,6933
• Citation: 88 F.2d 876
• Parties: GENERAL MOTORS CORPORATION v. SWAN CARBURETOR CO. (two cases). REEKE-NASH MOTORS CO. v. SAME.
• Court: U.S. Court of Appeals — Sixth Circuit

88 F.2d 876 (1937)

GENERAL MOTORS CORPORATION v. SWAN CARBURETOR CO. (two cases).

REEKE-NASH MOTORS CO. v. SAME.

Nos. 6933, 7108, 7102.

Circuit Court of Appeals, Sixth Circuit.

January 12, 1937.

As Amended April 14, 1937.

COPYRIGHT MATERIAL OMITTED

John M. Zane, of Chicago, Ill., and Drury W. Cooper, of New York City (Harold W. Norman, of Chicago, Ill., Allan C. Bakewell, of New York City, Lawrence C. Spieth, of Cleveland, Ohio, Zane, Morse, Zimmerman & Norman, of Chicago, Ill., Cooper, Kerr & Dunham, of New York City, and Cannon, Spieth, Taggart, Spring & Annat, of Cleveland, Ohio, on the brief), for appellant.

William H. Boyd and F. O. Richey, both of Cleveland, Ohio (Richey & Watts, Boyd, Brooks & Wickham, F. M. Bosworth, and E. D. McCurdy, all of Cleveland, Ohio, on the brief), for appellee. In No. 7102:

Charles Neave, of New York City (J. L. Stackpole and H. L. Kirkpatrick, both of Boston, Mass., and Cannon, Spieth, Taggart, Spring & Annat, of Cleveland, Ohio, on the brief), for appellant.

F. O. Richey, of Cleveland, Ohio (F. M. Bosworth and Richey & Watts, all of Cleveland, Ohio, on the brief), for appellee.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

ALLEN, Circuit Judge.

These are appeals arising out of separate litigation instituted by the appellee involving two patents, Nos. 1,536,044, and 1,636,721, issued to John W. Swan, the dates of issue being September 28, 1925, and July 26, 1927, respectively, each patent relating to improvements in manifolds for use in internal combustion engines. The original application, upon which the second patent issued, was filed September 17, 1921. The first patent was issued upon an application filed November 5, 1924, as a continuation of the earlier application "in so far as matter common to the two cases is concerned." Appeals Nos. 6933 and 7108 arise out of an action at law for royalties alleged to be due under a written license contract, and appeal No. 7102 arises out of an action for infringement of various claims of both patents. Appeal No. 7108 in the royalty case is based upon denial of appellant's cross-bill for reformation. The royalty case was submitted to a jury which returned a verdict of $621,560.24 in favor of appellee, upon which judgment was rendered. In the infringement case, evidence was taken before a special master, who upheld the validity of the claims in suit, and found them to be infringed. The report of the special master was confirmed by the District Court.

Both patents relate to means for facilitation of the distribution of fuel in internal combustion engines. In an internal combustion engine it is the function of the carburetor to mix the gasoline with air in the proper ratio so that the mixture may be efficiently transmitted to the cylinders and there exploded, thus supplying the motive power. The manifold connects the carburetor and the cylinders, and conveys the fuel mixture from the carburetor to the cylinders. It consists "of three distinct features: (1) A pipe, called a riser, leading vertically from the carburetor; (2) a horizontal pipe, called a header, above said riser; and (3) branches, three in number for a six-cylinder engine, leading from the header, one at each end and one in the middle to the cylinder ports and intake valves of the engine." Swan Carburetor Co. v. General Motors Corp., 42 F.(2d) 452, 454 (D.C.Ohio).

A branch may supply fuel to one or more cylinders, in which case the branch is said to be "siamesed." In the six-cylinder engine to which these patents in general apply, there are three branches, all "siamesed."

When the engine is operating, each aspiration of the cylinders draws the fuel mixture from the carburetor through the manifold, the mixture passing in succession through riser, header and branches. The particular problem claimed to have been solved by Swan was emphasized by the rapid increase in the production of gasoline from 1900 on, and the change in quality of gasoline resulting from the development of the oil-cracking process. Originally gasoline was derived from crude oil by distillation. Later, when consumption increased, gasoline was derived by subjecting the crude oil to immense heat and pressure, that is to say, "cracking" it. The gasoline obtained from this process contains additional oils of low volatility, and is more impure than distilled gasoline. When mixed with the air in the carburetor, it tends not to vaporize completely; that is, in passing from the carburetor to the cylinders, so-called "wet" particles of gasoline tend to adhere to, or "puddle" on the sides of the manifold. This not only disturbs the ratio of air and gasoline in the mixture, but also causes unequal distribution of the fuel to the various cylinders. When the fuel is unequally distributed, various evils ensue. Too rich a mixture in a cylinder causes carbonization and deformation of the combustion chamber, and results in limitation of performance. Too lean a mixture causes lack of power and deterioration of the valve material.¹ These difficulties are enhanced by the increase in the number of cylinders, because a problem of secondary distribution arises. The old type of manifold which had operated relatively satisfactorily with gasoline secured by distillation was not competent to cope with the impurities and lower volatility of gasoline obtained by the "cracking" process. The problem defied solution for a number of years.

Swan thought that if he could bring the fuel mixture from the carburetor to the header in rectilinear lines, and then abruptly change its course at right angles in the header, and then again change its course at right angles from the header into the branches, all obstructions, curves or recesses in the longitudinal line of travel being eliminated, the incompletely vaporized particles of gasoline instead of depositing at one place and there adhering, would be thrown into the stream of mixture and vaporized. His theory was that the sharp right-angled turns created an area of turbulence or a mixing zone at each change of direction, thereby revaporizing the mixture before it reached the engine ports, and that as a result of this the branches would receive an equal distribution of the fuel. In patent No. 1,536,044, the first ten claims are method claims, of which 4 is typical,² and the remaining are article claims.³

These claims do not specify the form of cross-section. Swan indicated in his specifications that while the preferred form of manifold was square or rectangular in cross-section, the branches might be round, hexagonal, octagonal, or any other cross-sectional shape. The drawings disclose a branch with the inside angle of the turn sharp and the outside rounded.

Patent No. 1,636,721 presents eight apparatus claims. It also describes a manifold of preferably square construction, but allows the tapering of the end portions of the branches. The square cross-section, the flat bottom of the header, and the abrupt bends, preferably at right angles, are stressed throughout the specifications.

On June 6, 1923, prior to the issuance of either patent, but after the filing of the first application, a license contract was made between appellant General Motors Corporation and Swan Carburetor Company, exclusive licensee of Swan, and later assignee, granting a license to make, use and sell Swan's improvements in manifolds throughout the United States and Territories, and in "all foreign countries in which letters patent therefor may be granted, under or corresponding to the aforesaid application of John W. Swan for United States letters patent and under any or all letters patent that may issue on said application or any division or continuation thereof." After patent No. 1, 536,044 was issued, but prior to the issuance of patent No. 1,636,721, an action similar to the instant royalty case and between the same parties was brought upon this license contract, Swan Carburetor Co. v. General Motors Corp., supra. In that case General Motors Corporation claimed that it had bound itself to pay royalties only on the specific construction disclosed in Swan's first application, and that as the manifolds in suit were round in form, they were not covered by the license agreement. Jury trial was waived and the case was tried to the court, which held that while the Swan manifold was preferably square in cross-section, it did not exclude the round cross-section form, and that Swan was entitled to a variation in shape such as that exhibited by the manifolds in suit. General Motors Corporation also claimed that patent No. 1,536,044, the only patent then issued, was not covered by the license contract inasmuch as it was not issued upon the application, No. 501,314, therein referred to, but was issued upon the second application. The court held that the second application was a continuation of application 501,314 in matters common to the two applications, and gave judgment for royalties upon the manifolds in suit holding that they were constructed under the teachings of patent No. 1,536,044. This judgment was affirmed by this court upon a procedural question. General Motors Co. v. Swan Carburetor Co., 44 F.(2d) 24.

Royalty Case (Nos. 6933 and 7108).

In the royalty case, the manifolds for which royalties were claimed were made during the years 1926, 1927, 1928, 1929, and the first quarter of 1930, and were used on Chevrolets, Pontiacs, Oldsmobiles, Oaklands, Buicks, and various trucks. The petition alleged that by reason of the adjudication in the former action for royalties between the same parties (Swan Carburetor Co. v. General Motors Corp., supra), "all questions between the parties hereto as to the defendant's appellant's liability to pay plaintiff appellee royalties on the said manifolds" had been adjudicated. It averred that under the license contract in the former case, royalties were claimed and adjudged to be due upon certain Buick manifolds; that some of the manifolds in suit were identical with...