General Motors Corporation v. Kesling

• Decision Date: 17 December 1947
• Docket Number: No. 13402.,13402.
• Citation: 164 F.2d 824
• Parties: GENERAL MOTORS CORPORATION v. KESLING.
• Court: U.S. Court of Appeals — Eighth Circuit

164 F.2d 824 (1947)

GENERAL MOTORS CORPORATION v. KESLING.

No. 13402.

Circuit Court of Appeals, Eighth Circuit.

December 17, 1947.

Horace Dawson, of Chicago, Ill. (Edwin E. Huffman, of St. Louis, Mo., and Edwin S. Booth, of Chicago, Ill., on the brief), for appellant.

Edmund C. Rogers, of St. Louis, Mo. (Lawrence C. Kingsland and Estill E. Ezell, both of St. Louis, Mo., on the brief), for appellee.

Before STONE, THOMAS and JOHNSEN, Circuit Judges.

STONE, Circuit Judge.

This is an action for damages for infringement of claims 25-29 inclusive of Kesling patent No. 2,034,400 (issued March 17, 1936), which covers a vacuum power mechanism for assisting the shifting of automobile transmissions of the selective sliding gear type. From judgment for plaintiff, defendant appeals.

There is no contest over jurisdiction, ownership of patent by plaintiff or amount of recovery. The issues are the validity of the patent and, if valid, the existence of infringement.

Properly to understand and determine these issues of validity and infringement, it is necessary to know certain matters and helpful to know others. These are (a) the function of an automobile transmission, (b) the kind of transmission here involved, and (c) the use of power in operating such transmission.

(a). Movement of automobiles is caused by the application of power from the engine to the wheels (usually rear wheels) of the car. The transmission is a separate controllable connectible mechanical link between the engine driving power and the driven apparatus of the wheels. Its function is to provide different ratios of engine driving speed to the speed of the driven wheels. It is so constructed that it may entirely disconnect the driving power from the wheel apparatus — a "neutral" situation — or may engage the power and the wheel apparatus to produce the particular speed ratio desired. Usually there are four speed ratios: reverse and three forward (low, second or intermediate and high).

(b). While there have been and are other kinds of transmissions, the industry had, prior to this patent, generally adopted what is known as the "selective sliding gear" type. The conventional form of this type comprises a group of gears on a shaft interposed between the engine driving shaft and the wheels driven shaft. It has a driving shaft constantly geared to a counter shaft and a reverse shaft, and a driven shaft engageable with the driving shaft by engagement of selectable gears of the transmission. The shape of the gear unit is like a letter H. Each leg of the letter carries a slidable gear. When one of these two sliding gears is in use the other is locked against movement. The cross bar (including the junctions with the legs) is the "neutral" zone, in which the engine power is entirely disconnected. One of these sliding gears is connectible with reverse and low speed by sliding the gear forward or backward respectively, while the other sliding gear similarly controls second and high speeds. Thus there is a lateral movement — across the H bar — to select the sliding gear and a longitudinal movement of the selected sliding gear to engage the desired speed ratio cog gear.

(c). Up to Kesling, the only force to operate this type of transmission, which had been successfully used in automobiles, was entirely manual. This was exerted by the driver through a lever projecting from the car floor, or, later, attached to the steering wheel post. Through this lever and its connections with the sliding gears, the driver could, by lateral movement, select that one of the two sliding gears desired and then thereon, by longitudinal movement, the desired speed ratio cog gear.

While cold weather may stiffen the grease on the gears necessitating additional manual force, yet, normally, little physical effort is required to shift properly operating gears of this type. However, possibly because the movement is so frequent but certainly for sales reasons, automotive engineers had long sought a means to perform this gear shifting by power. No power means had gone into practical use on this type of transmission prior to Kesling. Into this situation, Kesling brought his conception of the use of power in shifting gears of the "selective sliding" type.

Validity.

In its brief, appellant states "As a matter of mere novelty, the idea of shifting first by hand and then making the final shift by power is new. * * * Kesling is alone in all the shifter art in using first a manual shift and later opening the valve to bring about a power movement." And again "Appellant does not urge that the patent is invalid for lack of utility."

Appellant contends the patent is invalid because: (a) it does not advance the art since it does not solve a real problem in gear shifting; (b) it does not rise above mechanical skill; and (c) it is a "paper" patent.¹

Usually, it would be necessary first to analyze a patent in determining its validity. Here, we think it better, for several reasons, to postpone analysis of this patent until we reach the issue of infringement. One is that the just stated contentions can be readily disposed of without detailed understanding of the patent teachings. Another is that the crux of this case is infringement vel non and it tends to clarity of treatment and avoids repetition to examine the patent in connection with that issue.

In examining these contentions as to validity, we bear in mind the situation that validity is a factual matter (United States v. Esnault-Pelterie, 303 U.S. 26, 29, 58 S.Ct. 412, 82 L.Ed. 625) as are, also, the subsidiary matters² upon which that ultimate fact depends. Also, there is the heavy burden borne by appellant arising from the presumption of validity (Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 171, 57 S.Ct. 675, 81 L.Ed. 983; G. H. Packwood Mfg. Co. v. St. Louis Janitor Supply Co., 8 Cir., 115 F.2d 958, 964) and further strengthened by court findings sustaining validity (Dean Rubber Mfg. Co. v. Killian, 8 Cir., 106 F.2d 316, 318, certiorari denied 308 U.S. 624, 60 S.Ct. 380, 84 L.Ed. 521).

(a). The contention that the art is not advanced because no real problem in gear shifting was solved is argued as follows. The real problem in employing power in a gear shift is to reduce the manual effort; Kesling did not reduce but actually increased the manual effort; therefore, his method produced no useful result and added nothing patentable to the art.

The trial court properly found that "relieving the hand burden is the only reason for using power" and that a power shift which did not do this would be unacceptable to the public. It is clear that Kesling increases the load of the "initial" hand operation up to point of meshing gears to the extent of the "drag" of the power unit pistons and that he entirely relieves the hand from any load in the "final" operation of meshing the gears. Thus there is presented an opposed loss and gain. Just how serious is this "drag" weight of the pistons is not entirely clear. The parties urge this matter from the position most favorable to each. Appellant treats the matter by beginning the shifting movement from disengagement of gears already engaged and carries it through neutral to the initial engagement of the desired gear. The only measurement (appearing in the evidence) of the effort in such entire movement is that it involves the "peak" of the shift operation effort. Appellee treats the matter beginning at neutral and the testimony (from one of the witnesses of appellant) is that the movement from neutral to initial gear engagement is about one-fourth of the effort from neutral to completion of the mesh with the desired gear. That the use of power in the "final" meshing operation would afford some relief is evident. The crucial matter is whether the balance between these opposed effects is sufficiently serious to affect unfavorably the liking of the public for such a shift. It is not obvious that it would. In the absence of such a compelling situation, the finding of the trial court of novelty must be sustained.

(b) The contention that Kesling did not rise above mechanical skill must be determined adversely. It is clear that the industry had theretofore for many years sought to apply the use of power to gear shifts without success. Such efforts had never produced the combined use of manual and power force, either in sequence or in coaction. The prior efforts had failed because they provided for exclusive use of power throughout the entire shift thus losing the hand control at point of mesh — such control being necessary to avoid "clashing" of the gears about to be engaged. Kesling preserved this hand control through this critical point of the shift and yet used power. This situation cannot overcome the finding of novel patentability and the specific finding of patentability over mechanical skill.

(c) Appellant urges that Kesling is a "paper patent" because no such shifters were ever built. The issue of "paper patent" may appear either as a challenge to validity (Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279, 64 S.Ct. 593, 88 L.Ed. 721; Hartford-Empire Co. v. Obear-Nester Glass Co., 8 Cir., 71 F.2d 539, 544; Staude v. Bendix Products Corporation, 7 Cir., 110 F.2d 484, 485) or as a legal reason for constriction of the scope of the patent. Stewart-Warner Corporation v. Jiffy Lubricator Co., 8 Cir., 81 F.2d 786, 793. In either case, disuse is ineffective unless chargeable to the owner of the patent (Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 422, 28 S.Ct. 748, 52 L.Ed. 1122, and see Coltman v. Colgate-Palmolive-Peet Co., 7 Cir., 104 F. 2d 508, 511, 512). Whether the owner is so chargeable is a fact matter. The evidence is that Kesling was not a manufacturer of automobiles nor of gear shifts for them; that the Bendix Products Corporation was engaged in making gear shifts and selling them to automobile makers, including appellant; and that during pendency of this patent...