Goodwin v. Borg-Warner Corporation, 10119.

• Decision Date: 06 January 1947
• Docket Number: No. 10119.,10119.
• Citation: 157 F.2d 267
• Parties: GOODWIN et al. v. BORG-WARNER CORPORATION et al.
• Court: U.S. Court of Appeals — Sixth Circuit

157 F.2d 267 (1946)

GOODWIN et al. v. BORG-WARNER CORPORATION et al.

No. 10119.

Circuit Court of Appeals, Sixth Circuit.

July 1, 1946.

Rehearing Denied September 23, 1946.

As Amended on Denial of Second Petition for Rehearing October 21, 1946.

Writ of Certiorari Denied January 6, 1947.

Raymond L. Greist, of Chicago, Ill. (Clarence B. Des Jardins, of Cincinnati, Ohio, on the brief), for appellants.

Max Zabel, of Chicago, Ill. (Truman A. Herron, of Cincinnati, Ohio, and Edward C. Gritzbaugh, and Francis W. Test, both of Chicago, Ill., of counsel), for appellees.

Before SIMONS, ALLEN and MARTIN, Circuit Judges.

Writ of Certiorari Denied January 6, 1947. See 67 S.Ct. 491.

ALLEN, Circuit Judge.

This suit was instituted under § 4915, R. S., 35 U.S.C. § 63, 35 U.S.C.A. § 63, praying that the decision of the Board of Interference Examiners of the United States Patent Office in an interference proceeding between appellant Daukus and appellee Gamble be set aside and priority awarded to Gamble. A patent was thereafter issued to Daukus on his application, in accordance with the decision of the Board of Interference Examiners, and the appellees, Gamble and his assignee, Borg-Warner Corporation (hereinafter called Borg-Warner), filed a supplemental petition for declaratory judgment, praying that Daukus patent, 2,324,913, be declared invalid. The appellants (Daukus and his assignee, Goodwin) in a counter-claim prayed that the patent be held valid and infringed. The District Court found the patent invalid and dismissed the counter-claim. From its judgment this appeal is prosecuted.

The principal question is the validity of the patent, which relates to a clutch plate used in single-plate clutches for motor vehicles. The clutch plate is mounted on the forward end of the transmission drive and is used as the driving element in a friction clutch. The device involved herein consists of three basic concentric elements: A central hub designed to be carried on the driven shaft of the clutch, an intermediate annular disc mounted on the hub, and a series of arcuate cushions attached to and extending beyond the intermediate disc to support a pair of friction facings. The claimed invention in the form of the so-called Borglite plate, manufactured by Borg-Warner, has largely superseded the two principal forms of clutch plates theretofore manufactured by Borg-Warner, the integral cushion type and the compound cushion type. As described by appellees' experts, the integral cushion type of clutch plate is a construction in which the disc member is provided with integral portions which extend out between the facings to constitute the cushioning means, while the compound cushion type is a construction in which the disc member is practically coextensive with the facings and is provided on one of the sides of the outer portion of the disc with separately formed cushion springs. It is conceded that each of these former types presented serious problems, arising either from the creation of excessive spinning inertia or of chatter, which is the vibration of the driveline and associated parts often observed by the driver when engaging the clutch to start a car.

In order to transmit the torque imposed by the load, the diameter of the plate in the early forms of clutch plate was made large, and the weight at the periphery of the plate developed spinning momentum or inertia which had to be overcome to bring the speed of the shaft up or down to that of the transmission shaft. Unless the spinning inertia is kept low, clashing of the gears will result as the clutch is shifted. It has long been understood in the art that spinning inertia could be reduced and quick shifting of the gears permitted by lightening the weight of the peripheral portion of the sheet metal disc; but when this was done a satisfactory cushioning action was still required, or chatter would result.

Borg-Warner, which is the principal manufacturer of clutch plates, was the assignee of patents under which millions of the so-called integral cushion type of clutch plates were sold. In this type of plate the problem of spinning inertia was largely solved, but chatter was produced upon engagement of the clutch. The integral type cushion plate lacked, as Borg-Warner's expert said, most desirable cushion characteristics, and many complaints were made of chatter in cars using this type of clutch plate. Borg-Warner then developed and manufactured in great numbers the compound cushion plate which, as its experts state, took care of the lack of cushion characteristics; but in this plate desirable shifting characteristics were lacking, and there were complaints of excessive spin. After the Borglite plate, which appellees' experts admit embodies the disclosure of Daukus, was manufactured and adopted by Borg-Warner's customers, there was a marked reduction in the complaints as to both of these defects, and Borglite has to large extent superseded both the integral and compound cushion type of clutch plate.

Daukus claimed to have solved the problem by eliminating the periphery of the full diameter of the disc, using instead a disc of considerably smaller diameter than the facings and securing to the outer edge of the disc a number of separate circumferentially waved spring members less thick than the disc. The spring members were waved in order to permit free compression, and were provided with reduced neck portions attached to the periphery of the mounting disc. By dispensing with the disc of large diameter and using spring members of less thickness than the disc of smaller diameter, the peripheral weight of the clutch plate was lowered with a consequent reduction in spinning momentum or inertia. In addition, the spring members, being separate and individually attached, operated so as to flex freely in action, thus giving the necessary cushioning operation to reduce chatter.

The Board of Interference Examiners held that Daukus conceived this idea in 1935. He tested it out, however, for several years by using it in various cars, a Cadillac owned by a third party, a truck and a Dodge owned by himself, and did not file his application until August, 1938. Gamble claimed to have invented the same device, and his application was filed in June, 1937. Interference proceedings were declared in January, 1940, with Daukus, who had filed his application after Gamble, carrying the burden of proof. Beidler v. Caps, 36 F.2d 122, 17 C.C.P.A. (Patents) 703; Cooper v. Hubbell, 53 F.2d 1072, 19 C.C.P.A. (Patents) 790; Raymond v. Wickersham, 110 F.2d 863, 27 C.C.P.A. (Patents) 1079.

The claims involved in the interference had all been allowed by the examiners, but were later reformed by motions to amend and dissolve. The Board of Interference Examiners awarded priority of invention to Daukus on all counts, finding that he had reduced the invention to practice in 1935. Appellees petitioned the Commissioner of Patents to withhold the patent, but the petition was denied and Daukus, 2,324,913, finally issued.

In the interference proceedings the appellees stated that the invention "represents one of the most important improvements in the clutch art since the time when the single plate clutch displaced the multiple disc clutch."

The District Court made no finding on the question of infringement. The appellees do not seriously deny infringement, and at the interference proceedings appellees' counsel stated that "clutch plates embodying the invention, sold under the trademark `Borglite,' * * * have met with such favorable acceptance by the trade that older types of plates have been almost completely supplanted by the `Borglite' type." In their brief in this court the appellees state in effect that the Daukus patent is "in its only novel aspects" identical with the Borglite plate. The Board of Interference Examiners found the invention to be that of Daukus. This finding is supported by substantial evidence on this point, including the statement of two disinterested garage operators who positively identify the principal Daukus plate in evidence as having been removed, refaced and tested at their garage in 1935. We sustain this finding, and for the purposes of this case we consider that the invention was reduced to practice by Daukus in 1935. The Daukus plate, used experimentally by the inventor, in its substantial features is the same as the Borglite plate, and infringement exists if the patent is valid.

It is uncontradicted that the Borglite plate has met with immediate and very substantial commercial success. It is used by the eight important automobile manufacturers for which Borg-Warner makes clutch plates, and by various truck manufacturers. Its utility was conceded by the expert for the appellees.

Nine claims are in issue, of which six are claimed by appellants to have been drafted for the purpose of covering the Borglite plate. This assertion is not denied, and it is supported by the fact that in a motion made by Gamble, it was proposed that five counts be included in the interference proceedings. Each of these five counts bore the heading "Daukus Claim No. _____ revised," and two of these counts were allowed. They are found in the patent as claims 14 and 17. Claim 13 is representative, and reads as follows:

"A friction clutch element comprising a hub, a relatively sturdy mounting member mounted thereon and projecting radially therefrom, a plurality of structurally independent yieldable cushions having a substantially lesser weight per unit area than that of said mounting member, occupying an annular region lying beyond the outer radial limit of said mounting member and each having an integral reduced neck portion securely attached to said mounting member, and axially spaced friction facings carried by said cushions, said cushions being disposed between and in yielding engagement with said facings and being permanently deformed axially so as to normally maintain said facings in spaced parallel...