Hall v. Montgomery Ward & Co.

• Decision Date: 29 September 1944
• Docket Number: 87-W.,Civil Actions No. 86-W
• Citation: 57 F. Supp. 430
• Court: U.S. District Court — Northern District of West Virginia
• Parties: HALL v. MONTGOMERY WARD & CO. HALL v. SEARS ROEBUCK & CO.

57 F. Supp. 430

HALL v. MONTGOMERY WARD & CO.

HALL v. SEARS ROEBUCK & CO.

Civil Actions Nos. 86-W, 87-W.

District Court, N. D. West Virginia.

September 29, 1944.

John Boyle, Jr., of Washington, D. C., and Earl L. Maxwell, of Elkins, W. Va., for plaintiff.

James M. Guiher, of Clarksburg, W. Va., Kent B. Hall, of Wheeling, W. Va., and Williams, Bradbury & Hinkle, Elwood Hansmann, and Leon F. Shackell, all of Chicago, Ill., for defendants.

BAKER, District Judge.

Plaintiff, William D. Hall, is a citizen of Elkins, West Virginia.

Defendant, Sears Roebuck and Company, is a non-resident corporation. Subsequent to the date the patent in suit was granted, and prior to the filing of the complaint herein, Sears Roebuck and Company maintained a regularly established place of business in Wheeling, West Virginia. On February 22, 1942, from their Wheeling store, it sold to Emmett Simmons, at Wheeling, in the Northern District of West Virginia, the Stewart Warner South Wind Automobile Heater, filed in this trial as Plaintiff's Exhibit A. There came with this heater a leaflet, Plaintiff's Exhibit No. 4.

Defendant, Montgomery Ward and Company, is a non-resident corporation. Subsequent to the date the patent in this suit was granted, and prior to the filing of the complaint herein, Montgomery Ward and Company maintained a regularly established place of business in Martinsburg, in the Northern District of West Virginia, and on or about January 29, 1941, at said Martinsburg store, it sold to one, William E. Elliott, the Stewart Warner South Wind Automobile Heater, Plaintiff's Exhibit B. There came with this heater two leaflets, Plaintiff's Exhibits Nos. 9 and 10. Between the same dates, Montgomery Ward and Company maintained a regularly established place of business in Elkins, in the Northern District of West Virginia, and from that store sold a Stewart Warner South Wind Automobile Heater, delivery of said heater being made during the first few days of February, 1941.

Plaintiff gave defendant, Sears Roebuck and Company, notice of infringement of his patent in suit No. 2,159,658 in the year 1940.

Plaintiff gave Montgomery Ward and Company notice of infringement of his patent in suit No. 2,159,658 in January, 1941.

Stewart-Warner Corporation, the manufacturer of the alleged infringing heaters, agreed to hold Sears Roebuck and Company and Montgomery Ward and Company harmless, subject to these conditions: First, that Montgomery Ward and Company and Sears Roebuck and Company transmit promptly to Stewart Warner Corporation any notices, papers, summons, or things of that kind, which they might receive, and with the second reservation that Stewart Warner Corporation be free to select the counsel by whom Montgomery Ward and Company and Sears Roebuck and Company would be defended. When the summons were issued in each of these cases Stewart Warner Corporation was promptly given notice of these facts, and all papers were sent to them, and they selected, as defense attorneys for the defendants of record, the firm of Williams, Bradbury, and Hinkle (Record 8248, lines 1-12, Record 8249, lines 7-13).

Stewart Warner Corporation is paying the bulk, if not all, the expenses incident to the defense of this suit. (Record 8250, middle of page.)

The above-entitled causes for patent infringement were begun February 25, 1941. The two causes, being identical, were tried together, and this opinion is intended to cover and decide both cases.

Plaintiff was the owner of United States Letters Patent No. 2,159,658, "Control System," from the date of its issue on May 23, 1939, to the date of trial, together with all rights of action for infringement thereof. The complaints declare that Stewart Warner South Wind Automobile Heater infringes United States Letters Patent No. 2,159,658, granted to William D. Hall, the plaintiff, for an invention entitled "Control System." Plaintiff relies particularly upon Claims Nos. 5, 6, 11, 14, 21 and 27, of his patent.

The trial was long and very tedious, extending for more than eighty days, and the record exceeds ten thousand pages. Both parties were given every opportunity to state to the very fullest extent their respective positions. The defendants consumed two days in making an opening statement, cross-examined plaintiff for fourteen days, twice calling plaintiff as their own witness, and in addition to a four and one-half day pre-trial deposition, took numerous depositions, presented a defense lasting forty-seven days, and set forth their position at some length during plaintiff's rebuttal period. During the trial many hundreds of physical demonstrations were made in the Court Room and in a workshop set up in Windsor Hotel, Wheeling. The South Wind heaters were demonstrated on various automobiles, operated on the road and while standing. Briefs set forth the contentions of the parties at great length, and final argument was unlimited as to time.

The plaintiff's patent relates to a "Control System" for burners and specifies:

"The dominating feature of my invention resides in the provision of separate switches for controlling the igniter coil and the valve."

The Hall patent, Figure 5, has a burner 87, an igniter known to this art as a hot-wire igniter 62, a resistor 63 in series with the igniter, and a valve 73 operated by a solenoid 72. Mounted on the base 65-80 are the bimetallic strips 66 and 79 which respectively carry contacts 84 and 85. The patent, page 3, describes Figure 5, in part, as follows:

"The current flow through the igniter raises the temperature thereof to igniting temperature and the heat radiated from resistor 63 to bimetallic strip 66 causes this strip to flex. * * * When heated, strip 66 flexes until contacts 84 and 69 engage each other. * * * solenoid 73 causes the valve to be opened thereby establishing a flow of gas to the burner. * * * gas from the burner flows into flasher 61 and is ignited by igniter 62 * * * The entire supply of fuel is soon ignited and the heat therefrom causes the bimetallic strips to bend to the left thereby opening contacts 85. In Figure 8, I have illustrated the parts just after the igniter circuit is broken. As the burner continues to heat, the bimetallic strips 66 and 79 continue to move the members 74 and 77 to the left until at a very high temperature they reach a position such as is illustrated in Figure 9. At this position, assume that the gas supply is accidentally stopped and immediately restarted * * * when the flow of gas resumes it would escape. However, I have provided a control switch capable of recycling, and therefore, within a short period of time the burner will cool a few degrees and the bimetallic strips 66 and 79 will disengage members 69 and 76 respectively. * * * When the igniter switch 85 recloses, resistor 63 will raise the temperature of strip 66 until contact 84 is remade. This latter action will reopen the valve 73 and an attempt to relight the burner will be made as heretofore stated."

"* * * my principle is even broader than electrical circuit arrangements specifically recited above, and rather than attempt to list the numerous modifications which I have experimented upon and conceived, I am defining the principle in the appended claims."

Hall's patent has another form of invention shown in Figure 1. An igniter coil 6 is controlled by "circuit breaker 7, the contacts 8 of which are normally closed. This circuit breaker may be of any detailed construction, being shown essentially as a bimetallic disc or diaphragm * * *." Another bimetallic strip 14 controls "solenoid 16 which has for its core the stem 17 of the fuel valve 55." The igniter 6 heats bimetallic circuit breaker 7, and is (see claim 14): "means for opening and reclosing said circuit breaker if combustion fails to be established on the first effort."

The Hall patent in suit goes into great detail throughout its specifications to describe the invention. Hall, in his patent, did not show simply a pair of bimetallic strips diagrammatically operating an igniter and valve, as he might have done, but illustrated practical devices that had been actually constructed and tested by him.

In comparing the Hall patent with the South Wind Heater, it is necessary to determine which portions of the patented device really do the work. Machine Co. v. Murphy, 97 U.S. 120, 125, 24 L.Ed. 935; Saco-Lowell Shops et al. v. Reynolds, et al., 4 Cir., 141 F.2d 587.

Hall's patent illustrates a Combination made up of a burner, valve, hot-wire igniter, and two bimetallic strips respectively controlling the igniter and the valve. These are the parts that really do the work. These parts are all relatively near the burner and are operated by heat therefrom without the necessity of the complicated external control boxes of the prior art. The nature of Hall's improvement was described by the Board of Appeals of the Patent Office as follows:

"Appellant points out that by his mechanism a simple structure can be placed close to the burner and effect a very satisfactory result, as contrasted with the complicated mechanism shown in McCabe 1,853,444, for example."

The simplicity and result flow from the new Combination and not from any detailed construction of any particular part thereof. Hall did not attain simplicity by changing the valve of some prior art combination patent, nor by changing the igniter, nor by improving or simplifying any particular part of a combination patent of the prior art. Hence, in determining infringement, it is the combination that will be compared with the South Wind Heater, and not such details of the separate parts of the combination as are convenient ways of building the whole device.

The South Wind Heater

The South Wind Heater is a gasoline burning automobile heater. After the heater becomes hot the fuel line vaporizes the gasoline fed thereto and, therefore, the fuel reaching the heater is a pure gas. The South Wind Heater has a coiled hot-wire igniter for...