Halstead v. Globe Hoist Company

• Decision Date: 04 May 1964
• Docket Number: Civ. A. No. 40074.
• Citation: 231 F. Supp. 1012
• Parties: John H. HALSTEAD, d.b.a. Western Manufacturing Co., a partnership, Plaintiff, v. GLOBE HOIST COMPANY, a corporation, Defendant.
• Court: U.S. District Court — Northern District of California

231 F. Supp. 1012

John H. HALSTEAD, d.b.a. Western Manufacturing Co., a partnership, Plaintiff, v. GLOBE HOIST COMPANY, a corporation, Defendant.

Civ. A. No. 40074.

United States District Court N. D. California, S. D.

May 4, 1964.

Boyken, Mohler & Foster, San Francisco, Cal., Dirks Foster, Trial Atty., San Francisco, Cal., for plaintiff.

Townsend & Townsend, San Francisco, Cal., Connolly, Bove & Lodge, Athur G. Connolly, Trial Atty., Wilmington, Del., for defendant.

WEIGEL, District Judge.

Plaintiff, John Halstead, doing business as a partnership under the name, Western Manufacturing Company, is the owner of two patents in the vehicle lifting field. Patent 2,949,978 (hereafter referred to as '978) relates to a type of frame contact automobile hoist.¹ Patent 2,956,643 (hereafter referred to as '643) relates to an automatic safety leg used in conjunction with vehicle lifts.²

Plaintiff charges defendant, Globe Hoist Company, with manufacturing devices which infringe Claims 3, 4 and 5 of the '978 patent, and Claims 1 and 2 of the '643 patent.

Defendant challenges the validity of both patents. With regard to infringement, defendant admits that if the patents in suit are valid, patent '978 is infringed by its FN-10 vehicle lift and patent '643 by the first of the accused safety legs. However, defendant denies that the '978 patent is infringed by its FS-10 (new) and FS-27 vehicle lifts and also denies that the '643 patent is infringed by the second of its accused safety legs. As a further defense, defendant asserts that it was granted a free license by plaintiff to manufacture safety legs covered by the '643 patent.

THE HALSTEAD '978 PATENT

The subject matter of this patent is a vehicle hoist or lift used in service stations or garages for raising automobiles and light trucks to an elevated position so that the undersides of such vehicles may be lubricated and repaired. The patent itself relates solely to the superstructure of the lift, that is, to that part of the lift which is normally supported on the upper end of a cylinder raised and lowered by hydraulic or hydraulic-pneumatic means. Both the patented lift and all the other lifts referred to herein are of a type commonly referred to as "frame lifts" because they engage a vehicle by its frame in order to lift it.

Frame lifts first gained acceptance in the early 1950's as a means of lifting a vehicle with a minimum of obstruction of the vehicle underbody by the lift superstructure. In this they were superior to previous "drive on" wheel lifts and axle lifts. Most of the autos and light trucks on the road at that time had frames of substantially standard configuration and, therefore, the first frame lifts were relatively inflexible. These lifts generally employed two parallel rails joined in the manner of an H, which rails were fitted with movable adapting devices to accommodate the minor variances that might be encountered from one vehicle frame to another. Appropriately, this type of lift was called an "H frame" lift.

In the mid 1950's the shapes and dimensions of the frames of automobiles used in the United States began to show more variance from make to make. Therefore, it became necessary for lift manufacturers to devise more flexible frame lifts.

At about this time, plaintiff began producing an H frame lift which employed, on each of the four rails of the H member, a relatively versatile adapter. (Halstead 2,899,020, not here sued upon, issued August 11, 1959.) This adapter was mounted for both sliding and rotation with respect to the H rail on which it was supported. In addition, the adapter could slide in or out along its rotational axis so that it could serve as an arm for reaching to either side of the rigid rail. Defendant, during this period, also produced an H frame lift employing actual arm-like adapters which were slidable on and pivotable from the H rails. (Wallace 2,958,395, not here accused, issued November 1, 1960.)

Increased reaching flexibility was also achieved in another manner by a type of frame lift commonly called a "swinging arm" lift which employed four swinging arms directly connected to a small central base member. (Cochin 2,878,897, issued March 24, 1959.) The significant difference between the swinging arm lift and the H frame lift is that in the H frame lift, the rails are stationary and the adapter arms pivot in and out from these rails, while in the swinging arm lift, the rails themselves are pivoted from the central base member.

A feature common to lifts introduced in both the early and mid 1950's is the lifting pad. This is a separate metal surface, secured to the lift base member or adapter, which provides the actual contact area between the lift and the vehicle frame. In the early Pelouch patent 2,769,508, issued November 6, 1956, a lifting pad is shown attached to the end of each of the four rails of the H shaped base member. This pad is pivoted for offset rotation with respect to the end of its respective rail. In Cochin 2,777,538, issued January 15, 1957, and Wallace 2,958,395, the lifting pads are secured to the ends of the adapter arms which are slidably and pivotably mounted with respect to the rails of the H shaped base member. In the Cochin patent, each pad is circular in shape and rotatably affixed to the adapter arm, while in the Wallace patent, each pad is rectangular and non-rotatable with respect to the arm. In plaintiff's prior art, Halstead 2,899,020, the rectangular lifting pads are co-extensive with the length of the adapter arms and although not rotatable with respect to such arms, are rotatable with respect to the rails of the H shaped base member. In the Cochin 2,878,897 swinging arm patent, nonrotatable rectangular pads are mounted on shoes slidable the length of the swinging arms.

The later of these lift patents show hinged jacks or tip-ups incorporated into the lifting pads. (Cochin 2,878,897; Halstead 2,899,020; Wallace 2,958,395.) Such jacks, when lying in a horizontal position, form a part of the flat lifting pad, but when tilted into an upright position, they serve to contact parts of the vehicle located in a portion of the underbody too high to be reached by the flat lifting pad. In Halstead 2,899,020, the jack is rotatable with respect to the H rail.

In the late 1950's two developments caused lift manufacturers to seek to make their products even more flexible. These were: (1) The large increase in this country in the number of foreign cars with small wheel bases and eccentric lifting points³ and (2) the development by American manufacturers of new vehicle underbodies such as X frames and unitized body structures. It was during this period that plaintiff designed the lift claimed by the '978 patent in suit in an effort to meet all lifting problems then in existence in a safe and convenient manner. In June, 1958, plaintiff began to market a commercial embodiment of the '978 patent called the "Du-Al". The "Du-Al" is an H frame lift which employs an H shaped base member, more narrow than that of plaintiff's prior lift (Halstead 2,899,020) so that it can be straddled by the small foreign autos. To compensate for the narrower base member, the adapter arms are made longer than in previous lifts so that American cars and trucks can also be accommodated.

Basically, the patent in suit claims a combination of the following elements.⁴

(1) A horizontally extending base member. (Claim 5 carefully describes an H shaped base member, but Claims 3 and 4 refer only to "a horizontally extending base member.")

(2) Elongated arms, pivoted to the base member for swinging in a horizontal plane so that they describe the arc of a circle overlapping the corresponding circle of an adjacent arm.

(3) A slide mounted for sliding along each arm.

(4) A rectangular rotatable pad having a vehicle frame engaging surface and supported on each slide for rotation with regard to the slide (Claims 3, 4 and 5) and including:

(a) An offset axis of rotation (Claims 3 and 5).

(b) A jack having an end surface which can be pivoted upwards to engage a vehicle frame (Claim 4).

It is the combination of these elements in this manner which the plaintiff claims as his patentable invention. Although plaintiff admits that all of the basic elements of the patented device are shown in the prior art, he contends that he has combined them in a new way to form a lift able to perform lifting functions of which the prior art lifts were incapable. He, therefore, asserts that his claims were rightfully patented. This assertion is dealt with, infra, in the court's opinion relating to the validity of the '978 patent.

Plaintiff further asserts, and defendant denies, that these claims, in addition to covering H shaped frame lifts, are broad enough to cover swinging arm type frame lifts such as plaintiff's "Rota-Swing" and defendant's FS-10 (new) and FS-27. This is dealt with, infra, in the court's opinion relating to infringement of the '978 patent. However, it is necessary to note at this point that this court there holds that the '978 patent does not cover swinging arm lifts. Therefore, the court's remarks with regard to the validity issue proceed on the assumption that the elongated pivoting arms referred to in the patent claims are adapter arms slidably and pivotably mounted on the rails of an H shaped base member and not the swinging rails pivotably mounted on a small central base member as shown by Cochin 2,878,897 swinging arm lift.

VALIDITY

In testing the validity of the patent claims here in suit, the court has been mindful that a presumption of validity attaches to a patent granted by the patent office, and that this presumption may only be overcome by clear and convincing proof. Patterson-Ballagh Corp. v. Moss, 201 F.2d 403 (9th Cir., 1953); Moon v. Cabot Shops, 270 F.2d 539 (9th Cir., 1959). Still, the ultimate responsibility in determining whether the combination here claimed is patentable lies solely with the court, and...