Hess-Bright Mfg. Co. v. Bearings Co. of Pennsylvania

• Decision Date: 10 March 1921
• Docket Number: 1799.
• Citation: 271 F. 350
• Parties: HESS-BRIGHT MFG. CO. v. BEARINGS CO. OF PENNSYLVANIA et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

271 F. 350

HESS-BRIGHT MFG. CO. v. BEARINGS CO. OF PENNSYLVANIA et al.

No. 1799.

United States District Court, E.D. Pennsylvania.

March 10, 1921

Patents 328-- 822,723, for ball bearings, not infringed.

The Conrad patent, No. 822,723, for improvement in ball bearings held not anticipated and valid, but not infringed by the regrinding of the grooves of old bearings, and, where required, substituting new balls to fit the grooves enlarged by the regrinding, which is within the right to make repairs.

Rogers Kennedy & Campbell, of New York City, for plaintiff.

J Bonsall Taylor and E. H. Fairbanks, both of Philadelphia, Pa., for defendants.

DICKINSON District Judge.

This case concerns patent No. 822,723, issued June 5, 1906, to Robert Conrad, for an improvement in ball bearings. The prayers are the usual ones, and the defenses the like usual ones of a denial of validity and of infringement. We will, so far as concerns this court, dispose of the issues raised in the order named.

Respecting the question of validity of the letters patent, we have for our guidance, in addition to adjudications in other circuits, rulings by the courts of this circuit, not once or twice, but thrice, establishing validity. These cases are found reported in Hess-Bright Mfg. Co. v. Standard Roller-Bearing Co. (C.C.) 177 F. 435, Same v. Fichtell (D.C.) 209 F. 867, and Id., 219 F. 723, 135 C.C.A. 421. The justification for a renewed attack upon this patent is that counsel for defendant confidently rely upon the German patent, No. 49,071, as an anticipation. In none of the other litigation was this German patent in evidence. In view of the fact, however, that its existence was called to the attention of the Circuit Court of Appeals on a motion for a reargument, although perhaps for a different purpose than the use now made of it, we do not feel at liberty to reinquire into the subject of validity and, in consequence make a formal finding of validity on the authority of the cited cases.

This leaves for consideration only the question of infringement. The discussion of the second branch of the defense has been made very interesting because of the notable ability displayed in the argument. The subject-matter of this invention plays an important part in industrial activities. This patent is in capable and strong hands. The showing made of commercial recognition of the utility of the invention shows in turn the control which plaintiff has of the trade.

In the view of the defendant they seek now to extend this control over the making of all repairs to worn bearings, or to force the sale of a new bearing, by denying the right of the owner to repair an old one. The monopoly which the law has granted to the plaintiff has proven itself to be one of great value. The law gave the exclusive right to make and vend, but, when once a sale was made, the right (so far as concerned the bearing sold) had been exhausted by its exercise, and all right of ownership passed by the sale, as fully as if no patent had ever issued, except that the vendee had no more right than before to make, use, or sell another bearing like it. The vendee had the right to its full, untrammelled use, and the right to keep it in repair fitted to use. This included, also, the right to have repairs made by others. The control of this right of repair is sought by plaintiff more for the purpose of asserting control of the trade than for the direct gain from the repairs made. The motive avowed is to protect the reputation of the patented bearings, which the performances of a repaired bearing might injure.

Counsel for plaintiff does not, of course, formulate the claim of right as defendant states it. He does not deny to the vendee of plaintiff the right to repair. What he does deny is any right, by using plaintiff's bearing as a model, to make a new bearing from the raw material of an old one. It is obvious that all this is nothing more than opposing statements of the effect of what the defendant has done. The defendant calls it the repair of old bearings. The plaintiff calls it new construction or reconstruction. Omitting the name properly to be applied to what was done, the fact finding is made that what was done was the regrinding of the grooves of old bearings, and, where required, the substitution of new balls to fit the grooves enlarged by the regrinding.

The dividing line between repairs and a making over cannot be verbally located. What has been done can with more or less confidence be pronounced to be one or the other, but neither the one nor the other can be defined. The judgment pronounced must in consequence partake of the ipse dixit or rescript character. A further consequence is that the adjudged cases provide us with little for our guidance. With no thought of finding a better...