HH Robertson Co. v. Klauer Mfg. Co.

• Decision Date: 11 August 1938
• Docket Number: 11075.,No. 11074,11074
• Citation: 98 F.2d 150
• Parties: H. H. ROBERTSON CO. v. KLAUER MFG. CO. KLAUER MFG. CO. v. H. H. ROBERTSON CO.
• Court: U.S. Court of Appeals — Eighth Circuit

98 F.2d 150 (1938)

H. H. ROBERTSON CO. v. KLAUER MFG. CO.

KLAUER MFG. CO. v. H. H. ROBERTSON CO.

Nos. 11074, 11075.

Circuit Court of Appeals, Eighth Circuit.

July 1, 1938.

Rehearing Denied August 11, 1938.

William B. Kerkam, of Washington, D. C. (Gordon W. Daisley, of Washington, D. C., and Henry C. Kenline, of Dubuque, Iowa, on the brief), for H. H. Robertson Co.

Roberts B. Larson, of Washington, D. C. (Jennings Bailey, Jr., and Francis D. Stephens, both of Washington, D. C., on the brief), for Klauer Mfg. Co.

Before STONE, WOODROUGH, and BOOTH, Circuit Judges.

STONE, Circuit Judge.

This is an action for infringement of Young and Gephart patent No. 1,589,581 (application, December 28, 1922; issue, June 22, 1926), covering a "ventilator", brought against the assignee of the patent. The trial court determined that the patent was valid but not infringed. From that portion of the decree determining noninfringement the plaintiff appeals. From those portions of the decree determining validity of the patent and equal division of costs defendant brings a cross-appeal.

The General Art. The broad art involved is that of ventilators which are placed on roofs of mills, foundries, shops and other buildings for the purpose of removing gases, fumes, odors, etc., from the interiors. Ventilators divide into several classes depending upon the various basic principles of operation — such as fan, rotary, siphon, plain and combinations thereof. The immediate class, within which this patent falls, is the "plain stationary" type. This means a ventilator which does not have a fan, does not rotate with the outside wind and does not siphon.¹ In short, it is the kind of ventilator which depends entirely upon the utilization of the outside air or wind for its action.

The action of such ventilators depends upon or is influenced by various considerations — such as temperature (inside and outside of building), height of the ventilator, wind velocity, wind direction, outside weather conditions and slope of roof. The purpose of the ventilator is not only to prevent retardation of the natural exit flow of inside air but to accentuate such flow — to create an artificial draft. The problem is to meet the above conditions so as to minimize those which are adverse to creation of a draft and to accentuate the effect of those which are susceptible of utilization to create a draft. Since many of these considerations are inconstants (such as wind direction, wind velocity and weather conditions), the ideal ventilator is one which will provide a dependable draft under all conditions, both normal and predictable abnormal. Business economy in manufacture and in sale make highly desirable a relatively short stack and also a single type which can be used on all kinds of roofs. In short, the perfect ventilator is one which is commercially feasible and which, under all conditions, may be depended upon to provide a sufficiently accentuated draft and one where the results can be fairly well predicted or measured.

In the practical construction of a ventilator, two opposed forces are encountered — outside air movement (direction and velocity of wind) and weather (precipitation of moisture, such as rain, sleet and snow). The wind is to be turned to good use while the weather is to be kept from entering the building through the ventilator.

The Patent. The patent contains five claims upon a single construction. Claims 1 and 5 are involved here. The only difference between these claims is that claim 1 has an additional element, the so-called "lip" at the outer edge of the eduction pipe. We choose to consider claim 5 (the broader claim) in examining and determining validity and infringement, with such statements as to claim 1 as may be necessary or helpful.

Claim 5 is as follows:

"5. A ventilator comprising an eduction pipe, a cap member located above said eduction pipe and separated therefrom a substantial distance, and a storm band of materially greater diameter than said eduction pipe surrounding the latter, said eduction pipe, cap member and storm band being constructed and arranged to have the lower end of the storm band extended below the top of the eduction pipe to prevent horizontally flowing air currents from entering the ventilator at the bottom thereof, and to have the upper end of the storm band extended above the lower edge of the cap member to prevent horizontally flowing air currents from entering the ventilator at its top and yet leave a substantial space between the lower edge of the cap member and a plane tangential to the upper edges of the storm band and eduction pipe and intersecting the longitudinal axis of the latter, to form a direct passage of substantial width from the eduction pipe to the atmosphere in the absence of obstructions therein, means for obstructing said direct passage to prevent the entrance of rain into the eduction pipe, and means co-operating with the storm band and eduction pipe to deflect to the outside of said storm band upwardly inclined flowing air currents."

A vertical section of this construction is shown in Fig. 2 following (unnecessary numerals being omitted).

Reading the claim on the drawing, the eduction pipe is 10, the cap is 12, the storm band is 13, the "means * * * to prevent entrance of rain into the eduction pipe" — also called a "weather baffle" — is 27, and the "means co-operating with the storm band and eduction pipe to deflect to the outside of said storm band upwardly inclined flowing air currents" — also called a "deflecting band" and a "baffle ring" — is 25. The "lip" covered in claim 1 is 30.

Validity.

The cross-appellant attacks the validity of the patent upon several grounds as follows:

(1) Because of the admission of one of the patentees that a ventilator having every element of claim 3 was known to him before the application was filed; (2) because based on new matter introduced during progress through the Patent Office; (3) because the claims here are vague and indefinite; (4) because of the prior art — this patent being but an aggregation of elements old in the art.

(1) Fraudulent Claim. In the state of the record here this issue is not open to cross-appellant. The pleadings present no such issue. The case was tried under a stipulation, a portion of which is:

"For the purpose of simplifying the issues herein and the work of the Court and counsel, plaintiff will stand on claims 1 and 5 only of patent in suit NO. 1,589,581, and defendant will rely for proof of anticipation or prior invention of the invention of said two claims upon the following patents and publications only of those set forth in paragraph 14 of the answer herein."

This matter first appears during the examination of one of the patentees when the cross-appellant sought to introduce that issue and was denied by the court.

(2) New Matter. The new matter asserted to have been introduced during the progress of the patent through the Patent Office and which is claimed to have broadened the disclosure in the application has no such broadening effect. This matter consisted of adding to the drawing (Fig. 2) and in adding to the specifications. The additions to the drawing were the lines and numerals 41 and 42 shown on Fig. 2, hereinbefore set out. The additions to the specifications² were for the purposes of clarity and definiteness and had that effect. Such additions are permissible. Hobbs v. Beach, 180 U.S. 383, 386, 21 S.Ct. 409, 45 L.Ed. 586; Insulite Co. v. Reserve Supply Co., 8 Cir., 60 F. 2d 433, 435; In re Curtis, Cust. & Pat. App., 81 F.2d 236, 238; General Elec. Co. v. Cooper Hewitt Elec. Co., 6 Cir., 249 F. 61, 64, certiorari denied 246 U.S. 668, 38 S.Ct. 336, 62 L.Ed. 930; Boyce v. Stewart-Warner Speedometer Corp., 2 Cir., 220 F. 118, 124; Western Elec. Co. v. Sperry Elec. Co., 7 Cir., 58 F. 186, 196.

(3) Claims vague and indefinite. This attack is aimed at the statement in the claims describing the space between the lower edge of the cap and the upper edge of the storm band. The particular language is the italicized words in the following:

"A ventilator comprising an eduction pipe, a cap member located above said eduction pipe and separated therefrom a substantial distance, and a storm band of materially greater diameter than said eduction pipe surrounding the latter, said eduction pipe, cap member and storm band being constructed and arranged to have the lower end of the storm band extended below the top of the eduction pipe to prevent horizontally flowing air currents from entering the ventilator at the bottom thereof, and to have the upper end of the storm band extended above the lower edge of the cap member to prevent horizontally flowing air currents from entering the ventilator at its top and yet leave a substantial space between the lower edge of the cap member and a plane tangential to the upper edges of the storm band and eduction pipe and intersecting the longitudinal axis of the latter, to form a direct passage of substantial width from the eduction pipe to the atmosphere in the absence of obstructions therein."

The argument is that the patent does not define "substantial" or "substantial space" so that such space could be ascertained therefrom by one skilled in the art. While the statute (35 U.S.C.A. § 33) requires "such full, clear, concise, and exact terms as to enable any person skilled in the art * * * to make, construct, compound, and use the same" yet "A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable." General Elec. Co. v. Wabash Appliance Corp., 58 S.Ct. 899, 903, 82 L. Ed. ___, May 16, 1938. Here the space is hardly capable of mathematical determination and definition since that space is largely dependent upon the relativity of the eduction pipe, the storm band and the cap and such relativity must be applied to ventilators of varying sizes....