Holley v. OUTBOARD MARINE CORPORATION

• Decision Date: 20 February 1964
• Docket Number: No. 60 C 671.,60 C 671.
• Citation: 241 F. Supp. 657
• Parties: Donald A. HOLLEY, Plaintiff, v. OUTBOARD MARINE CORPORATION, a Delaware corporation, Defendant.
• Court: U.S. District Court — Northern District of Illinois

241 F. Supp. 657

Donald A. HOLLEY, Plaintiff, v. OUTBOARD MARINE CORPORATION, a Delaware corporation, Defendant.

No. 60 C 671.

United States District Court N. D. Illinois, E. D.

February 20, 1964.

COPYRIGHT MATERIAL OMITTED

Charles B. Spangenberg, Wallenstein, Spangenberg & Hattis, Chicago, Ill., for plaintiff.

Timothy L. Tilton, Dawson, Tilton, Fallon, Lungmus & Alexander, Chicago, Ill., for defendant.

DECKER, District Judge.

This is a suit charging defendant with knowing and wilful infringement of Claim 3 of United States Letters Patent No. 2,536,642, issued January 2, 1951, from an application filed by plaintiff on September 10, 1949. Plaintiff seeks an injunction, accounting, treble damages by reason of the allegedly wilful infringement, costs and expenses and attorney's fees. Defendant answered, denying infringement, and alleged that Claim 3 of the patent in suit was invalid (1) for failure to claim an invention within the meaning of 35 U.S.C. § 112; (2) because anticipated by the prior art; (3) as unpatentable for lack of invention over the art as exemplified by eight prior patents, only three of which were relied upon by defendant at trial.¹

The patent in suit, entitled "Method of and Means for Controlling the Coolant of Marine Internal-Combustion Engines," relates to a marine engine cooling system which utilizes a water bypass line. By stipulation the issues at trial were limited to the questions of the validity of Claim 3 of the patent, and its alleged infringement by defendant in its 5½, 10 and 18 horsepower outboard motors for the model years 1959, 1960 and several months of 1961.

Before discussing the issues, it may be helpful to review some of the background evidence.

In brief, marine cooling systems are constructed with the danger in mind of fire from overheated exhaust manifolds and pipes. Because of this possibility, it was thought necessary to maintain a constant flow of water through the exhaust pipe. Prior to plaintiff's invention, then, the typical marine engine cooling system involved only the pumping of water from the source (the body of water in which the boat is floated) directly through the engine water jacket, and thence through the exhaust pipe with waste gases. Because of the absence of provision for the retention of water in the water jacket until a desirable engine operating temperature had been reached, the engine ran "cold." When running cold, an engine fails to vaporize the fuel properly so as to burn the low ends. This results in the generation of acids and the formation of condensation. In automobiles, by way of distinction, the problem of inflammable gas accumulation is not present, and the exhaust manifold and pipe are air-cooled.

Plaintiff testified to experience in the repair and servicing of automobiles in various shops from 1916 to 1947, either as a repairman or manager. Around 1940 he began to work on marine engines and subsequently became interested in problems connected with their cooling systems. His initial experiments resulted in a model of a recirculating type of cooling system which was tested in Minnesota for the Redwing Machine Corporation in 1949. When engine temperature was cold, a single valve operating between two seats caused the recirculation through the engine of water which otherwise would be pumped overboard. The main difficulty with this system was its failure to provide cooling water for the engine's exhaust pipe during periods of warm-up when the coolant was being retained in the engine water jacket.

He then began work on the system which forms the subject matter of the patent in suit. The divergent requirements of such a system were recognized as the need for (1) a continual flow of water through the exhaust pipe for cooling purposes, (2) sufficient cooling water in the water jacket to avoid overheating of the engine, and (3) the capability of retaining water within the water jacket when it was sought to raise engine temperature to a desirable operating level. Assuming the normal range of water temperature in the body of water in which the boat was floated, these ends could not be attained by the continual circulation of water through the water jacket. Plaintiff's solution was to employ a feature of a recirculating system tested for Redwing — the retention of water within the cooling system until engine temperature was sufficiently high — without that system's reduction in the flow of water overboard through the exhaust manifold and pipe. This was accomplished by the use of two lines into which the incoming flow of water could be directed. One led through the water jacket; the other bypassed it. Water passing through the bypass line had no effect upon engine temperature. Flow was apportioned between the lines by the operation of an expandable thermostat located at the point of their juncture on the outlet side of the cooling system. When the engine was cold and the bellows contracted, a valve disc blocked the passage of water through the water jacket. Since the flow of water into the engine remained substantially constant, the effect was to channel the incoming flow into the bypass line and thence overboard. As the engine warmed up, movement of the thermostatic valve directed increasing proportions of the total flow through the water jacket. The volume of water pumped through the cooling system and exhaust pipe was unaffected by the apportionment between the two lines.²

Having perfected the device, plaintiff filed his patent application in September of 1949. Thereafter, he approached a number of dealers in an attempt to market the cooling system. One of these contacts was with the Chris-Craft Corporation which plaintiff heard was opposed to the installation of thermostatically-controlled cooling systems because of their supposed unreliability.³ As a result of tests and demonstrations in 1950, plaintiff secured an order for 144 units for installation on Chris-Craft engines. The system worked to the buyer's satisfaction, and regular purchases were still being made at the time of trial.

Plaintiff's first contact with the defendant company came in January of 1951, when he initiated negotiations with Matt Gruben & Sons, an Iowa agent of defendant. Plaintiff's system was installed on one of defendant's engines, which the Grubens supplied, and successful tests were conducted. An appointment was then arranged by Matt Gruben between defendant and plaintiff for November of 1952. At this time, in Waukegan, Illinois, plaintiff met defendant's Chief Engineer, Clay Conover, had a short conversation with him relative to the patent in suit, and left drawings and a description of his invention.⁴ Holley testified at trial that while interest in his system was expressed, Conover indicated that defendant's engineers were experimenting with a similar system. No further negotiations between the parties were had in connection with the patent in suit, although plaintiff was told at the initial conference that purchase of his system would be considered if defendant's own efforts proved unsuccessful.

Though defendant's experiments with thermostatically-controlled cooling systems began around 1943, it was not until October 2, 1953, that Lucius A. Watkins, defendant's Director of Research, submitted a sketch and written description suggesting the development of a bypass type system. Thereafter, patent No. 2,741,231, assigned to defendant, issued to Watkins on April 10, 1956. The specific construction shown by this patent is substantially similar to plaintiff's patented system, as well as defendant's accused system, but was never marketed.

In 1959 plaintiff had occasion to examine one of defendant's marine outboard motors. Finding a cooling system he regarded as infringing his own, plaintiff gave notice to defendant on September 8, 1959. Defendant denied infringement, but made certain changes in its temperature control system in late 1960 and early 1961,⁵ and this litigation followed.

I now consider the issues raised by the pleadings and the evidence.

VALIDITY OF THE PATENT IN SUIT

In determining the question of patent validity, the Court is guided by the statutory presumption of validity, 35 U.S.C. § 282. "This presumption is not an idle gesture, * * * and is not to be overthrown except by clear and cogent evidence. * * *" Copease Mfg. Co. v. American Photocopy Equipment Co., 298 F.2d 772, 777 (7 Cir. 1961). And where, as in the instant case, prior art was not cited by the Patent Office, "it is as reasonable to conclude that * * * it was considered and cast aside because not pertinent, as to conclude that it was inadvertently overlooked." Artmoore Co. v. Dayless Mfg. Co., 208 F.2d 1, 4 (7 Cir. 1953).

At the same time, the Supreme Court has indicated that combination patents may be subject to a more stringent test of inventiveness than others: they must "add to the sum of useful knowledge. * * * A patent for a combination which only unites old elements with no change in their respective functions * * * obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men. * * *" Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950). "Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements." Ibid.

Understandably, considerable difficulty inheres in the practical translation of general formulations such as the above. The problem is well stated in Kwikset Locks, Inc. v. Hillgren, 210 F.2d 483, 485-486 (9 Cir. 1954), where the Court said:

"What constitutes `invention' defies precise definition. The courts have attempted at least to fix some guideposts to indicate wherein the realm of invention lies. These judicial attempts at definition are either very sweeping and consequently general, or so narrow as to be applicable only to a

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