Howe v. General Motors Corporation

• Decision Date: 15 April 1966
• Docket Number: No. 54 C 1893.,54 C 1893.
• Parties: Earl E. HOWE, Plaintiff, v. GENERAL MOTORS CORPORATION, Defendant.
• Court: U.S. District Court — Northern District of Illinois

252 F. Supp. 924

Earl E. HOWE, Plaintiff, v. GENERAL MOTORS CORPORATION, Defendant.

No. 54 C 1893.

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

April 5, 1966.

As Amended April 15, 1966.

Warren C. Horton, Horton, David & McCaleb, Chicago, Ill., E. J. Balluff, Detroit, Mich., for plaintiff.

George N. Hibben, Hibben, Noyes & Bicknell, Chicago, Ill., Arthur A. Raisch, Detroit, Mich., Mayer, Friedlich, Spiess, Tierney, Brown & Platt, Chicago, Ill., for defendant.

ROBSON, District Judge.

History of Litigation

This suit, filed December 17, 1954, concerning the validity and infringement of the Howe Patent No. 2,201,490, on an "Inclined Hinge," is now before the court for decision on the merits, after trial by the court. A long and tortuous background preceded this decision.

The first adjudication was that of Judge Walter J. La Buy, who in October, 1958, after hearing evidence, overruled the defense of laches and estoppel (Howe v. General Motors Corporation, 167 F. Supp. 330 (N.D.Ill.1958). Subsequently there was a jury trial in June, 1960, before Judge La Buy, which ended in a hung jury. Judge La Buy denied defendant's motion for a directed verdict without stating his reasons for the denial.

A second jury trial in April, 1961, before Judge J. Sam Perry, resulted in finding the defendant not guilty. Judge Perry vacated and set aside this finding and ordered a new trial. Following this ruling the Court of Appeals denied a petition for a writ of mandamus, or, in the alternative, for a writ of certiorari, finding no abuse of discretion in the denying of defendant's motion for a directed verdict, which motion had been taken under advisement during the course of the trial (General Motors Corporation v. Perry, 303 F.2d 544 (7th Cir. 1962)). There had also been a suit, in another district, upon a license granted by Howe at the time the application for this patent was pending, upon which license litigation ensued with an opinion in favor of patentee (Howe v. Atwood, 47 F.Supp. 979 (E.D.Mich.1942)), and which litigation ended in a settlement without appeal.

The observations of the various judges who have had occasion to comment upon the Howe patent are interesting. In the royalty suit between Howe and licensee Atwood (Howe v. Atwood, 47 F.Supp. 979 at 986 (E.D.Mich.1942)), the court said:

"* * * It is the understanding of this court that the secret of the claims of the second hinge Patent '490 lies in the fact that the inclination of the axis inwardly from the car door and longitudinally towards the front of the car is accomplished by the use of an inclined pintle built into the hinge, this inclination being compenstated for by using a goose-neck hinge member varying the extent of its curvature from top to bottom."

The court goes on, at 987:

"* * * The drawing accompanying the second Howe hinge shows how it could be utilized with two pintles as well as one, and incidentally one of the arguments used by defendants in limiting Howe's first patent was that his drawings did not cover a duplex (two pintle) hinge. But Howe's drawing in the second patent did—and the drawings accompanying a patent with its claims are illuminating when the question of prior art and intended coverage is at issue."

Judge La Buy in Howe v. General Motors Corporation, 167 F.Supp. 330, at 331 (N.D.Ill.1958), stated:

"* * * The patent is directed to a gooseneck hinge of the pintle or hinge pin type for swingingly supporting a door of an automobile body from a curved body wall (that is, one with tumble-in), with a double inclination of the hinge axis to compensate for the tumble-in angle of the body so that the door can swing in a substantially horizontal are. All of the claims of the Howe patent in suit are limited to a concealed hinge for supporting a door on a curved or inclined wall with the axis of the hinge pin having a double inclination so that the door in opening and closing swings through a substantially horizontal arc. The patent discloses a unitary gooseneck hinge which supports the door * * *. The gooseneck hinge disclosed in the Howe patent supports the door so that when the door is swung open it moves to a swing-out position; that is, in addition to swinging away from the body, it swings forwardly and provides much greater leg room for entrance to and exit from the body."

Judge Perry in a statement made on September 29, 1961, on a motion for an order setting aside the order of September 20, 1961, granting a new trial, said:

"* * * I will be perfectly frank with you, had it been a non-jury case I would have found the patent good and would have found infringement, and that is really the heart of why I granted a new trial, because I think it is my duty to give my best opinion as to what justice should ultimately be, and I thought that it was a valid patent and I thought it was infringed, and I also thought that the tremendous amount of demonstrative evidence that was presented by the defendant, the innumerable doors that were brought in, the excessive amount of evidence, did unduly influence the jury in the matter. * * * That is my honest opinion about it. * * * If I ever saw a good patent that was it. If there had been too much of a serious doubt I would not have granted a new trial by a jury. * * * It was my best judgment, and I told you my opinion as to the law and as to the facts is that there was a good patent, and that it was infringed." (Italics added.)

Decision

This court after a careful examination of the prior proceedings reaches the unescapable conclusion that the patent is invalid because anticipated by the prior art and as one which should have been obvious to a skilled worker in that field in view of that prior art.

Patent and Pleadings

Patent No. 2,201,490, consisting of four claims, issued May 21, 1940, upon an application filed January 9, 1939, expired May 21, 1957. Written notice of infringement was given defendant on July 10, 1942. Infringement is charged for the period from December 17, 1948, to date of the patent's expiration in 1957.

The complaint and supplement thereto charge infringement by defendant "by making and/or selling automobiles wherein the front doors of the bodies thereof are supported by concealed hinging means of the gooseneck type as covered by said Patent No. 2,201,490," and allege the damages for infringement to exceed a million dollars, and seek treble damages. An amendment to the complaint and supplemental complaint filed July 18, 1963, asked for an accounting of the damages and withdrew the demand for a jury trial.

The answer denied infringement and asserted invalidity of the patent on the ground that the invention was disclosed in prior art patents and publications, and the alleged invention had been known and reduced to practice by General Motors more than two years prior to the disclosure in the application for the Howe patent. Further, defendant asserts lack of invention; Howe's disclosure involving mere mechanical skill; the claims of the patent are vague, and they are broader than the scope of the original application and are not supported by supplemental oath of the applicant.

Howe stated in his patent that "this invention relates to a concealed door hinge particularly adapted for swingably supporting a door from a curved wall, as for example, the support of an entrance door of an automobile which is curved in direction normal to swinging movements and further, in conjunction with walls which are inclined as in the case of an automobile body having upwardly converging side walls."

The highlight of plaintiff's invention would seem to be the fact that the hinge is completely concealed within the body of the car thereby maintaining the trimness of body line and protection of the hinge from the elements. This is achieved on a car, the contour of which is inwardly inclined by having the axis of the hinge also inclined inwardly, and generally forwardly, with the result that when the door is opened it swings in a substantially horizontal arc. This prevents sudden closure of the car door due to force of gravity on a passenger entering or alighting.

Stipulated Facts

The stipulation of facts filed December 30, 1963, presents these facts: Plaintiff, Earl E. Howe, is the owner of all rights under the patent in suit. An exclusive licensee, The Metal Specialty Company of Ohio, had granted a sub-license to the Atwood Vacuum Machine Company but the Metal Specialty Company assigned its rights back to Howe, who, when a dispute arose, sued the Atwood Vacuum Machine Company and had an opinion in his favor. Defendant was not a party to the Atwood litigation, but followed it. It had no control over it although it furnished some evidence therefor.

Each of defendant's hinges charged to infringe includes an upper hinge element and a lower hinge element. The claims which they allegedly infringe are stated.¹

The stipulation of facts also sets forth the precise automobile, year, make and series, which infringes each of the claims, and further gives the exact inclination of the hinge axis, all of which are inclined inwardly, and some of them are specified to be also inclined forwardly or rearwardly. It is also stated whether the hinge occurs on the front or rear doors. The exact angle of inclination is given in each instance.

The prior art patents on which defendant relies are:

Richard, No. 1,325,109 issued December 16, 1919 (concealed hinge but pin vertical).

Smith, No. 2,050,469 issued August 11, 1936 (not concealed but no pins).

Carr, No. 2,114,830 issued April 19, 1938 (means not concealed on inside).

Soss, No. 1,363,370 issued December 28, 1920 (not limited to autos and inclined walls).

French patent (Mouche), No. 537,011 issued in 1922.

A publication by von J. Feldwabel, published in Germany in 1920, and other publications are also relied on as prior art.

Discussion of Prior Art and Contentions in Respect Thereto

I. Mouche Patent

As to the prior art, the French Mouche Patent No....