Johnson Bros. Engineering Corp. v. Caille Bros. Co.

• Decision Date: 25 July 1934
• Docket Number: No. 3928.,3928.
• Citation: 8 F. Supp. 198
• Parties: JOHNSON BROS. ENGINEERING CORPORATION et al. v. CAILLE BROS. CO.
• Court: U.S. District Court — Western District of Michigan

8 F. Supp. 198

JOHNSON BROS. ENGINEERING CORPORATION et al. v. CAILLE BROS. CO.

No. 3928.

District Court, E. D. Michigan, S. D.

July 25, 1934.

Whittemore, Hulbert, Whittemore & Belknap, of Detroit, Mich. (George L. Wilkinson, Kent W. Wonnell, and Charles L. Byron, all of Chicago, Ill., of counsel), for plaintiffs.

Swan, Frye & Hardesty, of Detroit, Mich. (George Rex Frye and Francis D. Hardesty, both of Detroit, Mich., of counsel), for defendant.

KNIGHT, District Judge.

This is an action for patent infringement. Claims numbered 6, 11, 12, 13, and 14 of Patent No. 1,716,962, granted to H. L. Johnson on July 11, 1929, are alleged to be infringed. Defendant denies infringement and alleges invalidity of the patent. It is admitted that Johnson Brothers Engineering Corporation is the exclusive owner of the patent and Johnson Motor Company the exclusive licensee thereof.

The alleged invention is described in the patent as a "Water Propulsion Device." The parties hereto are and have been for a considerable number of years extensive manufacturers of outboard motors for use on boats. The device relates generally to an outboard motor construction and more particularly to the method of connection and mounting of the motor, and the underwater casing inclosing the lower end of the drive shaft and the propeller shaft. It is claimed for this patented device that more economy in construction, and much greater efficiency in the motor operation resulting in easier control and higher speed have obtained.

The defendant has set up in its answer several patents claimed to anticipate the patent in suit, and upon the trial numerous other patents were offered by the defendant and received to show the state of the outboard motor art.

Plaintiffs claim that Harry L. Johnson invented the devices in question on May 23, 1924. The application for the patent including eleven claims was filed August 25, 1926. On December 15, 1926, all the claims in the application were rejected as too broad and as reading on various prior patents.

The application was twice amended, and thereafter and on June 7, 1928, those relating solely to a deflecting plate member rearwardly of the propeller were disallowed and claim 6 (originally claim 9) allowed.

The references against these claims were Caille No. 1,107,408; Hult et al. No. 1,146,427; Buchner No. 1,460,570; Johnson No. 1,467,641; Wagner No. 1,535,511; Johnson No. 1,567,512; Dawson No. 1,576,237; Sikorsky No. 1,560,869; Fisher No. 1,091,645; and "Design of Airplanes" by Arthur W. Judge. None of the claims to this time included any description of the contour of the propeller casing, nor to any anti-cavitation plate cast integrally with the propeller casing, or the location of such plate with reference to the top of the casing.

Thereafter and on December 5, 1928, numerous claims were added purporting to cover the elements now included in the other claims in controversy. After further amendments and additions to the claims, and also to the specifications, on May 10, 1929, all the claims in the patent were allowed.

The defendant urges numerous grounds why this action cannot be maintained. The court will endeavor to consider these in a logical order.

Findings of Fact.

Infringement.

Claim 6 calls for a combination of outboard motor with propeller shaft casing, propeller, a member arching one side of the propeller, an anti-cavitation plate carried by the casing, and the member arching the propeller and located above the propeller.

There can be no doubt that defendant's outboard motor of the type advertised by defendant in its catalogues for the years 1928 and 1929, as sold by defendant, reads on claim 6 of the patent in suit. Defendant's construction in those years definitely shows in combination with the motor a propeller shaft casing, propeller, member arching one side of the propeller, and anti-cavitation plate carried by the casing and a member arching the propeller and located above the propeller. These include every element of the claim. Defendant's disclaimer is that this construction does not include a member arching one side of the propeller in the sense that the term is used in the patent and also that its water tube member braces the anti-cavitation plate rather than the reverse. In support of this disclaimer defendant points attention to the language of the specification describing the arching member at lines 32 et seq., p. 1; lines 20 and 21, p. 2, and lines 50 to 53, p. 2. The patented structure shows, as recited in line 32 et seq. of the specifications, a casing at the lower end of the drive shaft casing with a member arching the upper side of the propeller. The anti-cavitation plate is cast integrally with the propeller and forms a part thereof. From the rearward part of the anti-cavitation plate extends the member arching the propeller. The propeller blades do pass through the arched portion, as recited in lines 20 and 21, supra, and the anti-cavitation plate is properly described as forming a brace for the arch portion of the casing as set forth in lines 52 and 53. Defendant asserts that no part of its water tube arching member is below the anti-cavitation plate forward of the propeller plate and that the tube braces the plate rather than the plate the tube.

No material inconsistency is to be found as between the claim and the specification. In either structure it may be said that the plate and the tube support each other. Any distinction is without materiality. Each of the corresponding parts of the two structures serve the same purposes in the same way and in the same arrangement. Plaintiffs' construction in addition shows what is termed a "water resisting deflecting plate" carried rearwardly of the arching member. This is of no moment in the comparison of claim 6 with defendant's construction.

Claim 13, in addition to those elements found in claim 6, shows a vertically extending propeller shaft casing with internal water passage opening below water level, with a propeller mounted on the casing and means for turning such casing for steering. Defendant's outboard motors of 1928 and 1929 show all these elements of this claim and in the same combinations and functioning the same as those in the patent structure. "Propeller shaft casing," as used in the claim, refers to the casing inclosing the propeller shaft. It is not confined to the barrel-like portion of the lower end of the housing as defendant contends. Reference to the specification and drawing clearly indicates the particular element claimed. Defendant contends that the propeller shaft casing in the patent means that barrel-like portion at the extreme lower end of the housing; that all above that is the drive shaft casing. Defendant admits that its water passage is internal "for a way," but claims that it is entirely external with relation to the drive shaft casing, as it construes the meaning of drive shaft casing. The claim reads "vertically extending propeller shaft casing with internal water passage." The specification and drawing clearly demonstrate that the propeller shaft casing, as mentioned in the claim, means and includes the vertical portion above the barrel-like part. Complete corroboration for this view is also found in other language in the claim which reads, "said casing (propeller shaft casing) having an anti-cavitation plate cast integrally there-with and located in a plane above the propeller." Each structure shows a propeller shaft casing with an internal water passage below normal water level. It is of no moment that defendant's structure shows this passage opening out of the casing. Both are inside for the same purpose — to reduce resistance to the minimum.

In defendant's construction in 1930, and subsequently, there is shown a small auxiliary plunger pump attached to the member arching the propeller at a point rearwardly of the propeller and of the water intake. This pump is supplied as an auxiliary. It is easily detachable. It is claimed that this was necessary to properly circulate the water when the boat was proceeding at one-third speed. It is claimed that the prior systems were insufficient. The proof to establish this contention is not convincing. The wide and general use of the system without the pump refutes the claim. The addition of the pump does not change the general character of the function of the cooling system. While improvement in a cooling system may be patentable and often is patented, if the function of the patent is substantially appropriated, there is infringement. Plaintiffs' patent is substantially appropriated. General Electric Co. v. Alexander et al. (C. C. A.) 280 F. 852; Gibbs v. Triump Trap Co., Inc. (C. C. A.) 26 F.(2d) 312.

The 1930-1933 constructions of the defendant show an internal water passage located at the front of the propeller casing rather than at the rear as shown in the constructions of 1928 and 1929. This water passage extends from its opening part way in the propeller shaft casing and such opening is necessarily below normal water level. Plaintiffs' patent does not limit the location of the internal water passage, except that it is below the water level. The purpose of inclosing the water passage below the water level is apparent. It lessens turbulence and resistance. Despite this change in construction, the changed construction reads on the plaintiffs' claim.

Claim 14, in addition to the elements shown in claim 13, describes the propeller shaft casing as having "smooth and unbroken walls extending upwardly and provided with an integrally cast anti-cavitation plate substantially midway of its height and in a plane above the propeller blades." This claim is more limited than claim 13. The outboard motors of defendant in 1928 to 1933, inclusive, show propeller shaft casings with smooth and unbroken walls extending upwardly and with anti-cavitation plates substantially midway of the height of the casing extending in a plane above the propeller...