Kendall v. Trico Products Corporation

• Decision Date: 19 March 1929
• Docket Number: No. 5084,5125.,5084
• Citation: 31 F.2d 522
• Parties: KENDALL v. TRICO PRODUCTS CORPORATION. KRITZ et al. v. SAME.
• Court: U.S. Court of Appeals — Sixth Circuit

31 F.2d 522 (1929)

KENDALL v. TRICO PRODUCTS CORPORATION.

KRITZ et al. v. SAME.

Nos. 5084, 5125.

Circuit Court of Appeals, Sixth Circuit.

March 19, 1929.

Ralph S. Binns, of Detroit, Mich. (William S. McDowell, Barthel, Flanders & Barthel, and Otto F. Barthel, all of Detroit, Mich., on the brief), for appellants.

Barton A. Bean, Jr., of Buffalo, N. Y. (Harrison M. Brooks, of Buffalo, N. Y., on the brief), for appellee.

Before MOORMAN, HICKS and KNAPPEN, Circuit Judges.

KNAPPEN, Circuit Judge.

Appellee brought suit in the District Court against the Perfection Products Company (a common-law trust) and Kritz and Bauer, trustees, for infringement of United States patent No. 1,522,344, issued January 6, 1925, to Thompson, assignor to Oishei (later assigned to plaintiff), for automatic windshield cleaner, as well as for unfair competition in connection with such infringement. Both validity of patent and unfair competition were denied.

The District Court held the patent valid and infringed, found unfair competition, awarded permanent injunction and accounting for profits and damages on account of the infringement, as well as damages for unfair competition, reserving the question of increased damages until the coming in of the master's report. The appeal from the decree in No. 5084 was taken within 30 days and before the accounting. Before the appeal was taken the receiver of the Perfection Products Company was substituted as defendant in lieu of the original defendants. Before that appeal was docketed in this court plaintiff filed another bill in the District Court against the Perfection Products Association, to which defendant the assets of the Perfection Products Company had been conveyed by the latter company during the pendency of the suit against the Perfection Products Company, as well as against the other defendants and appellants in No. 5125 above named, for infringement and alleged unfair competition connected therewith, with respect to not only the Thompson patent, No. 1,522,344, before mentioned, but also four other United States patents owned by appellee Trico Products Corporation, viz.: No. 1,544,928, issued September 22, 1925, to Oishei as assignee of Thompson, on automatic windshield cleaner; No. 1,562,122, issued November 17, 1925, to Oishei, on fluid pressure motors; No. 1,565,493, issued December 15, 1925, to Oishei, and as assignee of Erwin C. Horton, on fluid pressure motors; No. 1,567,328, issued December 29, 1925, to Oishei, on motors for windshield cleaners. On the filing of this second bill, on motion of plaintiff, and after notice to defendants and due hearing, but before answer to the bill of complaint was filed, a preliminary injunction was issued pending trial on the merits or until the further order of the court, against infringement of the Thompson patent No. 1,522,344 and unfair competition. A motion made by defendants, after answer was filed, to vacate the order of preliminary injunction was denied. The appeal in No. 5125 is from the denial of this motion. The two appeals were heard together here. It is stipulated that the record in No. 5084 may be used and considered on the appeal in No. 5125.

1. Case No. 5084. By the device of the patent, No. 1,522,344, the familiar windshield cleaner is made to wipe the glass through the medium of a swinging vane piston rigidly attached, within a suitable casing, to a rock shaft whose rocking is directly caused by the oscillating of the piston at right angles to the rock shaft, and substantially parallel to the face of the windshield, such oscillation being produced by atmospheric pressure (as from the intake manifold of the automobile engine), that is to say, pressure on the one side and partial vacuum suction on the other side of the vane, alternately and automatically applied by the use of suitable valve mechanism. This shaft, which extends at right angles to the windshield, is thus rocked parallel to the face thereof. A wiper arm, rigidly attached to an extension of the rock shaft outside the casing, causes the wiper automatically to move back and forth, in an are of a circle, over the face of the windshield to correspond with the rocking of the shaft. The oscillating of the vane piston, the rocking of the shaft, and the moving of the wiper arm are thus simultaneous. We print in the margin claims 1, 6, and 12, as fairly typical.¹

We think the claims of the patent in suit not invalid, either for anticipation or for lack of invention in view of the prior art. Defendant cites a large list of prior patents, for which the most that can well be claimed is that they show that each element of the claims in suit (all of which are combination claims) was old somewhere in prior art; the list including even such patents as Hull (rotary steam engine) and Greer (reciprocating steam engine), having fluid pressure motor devices with vane type of oscillating pistons. While windshield wipers were old, as were cleaning devices operated by fluid pressure for rocking a shaft, and even the use of pistons for applying the power, nowhere in the prior windshield cleaning art, or even in an analogous art, do we find the combination which characterizes either of the respective claims of this patent; and it is a commonplace that a combination claim may involve invention even if every element is old, provided a new result is accomplished, or an old result reached by a new and better way, which we think is plainly the case here. Webster Loom Co. v. Higgins, 105 U. S. 580, 591, et seq., 26 L. Ed. 1177; Ohio Rake Co. v. Bucher Co. (C. C. A. 6) 266 F. 891, 894, and cases cited. We cannot think that prior use in such devices as rotary and reciprocating steam engines and washing machines of fluid pressure motors (water or air), having a vane type of oscillating piston, is enough to render invalid the novel and valuable combination claims here in question relating to windshield cleaners. The nearest disclosure in the prior windshield art is contained in the patents of Floberth, in one of which (No. 1,309,724, July 15, 1919) the air pressure which created the rocking movement was exerted upon a diaphragm, which was caused alternately to move up and down. No piston of any kind was employed. In another Floberth patent (No. 1,352,504, issued September 14, 1920) the piston was of the double-head, reciprocating type, operating the rock shaft through the medium of a rack and pinion, and differing from the Thompson patent not alone in the last-named feature, but in that the piston is not in any sense a vane or oscillating piston operating in an arc of a circle. The Thompson device applies the power created by the oscillating vane directly to the rock shaft, and without the use of rack and pinion or any other intervening mechanism. It should go without saying that such direct connection saves both time and power, and thus effects the result in a new and materially better way, as contrasted with Floberth's indirect application of power, including the use of rack and pinion, which necessarily produces substantial friction and waste of time and power. Thompson's device, comprising an oscillating vane, a rock shaft, and an attached wiper, constitute a single unit. We are cited to nothing in the prior art disclosing such device, and we think it involves real invention. Nor, in view of the conditions already stated, are we impressed with defendant's contention that the application of a vane-type motor to a windshield cleaner is merely the coupling of a motor that will run any kind of a machine to a machine that will run with any kind of a motor. Indeed, in view of the unitary character of Thompson's device, with its vane rigidly attached to the rock shaft and its wiper a mere extension of that shaft, simultaneously operated, we think the statement of the district judge that it is impossible to say where the motor ends and the machine begins, or where the machine ends and the motor begins, is not without force. We think it unnecessary, in view of what we have said, to discuss any but the two Floberth patents. The general and immediate public acceptance of the Thompson device convincingly confirms the existence of invention therein.

We thus see no merit in the suggestion that the invention of the Thompson patent lies, not in the combination, but only in the substitution of one form of fluid-pressure motor for another form of fluid-pressure motor in an old combination. That suggestion loses sight of the unitary character of Thompson's device and the direct and simultaneous action of its three elements, producing an essentially new combination. Every case involving the use of old elements in a new combination must be judged upon its own peculiar facts. The ultimate question, whether real invention or only mechanical skill is disclosed, is, at the last, a question of fact, as is likewise the specific question whether or not the transfer of a device from one art to another, and its adaptation to use therein, involves patentable invention. Herman v. Youngstown Car Mfg. Co. (C. C. A. 6) 191 F. 579, 582, and cases cited in Ohmer Fare Register Co. v. Ohmer (C. C. A. 6) 238 F. at pages 186, 187. While this court has recognized that if most of the elements are already in the combination, the addition of one or two, already well known, singly or in groups, as common expedients in similar situations, or the substitution for one or two of those elements of devices familiar to mechanics for analogous use, must be a very meritorious case of benefit to the art to justify a patent. Hug v. Lakewood Engineering Co. (C. C. A.) 7 F.(2d) 98. In the instant case, however, not only is the substituted device not found in closely analogous arts, but the record here shows, to our minds, a very meritorious case of benefit to the art. Indeed, defendant's complete adoption of the Thompson device as an article of manufacture and sale is a...