Koochook Co. v. Barrett

• Decision Date: 26 December 1946
• Docket Number: No. 13390.,13390.
• Citation: 158 F.2d 463
• Parties: KOOCHOOK CO., Inc., et al. v. BARRETT et al.
• Court: U.S. Court of Appeals — Eighth Circuit

158 F.2d 463 (1946)

KOOCHOOK CO., Inc., et al. v. BARRETT et al.

No. 13390.

Circuit Court of Appeals, Eighth Circuit.

December 26, 1946.

J. Darrell Douglas and Harry R. Canfield, both of Cleveland, Ohio (John H. Cassidy, of St. Louis, Mo., on the brief), for appellants.

Alfred W. Petchaft, of St. Louis, Mo. (Lawrence C. Kingsland, of St. Louis, Mo., on the brief), for appellees.

Before GARDNER, SANBORN, and WOODROUGH, Circuit Judges.

SANBORN, Circuit Judge.

This appeal is from a judgment for the plaintiffs, Harry B. Barrett and Barrett Equipment Company, in an action to enjoin infringement by the defendants, Koochook Company, Inc., and Lempco Products, Inc., of claims 1, 2, 13 and 14 of United States Letters Patent No. 2,187,962 for a "Combination Precision Grinder and Caliper," issued to Harry B. Barrett January 23, 1940, upon an application filed October 14, 1936. The patented device of Barrett is a tool primarily designed for grinding the brake-shoes of motor vehicles. The defendant Lempco Products, Inc., makes and markets a similar tool.

The issues made by the pleadings and tried to the District Court were: (1) Whether the patent claims in suit were invalid (a) for lack of invention or (b) because of anticipation; and (2) whether the defendants had infringed the claims. The court found that all of the claims in suit were valid, and that claims 1, 2 and 13 had been infringed.¹

The questions presented on review are:

1. Is there a sufficient evidentiary basis in the record to support the findings of validity and infringement?

2. Did the District Court err in excluding evidence of the state of the art?

The vital question in this case is whether Barrett's device advanced the art sufficiently to constitute invention. The answer largely depends upon what contribution Barrett made to the art, and what the existing state of the art was at the time he made his contribution.

The tool covered by the patent in suit is intended primarily to grind the cylindrical surfaces of the brake-shoe linings of motor vehicles. A modern automobile has internal, expanding brakes consisting of cylindrical drums fastened to the wheels and complementary expanding shoes attached to the axle. The shoes are lined with suitable friction material. When the brakes are applied, the outer surfaces of the shoes engage the inner surfaces of the drums. The friction thus produced retards the motion of the wheels. For maximum braking efficiency, the shoes must be properly positioned and the curvature of their outer surfaces must correspond accurately to the curvature of the inner surfaces of the drums with which they make contact. In other words, braking efficiency is reduced if the shoes do not fit the drums. The Barrett grinder is a portable tool for radial mounting upon the shaft of an automobile axle. The tool will grind the linings of the brakeshoes attached to the axle so that the shoes will conform to the radial dimensions of their companion brake-drums. The tool has a wide range of adjustments for the grinding of all surfaces necessary to fit the shoes to the drums.

To meet the varying dimensions of axle shafts on different makes of automobiles, the Barrett grinder has a sleeve-like member or "adapter" adjustable to any type or size of axle on which the grinder is to be mounted. As described in the claims in suit, the Barrett grinder consists of a tubular barrel or sleeve, fitting over and clamped upon the "adapter." Attached to the barrel is a frame, shiftably mounted, projecting outward in a plane tangential to the barrel. A cross-frame at the outer end of the frame supports a motor-driven rotary disk-type grinder. The grinding element is so mounted on the cross-frame as to provide a wide range of adjustments. Figuratively, the Barrett grinder consists of a mechanical arm attached to a hub which moves around the axle or shaft of an automobile. The arm has a mechanical hand which holds an electric disk-type grinder in position to grind the cylindrical surface of a brake-shoe lining. The mechanical hand can be adjusted to hold the disk at any angle within an arc of ninety degrees.

The accused Lempco grinding tool is substantially similar to the tool of Barrett. There are only slight structural and functional differences. The Lempco tool has a barrel slipping over an "adjuster" on the axle shaft, an arm attached to the barrel, and a mechanical hand holding an electric rotary disk-type grinder in position to grind the cylindrical surface of a brake-shoe. The grinder can be adjusted to do any grinding necessary to fit the shoe to the drum. The accused device is the substantial equivalent of the Barrett tool, since "if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape." Union Paper-Bag Machine Co. v. Murphy, 97 U. S. 120, 125, 24 L.Ed. 935; McDonough v. Johnson-Wentworth Co., 8 Cir., 30 F.2d 375, 383, certiorari denied, 280 U. S. 572, 50 S.Ct. 28, 74 L.Ed. 624; Freeman v. Altvater, 8 Cir., 66 F.2d 506, 511.

It appears from the record that (with the possible exception of Musgrave) Barrett was the first to develop a tool with a flat-faced disk for grinding brake-shoes. Musgrave in his patent No. 2,022,819, granted December 3, 1935, upon an application filed February 10, 1931, shows a tool for grinding brake-shoes, similar in every important respect to the Barrett tool, but equipped with a cone-shaped grinding-wheel instead of a rotary disk-type grinder. At the trial, appellants attempted to show by Musgrave that in or about 1932 or 1933 he substituted for the cone-shaped grinding-wheel of his device a rotary disk-type grinder similar to that of Barrett. The court, however, excluded this evidence under a stipulation, made before trial, limiting the issues and the proof of anticipation and the state of the prior art. While some of Musgrave's evidence, still in the record, tended to show that he had developed, prior to Barrett, a disk-type grinder substantially similar to Barrett's, it is apparent that the District Court regarded that testimony as incompetent and inadmissible because of the stipulation. We have, therefore, treated this evidence as though it had all been excluded.

Barrett, on February 18, 1936, had procured a patent, No. 2,031,357, on a brake-shoe grinding tool similar to that covered by the patent in suit, except that, instead of using a rotary disk for grinding the surface of the lining, he used a cylindrical or rasptype of grinder. The grinding element of Barrett's first patent and the conical abrasive element shown in the patent of Musgrave were both unsatisfactory because the abrasive element gouged the brake lining.

The evidence, taking that view of it most favorable to Barrett, shows that he solved the problem of providing a satisfactory tool for truing brake-shoes; that the problem at the time he entered the field with his second patent had become acute; that by 1930 the automobile industry was equipping virtually all motor vehicles with internal, expanding brakes (the change-over from the earlier contracting, external brakes having commenced in or about 1926); and that manual means for grinding and fitting the brake-shoes of the internal brakes were unsatisfactory, and "burning in" the brakes by operating the car with the brakes set was inefficient and wasteful. Barrett's contribution to the brake-shoe grinding art was a meritorious one and met with great commercial success. However, what Barrett did was to point out that substituting a rotary disk as an abrasive means would make a satisfactory brake-shoe grinding tool out of an unsatisfactory one.

There was nothing novel about the means adopted by Barrett for bringing the grinder into position to do the work which it was intended and adapted to do, or in making it adjustable. The patent to Albee No. 1,877,546, granted September 13, 1932, on an application filed November 10, 1930, showed a grinding tool pivoted upon a shaft and fully as adjustable as the Barrett device. It is true that Albee's device was a valvegrinder and not a brake-shoe grinder and that it did not use the flat face of the grinding wheel. The Albee patent did show, however, the way for pivoting a frame to a shaft and adjustably mounting the grinding element on the frame to do the work for which the grinder was intended and adapted.

Dean Langsdorf, of the School of Engineering and Architecture of Washington University, who appeared as an expert for Barrett, testified: "* * * it is very significant to me that it was the insertion of the words `flat-faced grinder', or something equivalent to...