Metallic Rubber Tire Co. v. Hartford Rubber Works Co.

• Decision Date: 19 February 1917
• Docket Number: 1261.
• Citation: 245 F. 860
• Court: U.S. District Court — District of Connecticut
• Parties: METALLIC RUBBER TIRE CO. v. HARTFORD RUBBER WORKS CO.

245 F. 860

METALLIC RUBBER TIRE CO. v. HARTFORD RUBBER WORKS CO.

No. 1261.

United States District Court, D. Connecticut.

February 19, 1917

Alfred Wilkinson, of New York City, and George D. Watrous, of New Haven, Conn., for plaintiff.

Ernest Hopkinson, of New York City, for defendant.

THOMAS District Judge.

This case arises on exceptions to the report of the master, to whom the case was referred to state an account of damages and profits arising from the infringement of the patent in suit. The invention of the patent relates 'to means for preventing the yielding tires of bicycles and other wheeled vehicles from slipping on the roadway, as they are particularly apt to do when the roadway is smooth,' by embodying a wire in the tread of the tire. When the case came up for final hearing on pleadings and proofs, Judge Platt gave the patent a very narrow and restricted construction and held the patent not infringed. This decision was reversed by the Circuit Court of Appeals upon appeal for the reason that the prevention of slipping was nowhere to be found in the prior art, either as an object of the prior patents relied on or as a result of the use of the structures therein specified, and that the substantial invention of the patent was of a high grade and of a functional and characteristic novelty, and consisted in the fact that exposed wire stitching makes hard bearings to prevent skidding or slipping. So construed, the patent was held to be valid and infringed, and the Circuit Court of Appeals was confirmed in this view because the infringement was not an accidental one the defendant having originally been licensed under the patent, and having, after the expiration of the license, put out a product which so closely simulated the patent structure that it was held to be an infringement.

The decision of the Circuit Court of Appeals is binding, and the defendant's interests must be presumed to have been promoted by its use of the structure. The law is thoroughly settled that where a patent has been sustained by a court the master, in a reference to determine the amount of damages and profits, cannot go into the general question of infringement, nor can he consider and decide the general scope and extent of the patent. All of these questions have been foreclosed by the decree sending the case to the master, and the master must simply examine and decide as to the extent of the infringement and as to the particular infringing device made or used or sold by the defendant. Turrill v. Illinois Cent. R.R., 5 Biss. 344, 24 Fed.Cas. 387; Whitney v. Mowry, 4 Fish.Pat.Cas. 207, 29 Fed.Cas. 1105. In view of the decision of the Circuit Court of Appeals, I am bound to hold that it was the patentee, and not the defendant, who did whatever has been done towards embodying wire in tires so as to produce hard bearings that will prevent skidding, and if the master in reaching his conclusion was governed or controlled, as he apparently was, by the view that it was not the patentee, but the defendant, who did this, he was, in my opinion, manifestly in error.

It is also clear that the 'metallic wire interwoven with itself,' and 'parts of which lie substantially flush with the outer surfaces of the tread,' must be held to be novel, essential and functional elements of the patented invention, and are embodied in the infringing articles made and sold by the defendant.

The patent must be taken to be evidence of its utility, and the defendant, under the decision of the Circuit Court of Appeals, is estopped to deny that it is of value. Westinghouse Electric & Mfg. Co. v. Wagner Electric & Mfg. Co., 225 U.S. 604, 616, 32 Sup.Ct. 691, 56 L.Ed. 1222, 41 L.R.A. (N.S.) 653; Lehnbeuter v. Holthaus, 105 U.S. 94, 26 L.Ed. 939. Indeed, any evidence on the accounting tending to show the nonutility of the patented invention would be incompetent. Authorities supra; Peerless Brick Machine Co. v. Miracle Pressed Stone Co. (C.C.) 181 F. 526. Furthermore, the patented improvement must be held not to involve mere detail improvements. As construed by the Circuit Court of Appeals, it made a new tire out of an old one, and changed and improved the function of the old tire. A comparison between the tire of the patent and the old tire of the prior art cannot be taken, for the reason that the new tire has, for its characteristic function, nonskidding, something that the old tire did not have. Compared to the entire vehicle, the tire is a separate part, just as are the vehicle's lamps. Considered by itself, the tire, like the lamp, is a complete entity, a unit in itself, and a single and complete article of commerce, and for the new and specific purpose contemplated by the patentee in his invention the tire is useless without the improvement just as the improvement is useless without the tire. It therefore seems imperative to hold that the patented improvement has given the entire value to the combination, in which case plaintiff is entitled to recover all the profits unless the defendant can show, and the burden is on it, that a portion of them is the result of some noninfringing and valuable improvement made by him. This rule is clearly stated in Westinghouse Electric & Mfg. Co. v. Wagner Electric & Mfg. Co., supra. It is also stated by the Supreme Court in Manufacturing Co. v. Cowing, 105 U.S. 253, 255, 26 L.Ed. 987, as follows:

'If the improvement is required to adapt the machine to a particular use, and there is no other way open to the public of supplying the demand for that use, then it is clear the infringer has by his infringement secured the advantage of a market he would not otherwise have had, and that the fruits of this advantage are the entire profits he has made in that market.'

The rule is also tersely stated by the Circuit Court of Appeals for the Third Circuit in Carborundum Co. v. Electric Smelting & Aluminum Co., 203 F. 976, 982, 122 C.C.A. 276, 282, as follows:

'It is well settled that, in the case of mechanical inventions, where the infringed patent covers a mere improvement upon mechanism before known and open to the defendant to use, the complainant can recover only the excess of such profits as have been realized through the use of the improvement over what the defendant might have made by the use of such mechanism without such improvement. But it is equally well settled, that where the entire commercial value of the mechanism arises from the patented improvement the owner of the patent will be entitled to recover from the infringer the total profits derived from the manufacture, use or sale, of such mechanism. Crosby Valve Co. v. Safety Valve Co., 141 U.S. 441, 12 Sup.Ct. 49, 35 L.Ed. 809; Westinghouse Co. v. Wagner Mfg. Co., 225 U.S. 604, 32 Sup.Ct. 691, 56 L.Ed. 1222 (41 L.R.A. (N.S.) 653); Manufacturing Co. v. Cowing, 105 U.S. 253, 26 L.Ed. 987; Hurlbut v. Schillinger, 130 U.S. 456, 9 Sup.Ct. 584, 32 L.Ed. 1011; Maimin v. Union Special Mach. Co., 187 F. 123, 109 C.C.A. 41; Wales v. Waterbury Mfg. Co., 101 F. 126, 41 C.C.A. 250.'

And, as is pointed out in the Carborundum Case, supra, a patentee may be entitled to the entire profits the infringer has made in the market even though the mechanism without the patented improvement might not be wholly useless.

Neither is the fact, to which the master seems to attach importance, that the plaintiff has not used the patented improvement material. Carborundum Co. v. Electric Smelting & Aluminum Co., supra. Moreover, there is evidence that the conduct of the defendant, by commingling the elements of the combination, has been such as to preclude the belief that it has derived no advantage from the use of the plaintiff's invention, and may have made it impossible for the plaintiff to meet the requirements of an apportionment. If such is the case, the law requires the entire inseparable profit to be given to the patentee. Westinghouse Co. v. Wagner Mfg. Co., supra, 225 U.S. 618, 32 Sup.Ct. 691, 56 L.Ed. 1222, 41 L.R.A. (N.S.) 653; Hamilton Shoe Co. v. Wolf Bros., 240 U.S. 251, 261, 36 Sup.Ct. 269, 60 L.Ed. 629.

There are separate items of profits which the master has disallowed which seem to require specific attention.

I. Taxes and Insurance.-- The manufacture by the defendant of the infringing tires was a single infringement outside of and detached from its regular business. Taxes and insurance, both for fire and labor, were therefore improperly allowed by the master. Such charges are only allowed where the plant in question is devoted solely to the infringing business. Winchester Repeating Arms Co. v. American Buckle & Cartridge Co. (C.C.) 62 F. 278; Piaget Novelty Co. v. Headley (C.C.) 123 F. 897; National Folding Box & Paper Co. v. Dayton Paper Novelty Co. (C.C.) 95 F. 991; Sayre v. Scott, 55 F. 971, 975, 5 C.C.A. 366.

II. Total Repairs, Building, and Machinery and Plant Depreciation.--This item, like taxes and insurance, relate to the plant and its use. These items stand upon the same footing as taxes and insurance, and can only be allowed when the building and plant are specially built for and used only for infringing purposes. This was distinctly held in this district by Judge Nathaniel Shipman in Winchester Repeating Arms Co. v. American Buckle & Cartridge Co., supra. Moreover, it is impossible to estimate with accuracy, for there is no help to be found in defendant's testimony, how much of these expenses can be charged to the defendant's business of manufacturing the infringing devices. I do not feel warranted in sustaining any allowance on this item, certainly without some attempt on the part of the defendant to make an apportionment, and so have concluded that this question ought to be referred again to the master.

III. Defective and Guaranteed Tires.-- The master has allowed to the...