Motor Improvements v. General Motors Corporation

• Decision Date: 29 April 1931
• Docket Number: 5327.,No. 5326,5326
• Citation: 49 F.2d 543
• Parties: MOTOR IMPROVEMENTS, Inc., et al. v. GENERAL MOTORS CORPORATION et al.
• Court: U.S. Court of Appeals — Sixth Circuit

49 F.2d 543 (1931)

MOTOR IMPROVEMENTS, Inc., et al. v. GENERAL MOTORS CORPORATION et al.

Nos. 5326, 5327.

Circuit Court of Appeals, Sixth Circuit.

April 29, 1931.

William Houston Kenyon, of New York City, and Charles E. Hughes, of Washington, D. C. (Theodore S. Kenyon, Nelson Littell, and Harold H. Corbin, all of New York City, on the brief), for appellants.

Drury W. Cooper, of New York City (Allan C. Bakewell, of New York City, on the brief), for appellees.

Before MOORMAN, MACK, and HICKS, Circuit Judges.

MACK, Circuit Judge.

These cases are before us on appeals from two decrees, each dismissing a bill in a suit charging infringement of United States letters patent. Two claims of No. 1,594,334, four of No. 1,594,335, both issued July 27, 1926, and nine of No. 1,624,689, issued April 12, 1927, all to appellant Sweetland, are involved in one suit; three claims each of No. 1,646,377 and No. 1,646,378, both issued October 18, 1927, to appellant Sweetland and George H. Greenhalgh, in the other.

The two suits were consolidated for hearing in the District Court and are here on the same evidence by stipulation. Sweetland is owner of the five patents; Motor Improvements, Inc., is an exclusive licensee engaged in manufacturing the oil filters and filtering systems specified in the patents. The A. C. Spark Plug Company, which manufactures the alleged infringing filters, is a wholly owned subsidiary of General Motors Corporation, on whose automobiles these devices are installed. An extended trial resulted in a very large record which includes evidence of numerous tests and demonstrations conducted by the parties both prior to and during the trial. At the conclusion of the arguments, the District Judge, in an oral opinion, held the five patents invalid because of anticipation and prior use, but stated that, if valid, all the claims in suit would have been infringed by defendants' devices.

Because of the number of patent claims and the complexity of the issues involved, the cases were very fully argued orally and in the briefs. But much of the difficulty encountered in the consideration of the intricate and voluminous record and briefs has been engendered by the parties themselves. Plaintiffs, in an effort to sustain, and defendants, in an endeavor to invalidate, the patents in suit, have freely used the specifications and claims in all of the patents to support their various contentions as to each of them. Language found in the specifications of one patent has been used to explain, support, or discredit claims in another; theories expounded in later patents have been employed to supplement or destroy those asserted in earlier ones. Except where an earlier patent is cited as a reference against a later patent, issued to the same inventor, this practice of throwing everything into one general discussion is not helpful. Indeed, it serves only to increase the ever difficult task of determining nice questions of validity. In an effort to crystallize the issues involved, we shall consider each of the patents in turn, and preface the entire discussion with a brief description of the theory and art of automobile lubrication to which these particular patents relate, and a short summary of the commercial history of plaintiffs' patented device.

1. The function of a lubricant in any mechanism is to minimize friction between moving surfaces, usually bearings of one form or another. Hydrocarbon petroleum derivatives make ideal lubricants and are today almost universally used in motive equipment. Such oils readily form a film, in the form of tiny globules of oil, between the moving parts which can slide thereon with a minimum of friction. However, when this oil becomes contaminated with dirt, sand, particles of metal, or other abrasive materials, its lubricating value is not only impaired, but the oil and abrasives form a grinding compound which will wear down the lubricated surfaces and thereby loosen the bearing. Moreover, the thickness of the film depends primarily upon the viscosity of the oil, that is, upon its thickness; and since this viscosity varies inversely with temperature, the hotter a bearing becomes, the less effective is the lubrication obtained. Friction and heat increase with speed and pressure. Consequently, where bearings revolve at high speeds and under great pressures, considerable heat is generated and a continuous and copious supply of fresh, clean oil is necessary.

In the modern internal combustion engine, such as is employed in the automobile, great power is secured by the attainment of high speeds; and the necessary compactness of construction requires the use of relatively small bearings. These revolve under great pressure and, because of the combustion in the cylinders above them, are subjected to considerable additional heat. For proper lubrication a flow of oil as great as 100 to 250 gallons per hour may be necessary to secure a velocity and pressure sufficient to force the oil into each of the engine bearings. Obviously, in an automobile it is not feasible mechanically nor practicable financially, to supply this quantity of new oil and to discard that used. Only a limited quantity of oil, usually six quarts, can be carried; some system of repeatedly recirculating it had therefore to be devised.

Ordinarily the oil is stored in the bottom of the crank case and from there pumped through small pipes or otherwise supplied to all of the important bearings. The usual practice is to pump the oil to the center of each bearing, where it spreads to the edges under pressure and then emerges to drip or flow down again into the crank case. The oil pump supplies the requisite pressure; and, in addition, the movement of the cranks and connecting rods in the crank case serves to splash oil to all moving parts. The rapidly re-circulating engine oil, however, is likely to pick up dirt and abrasives from many sources. Core sand and metal particles in the new engine are washed down by the oil into the crank case and carried along through the system to the bearings. Road dust is drawn into the crank case through the breather pipe which connects the crank case with the atmosphere. Dust entering through the carburetor may in the cylinders become carbonized and form large gritty, abrasive particles which also enter the oil stream. Carbon particles form from the coking of oil cracked on the hot bottom surfaces of pistons, and these particles likewise drop into the crank case reservoir. Unburned fuel and unevaporated water, the latter produced as a by-product of engine combustion, furnish additional sources of oil contamination. This water tends to emulsify the oil, thereby reducing its lubricating value; the tendency to emulsify, moreover, is greatly increased if the oil is dirty.

These difficulties were very early recognized and were met in part by the now familiar notice to automobile owners to change the crank case oil every five hundred miles, both in summer and in winter. In addition, coarse wire mesh screens were often interposed at some point in the oil line to remove the larger particles of dirt and sand. With the continued development and widespread use of the automobile there was need or, in any event, the buying public was induced to believe in the need of some more effective method of filtering oil in situ. The practical problem was to devise a filter, small enough to be carried under the hood or elsewhere on an automobile, but nevertheless effective to remove the fine abrasive particles in the oil without impeding the free flow of oil under pressure to the bearings.

2. The filters and filtering systems developed and manufactured under the five patents in suit apparently solved these difficulties, which, however, may not have been as real as the extensive and effective advertising of both plaintiffs and defendants indicated. Plaintiff corporation introduced its "Purolator" early in 1924, and despite early sales resistance on the part of both manufacturers and public, the use of the device grew steadily. Large sums were expended to meet the growing demands of the business. In February, 1924, the General Motors Research Corporation, another of defendant's subsidiaries, inquired of plaintiffs concerning the practicability of the new filter; samples were sent to it. The device was tested in defendants' laboratories through 1924. Negotiations continued and in April, 1925, the Purolator was adopted by General Motors Corporation. Beginning in June, 1925, it was made standard equipment on the Buick, Oakland, and Cadillac cars of that company. The adoption of the filter was widely advertised by General Motors. In its advertisements it stated that plaintiff's device was one of the many new developments submitted, that the Purolator had been thoroughly tested in extensive experiments with every known method of filtering, and that it would thereafter form part of the necessary equipment on these automobiles.¹ Purchases continued up to June, 1926, for Buick, and to November, 1926, for Oakland. Approximately 360,000 Purolators were purchased by the General Motors Corporation from Motor Improvements, to which it paid more than $900,000. Beginning in the fall of 1926, however, defendant A C Spark Plug Company began the manufacture of the alleged infringing devices; purchases from plaintiff ceased, and the A C filters were thereafter used on General Motors' cars. The immediate effect on Motors Improvement was the halving of its business by the withdrawal of General Motors' purchases and the active competition of the A C filter in the open market, at lower prices, resulting in plaintiff's inability to compete at a profit, save by a change in its product at considerable expense. The A C Company advertised in February, 1928, that in addition to two million cars theretofore equipped with its filters, ten thousand more such cars were leaving the factory daily. Both in advertising and in the instruction books,² defendants...