Nickerson v. Bearfoot Sole Company

• Decision Date: 10 January 1963
• Docket Number: No. 14609.,14609.
• Parties: Bryan W. NICKERSON, Jr., Plaintiff-Appellee, v. The BEARFOOT SOLE COMPANY, Inc., The Bearfoot Airway Corporation, Defendants-Appellants.
• Court: U.S. Court of Appeals — Sixth Circuit

311 F.2d 858 (1963)

Bryan W. NICKERSON, Jr., Plaintiff-Appellee, v. The BEARFOOT SOLE COMPANY, Inc., The Bearfoot Airway Corporation, Defendants-Appellants.

No. 14609.

United States Court of Appeals Sixth Circuit.

December 28, 1962.

As Amended January 10, 1963.

Everett R. Hamilton, Akron, Ohio (Ely, Frye & Hamilton, Mack D. Cook, II, Akron, Ohio, on the brief), for appellants.

George V. Woodling, Cleveland, Ohio (Woodling, Krost, Granger & Rust, George V. Woodling, Charles R. Rust, Cleveland, Ohio, on the brief), for appellee.

Before McALLISTER, Circuit Judge, and BOYD and THORNTON, District Judges.

McALLISTER, Circuit Judge.

This is an appeal in a patent case in which the court found plaintiff-appellee Nickerson's reissue patent, Re. 24,518, for a side wall attachment for vehicle tires, valid and infringed by the Bearfoot Companies, the licensees of Barnes, under the latter's patent 2,621,979.

The side wall attachments involved in this case are chiefly ornamental, of an elastic material, and are mainly used to give the smart effect of the more expensive white rubber side wall tires, which have been the fashion for some years, as well as to give some added protection to the sides of the tires. When used with the tire, the side wall attachment must cling to the outer portion of the tire, as a practical matter, and, also, to give an attractive appearance, not only to the tire, but to the ensemble of the automobile.

The determining issues on review are whether the claims in appellee's patent are valid and infringed, which, in this case, present also the questions whether there is substantial identity between appellee's side walls and the accused side walls; and, further whether appellee's patent is operable.

The clearest and strongest evidence to sustain Nickerson's patent is to be found in the testimony of Dr. Paul L. Hoover, the expert witness for appellee, who declared that Nickerson, by designing and proportioning the side wall in a distorted shape made it hug the tire; that by molding the side wall so that its unstressed condition was different from its stressed condition, the inherent resilience and internal stress of the side wall would hold it in place without the necessity of springs or other auxiliary means. Appellants contended that Nickerson did no more than make the side wall with an inward bend; that this was old; and that this method was employed in Barnes' patent and in the accused side walls, which were made in accordance with the Barnes' patent, omitting the springs which were deemed unnecessary by appellants, and which were never used by either Barnes or by the appellants in making the molds for the side walls or the side walls themselves.

Nickerson based his principal claim of infringement on the contention that appellants had appropriated his "principle of resiliency," which he claimed was the "spark" or "essence" or "inventive difference" of his invention over the prior art. Other contentions on patentability and infringement advanced by appellee Nickerson in the district court were embodied in his counsel's proposed findings of fact and conclusion of law, all of which were adopted by the district court without change, and without the filing of an opinion.

In these findings of fact the district court, inter alia, found:

"The plaintiff\'s side wall is molded to an initial shape (unstressed position) so that as the tire is inflated, the side wall is distorted from its initial shape to an operative (stressed) position, building up forces therein which hold it resiliently against the side of the inflated tire. The plaintiff\'s side wall has incorporated therein a `principle of resiliency\' which means that the side wall is so shaped that its resilience holds it against the inflated tire.

"Plaintiff\'s original patent No. 2,691,550 issued with two claims (1 and 2). The reissue patent contains the original two claims, 1 and 2, and also an additional claim 3. Plaintiff\'s reissue claims 1, 2, and 3 are dominating claims and are directed to the `principle of resiliency,\' which is neither shown or described in the prior patents set forth in defendants\' answer.

"The `principle of resiliency\', as set forth in reissue claims 1 and 2, is defined by the expression, `said side wall being biased outwardly and frictionally embracing the tire when the tire is inflated\'; and in claim 3 by the expression, `the body portion having an unstressed cross sectional shape defining a plane that is axially inwardly of the operating position of said body portion.\'

"The defendants acknowledge that plaintiff\'s `principle of resiliency\' is the `spark\' or `essence\' or `inventive difference\' of plaintiff\'s invention over the prior art.

"Defendants manufacture, and sell side walls for tires which comprise a unitary annular body portion and a recessed lip portion the same as plaintiff\'s side wall. Defendants\' body portion and lip portion coact to cause the body portion of the side wall to engage the inflated tire. During mounting, as the tire is inflated, the body portion is biased outwardly from an unstressed position to a stressed position, thereby producing a distortion which is the same as that produced in plaintiff\'s side wall, which builds up forces for holding the body portion resiliently against the side of the inflated tire. Thus, the defendants\' accused side walls have appropriated plaintiff\'s `principle of resiliency,\' in that their side walls are so shaped that their resilience holds them against the inflated tire.

"There is substantial identity between the plaintiff\'s and defendants\' side walls, as they do substantially the same work in substantially the same way and accomplish the same results.

"The plaintiff\'s reissue claims 1, 2 and 3 in suit, read directly on the defendants\' accused side walls, which means that the defendants\' accused side walls embody the invention claimed in the reissue claims 1, 2 and 3.

"The defendants\' accused side walls, Stipulation Exhibits 1 to 10, embody each and every principle of the plaintiff\'s invention claimed in reissue claims 1, 2 and 3 of the reissue patent and appropriate the substance thereof.

"The defendants have conceded, by statements in their trial brief and by their failure to introduce evidence with respect to the reissue claim 3, that the reissue claim 3 is operative and infringed.

"The reissue claim 3 is not anticipated by the answer patents and particularly by Barnes 1st patent No. 2,621,797; Spencer patent No. 2,573,996; Daniels patent No. 2,334,388, and the British patent No. 301,345 upon which defendants rely, as the `principle of resiliency\' set forth in the reissue claim 3, which is acknowledged by defendants as constituting the `spark\' or `essence\' or `inventive difference\' of plaintiff\'s invention, is not found in any of these answer patents.

"The `principle of resiliency\' as embodied in the reissue claim 3, which the defendants concede is the `spark\' or `essence\' or `inventive difference\' of plaintiff\'s invention does not amount to new matter as the same `principle of resiliency\' is clearly disclosed in the original Nickerson specification as well as in the original claims 1 and 2.

"The reissue claim 3 and the original claims 1 and 2 are identical in substance.

"The reissue claims 1 and 2 are operative despite defendants\' contention to the contrary, and in assailing this operativeness, defendants have a very heavy burden of proof which they have not sustained by their ex parte tests."

With regard to the above findings, it does not appear that defendants acknowledge that plaintiff's principle of resiliency is the spark, or essence, or inventive difference of appellee's invention over the prior art. They declare that they have never admitted that appellee's "principle of resiliency," which term, they say, was coined during the trial of the case, is the "inventive difference" of plaintiff's patent over the prior art. Appellants also deny that the reissue claim 3 is operative and infringed.

At the outset it should be remarked that appellee's patent is a paper patent; that no side walls were ever made in accordance with it; that the only attempt by appellee to make side walls following the teaching of his patent was a failure; and that appellants, in following Barnes' patent, or on their own, with the expenditure of much time and money, had successfully made and sold, up to the time of the trial, more than 3,700,000 of their side walls.

We proceed, first, to discuss the claims that appellants appropriated appellee's "principle of resiliency" which he contends is the spark, essence, and inventive difference of his invention over the prior art. This "principle of resiliency" is so repeatedly emphasized in the arguments of appellee's counsel, as well as in the findings of fact of the district court, that we consider it of the first importance to ascertain whether it is the spark, essence, and inventive difference, which characterizes appellee's patent over the prior art, and whether appellants appropriated and infringed it; and because of the long history of the claims in the Patent Office, the complexity of the language used, and, what the appellee contends to be the principal and crucial issue of the case, we are obliged to follow the many windings of the controversy at considerable length.

The case presents a remarkable display of confusion of language, of repetition of claims in differing phraseology, and of chameleon-like nomenclature, under which the same object or process appears, disappears, and reappears in the guise of varied terminology. It is a controversy in which it is always to be remembered that patent rights, or their infringement, are matters of substance, and not solely matters of words; and that there is no magic in a name, or in the mere language in which a claim is expressed.

Barnes' original patent, 2,621,979, under which defendants-appellants, Bearfoot Companies, (herein called "Bearfo...