Pennington Engineering Co. v. Spicer Mfg. Corporation

• Decision Date: 10 December 1947
• Docket Number: No. 10428.,10428.
• Citation: 165 F.2d 59
• Parties: PENNINGTON ENGINEERING CO. v. SPICER MFG. CORPORATION.
• Court: U.S. Court of Appeals — Sixth Circuit

165 F.2d 59 (1947)

PENNINGTON ENGINEERING CO. v. SPICER MFG. CORPORATION.

No. 10428.

Circuit Court of Appeals, Sixth Circuit.

December 10, 1947.

Ray S. Gehr and Luther Day, both of Cleveland, Ohio (Max D. Farmer, of Buffalo, N. Y., on the brief), for appellant.

Carlton Hill, of Chicago, Ill. (Alexander C. Mabee, of Chicago, Ill., and Donald F. Melhorn, of Toledo, Ohio, on the brief), for appellee.

Before SIMONS, ALLEN, and McALLISTER, Circuit Judges.

ALLEN, Circuit Judge.

This is an appeal from a judgment in favor of the appellee (defendant below) in an action seeking an injunction and accounting. The petition alleges infringement of patent No. 2,009,677, for hydraulic shock absorbers for automobiles, granted July 30, 1935 to appellant (plaintiff below) as assignee of Gordon R. Pennington, and prays for accounting of profits and for damages resulting from an alleged unauthorized use of the patented invention in breach of a confidential disclosure made thereof by appellant to appellee.

A similar case filed in the District Court of Western New York against the Houde Engineering Company, owner of the Houdaille patents for shock absorbers and licensor of appellee's principal, Ford, a short time prior to the filing of the instant case, was tried first, and also decided against the appellant. Pennington Engineering Co. v. Houde Engineering Corporation, 43 F.Supp. 698; 2 Cir., 136 F.2d 210, certiorari denied, 320 U.S. 771, 64 S.Ct. 84, 88 L.Ed. 461. The record in this case was introduced in evidence herein.

The controversy relates to hydraulic shock absorbers of the vane or piston type, used in automobiles to lessen the shock resulting from the rebound of the compressed springs which support the body of the car and soften the initial shock as the wheel strikes an obstruction or unevenness in the road. The shock absorber opposes resistance to the rebound action of the springs, and thus retards and diminishes it. In hydraulic shock absorbers, which now have displaced the old mechanical type such as the Hartford friction discs and the Gabriel snubber, motion is resisted by forcing a liquid such as oil or glycerine at high pressures through suitably restricted passages. The resulting friction converts the mechanical energy of the spring into heat, and the energy of the shock is dissipated in this form. Pressures of from 2,000 to 3,000 pounds per square inch are created in the operation, and the shock absorbers should therefore be stout, rigid and accurately aligned to obviate distortion and misalignment which cause binding and wear of the various parts. The leakage of the fluid creates a serious problem, for the amount of leakage through clearance varies as the cube. This means that if a clearance of one-thousandth of an inch is indicated, but the structure develops two-thousandths of an inch clearance, there will be about eight times instead of double the leakage contemplated. These circumstances necessitate an exceedingly close fit and precise alignment of all the parts.

Three types of construction are shown in the Pennington drawings, each of them disclosing a single-vane piston eccentrically mounted. Sheet one of the drawing which is principally used in illustration by appellant, discloses a three-part casing structure comprising end-plates and an intermediate casing all of circular form, and having flat faces placed in abutting relation to each other. The intermediate casing has an approximately sector shape opening running through it, which is closed by the end-plates, forming the high-pressure working chamber of the shock absorber. The working chamber discloses abutments integral with the peripheral wall. A reservoir is provided to replenish the working liquid, and also to catch leakage through the two joints between the three walls. A swinging single-vane piston operates within the working chamber, as the specification discloses, connected rigidly and preferably integrally with a shaft which is eccentrically positioned in the end-plates. As the piston moves downward, there is a gradually increased "throttling" of the liquid, and this resistance dissipates the energy of the shock.

Appellee's accused structures, in contrast to appellant's device, are all double-vane concentric type hydraulic shock absorbers. The typical example is enclosed in a cup-shaped casing which defines the peripheral outer wall and one end wall of the working chamber. A removable end-plate is secured in the open end of the cup-shaped casing by threads formed in the cup. A reservoir supplies fluid and receives leakage, there being only one joint from which fluid may leak out, as distinguished from two joints in the Pennington device. The working chamber is divided into two equal parts by partitions, and the manner of securing these partitions is the important difference between appellee's accused structures and the prior art Houdaille shock absorbers. This type of construction is called the "ring-wing" type, because whereas formerly the partitions were positioned in the working chamber by a spanning member, in this type the partitions are constructed integral with a ring which is pressed into the wall of the working chamber. While Pennington's specification stressed the advantages of the three-part construction and the availability of broaching, it is the integrality of the abutment construction which has been repeatedly stated to be the principal feature of the conception and is now claimed to be the principal feature of infringement. Appellant contends that the integral partitions of the accused structures are the equivalent of Pennington's integral abutment.

The appellee supplies the Ford Motor Company with shock absorbers designed by Ford's licensor, the Houde Engineering Corporation, which is the holder of the various patents issued from 1909 on to Maurice Houdaille, who was a pioneer in the hydraulic shock absorber field. Twenty-four million of the Houdaille type shock absorbers, made under various patents, had been produced at the time of trial, two million having been made by the appellee for Ford, its one customer, prior to this controversy. The Pennington shock absorber, while it had been exhibited to and approved by the engineering staffs of the Chrysler Company and the Lincoln Department of Ford, has never been sold or used commercially. Some one hundred and fifty of appellant's devices were produced for purposes of testing and exhibition, and it is testified by a competent expert that in actual road tests these shock absorbers gave excellent performance and were estimated to radically reduce costs.

Appellant here contends, as in the New York case, that the Pennington patent is valid and reads directly upon the accused devices. It asks for a definite ruling upon the validity of claim 37, the claim in suit. This question was passed over in the New York case and also by the master in this case. Appellee contends that the entire Pennington patent is invalid because of failure to disclaim, as required by § 4917 and § 4922, R.S., 35 U.S.C., § 65 and § 71; that claim 37 is invalid for want of patentable invention, and that appellee's devices do not infringe upon the ground, among others, that whatever Pennington disclosed which was used by appellee had been made available in the prior art, especially through Taylor, 1,438,507, and Sutton, 1,341,395.

The first contention arises from the fact that in the New York case counsel for appellant, who was relying upon claim 18 of the Pennington patent, withdrew it from the consideration of the court and stated in his brief that "Claim 18 seems to be met in at least one of the patents cited by defendant. * * * Accordingly plaintiff will not further press claim 18 in connection with this charge of patent infringement." Appellant's counsel further pointed out to the District Court in that case that he had conceded not non-infringement, but non-validity, and secured a corresponding change in the court's opinion. At the trial of the instant case counsel for appellant asserted that this was not a concession of invalidity, but constituted a mere explanation of the reason for withdrawing claim 18 from consideration. We think invalidity was squarely conceded, and that disclaimer under the statute should have followed without unreasonable neglect or delay, Marconi Wireless Telegraph Co. of America v. United States, 320 U.S. 1, 57, 63 S.Ct. 1393, 87 L.Ed. 1731, if claim 18 was a material or substantial part of the thing patented. Section 4922, R.S., 35 U.S.C., § 71. The failure to disclaim for four years after the concession of invalidity constitutes evidence of unreasonable neglect and delay. Appellee urges, therefore, that under the rulings in Ensten v. Simon, Ascher & Co., 282 U.S. 445, 51 S.Ct. 207, 75 L.Ed. 453, and Maytag Co. v. Hurley Co., 307 U.S. 243, 59 S.Ct. 857, 83 L.Ed. 1264, the entire patent must be held invalid.

This contention overlooks the fact that claim 18 is not a "material or substantial part" of the Pennington shock-absorber. Claim 18 revealed a check-valve construction, the function of which is to control communication between the working chamber and the reservoir, which appellant conceded had not been used extensively by the appellee. The specification showed an alternative form of check-valve construction. Claim 18 is the only claim which covers this specific means and the only advantage of its disclosure, as asserted by appellant's expert, is that it affects the cost of production. It embodies none of the principal features of the Pennington device, and has no real connection with this controversy. Under the statute, a disclaimer should have been made after the concession of non-validity; but failure...