Perfect Circle Co. v. Hastings Mfg. Co.

• Decision Date: 04 March 1937
• Docket Number: No. 7115.,7115.
• Citation: 88 F.2d 813
• Parties: PERFECT CIRCLE CO. v. HASTINGS MFG. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

88 F.2d 813 (1937)

PERFECT CIRCLE CO. v. HASTINGS MFG. CO.

No. 7115.

Circuit Court of Appeals, Sixth Circuit.

March 4, 1937.

Frank Parker Davis and Harry W. Lindsey, Jr., both of Chicago, Ill. (Knappen, Uhl, Bryant & Snow, of Grand Rapids, Mich., on the brief), for appellant.

Otis A. Earl, of Kalamazoo, Mich. (Chappell & Earl, of Kalamazoo, Mich., and Charles S. Burton, of Chicago, Ill., on the brief), for appellee.

Before HICKS, SIMONS, and ALLEN, Circuit Judges.

SIMONS, Circuit Judge.

The appellant complains of a decree, holding invalid for want of invention Teetor patent No. 1,414,796, issued May 2, 1922, for improvement in engines.

The Teetor patent is for a combination in an engine, with the cylinder thereof of a hollow piston having a circumferential groove and a packing ring within the groove. The combination of three such elements is, of course, old. The reciprocating piston within a hollow cylinder for the compression of steam or explosive gases was the conventional assembly in steam and internal combustion engines of the four-stroke type described by us in Waukesha Motor Co. v. Willys-Overland, Inc., 77 F.(2d) 906. Also conventional in such combination was the piston ring seated in a circumferential groove of the piston. Its primary function in both steam and gas engines is to act as a packing between the cylinder wall and the reciprocating piston, and so it is variously referred to in prior art patents as "piston ring," "piston packing," and "metallic piston packing." In internal combustion engines, it also acts as an oil regulating device. While it must prevent excess oil from passing above it to the combustion space as the piston reciprocates, it also functions to spread lubrication evenly over the wall of the cylinder, and to dispose of excess oil, for it must be understood that oil is supplied to the cylinder by the centrifugal throw of the lower end of the connecting rod as it dips into the crank case, whereby one side of the cylinder receives more oil than the other.

Teetor discloses no departure from prior art in the cylinder, nor substantially in the piston, nor in the manner of their co-operation. His improvement is mainly confined to the configuration of the piston ring. The court below, conceding without deciding that his improvement in the ring was patentable, concluded that there was no invention in placing the improved device into a combination in an engine with a cylinder and piston, for such combination was well known and the environment necessary to any practical use of the invention. Finding no claim in the patent directed to a piston ring, and no invention in the combination; it dismissed the bill, principally upon the authority of our decision in Kodel Electric & Mfg. Co. v. Warren Telechron Clock Co., 62 F.(2d) 692, 694, wherein it was said:

"If a later invention consists solely of the improvement of one of the devices theretofore forming a part of an old combination, which improvement enables that device to perform its separate function in a more efficient and useful manner, and thereby produces a better result in the operation of the whole or broader combination, but does this without change in mode of operation of that combination, the patentee of the improvement may have a patent which will cover his improvement; but he may not claim the broader combination, merely substituting his improved device for the means theretofore used to perform the same function although less perfectly, for the concept of this combination of means, regarded as a unit, was not his, and it was not new."

To which, of course, might be added what was said by the Second Circuit Court of Appeals in the Selden Patent Case (Columbia Motor Car Co. v. Duerr & Co.), 184 F. 893, at page 907: "Selden did not, however, obtain a patent for his improvement upon the Brayton engine, but made the improved engine an element in his road locomotive combination. But no new co-ordinate action of the members of the combination is shown. The improved engine furnished the power, and the other elements co-operated with it in the same way that similar elements had co-operated with the older engines. The superior results would seem to have arisen from the superiority of the engine element alone."

But whether we should view Teetor's invention as one limited to the improvement of a single element without changing its co-operative relation to other elements, and so hold his claims invalid as too broad, or to conclude as did the court in the Selden Case that "it is sufficient to sustain the claim to hold that the combination embraced a novel element," it seems to us unnecessary to decide. This distinction at least between the instant case and the Kodel Case must be noted: The present plaintiff did not by its suit seek to extend the monopoly of its patent to unpatented or unpatentable elements of the combination. Neither plaintiff nor defendant manufactures engines or any combination of pistons, piston rings, and cylinders. Both are manufacturers of piston rings alone, the plaintiff for original installation and replacement and the defendant but for replacement. No question of infringement, direct or contributory, by other elements supplied to the patented combination here arises, and there may be no application of the doctrine of implied license which formed the additional ground for decision in the Kodel Case.

Whether we view Teetor's concept as embracing a new combination because of a novel element therein, or more narrowly as confined to improvement in a single element of an old and exhausted combination, the presence of invention in the patent disclosure must be determined by identical criteria, for clearly there can be no invention in the placing of a piston ring into co-operation with piston and cylinder whatsoever may be the improved result obtained. Utility is neither indicated nor suggested in other environments, and there...