Perfect Circle Corp. v. Hastings Manufacturing Co.

• Decision Date: 17 June 1958
• Docket Number: Civ. A. 2011.
• Parties: PERFECT CIRCLE CORPORATION, Plaintiff, v. HASTINGS MANUFACTURING COMPANY, Defendant.
• Court: U.S. District Court — Western District of Michigan

162 F. Supp. 777

PERFECT CIRCLE CORPORATION, Plaintiff, v. HASTINGS MANUFACTURING COMPANY, Defendant.

Civ. A. 2011.

United States District Court W. D. Michigan, S. D.

June 17, 1958.

Davis, Lindsey, Hibben & Noyes and Harry W. Lindsey, Jr., George N. Hibben, Chicago, Ill., and Frank E. Liverance, Jr., Grand Rapids, Mich., for plaintiff.

Earl & Webb and Otis A. Earl and Austin A. Webb, Kalamazoo, Mich., for defendant.

STARR, Chief Judge.

In its complaint in this case plaintiff alleged that it manufactured and sold piston rings known as Chrome Oil Stopper rings, which defendant claimed infringed its patent No. 2,565,042 issued August 21, 1951, on application filed May 17, 1948. Plaintiff denied that its rings infringed defendant's patent and alleged that all claims of the patent were invalid. It asked for a declaratory judgment (28 U.S.C.A. §§ 2201, 2202) determining defendant's patent to be invalid and not infringed and also for costs of suit and attorney fees. Defendant answered, alleging that plaintiff's Chrome Oil Stopper rings infringed its patent and denied plaintiff's right to the relief sought. In its counterclaim defendant alleged its ownership of said patent as assignee of the inventor, Harold P. Phillips; realleged its charge of infringement; and asked for an injunction against further infringement, for damages, costs of suit, and attorney fees.

In support of its claim of invalidity of patent because of lack of invention and prior-art anticipation, plaintiff cites the following patents and publications: Payne 1,600,961 issued September 21, 1926;¹ Fink et al. 1,956,014 issued April 24, 1934; Teetor 2,236,721 issued April 1, 1941; Engelhardt 2,281,873 issued May 5, 1942; Phillips 2,313,395 issued March 9, 1943; Van der Horst 2,367,159 issued January 9, 1945; Phillips 2,404,862 issued July 30, 1946; French Patent 840,101 published April 19, 1939; advertisement, Simplex Products Corporation, October, 1945, issue of Motor magazine; advertisement, Simplex Products Corporation, October, 1945, issue of Southern Automotive Journal; and advertisement, Simplex Products Corporation, October, 1945, issue of Commercial Car Journal. Plaintiff further alleged in support of its claim of invalidity that the piston ring described in defendant's patent and all material parts thereof had, prior to invention and more than one year prior to the application for patent, been publicly known, used, sold, and on sale by plaintiff and its employees, distributors, and dealers at Hagerstown, Indiana, and elsewhere in the United States; by defendant, its employees, distributors, and dealers at Hastings, Michigan and elsewhere in the United States; and by Simplex Products Corporation² of Cleveland, Ohio, and its employees, distributors, and dealers.

The piston ring described in defendant's patent in suit and the plaintiff's accused piston ring are known as oil-control rings and are for use on the pistons in the cylinders of internal-combustion engines. The specifications of the patent state that the invention relates to improvements in piston rings, and claims 1, 3, 5, and 7, which reasonably illustrate all claims, read as follows:

"1. A piston ring assembly comprising a pair of spaced relatively thin flat annular split cylinder wall engaging steel side elements and an annular split expansible spacer element intermediate said side elements, and an expander spring acting to force said side elements against a cylinder wall, said side elements having their cylinder wall engaging portions chrome plated, the chrome being plated on the steel, the cylinder wall engaging surface of the chrome plating being curved, the radius of the arc of curvature being not greater than one and one half times the axial thickness of a side member and not greater than .045 of an inch regardless of the axial thickness of the side member, to provide a relatively narrow hairline contact between said chrome cylinder wall engaging surface and a cylinder wall and a relatively high unit of pressure of the side members against the cylinder wall and to provide relatively large oil pockets close to and on opposite sides of said narrow line of contact, said narrow line of contact and high unit of pressure facilitating on the initial operation of newly installed side members relatively close seating of the side members in the cylinder for effective oil control and effective sealing for increased piston pressure, and said relatively large oil pockets close to and on opposite sides of said narrow line facilitating increased lubrication at said narrow line of contact."

"3. A piston ring assembly comprising a pair of spaced expansible flat annular split cylinder wall engaging side elements, and an annular split expansible spacer element disposed between said side elements, said side elements having their cylinder wall engaging portions chrome plated, the cylinder wall engaging surface of the chrome plating being curved, the radius of the arc of curvature being approximately between one-half and two thirds the axial thickness of a side member but not greater than .045 of an inch regardless of the axial thickness of the side member to provide a relatively narrow hair-line contact between said chrome cylinder wall engaging surface and a cylinder wall and a relatively high unit of pressure of the side members against the cylinder wall and relatively large oil pockets close to and on opposite sides of said narrow line of contact."

"5. A relatively thin annular split expansible steel piston ring member having a curved chrome plated cylinder wall engaging surface, the chrome surface being plated on the steel, the radius of the arc of curvature of said surface being not greater than .045 of an inch regardless of the axial thickness of the member."

"7. An annular split expansible piston ring member having a chrome plated cylinder wall engaging surface, said chrome plated cylinder wall engaging surface being curved to provide a relatively narrow hair-line contact with a cylinder wall, said hair-line contact facilitating relative high unit pressure of the ring member against the cylinder wall and facilitating on initial operation of a newly installed ring member close seating of the same against the cylinder wall for effective oil control and seal pressure without drag or resulting high temperatures from friction."

The piston rings in the cylinder of an internal-combustion engine are generally referred to as compression rings and oil rings. The compression ring, located on the upper end of the piston has the dual function of sealing the gases in the combustion chamber above the piston and controlling the oil in the cylinder. The next lower ring on the piston is generally referred to as an intermediate ring and serves both compression and oil-control purposes. The lowest ring is referred to as an oil ring, and its purpose in connection with lubrication is to keep the oil in the crankcase from passing into the combustion chamber in the cylinder. It appears that some types of piston rings may be used as either compression or oil rings.

The piston-ring assembly described in the claims of defendant's patent in suit consists of upper and lower annular, expansible, split, steel segments having cylinder-wall-engaging surfaces of chrome plate; an annular, expansible, metal spacer element located between the ring segments to maintain them in spaced relation; and a metal expander spring to force the ring segments outwardly toward the cylinder wall. It should be noted that the specifications of the patent in suit state that the spacer and expander elements in the piston ring were disclosed in inventor Phillips' prior patent 2,404,862. The annular, split segments are usually referred to as side rails, and the patent provides that the arc of curvature of the chrome-plated cylinder-wall-engaging surface of the side rails is not greater than one-and-one-half times the axial thickness of the side member and not greater than .045 of an inch, regardless of the axial thickness of the side member, to provide a relatively narrow hairline contact between the cylinder-wall-engaging surface and the cylinder wall. At this point it should be noted that the claims of the patent in suit do not specify any thickness or range of thickness of the chrome plating on the side rails. The specifications mention chrome plating "between .0005 and .006 of an inch in thickness, preferably about .004 or .005 of an inch," but as the patent claims measure the invention, the specifications cannot add to, enlarge or extend the scope of the claims. General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 58 S.Ct. 899, 82 L.Ed. 1402; Aluminum Co. of America v. Thompson Products, 6 Cir., 122 F.2d 796, 798.

The plaintiff's accused Chrome Oil Stopper ring comprises the same elements of annular, split, metal segments referred to as side rails, a spacer element between the segments, and an expander spring to force the ring segments outwardly toward the cylinder wall. The curved face on the cylinder-wall-contacting surface of the rails is chrome plated. It appears that the spacer element in the patent in suit is formed from sheet metal, while the spacer in the accused ring is composed of cast iron. The principal difference between the rails in the patent in suit and the rails of the accused ring is that the chrome faces of the accused rings are either buffed to remove imperfections on the chrome without reducing its thickness, or lapped by a grinding operation to remove a small part of the chrome and flatten the circumferential central part of the curvature where the rails engage the cylinder wall.

The questions presented for determination by the court are: (1) Is the defendant's patent, Phillips 2,565,042, valid; and (2) if valid, are its claims infringed by plaintiff's accused ring? In determining the question of the validity of the patent in suit the court must consider the prior litigation between these same...