Reo Motor Car Co. v. Gear Grinding Mach. Co.

• Decision Date: 13 June 1930
• Docket Number: No. 5130,5131.,5130
• Citation: 42 F.2d 965
• Parties: REO MOTOR CAR CO. v. GEAR GRINDING MACH. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

42 F.2d 965 (1930)

REO MOTOR CAR CO. v. GEAR GRINDING MACH. CO.

Nos. 5130, 5131.

Circuit Court of Appeals, Sixth Circuit.

June 13, 1930.

D. Anthony Usina, of New York City (Melville Church, of Washington, D. C., and Whittemore, Hulbert, Whittemore & Belknap, of Detroit, Mich., on the brief), for Gear Grinding Mach. Co.

J. L. Stackpole, of Boston, Mass. (Frederick P. Fish and H. L. Kirkpatrick, both of Boston, Mass., and Walter S. Foster, of Lansing, Mich., on the brief), for Reo Motor Car Co.

Before DENISON, MOORMAN, and HICKENLOOPER, Circuit Judges.

DENISON, Circuit Judge.

Infringement suit by Gear Grinding Company v. Reo Company, based on four patents: Nos. 1,104,589, issued July 21, 1914, to Ward and Taylor, for a gear grinding machine, application filed October 15, 1909; 1,155,532, issued October 5, 1915, to Ward, upon application filed August 13, 1912, for trimming mechanism for grinder wheels of shaft grinding machine; 1,271,495, issued to Ward July 2, 1918, upon application filed August 13, 1912, for method of grinding splined shafts, etc.; and 1,273,016, issued to Ward July 16, 1918, upon application filed May 7, 1918, as a division of the method application, for a splined shaft. The first two patents named were involved in a suit by the same plaintiff against the Studebaker Company, in which case the opinion of this court is reported in 270 F. 934, 935. In the present case, the District Court sustained the first two patents and found that they were infringed by some and not by others of the defendant's practices, and held the method and product patents invalid. Both parties appeal.

The practical and commercial history of the inventions, somewhat recounted in the previous opinion, should be recalled. Early in 1910, the plaintiff, as the assignee of the Ward and Taylor patent in suit, was engaged in grinding gears. It had devised mechanism for grinding the intercontact surfaces of gear teeth, rather than merely cutting them and then perhaps finishing by hand; and the plaintiff had been probably the first to produce gears of precision and of large size cheaply enough for use in machines like automobiles. About then, Ward came to have a concept (generally his although vaguely suggested to him) of adapting this mechanism to the grinding of the bottoms and sides of the grooves of a splined shaft. Whatever inventive character this suggestion had, it clearly was a new thing in the art, as no splined shaft, having these surfaces finished by grinding, had ever been produced commercially.¹ Looking back now it is apparent that even if this grinding could have been done by existing methods and mechanism, it would have been of prohibitive cost, as applied to mass production, and that the desideratum was a machine or method for doing it as rapidly and as nearly automatically, and therefore as cheaply, as possible. The particular problem was presented by the bottom of this groove. A splined shaft is (in the simplest form) a cylinder from the periphery of which spring radial ribs extending for part of the length of the shaft. Thus between each two ribs there is what may be called a groove. The bottom of this is convex throughout its length, a cross section being an arc of a circle struck from the shaft center. A gear centrally pierced for the shaft and having, around this shaft opening, ribs and grooves complementary to those of the splined shaft, slides longitudinally thereon. When their respective ribs and grooves are in engagement, rotary motion is imparted from one to the other; when the gear slides along the shaft past the splines, one lies idle.

The practical difficulty presented to Ward grows from the convex or cylindrical form of this grooved bottom, and from the presence of the obstructions formed by the splines. The customary way of grinding a true surface upon a cylinder, "cylindrical grinding," had been to revolve the cylinder slowly, while held upon its fixed axis, against the flat periphery of a grinding wheel whose axis was parallel to the cylinder axis and which could be adjusted radially to the cylinder. Then the cylinder was slowly fed longitudinally and a perfect cylindrical face was developed. Another method of grinding any regular or irregular convex surface was to use a flat edged or sharp edged grinding wheel and guide the work by the hand of the operator under the effect of the wheel as necessary, and thus gradually develop the desired form. To some extent this could be done automatically, but it was essentially a very skilled operation. Ward's primary thought was that he could grind the bottom of this groove to the desired shape by using a grinding wheel with its axis at right angles to the shaft axis and with its edge concaved precisely to fit the desired convexity of the groove bottom and with its width sufficient to cover the entire bottom bearing surface, while the wheel thus formed and operated on the shaft to be ground, was moved longitudinally of the shaft, and if necessary reciprocated longitudinally for the necessary number of passes. This was primarily a thought of general method rather than of specific mechanism. To grind such a surface between obstructions by rotary motion of one part and a longitudinal motion as to the other, did not involve nor depend upon the means by which either part should be operated nor upon any other details of construction. A practical difficulty, the solution of which must be embodied in any successful method or machine, came from the tendency of the grinding wheel to wear out of true shape, and the necessity that it must be reformed or trued as frequently as need be, and with precision. If also it was desired to grind the bottom of the groove and sides of the splines during the same pass (as Ward evidently thought would be important to commercial success), there was additional difficulty in maintaining the form of the grinding wheel, particularly at the corners.

Having a general conception of method and mechanism, and having devised what he thought the necessary details, Ward began, in the summer of 1910, to make some splined shafts to fill an order from the Hudson Company. It is his theory that this work, prior to August 13, 1910 (two years before application filed), was experimental. At any rate, successful commercial production was in progress in October, 1910.

As appears from the record in the previous case (incorporated into this record by consent), and from this record, the ground splined shaft, the product of this mechanism and method, was very well received, and has gone into almost universal use in the automobile industry. Many of the leading manufacturers have taken licenses from the plaintiff under this group of patents, or sent their shafts to plaintiff's shops to be ground; many, if not most, of the others are infringing (if the patents are valid as claimed), and have been and are associated in defense of the former case and of this one.

The first question presented is as to the effect of the former decision. It was there held that certain claims of the first two patents were valid against the defenses there presented, and that certain machines and organizations constituted an infringement of these claims, and that certain other organizations did not. It appeared in the record in that case, and was fully known to plaintiff, that the defense had been assumed and was carried on in the name of the defendant and for its pro rata benefit by the National Automobile Chamber of Commerce; that this was a voluntary association of automobile manufacturers, one of the purposes of which was to defend, if thought proper, any patent suit brought by an outsider against any member of the association; that in case it was decided to make such defenses by the association in the name of a member — as it had been decided in the Studebaker Case — the association selected counsel and paid all the expenses of the litigation on behalf of the member who was sued; and that to these expenses all members contributed according to an agreed system. It further appears by that record, supplemented by this, that the present defendant, the Reo Company, was then, and is now, a member of the association; that as such, through its authorized agents, it joined in the selection of counsel and the maintenance of the defense of the Studebaker Case; and that it paid its share of all the expenses of that association, including this litigation expense. The fact of this membership and participation by the present defendant in the former case was also then known to plaintiff. Under these facts we have no doubt that the former decree is an adjudication, for and against the present defendant as well as for and against the plaintiff, of every issue there decided, expressly or by necessary implication. Beyer Co. v. Fleischmann (C. C. A. 6) 15 F.(2d) 465, 466; Vapor Co. v. Gold Co. (C. C. A. 2) 7 F.(2d) 284, 287.

It is now alleged that the present defendant, by its practices varying at different times, has infringed the patents of 1909 and 1915, involved in the former litigation. So far as the questions involved are the same as those then actually decided or necessarily involved, that result controls here; so far as the questions are variant and open, we are not satisfied that the District Judge made any error in his treatment or conclusions; and these conclusions are affirmed.

This brings us to the method patent. We think it usually will be true, and here is true, that where there are coincident method, machine and product inventions, the underlying meritorious inventive thought will be found in one of the three, and the other two will be relatively collateral. As is apparent from our consideration in the former case, the perhaps apparently natural thought of grinding to precision and for mass production such irregular shapes as gears, and the like, had never been accepted by the art — probably because of the supposed impossibility of maintaining perfectly enough the...