Rex Chainbelt, Inc. v. General Kinematics Corporation

• Decision Date: 30 June 1966
• Docket Number: No. 15213.,15213.
• Citation: 363 F.2d 336
• Parties: REX CHAINBELT, INC., Plaintiff-Appellee, v. GENERAL KINEMATICS CORPORATION, and Albert Musschoot, Defendants-Appellants.
• Court: U.S. Court of Appeals — Seventh Circuit

363 F.2d 336 (1966)

REX CHAINBELT, INC., Plaintiff-Appellee, v. GENERAL KINEMATICS CORPORATION, and Albert Musschoot, Defendants-Appellants.

No. 15213.

United States Court of Appeals Seventh Circuit.

June 30, 1966.

William J. Stellman, James C. Wood, Hofgren, Wegner, Allen, Stellman & McCord, Chicago, Ill., for defendants-appellants.

Albert H. Pendleton, Ralph E. Church, Jr., Chicago, Ill., for plaintiff-appellee.

Before DUFFY, KNOCH and CASTLE, Circuit Judges.

KNOCH, Circuit Judge.

The United States District Court entered a decree finding the Musschoot Patent, No. 2,984,339, valid and infringed by the defendants-appellants, General Kinematics Corporation and Albert Musschoot. This appeal followed.

The plaintiff Rex Chainbelt, Inc., acquired the patent in suit when it purchased the assets of Carrier Conveyor Corporation, by whom Albert Musschoot had been employed.

The District Court found that Mr. Musschoot assumed duties which Carrier under a two-year contract which called for an annual salary of $18,000 with an option to purchase company stock, which he exercised. His salary was later raised to $20,000, and he became a vice-president of the company.

At the outset of his employment, Mr. Musschoot was put in charge of development, engineering and sales of Carrier's "new products division." His first assignment was to make a variable rate or controlled stroke vibratory feeder.

On May 16, 1961, the patent in suit entitled "Tunable Vibratory Apparatus" was issued on an application, filed July 6, 1959, in the name of Mr. Musschoot as inventor, which was assigned to Carrier pursuant to Mr. Musschoot's agreement to assign inventions made during his employment. The application was subsequently assigned on December 21, 1959, to Chain Belt Company, which later changed its name to Rex Chainbelt Company, the plaintiff herein.

After about two years, Mr. Musschoot left plaintiff's employment and started a new business, General Kinematics Corporation, of which he is president and majority stockholder. The District Court found that the corporate defendant is Mr. Musschoot's alter ego, that he induced infringement of the plaintiff's patent by the corporate defendant, participating in its manufacture and sale of the accused devices; that both were guilty of conscious, deliberate and willful infringement. The District Court awarded the plaintiff treble damages (Title 35 U.S.C. § 284) and attorneys' fees. (Title 35 U.S.C. § 285)

The defendants asserted that the essential elements of the accused feeder were shown in the prior art; that the claims of the patent in suit were not infringed. They also asked the District Court to hold the patent in suit invalid on its own motion.

The defendants do not challenge the District Court's findings of fact that when Mr. Musschoot was employed, Carrier had a vibratory feeder with AC-DC converter and DC motor, capable of regulation by varying the speed of its drive; that it had several steel coil springs, some of which Mr. Musschoot replaced with Firestone Airride springs or air bags, which Carrier had in stock, thus demonstrating the possibility of making a variable rate feeder by varying the spring system. The cooperation of air bags with coil springs made it possible to adjust the natural frequency of the device through a wide range not previously available, changing the speed of conveyance of bulky material at will by a small simple adjustment of an air valve.

The District Court found that a feeder which could be adjusted only by varying the speed of its drive was limited in use, in acceptance by the trade and in economic competition. Early in 1958 the market for variable rate feeders far exceeded that for fixed rate feeders.

It is not disputed that the invention of the patent in suit was reduced to practice no later than July 17, 1958. On the same day the directors of Carrier authorized a special bonus of $2000 which was paid to Mr. Musschoot on July 25, 1958, and which he accepted.

The first regular commercial order of the device was shipped March 31, 1959, under the trademark "Amplitrol." It met with prompt commercial success.

While commercial success and the filling of a long felt want do not determine patentability, they do serve to guard against what the United States Supreme Court has called the "temptation to read into the prior art the teachings of the invention in issue." Graham v. John Deere, 1966, 383 U.S. 1, 36, 86 S.Ct. 684, 703, 15 L.Ed.2d 545. We believe that the defendants in this case have yielded to that temptation.

On June 29, 1959, Mr. Musschoot signed and swore to the application for the patent in suit which he now attacks as invalid.

The following illustrations are taken from the patent in suit:

COPYRIGHT MATERIAL OMITTED

In figures VI and VII we see a vibratory feeder having a trough or work member 50 which includes a downwardly extending outrigger portion 60. The work member is supported from the foundation 56 by air springs 54 and 55 which serve as isolation or cushioning means to prevent the undesirable transmission of vibrations from the work member to the foundation. An exciter member or mass 65 is resiliently supported and guided from the work member by air bags 68 and 69. Eccentric weights 67 are attached to the shaft of a constant-speed motor 66 whereby rotation of the motor creates a centrifugal force to cause vibration of the apparatus and relative motion of the work member and exciter member along a particular path. The air bags act in opposition to each other in forcing the exciter member to a central position within the outrigger portion 60, and in aid of each other in opposing relative motion from such central position. The air bags are connected by piping 70, 71 through which air may be supplied or extracted to change the average pressure in the air bags.

The patent specification states that:

According to the invention, a vibratory work performing system, in which vibrations are produced by eccentric weights rotated at a constant speed, is equipped with a plurality of readily adjustable resilient elements in the form of air bags or air springs the internal pressure of which is regulated to adjust the condition of resonance or tuning of the vibratory system including such air bags.

The District Court found:

Insofar as the issues of this lawsuit are concerned, the patent more specifically teaches and covers two concepts. First, it teaches the use of an air bag and a connected air supply of adjustable pressure to transmit vibratory forces to a so-called work member from a vibrating mass, commonly called an exciter member, without causing undesirable vibration of the supporting structure.

The defendants contend that this is erroneous, that the air bags which prevent undesirable vibration are the isolation springs and that these do not transmit force to a work member. We agree with the plaintiff that the District Court was referring to the coupling air bags (68 and 69, Figure VI) as transmitting vibratory forces and not the isolation springs (54 and 55, Figure VII).

The District Court also found:

Adjustment of the air pressure applied to the air bag effects changes in the amplitude of vibration of the work member without interrupting operation of the apparatus. Secondly, the patent teaches the use of an air bag with an adjustable air supply in combination with a solid spring whereby adjustment of the air pressure applied to the air bag produces a change in the spring coupling between the work member and the exciter member. The coupling provided by the solid spring alone is thus modified, so that the composite spring rate of the system is changed and the feed rate made correspondingly adjustable.

16. The first concept is incorporated in the embodiment of the invention shown in Figs. VI and VII of the patent drawings and also in the embodiment shown in Fig. XV. Fig. XV further incorporates the second concept.

17. Figs VI and VII disclose a vibratory feeder having a trough or work member which includes a downwardly extending outrigger portion. The work member is supported from a foundation by isolation or cushioning means to prevent undesirable transmission of vibrations from the work member to the foundation. An exciter member is resiliently supported and guided from the work member by a plurality of air bags. Eccentric weights are attached to the shaft of a constant-speed motor whereby rotation of the motor creates a centrifugal force to cause vibration of the apparatus and relative motion of the work member and exciter member along a particular path. The air bags act in opposition to each other in forcing the exciter member to a central position within the outrigger portion of the work member and in aid of each other in opposing relative motion from such central position. The air bags are connected by piping through which air may be supplied or extracted to change the average pressure in the air bags. While not shown in Figs. VI and VII, the specification points out that it may be desirable to include guide links between the exciter member and the outrigger portion of the work member in order to guide the exciter member along its path of movement and prevent it from sagging downwardly out of place in the event air pressure is lost from the air bags.

18. The patent in suit also teaches that it may not be necessary that the air pressure be varied in more than one of the air bags, and that if a particular air bag is to be maintained at a constant air pressure it may be replaced with a spring of solid resilient material, such as a steel spring, a rubber spring or any other non-adjustable type of spring. Such a system, which is illustrated in Fig. XV of the patent, embodies the second concept of the invention in which an air bag with an adjustable air supply is used in combination with a solid spring to form a composite spring coupling between the work member and the exciter member.

19. Fig. XV is a schematic diagram disclosing a

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