Rohr Aircraft Corporation v. Rubber Teck, Inc.

• Decision Date: 21 April 1959
• Docket Number: No. 15884.,15884.
• Citation: 266 F.2d 613
• Parties: ROHR AIRCRAFT CORPORATION and The Franklin C. Wolfe Company, Inc., Appellants, v. RUBBER TECK, INC., Rubber Teck Sales and Service Co., Paul A. Karres, Otto R. Grass and Joe P. Kerley, Appellees. RUBBER TECK, INC., Rubber Teck Sales and Service Co., Paul A. Karres, Otto R. Grass and Joe P. Kerley, Appellants, v. ROHR AIRCRAFT CORPORATION and The Franklin C. Wolfe Company, Inc., Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

266 F.2d 613 (1959)

ROHR AIRCRAFT CORPORATION and The Franklin C. Wolfe Company, Inc., Appellants, v. RUBBER TECK, INC., Rubber Teck Sales and Service Co., Paul A. Karres, Otto R. Grass and Joe P. Kerley, Appellees.

RUBBER TECK, INC., Rubber Teck Sales and Service Co., Paul A. Karres, Otto R. Grass and Joe P. Kerley, Appellants, v. ROHR AIRCRAFT CORPORATION and The Franklin C. Wolfe Company, Inc., Appellees.

No. 15884.

United States Court of Appeals Ninth Circuit.

April 21, 1959.

Fulwider, Mattingly & Huntley, John M. Lee, Robert W. Fulwider, Los Angeles, Cal., for appellant.

Fred H. Miller, Stanley A. Phipps, Los Angeles, Cal., Alfred D. Williams, Long Beach, Cal., for appellee.

Before BARNES, HAMLIN and JERTBERG, Circuit Judges.

HAMLIN, Circuit Judge.

Rohr Aircraft Corporation and The Franklin C. Wolfe Company, Inc., filed an action in the District Court of the United States for the Southern District of California for a patent infringement and unfair competition against Rubber Teck, Inc., and others. All of the defendants denied the charges, and certain of the defendants, to-wit, Paul A. Karres, Otto R. Grass, and Joe P. Kerley, filed a counterclaim against the plaintiffs for false marking.

The District Court entered judgment dismissing plaintiffs' complaint and defendants' counterclaim, holding that the patent in suit was invalid for lack of invention, that there was no unfair competition, and held also that the counterclaim of defendants was without merit. Both plaintiffs and defendants below filed proper notices of appeal from the dismissals of the complaint and counterclaim, respectively. Jurisdiction of the District Court was based on 28 U.S.C. § 1338(a) and (b)¹ and on 15 U.S.C.A. § 1121,² § 1126(h) and (i).³ The judgment being final, this court has jurisdiction under 28 U.S.C. § 1291. Rohr and Wolfe will be referred to herein by name or as plaintiffs, and defendants will be referred to herein by name or as defendants.

The appeal and the cross-appeal will be dealt with separately.

The Appeal of Plaintiffs Rohr and Wolfe

I. Validity of Plaintiffs' Patent.

The patent in suit, No. 23906005, was issued March 5, 1946, to Rohr Aircraft Corporation upon an application therefor filed October 2, 1944, by Gross and Cornwall, who were at the time employed by Rohr.

The patented device relates to a fastener seal to prevent fluid leakage through the opening around bolts, rivets and the like. It has particular application for the sealing of fuel tanks and the fluid-tight compartments in airplanes.

The patent contains two claims, of which only Claim 1 is in issue. Claim 1 reads as follows:

"1. Means for sealing the walls of a tank secured between the head and shank of a fastener, comprising, in combination, a washer of rigid material having a central bore, surrounding the shank of the fastener and adapted to make rigid contact with the head of the fastener and a tank wall, and a rubber-like doughnut shaped ring positioned within the bore of the washer, said ring having a diameter greater than the thickness of said washer and being confined in said washer with opposite sides thereof normally protruding from the opposite faces of the washer, whereby upon the underside of the head of the fastener compressing the rubber-like ring against a portion of one contiguous wall of the tank being fastened together, said ring is deformed into sealing contact with the bore of the washer, the shank, the head of the fastener, and said contiguous portion of said wall."

In 1943 Rohr was given the task of constructing integral fuel tanks in the PB2Y3 aircraft. Prior thereto, fuel for the aircraft had been placed in containers within the wings, and it was hoped that by the development of a proper seal the container holding the fuel could be eliminated. Rohr proceeded with the problem as presented and obtained the patent in suit on a two-piece seal consisting of an outer flat metallic washer and an inner rubber O-ring. The O-ring was circular in cross section and slightly thicker than the thickness of the metallic washer. Defendants, or their predecessors, were given the job of manufacturing the patented seals for the plaintiffs.

As indicated in the drawings of the patent in suit, the "rubber-like doughnut shaped ring" to be placed within the metal washer was circular in cross section prior to pressure being applied on the bolt, but after the bolt was tightened the rubber ring was deformed by the pressure and assumed a shape rectangular in cross section. When tightened, all spaces around the shank of the bolt and under the head of the bolt were filled by the rubber ring, thereby providing a seal preventing liquid from leaking from the tank.

The device is described in the patent in suit as follows:

"Our head seal consists of a metal flat washer, and doughnut shaped rubber-like washer which fits inside of the metal washer. This assembly is placed under the head of the screw, bolt, or rivet prior to installation and the screw or bolt tightened until a firm metal bearing is obtained between the head, the metal washer and its faying surface. During the tightening, the doughnut shaped rubber-like washer assumes the shape of the rectangular channel inside of the metal washer between the head and the surface to which the washer has been attached. The cross section area of the rubber-like washer and the channel inside of the metal washer has been so designed that after the screw, bolt, or rivet has been tightened, the rubber-like material will not only fill the channel, but will represent a rubber-like packing under compression similar to a gland packing."

As stated in the patent, "the rubber-like washer is of such shape and extent that upon the tightening of the nut * * * the head of the bolt will be drawn down upon and will compress the body of said washer against the walls with which it is in contact, so that the same will effect perfect sealing * * *."

For several years the defendants manufactured the seals for the plaintiffs. In the language of the District Court's findings —

"Subsequent thereto defendants or their predecessors fell out with plaintiffs, lost the contract to manufacture the patented seals and thereafter began the manufacture of their own seals."

The defendants successfully contended in the District Court that the patent in suit was invalid for lack of invention. They contend that the patent in suit was anticipated by the prior art in the following patents: British patent to Aircraft Components Limited, and Frederick Edward Killner, No. 537,654; United States patent to Seligman, No. 2,191,044; United States patent to Hart, No. 67,539; and United States patent to Hart, No. 128,391.

In the Killner patent there was placed within an outer metallic ring or washer a rubber ring that was thicker than the washer or confining ring, so that on tightening, the rubber ring was deformed into a sealing engagement with the surfaces that must be sealed against leakage.

The Killner patent describes a washer for the sealing of a union or conduit connection. It describes a rubber ring that fits within a steel ring that is axially shorter than the rubber ring. By the pressure of tightening, the rubber ring is prevented by the metal washer from spreading outwards and is compressed "in an inward sense."

The difference in appearance between the rubber ring of the patent in suit and the rubber ring of Killner is that in the former, initially, before pressure is applied, a cross section of the rubber ring would be round, while under the Killner patent under the same conditions it is rectangular.

However, after pressure is applied to tighten the bolt, a cross section of each rubber ring would be rectangular. The patent in suit differs from the Killner patent only in having the four corners of the Killner ring rounded off.

Plaintiffs concede that the use of an O-ring is not new, and the use of a metal washer as a bearing member is not new, but they contend that together they produce new and additional results.

Plaintiffs allege these results to be (1) The ring serves to center the assembly on the shank of the bolt, thus providing an annular channel of uniform width into which the ring may be deformed; and (2) The ring is deformed gradually from a round to a rectangular shape and the washer limits this deformation to prevent extrusion.

The defendants deny that there are any new or additional results. They point out that bolt shanks are not precisely made and that O-rings are not precisely made; each of them is made only within manufacturing tolerances. They point out further that rubber in an O-ring can be deformed in a circumferential direction as well as in a radial direction, and that even if the space from the inside wall of the washer to the bolt shank is narrower in one place than the other, that the pressure will deform the rubber around the bolt shank. It may be also mentioned that nowhere in the patent in suit is there any mention of the self-centering ability of the patented seal.

In the Seligman patent, the idea of an inner compressible material, such as soft rubber, within a hard or non-compressible retaining frame was set forth.

In the Seligman patent it was provided in part as follows:

"10. A spacing member for builtup plate-type apparatus, comprising an open frame of hard non-compressible material having resilient rubber gasket material joined to the inner edge of the frame opening, said hard non-compressible material extending outwardly beyond the gasket material sufficiently to serve as a rigid beam resisting outward displacement of the gasket material and being of a thickness substantially equal to the thickness of the gasket in its compressed condition to resist outward displacement of the gasket material relative to the hard noncompressible material."

In the Hart patent, No. 67539, there was an inner rubber packing which was prevented from spreading by an outer washer. A specification in that patent...