Ruud Mfg. Co. v. Beler Water Heater Co.

• Decision Date: 11 January 1916
• Docket Number: 118.
• Citation: 229 F. 995
• Parties: RUUD MFG. CO. et al. v. BELER WATER HEATER CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

229 F. 995

RUUD MFG. CO. et al. v. BELER WATER HEATER CO. et al.

No. 118.

United States Court of Appeals, Second Circuit.

January 11, 1916

Appeal from the District Court of the United States for the Southern District of New York.

This cause comes here upon appeal from a decree finding a certain patent valid and infringed. The patent is No. 1,028,284 issued June 4, 1912, to Edwin Ruud for a water heater. It set forth an apparatus intended to remedy certain defects in a prior water heater for which the same inventor had obtained United States patent No. 903,007, on November 3, 1908. Infringement was charged as to all the six claims of the patent; all were held valid, but infringement was found only as to claims 2, 3, and 5. No cross-appeal was taken from the holding that claims 1, 4, and 6 are not infringed.

The following is the opinion of Learned Hand, District Judge:

It is undoubtedly true that in this art invention has pressed close around Ruud's exact disclosures, and has left very little room for any broad scope of invention. Still the words of the claims are specific, and upon the question of infringement they should be allowed a reasonable interpretation as broad as the prior art will permit. This right is not limited by the fact that the patent has not been commercially exploited. The Paper Bag Patent Cases, 210 U.S. 405, 28 Sup.Ct. 748, 52 L.Ed. 1122. In view of the distinction clearly intimated in the claims between a double spring and any other kind of compound or divisible power device, I cannot accept the doctrine of equivalents as applied to claims 1, 4, and 6, and I find that they are not infringed. There remain claims 2, 3 and 5. In claim 2 the words used are 'power device,' which the water valve 'in part' overcomes, while in claim 3 the words are 'compound power device,' of which 'one part' is overcome. Claim 5 is merely an awkward piece of tautology, restating claim 3. Indeed, I think that there is no reason for distinguishing even between claims 2 and 3; but in view of the distinction attempted to be made I shall consider claim 3. Infringement therefore depends upon whether the defendant's heater has a compound power device closing the valve in opposition to the thermostatic means, and a mechanism which, when the water flows, overcomes one part of this compound power device.

Now confessedly the spring, 41, of Ellis' patent is a power device which holds the valve closed in opposition to the thermostat, and this power device is overcome by the water piston, 35, when the water flows. Is there anything else which keeps the valve closed, and which the thermostat must overcome to open the valve? What does keep the valve closed when the water piston is moved down and releases it? In Ellis' patent the answer is easy; it is the spring, 9. But there is no such spring in the commercial device, because in it the valve is closed by the gas pressure and by the weight of the valve itself. Of course, we are to disregard the gas pressure, that not being included in the mechanism as described; there remains, therefore, only the weight of the valve.

The defendant argues that the claims clearly intend an element other than the valve proper, since the claims enumerate first the valve as one element and later a separate element closing the valve. To confuse the two into one is to disregard the combination actually prescribed and to substitute another; the weight of the valve is not a separate mechanical element from the valve, since it must have its weight, qua valve, as soon as it is put into the machine. How, then, the defendant says, can there be said to be a second power device, besides the valve, which holds it closed?

This argument is perfectly good if we insist upon a separate material element besides the valve as part of the compound power device; it ceases to be relevant if we look at the actual dynamic relation of the parts when we judge of the power device. For example, if the valve were made horizontal, it would be the same valve, with the same weight, in the same seat; everything would be the same, but the valve would never close if the water piston stuck. This would be so because the valve would not then be a power device closing itself. Its position, its relation to the seat, the direction of its permitted play, together constitute it a power mechanism operating through the force of gravity to close itself as soon as the thermostat has relieved it of pressure. The potential energy of position, which it obtains when raised above its seat, is as truly a reserve of power, the result of the necessary expenditure of energy, as is the reserve of potential energy within the coils of a spring, which is itself the result of the necessary expenditure of energy. Indeed, courts have specifically recognized the equivalence between the two. Kenny Mfg. Co. v. J. L. Mott Iron Works (C.C.) 137 F. 431, 433. Therefore, I find that the defendant's heater infringes claims 2, 3, and 5, and not claims 1, 4, and 6.

The next question is of invention, upon which the nearest reference is Shook, 993,723. This patent was in interference with Ruud in the Patent Office and won the claims. The defendant insists that the claims so contested are the equivalents of those in...