Sterling Aluminum Prod. v. BOHN ALUMINUM & B. CORP.
| Decision Date | 11 October 1960 |
| Docket Number | No. 18847.,18847. |
| Citation | 187 F. Supp. 879 |
| Parties | STERLING ALUMINUM PRODUCTS, INC., a corporation, Plaintiff, v. BOHN ALUMINUM AND BRASS CORPORATION, a corporation, Defendant. |
| Court | U.S. District Court — Western District of Michigan |
Alfred E. Wilson, Smith, Wilson, Lewis & McRae, Dearborn, Mich., for plaintiff.
John H. Bruninga, St. Louis, Mo., of counsel.
Rockwell T. Gust, Butzel, Eaman, Long, Gust & Kennedy, Detroit, Mich., for defendant.
Karl B. Lutz, Brown, Critchlow, Flick & Peckham, Pittsburgh, Pa., of counsel.
This is an action for infringement of Letters Patent No. 2,771,328 issued to W. N. Wainwright, et al., on November 20, 1956, with related claim of unfair competition. Defendant's answer alleges that the patent is invalid, and by way of counterclaim, seeks a declaratory judgment declaring the patent invalid and void in toto.
The patent in issue is for a Piston Ring Groove Protector. According to the specification, aluminum pistons generally are provided with ring grooves into which are placed piston rings usually of iron or steel; the rapid reciprocation of the piston causes the rings to hammer against the faces of the ring grooves, and such hammering in turn makes the rings loose and therefore subject to leakage of gases past the rings; and eventually, the hammering results in such wear that the pistons have to be remachined to take oversized piston rings.
It is recognized in the specification that, in order to overcome these difficulties, ring groove protectors have been utilized in the art. It is stated, however, that such protectors are difficult to anchor "and in most cases will work loose so that there will be leakage around that band." The specification then goes on to state:
"One of the objects of this invention, therefore, is to provide a piston in which the above described drawbacks are practically overcome."
As further repeatedly stated by plaintiff's counsel in his oral arguments and briefs, the core of the invention in issue lies in the secure mechanical interlock between the ferrous groove protector and the aluminum piston body.
According to the patent, such interlock is achieved by casting an aluminum piston around a ferrous protector disc having recesses along one of its margins or intermediate the margins of such dimensions that the aluminum will flow through such recesses and, upon cooling, due to the differential in the coefficient of contraction, will grip the protector and tightly "hug" it in the piston body.
The patent in issue contains fourteen claims covering various embodiments of the alleged invention. Considered together, claims 2 and 11 are representative of all the claims and provide:
Since defendant admitted infringement with respect to discs with outside recesses if the patent is valid, the major issues as developed by the pretrial order, the trial, the oral arguments and the briefs are:
The complaint in this cause alleges infringement of all 14 claims of the patent. Infringement is denied in defendant's answer and, as has already been stated, by way of counterclaim, defendant seeks a declaratory judgment declaring the patent invalid and void in toto. Subsequently, plaintiff filed a document entitled "Plaintiff's Statement as to Claims" wherein it is stated that "plaintiff will rely upon claims 2, 6, 7, 10 and 14 of Patent No. 2,771,328, as infringed by defendant". Beginning with its trial brief, plaintiff asserted that it wished to restrict this case to claims 7 and 10 and desired to withdraw all other claims from consideration by this court. Defendant has consistently objected to this assertion and contends that all claims are in issue and are properly before the court.
It clearly appears that all of the claims of this patent were put in issue by the pleadings. The fact that plaintiff itself put the whole patent in issue by failing to specify any particular claims in its complaint created an "actual controversy" with respect to all claims within the meaning of 28 U.S.C.A. § 2201 when defendant denied infringement and alleged invalidity of the whole patent in its answer. Having done so, plaintiff cannot now deprive defendant of its right to have all claims adjudicated simply by withdrawing all but two of the fourteen claims. (For an extensive discussion of this problem, see Kawneer Co. v. Pittsburgh Plate Glass Co., D.C.W.D. Mich.1952, 103 F.Supp. 671.) The court further notes that although most of the evidence in this case was directed to only one of the nine embodiments disclosed in the patent drawing, plaintiff itself asserted in its Reply Brief (pp. 21-31) that this particular embodiment (figs. 4 and 5 of the patent drawing) is "covered" by 11 of the 14 claims of this patent.
The court consequently concludes that, all the claims having been put in issue, the defendant is entitled to an adjudication of the validity of all 14 claims.
The patent in issue broadly relates to the art of protecting the faces of piston ring grooves from damage likely to be caused by the hammering of the ring in the reciprocating piston. As already pointed out, the specification states that one of the major problems intended to be solved by the alleged invention is to securely anchor the protector into the piston and thus prevent damage caused by any loosening of the protector.
Both parties have characterized the patent in issue as a combination patent. They do not agree, however, as to what are the elements of the patent. Defendant in its Trial Brief alleges that the combination consists of three elements (p. 22):
The plaintiff has failed to make clear its position with respect to the elements in this combination patent. The only indication of what plaintiff's position might be appears at p. 20 of its Reply Brief, where it is stated that claim 1 of the patent covers two elements:
An analysis of the claims shows that all 14 claims disclose a combination of three basic elements, viz.:
Claim 14 additionally discloses locating tabs or tongues on the outer margin of the disc (to permit locating such disc in the mold during casting of the piston).
After the disc has been placed in the mold and the piston has been cast around the disc, the first three elements allegedly cooperate and bring about an aluminum piston having a hard ring groove protector which is firmly anchored in such piston by mechanical means.
The court therefore concludes that the patent in issue discloses a combination of four elements:
In defense of this action, defendant has cited 10 prior art patents and one advertisement appearing in a trade journal:
Givaudan (French) 455,539
MacDonald (British) 251,127
Mahle 1,979,335
Nelson 1,995,746
Nelson 2,006,008
Venner 2,240,968
Hepworth (British) 548,400
Howlett (British) 642,042
Stevens 2,550,879
Daub 2,685,729
Advertisement appearing in Automotive
Industries, November 1, 1951
hereinafter referred to as "Zollner
Ad"
Defendant contends that these prior art references anticipate...
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...and more economical mechanism." See, Harvey v. Levine, 322 F.2d 481, 485, C.A. 6. See also, Sterling Aluminum Products, Inc. v. Bohn Aluminum & Brass Corp., 187 F.Supp. 879 (E.D.Mich.S.D., 1960), aff'd 298 F.2d 538 (6 Cir., 1962); Canadian Ingersoll-Rand Co. v. Peterson Products of San Mate......
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STERLING ALUMINUM PROD. INC. v. Bohn Aluminum & Brass Corp., 14472.
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