Stromberg Motor Devices Co. v. Zenith Carburetor Co.

• Decision Date: 03 February 1915
• Docket Number: 225.
• Citation: 220 F. 154
• Parties: STROMBERG MOTOR DEVICES CO. v. ZENITH CARBURETOR CO.
• Court: U.S. District Court — Northern District of Illinois

220 F. 154

STROMBERG MOTOR DEVICES CO. v. ZENITH CARBURETOR CO.

No. 225.

United States District Court, N.D. Illinois, Eastern Division.

February 3, 1915

Silas H. Strawn, Arthur H. Boettcher, and Charles A. Brown, all of Chicago, Ill., for complainant.

Frank H. Culver and Edward Rector, both of Chicago, Ill., Clarence P. Byrnes, of Pittsburgh, Pa., and William M. Swan, of Detroit, Mich., for defendant.

SANBORN District Judge.

This is a suit similar to Stromberg Co. v. John A. Bender Co. decided in this court February 13, 1914, and reported in 212 F. 419. It is brought on the Ahara patent, No. 684,662 October 15, 1901, and the Richard patent, No. 791,501, June 6, 1905, which were in the Bender Case, as well as the Sturtevant reissue of February 19, 1907, No. 12,611, and the Anderson patent, No. 1,063,148, May 27, 1913, applied for July 26, 1912.

In the Bender Case the decision turned on the distinction between suction-controlled and gravity-controlled nozzles, and infringement was found because it was thought the Zenith device there shown, like Ahara, was not gravity-controlled in its secondary nozzle. This case must also turn on the same distinction so far as the Ahara and Richard patents are concerned.

The Zenith device which was decided to be an infringement in the Bender Case was made with a circular air-inlet in the U-shaped tube of one-eighth inch. This was decided in that case to be so small as not to prevent subatmosphere in the U-tube, and it was supposed by the court, and so decided that subatmosphere was likewise created in the U-tube of Ahara. Thus it was concluded that the two devices worked substantially the same, Zenith being only an improved extension of Ahara, and infringement was therefore adjudged. It was also thought that, if Zenith had followed the true Baverey principle, there would have been no infringement.

In the present case the proof as to infringement shows substantially the following: Three devices made by defendant were produced, Nos. 1, 2, and 10. No. 1 has four sixteenth inch vent holes (which are equal in area to one eighth inch); No. 2 shows two three-sixteenth inch vents; and No. 10 one eighth inch vent. In other respects the devices are identical with those held to infringe in the Bender Case, except that a later form has an additional restriction on the air entering the starting well. No. 1 was made between August, 1911, and August, 1912, and has four small holes as air-intakes. No. 2 was made between March, 1913, and April 19, 1914, when it was sold. No. 10 was made in March, 1912, was later discontinued, and No. 2 substituted for it.

At the time this suit was begun No. 2 was being made, and is the one defendant is furnishing to customers. The other two types have been discontinued, but a few of them may have been still sold at the filing of the bill. Before that time the device had so changed as to contain two vent holes in the U-tube, each of three-sixteenths inches diameter. This type was first made in December, 1913, or January, 1914. In June, 1913, the enlargement of the vents was begun. The particular device shown as Exhibit No. 2 in evidence was sold in April, 1914, just after the interlocutory decree in the Bender Case, with two eighth inch vents, having been originally sold in February, 1914, returned to the factory, and resold in April without change. The defendant has not intended to sell any devices since that decree with less than two three-sixteenths vents. So the matter practically comes down to the question whether carburetors with two three-sixteenths vents, said to create no vacuum at all in the U-tube, should be held to infringe.

By referring to the small accompanying diagrams it is obvious that during normal operation there is partial vacuum in the Ahara U-tube. Mr. Miller says:

'I concede that the subatmosphere in Ahara's well may be very considerable, but I do not think the amount of it entered into Ahara's calculations. I want to make myself clear on that, and I confess to do so by referring to Anderson. I think Anderson intended to get for a given purpose a subatmosphere. I think Ahara has a subatmosphere, but I do not think it was for any intentional purpose, and I do not think that it was a regulatable one. I have stated many times that when the Ahara device is operating on a multicylinder engine the suction affects the amount of fuel which can drop from the L-tube to the U-tube.'

Miller also states that there is practically no suction in that form of the Zenith device shown in Fig. 3 of the Zenith catalogue of 1911. In other words, the U-tube nozzle in Ahara is affected by suction, and the Zenith is not, so far as Fig. 3 is concerned. In the Bender Case it was thought that both the actual devices of Ahara and Zenith were suction-controlled, but that if the latter were not there would be no infringement. It is, however, insisted by complainant that the forms of the Zenith device in evidence (Nos. 1, 2, and 10) work just like Ahara on a variable speed, multi-cylinder engine.

The first cut shows the Zenith device with the suction nozzle at the left and the gravity nozzle on the right. The second shows the Ahara device, both nozzles being suction-controlled, the first because it is a tube of uniform size, and the other because it is not open to the atmosphere. The dotted lines show the fuel level.

(Image Omitted)

The Question of Estoppel. A preliminary question is presented, whether the Zenith Company is bound by the decree in the Bender Case. The Zenith Company was wholly in control of the defense of the Bender Case up to the interlocutory decree, and until after an appeal from that decree had been taken by the Zenith Company in Bender's name. Down to that time it employed Bender's solicitor and counsel, paid them, and bore all expenses of every kind without any expense to Bender. But such acts on its part were concealed as far as possible; they were not 'open and avowed,' as those words are used in the authorities.

While that appeal was pending, however, a radical change in the situation occurred. Bender was still the sole nominal defendant, in absolute control if he desired to assert it. He discharged the attorneys who had been provided for him, employed a new attorney, and dismissed the appeal taken in his name by the Zenith Company. Then, as the final step, Bender's new attorney consented to the entry of a final decree and waived an appeal therefrom. The Zenith Company was thus entirely excluded from the case before final decree. That decree was by consent, and was directly contrary to its interest. It is not estopped by the interlocutory decree, because finality is essential. Harmon v.

Struthers (C.C.) 48 F. 260; Bradley Mfg. Co. v. Eagle Mfg. Co., 57 F. 980, 6 C.C.A. 661. It is not concluded by the final decree, because it is not a 661. party of record, and because a consent decree binds no one but the parties thereto. It is apparent that the Zenith Company never did absolutely control the defense, nor was such defense as it did make up to the interlocutory decree an open or avowed one.

The interlocutory decree was entered early in March, 1914, and on March 30th a motion was made by complainant to bring in the Zenith Company as a party defendant to the Bender suit. This was denied. On this date Bender's attorneys were discharged, and a new one substituted, a final consent decree entered, and Bender's appeal dismissed. At the time of the hearing complainant's attorneys suggested or offered in court to Bender's former attorneys that they could appeal if the Zenith Company would appear. Obviously that company on its own initiative could have applied to the court to become a party to the record for the purpose of appeal, so this suggestion by complainant's attorneys amounted to nothing more than that they would not oppose such an application by the Zenith Company. Persons whose interest is affected by a decree may be made parties and allowed to appeal. Sage v. Central Railroad, 93 U.S. 412, 23 L.Ed. 933. This could have been done with respect to either decree.

Because the Zenith Company lost control of the proceedings, the final decree entered by consent of complainant and Bender's new attorney, and the Zenith Company's defense was never open and avowed, so as to make the estoppel mutual between the complainant and the Zenith Company, there is no estoppel. The rule of res judicata does not apply, whatever may be the rule of stare decisis.

Cases holding the 'open and avowed' rule are cited by defendant as follows: Lane v. Welds, 99 F. 286, 39 C.C.A. 528; Andrews v. Pipe Works, 76 F. 166, 22 C.C.A. 110, 36 L.R.A. 139 (this circuit); Cramer v. Singer Mfg. Co., 93 F. 636, 35 C.C.A. 508; Singer Mfg. Co. v. Cramer, 109 F. 652, 48 C.C.A. 588; Hanks Dental Ass'n v. International Tooth Crown Co., 122 F. 74, 58 C.C.A. 180; Lacroix v. Lyons (C.C.) 33 F. 437; Plumb v. Goodnow's Adm'r, 123 U.S. 560, 8 Sup.Ct. 216, 31 L.Ed. 268; Litchfield v. Goodnow's Adm'r, 123 U.S. 549, 8 Sup.Ct. 210, 31 L.Ed. 199.

Cases for plaintiff, to the effect that the participation of the Zenith Company made it a substantial party, are cited as follows: Theller v. Hershey (C.C.) 89 F. 575 (patent case); National Folding Box & Paper Co. v. Dayton Paper Co. (C.C.) 95 F. 991 (patent case); Bemis Car Box Co. v. J. G. Brill Co., 200 F. 749, 119 C.C.A. 229 (patent case); Ward v. Clendenning, 245 Ill. 206, 91 N.E. 1028; Bradley Mfg. Co. v. Eagle Mfg. Co., 57 F. 980, 6 C.C.A. 661 (patent case); Gilbert v. American Surety Co., 121 F. 499, 57 C.C.A. 619, 61 L.R.A. 253; Penfield v. Potts & Co., 126 F. 475, 61 C.C.A. 371 (patent case); Confectioners' M. & M. Co. v. Racine E. & M. Co. (C.C.) 163 F. 914 (patent case); Bryant El. Co. v. Marshall (C.C.) 169 F. 426 (patent case).

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