Stuart Oxygen Co. v. Josephian

Decision Date18 June 1947
Docket NumberNo. 11445.,11445.
Citation162 F.2d 857
PartiesSTUART OXYGEN CO., Limited, v. JOSEPHIAN.
CourtU.S. Court of Appeals — Ninth Circuit

Naylor & Lassagne, and Theodore H. Lassagne, all of San Francisco, Cal., for appellant.

Boyken, Mohler & Beckley, A. W. Boyken, and W. Bruce Beckley, all of San Francisco, Cal. (Reginald L. Vaughan, of San Francisco, Cal., of counsel), for appellee.

Before STEPHENS, HEALY, and BONE, Circuit Judges.

BONE, Circuit Judge.

Appellant, Stuart Oxygen Company (defendant below) and appellee, William Josephian (plaintiff below), are engaged as competitors in the business of producing and supplying oxygen for commercial use. The manufactured oxygen is normally pumped under very high pressure into steel cylindrical tanks so that it may be readily transported to the place of consumption. Because of the high pressures involved these tanks must be very strong and consequently are very heavy, weighing about 140 pounds each.

The increasing use of oxygen, particularly in steel fabrication industries, finally made delivery of single tanks of oxygen economically unfeasible as too much handling was required (due to the small amount of gas contained in a single tank). Other competitors in the business hit upon the solution of delivering the gas in liquid form, but the equipment required was too expensive to be used by either appellee or appellant. They cast about for some way to deliver a number of tanks manifolded together so that less handling would be required. But to fasten many tanks together made the unit so heavy that it could not be conviently handled — particularly so, since, in many instances, the valve fittings had to connect exactly with the consumer's pipe lines. Moreover, other considerations made it imperative that the multiple unit, when constructed, could be handled manually by a single man.

Appellee then invented and patented a device whereby a number of tanks were mounted upon a plate (see the illustration) manifolded together so that the gas from all the tanks could be drawn from a single connection, and the entire unit so balanced upon what appellee calls a "track" that it could be handled manually by a single workman. After the patent had been issued, appellee met a representative of the appellant at a trade convention and described his device to him. This representative displayed great interest in the invention and it is clear from the record that appellant was fully aware of the details of the patented device, and of the fact that it had been patented.

Appellee's original model of the patented device had been constructed under his direction by a mechanic, one Molinari, who later left the employ of appellee under strange circumstances and went to work for appellant. While with appellant he produced for appellant a device similar to that patented by appellee. Appellant produced a large number of these devices and began using them in his business. When appellee learned of this fact he brought this action seeking an injunction against further infringement and an accounting for profits and damages.

The district court held that the patent was valid, that the device of appellant infringed the patent, and granted an injunction against further infringements although finding that an accounting was not necessary. Appellant appeals from this judgment of the district court.

At no point in the proceedings in the district court or in this court was the validity of the patent seriously challenged. The material and decisive question presented and argued before this court is whether appellant's device infringed appellee's patent.

Appellee relies upon Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co., 9 Cir., 151 F.2d 91, 95, and urges upon us the rule there expressed that questions of infringement are questions of fact, and therefore in accordance with the Federal Rules of Civil Procedure, Rule 52(a), 28 U.S.C.A. following section 723c, this court will not set aside the determination of the trial court unless it is "clearly erroneous." However, an examination of the Brodie case and the cases therein cited discloses that Judge Mathews made an application in the Brodie case of the correct rule earlier enunciated in Nicholl, Inc. v. Schick Dry Shaver, 9 Cir., 98 F.2d 511, 513, (referred to in the Brodie case) where he set forth the rule and exception in the following terms:

"The question of infringement was in this case, as it usually is a question of fact. Reinharts v. Caterpiller Tractor Co., 9 Cir., 85 F.2d 628, 630. The case does not, as claimed by appellant, fall within the rule that, where the facts are undisputed, and the case can be determined by a mere comparison of structures, and extrinsic evidence is not needed for purposes of explanation or to resolve questions of the application of descriptions to subject-matter, the question of infringement may be determined as a question of law. United States v. Esnault-Pelterie, 303 U.S. 26, 30, 58 S.Ct. 412, 82 L.Ed. 625." Emphasis supplied

While as Judge Mathews noted, both the Schick Dry Shaver case and the Brodie case fell outside the rule, the case at bar comes clearly within the rule above quoted.

The testimony before the trial judge revolved around the exhibits (full size commercial units) and embraced a discussion of the meaning of the term "stability" as used in the claims in the patent, the absence or presence of prior art, and appellee's charge that appellant deliberately copied his device. The terms of the patent and the respective devices of the parties are also before us for our inspection. The facts are clear and undisputed and the question of infringement in this case can be determined by a comparison of structures and is a question of law. Therefore this court will examine for itself the device of appellant and determine as a matter of law whether it infringes the patent of appellee.

The device patented by appellee, as the patent itself stated, was designed to "provide means for clamping a plurality of tanks into a unit which can be readily moved from place to place by tilting and rolling, together with means for reducing the danger of upset" (see the illustration). As the device was described in the patent seven tanks were to be manifolded together, but it is conceded that the number of tanks is immaterial and that the actual units employed commercially by both appellant and appellee contained only four tanks. Likewise it is conceded by all parties that the slight differences in the means used to clamp the tanks together and to secure them to the plate, are immaterial. The heart of the dispute is the nature of the plate, called the "truck" (see illustration) upon which the tanks rest and to which they are secured.

In appellee's patented device the "truck" is a circular flat sheet of steel to which is attached a circular ring called the "track" (approximately the same diameter as the bottom of one tank and made of pipe) which is welded coaxially to the flat plate. The tanks rest upon this "truck" assembly. As is apparent from the drawing, this makes it possible to tip the unit sufficiently to balance it upon this ring or "track" and to roll the entire unit along in a straight line. (It is not rolled along on the outer edge of the circular plate of the so-called "truck.") On the other hand, in appellant's device, the circular bottom plate to which the tanks are secured, is formed like a soup plate (see illustration) so that the unit may be tipped and rolled along in the same manner as appellee's patented unit.

Appellant has formed the "track" and the "truck" out of the same piece of metal but it does not contend that this fact is important in this case. It concedes that it is immaterial whether the "track" is formed by attaching thereto a metal ring like the "track" on appellee's device, or by forming it, as appellant does, from a single piece of metal that serves as the "truck." Appellant's contention is instead based upon the language employed in the claims of the patent — its theory of the case being that appellant took the patent claims, interpreted them in the light of the specification as securing to appellee certain aspects of his invention, and being thus apprised by the claims, of what was still open to the public, designed his device in such a way as to completely respect appellee's patent rights.

Appellant makes its argument turn upon the language of a single one of the seven claims in the patent. The language of that pertinent claim is as follows:

"2. A truck for handling a plurality of cylindrical tanks comprising a base plate, means for holding a plurality of cylindrical tanks in fixed upright...

To continue reading

Request your trial
16 cases
  • Delco Chemicals v. Cee-Bee Chemical Co., Civ. No. 17387.
    • United States
    • United States District Courts. 9th Circuit. United States District Court (Southern District of California)
    • 11 Diciembre 1957
    ...v. Radio Condenser Co., 9 Cir., 167 F.2d 890, certiorari denied 1948, 335 U.S. 891, 69 S.Ct. 246, 93 L.Ed. 429; Stuart Oxygen Co. v. Josephian, 9 Cir., 1947, 162 F.2d 857, 859. Here, it appears as a matter of law from undisputed facts disclosed by the letters and the file wrapper of patent ......
  • Autogiro Company of America v. United States
    • United States
    • Court of Federal Claims
    • 13 Octubre 1967
    ...his own lexicographer. Chicago Steel Foundry Co. v. Burnside Steel Foundry Co., 132 F.2d 812 (7th Cir. 1943); Stuart Oxygen Co. Ltd. v. Josephian, 162 F.2d 857 (9th Cir. 1947); Universal Oil Products Co. v. Globe Oil & Refining Co., 137 F.2d 3 (7th Cir. 1943), aff'd 322 U.S. 471, 64 S.Ct. 1......
  • Wabash Corp. v. Ross Electric Corp., 21
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • 21 Febrero 1951
    ...... did away with all that by providing a glass bulb filled with oxygen and aluminum foil in such a way that an electric current, entering the ...Co. v. Jacobs, 7 Cir., 178 F.2d 794, 802; Stuart Oxygen Co. v. Josephian, 9 Cir., 162 F.2d 857, 859; Fleming v. Palmer, 1 ......
  • Pointer v. Six Wheel Corporation, 12146.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (9th Circuit)
    • 3 Noviembre 1949
    ...Universal Oil Products Co. v. Glove Oil and Refining Co., 1944, 322 U.S. 471, 473, 64 S.Ct. 1110, 88 L.Ed. 1399; Stuart Oxygen Co. v. Josephian, 9 Cir., 1947, 162 F.2d 857. Commercial success may be taken into consideration in determining validity. The trend, at the present time, is to use ......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT