Temco Electric Motor Co v. Apco Mfg Co

Decision Date03 January 1928
Docket NumberNo. 37,37
Citation48 S.Ct. 170,72 L.Ed. 298,275 U.S. 319
PartiesTEMCO ELECTRIC MOTOR CO. v. APCO MFG. CO
CourtU.S. Supreme Court

[Syllabus from pages 319-321 intentionally omitted] Messrs. H. A. Toulmin and H. A. Toulmin, Jr., both of Dayton, Ohio, for petitioner.

Messrs. Clifford L. Anderson, of Atlanta, Ga., and M. A. Keller, of New York City, for respondent.

Mr. Chief Justice TAFT delivered the opinion of the Court.

The Temco Electric Company, a corporation of the state of Ohio, filed this bill in equity against the Apco Manufacturing Company, a corporation of the state of Rhode Island, charging that the Apco Company had wronged the Temco Company by infringement of a patent for a shock absorber fitted for a Ford motor car, issued to Ralph P. and Wm. S. Thompson, assignors of one-third to Oliver P. Edwards, and assigned by them to the Temco Company, and owned by it. The Apco Company answered, denying the validity of the patent and its infringement, averring that it was inoperative, and that the shock absorber which the Apco Company was making was made under a patent to one William Storrie, applied for March 18, granted September 17, 1918, and numbered 1,279,035. The answer further set out the names of certain patents which were said to be anticipations of the patent upon which the suit was brought.

The District Court held that the patent was a very narrow patent, and that claim No. 3 was invalid because it lacked words of description enough to make it operative. Deferring, however, to the decision of the District Judges and of the Circuit Court of Appeals of the Sixth Circuit, it sustained the three claims of the patent, but declined to grant a preliminary injunction. Though of opinion that the infringement had not been shown, nevertheless it en- tered a decree in favor of the appellee out of deference to two decisions of the Circuit Court of Appeals. K-W Ignition Co. v. Temco Electric Motor Co., 243 F. 588, and the same case reported again in 283 F. 873. The Circuit Court of Appeals of the Fifth Circuit declined to follow the two decisions of the Circuit Court of Appeals of the Sixth Circuit, and reversed the judgment of the District Court. There had been a cross-appeal brought by the appellee to reverse the District Court in its holding that the third claim was invalid, and that cross-appeal was denied. 11 F.(2d) 109. The case has been brought here by certiorari. 271 U. S. 653, 46 S. Ct. 483, 70 L. Ed. 1134.

The patent sued on was issued to Ralph P. Thompson and William S. Thompson, of Leipsic, Ohio, assignors of one-third to Oliver P. Edwards, of Leipsic, Ohio. The application was filed October 10, 1912, and the patent was issued September 9, 1913, and numbered 1,072,791, and has since been assigned by the patentees to the Temco Company. The object of the patentees was to provide a shock absorber which would make riding in an automobile easy. They professed to accomplish this by supplying a set of quick-acting coiled springs in connection with the set of slow-acting and friction-retarded leaf springs originally built into the vehicle. The compression and recoil of the two sets of springs occurred at different times, in consequence of which their respective pulsations were not synchronous. The result was said, in the specifications, to be that the shock to the road wheel and axle was first absorbed by the coiled spring, and therefrom was transmitted to the body of the car, and to the occupants through the slow-acting leaf spring. As the compression and recoil of the leaf spring were not the same as those of the coiled spring, the recoil of the coiled spring began to take place before the full effect of the shock to the road wheel could be transmitted through the leaf spring. This seesawing action, as it were, between the quick-acting coiled spring and the slow-acting leaf spring, the specifications said, caused a large portion of the effect from vibrations to be nullified by the action of one and reaction of the other of these springs taking place simultaneously, thus absorbing within the spring element the sharper vibrations. The device was intended to be specially adapted for attachment to Ford automobiles. Its availability was claimed to be such that the owner of a Ford car, without the services of a mechanic, and without disturbing the operation or construction of the car, might, with slight instruction, remove the usual hanger which suported each end of each leaf spring, and insert in its stead the plaintiff's attachment.

The absorber consisted of an upright metal guide, whose lower end was rigidly attached to the car axle, and provided a platform for the lower end of a coiled or torsion spring, inclosed in a cylindrical metal casing or hanger, bearing against and supported by the upper end of the coiled spring, and so was capable of upward and downward sliding movement on the guides; the stanchions or guides being adapted to maintain the verticle direction of the sliding movement of the absorber or torsional spring, and to limit the end movements of the leaf springs along the axle.

When the patent was issued there was a great demand to purchase the device and use it, and under the patentees, or under the K-W Ignition Company, which had a contract with the patentees, there were made and sold up-wards of 134,000 sets of the shock absorbers, and about $2,250,000 was from time to time paid to the patentees for these absorbers, so that from 1912, for 10 years or more, a very large business was done in the sale and use of the patented device. There was litigation over it, especially in the districts of the Sixth Circuit, where the validity of the patent was generally sustained; the first case having been heard by a former justice of this court while a Dis- trict Judge of the Northern District of Ohio. His opinion is recorded in the record. The case not only involved the validity of the patent, which after some hesitation he sustained because of its general adoption and success, but also presented a question whether the defendants in that case, the K-W Ignition Company, were not so bound by contract with the patentees as to estop them from defending against the patent. The District Judge held, however, that the contract had expired, and the obligations growing out of it had also expired, so that the issue tried was that of the validity of the patent. The District Court's decree was affirmed by the Court of Appeals, and the case was sent back for an accounting, and an accounting was had against the defendant in that case, and a judgment given for $292,938 against the K-W Ignition Company, which was a defendant there. In the present suit, the bill set up this litigation in Ohio as evidence of the validity of the patent, but a straight issue of validity was also made, and all the defenses known were advanced.

The District Judge in Ohio in the K-W Ignition Case was affected in his decision, that the Thompson patent involved invention, by the way in which the public eagerly took it and its marked success, and so, indeed, was the Circuit Court of Appeals of the Sixth Circuit. So are we.

The attack now made upon the patent is that it has been proved to be ineffective by 10 years' actual use, some injuries to the shock absorbers resulting from striking of the parts of the motor machine against the metal guides and cylindrical metal hangers in which the torsional spring is moved up and down. It appears that the real owners of the patent, realizing that there were defects in the operation of the absorber that should be remedied, applied to the Patent Office for a patent which should substitute for the stanchions or guides, on which the hanger around the torsional spring moved up and down in a verticle direction, a fixed radius link. The torsional spring of the patent inclosed within the casing or hanger attached to the upright guide did not, in moving or sliding up and down, retain a vertical direction, but was sometimes tilted over by the weight of the car and its load. The change proposed, in regard to this, was that, while the spring should be placed outside the...

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    ...liability by merely adding features or impairing or improving on the patentee's invention. Temco Electric Motor Co. v. APCO Mfg. Co., 275 U.S. 319, 328, 48 S.Ct. 170, 173, 72 L.Ed. 298 (1928). 80. The patent-in-suit is pioneering in nature and is therefore entitled to broad and liberal cons......
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