Trabon Engineering Corporation v. Dirkes

• Decision Date: 04 June 1943
• Docket Number: No. 9358.,9358.
• Citation: Trabon Engineering Corporation v. Dirkes, 136 F.2d 24, 58 USPQ 97 (6th Cir. 1943)
• Parties: TRABON ENGINEERING CORPORATION v. DIRKES et al.
• Court: U.S. Court of Appeals — Sixth Circuit

136 F.2d 24 (1943)

TRABON ENGINEERING CORPORATION v. DIRKES et al.

No. 9358.

Circuit Court of Appeals, Sixth Circuit.

June 4, 1943.

F. O. Richey, of Cleveland, Ohio (F. O. Richey, H. F. McNenny, and Richey & Watts, all of Cleveland, Ohio, on the brief), for appellant.

Lacey Laughlin, of Detroit, Mich. (Barnes, Kisselle, Laughlin & Raisch and Lacy Laughlin, all of Detroit, Mich., on the brief), for appellees.

Before SIMONS, ALLEN, and HAMILTON, Circuit Judges.

SIMONS, Circuit Judge.

Involved in the present infringement suit is the Hillis reissue patent No. 21,236 for a "divisional feeder" designed to deliver measured quantities of lubricants to each of a number of outlets leading to bearings to be lubricated. The original patent to Hillis was No. 2,027,171, issued January 7, 1936, on an application filed January 26, 1934. The reissue was granted October 17, 1939, upon an application filed August 20, 1936. The issues here presented relate solely to validity. The defendants had counterclaimed on a patent to Dirkes No. 2,146,424, and charged infringement thereof by the appellant, but the court held both patents in suit invalid and the counterclaimants have not appealed.

The Hillis structure is incapable of precise description without detailed reference to models and drawings. It will be sufficient, however, for our purposes, to refer to it in the language of the Examiner in Interference (No. 72,609) as comprising "a liquid dividing and measuring device designed for use in a lubricant supply line which successively will receive lubricant from the line in measured amounts and discharge it through various conduits and outlets to various bearings, as the bearings of an automobile chassis, which require intermittent lubrication. The measuring device consists of a member having two cylindrical cavities and reciprocatory plungers in the cavities which serve both as pumps for the measured quantities of lubricant and as valves for the passage of the pumped lubricant to the conduits leading to the bearings." A typical claim is printed in the margin.¹

The defense of invalidity was grounded principally upon delay in seeking reissue and the insufficiency of the oath in support of the application therefor, anticipation by the French patent to Vincent, No. 702,682, and because a device responding to the claims was offered for sale more than two years before the patent thereon was applied for, constituting it invalid under the provisions of 35 U.S.C.A. § 31. Hillis was held to be invalid upon the second and third ground without discussion of the validity of the reissue or the sufficiency of its application.

The applicant's oath in seeking reissue, recited that his attorneys drafted and accepted claims not commensurate with the invention because they were unable to make broad claims which were regarded as complete by the examiner, the latter seeming to desire a complete description of the device in each claim. In Union Switch & Signal Co. v. Louisville Frog, Switch & Signal Co., 6 Cir., 73 F. 2d 550, we held an oath insufficient which failed to recite what constituted the inadvertence, accident, or mistake, or how it arose. In the oath presently considered, the ground for the mistake is set forth and facts are disclosed which reasonably support the claim of error on the part of applicant's attorneys. We are not presented with a situation such as existed in Firestone Tire & Rubber Co. v. U. S. Rubber Co., 6 Cir., 79 F.2d 948, where we concluded there could be no chance for misunderstanding in regard to the breadth of the invention when the inventor acted as his own lawyer. The reissue is not invalid for insufficiency of application or supporting oath. Nor was there an unreasonable delay in seeking reissue, as in Roos Co. v. McMillan, 6 Cir., 64 F.2d 568, since no intervening rights arose. American Automotoneer Co. v. Porter, 6 Cir., 232 F. 456.

The sole prior art reference now urged in support of the contention that the claims of Hillis were anticipated, is the Vincent (French) patent and the specification which Vincent incorporated in 1931 in an application for a British patent. The application for the British patent was abandoned and no patent ever issued thereon. Its publication in 1933 was subsequent to the Hillis invention which the record shows to have been in commercial use and on sale in March, 1932. Vincent is clearly a paper patent. There is no evidence whatsoever of its commercial exploitation, and in its complicated arrangement of pistons, cylinders, spring-controlled ball valves, it appears upon the record to be clear that it is inoperative without substantial modification, — an inference that gains some support from the abandonment of the Vincent British application.

We have no doubt that paper patents which precisely disclose the purpose, means, and mechanism for accomplishing the end of a patent in suit, or which may be adapted for that purpose by obvious and common mechanical expedients, may be regarded as anticipatory in that they disclose lack of novelty in an assailed invention. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 423, 22 S.Ct. 698, 46 L.Ed. 968. But an organization that was neither conceived nor disclosed by the prior inventor, nor adapted by obvious or well-known mechanical expedients, will not convert a prior patent into an anticipation. Topliff v. Topliff, 145 U.S. 156, 12 S.Ct. 825, 36 L.Ed. 658; Gordon Form Lathe Co. v. Walcott Mach. Co., 6 Cir., 32 F.2d 55. The fact that a prior art device, even though adaptable, was not in fact adapted, strongly indicates that the changes were not obvious and involve more than mechanical skill. Potts & Co. v. Creager, 155 U.S. 597, 15 S.Ct. 194, 39 L.Ed. 275; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U.S. 428, 31 S.Ct. 444, 55 L.Ed. 527.

The Vincent patent discloses a structure wherein the lubricant, when ejected by reciprocation of the piston in the cylinder, is forced into a central reservoir instead of directly to the bearing. It is then withdrawn by suction resulting from the movement of the pistons and eventually discharged into the bearings through spring-controlled ball valves. In Hillis, as the lubricant enters one end of the cylinder that at the other end is ejected directly to the bearing. Vincent, in effect, is a combination of two separate mechanisms, one acting as a motor, the other operating as a pump. In Hillis, the central pumping device of Vincent is absent. In addition, Hillis apparently achieves a wholly new and useful result in that if any bearing is so clogged that lubricant cannot be forced into it, the device will automatically stop and so warn the operator that all bearings cannot be reached. This the Vincent device would not do. Vincent is, in all likelihood, inoperative if all the pistons are on the same side at the start of the operation. Such situation is immaterial in Hillis. A distinction seems to be fairly established that Hillis may be made to operate on only two cylinders while Vincent is wholly inoperative on an even number of cylinders without substantial modification. There is no commercial history to the Vincent structure, while Hillis and the infringing machine of Dirkes have had a substantial degree of success. The counterclaim leaves no doubt of infringement by Dirkes, if Hillis be valid.

To suggest even theoretically the operability of the Vincent patent requires substantial changes therein to eliminate spring valves, ducts leading to the reservoir, and the reservoir itself. It involves changes in diameter of plungers, a reversal of the movement of the lubricant, and some revision in the successive action of the pistons made necessary by other modifications. There is no demonstration, however, that even when so adapted Vincent would become a practical...