Turner v. Spinner

• Decision Date: 03 June 1925
• Citation: 6 F.2d 172
• Parties: TURNER v. SPINNER.
• Court: U.S. District Court — Eastern District of New York

6 F.2d 172 (1925)

TURNER v. SPINNER.

District Court, E. D. New York.

June 3, 1925.

Lockwood & Lockwood, of Indianapolis, Ind. (Ralph G. Lockwood, of Indianapolis, Ind., and Theodore Kenyon, of New York City, of counsel), for plaintiff.

Arthur H. Serrell, of New York City (Stephen J. Cox, of New York City, of counsel), for defendant.

CAMPBELL, District Judge.

This is a suit in equity, in which plaintiff is seeking an injunction to restrain and damages for the alleged infringement of patent No. 1,172,173, issued by the United States Patent Office to Thomas B. Shryock, for internal combustion engines, dated February 15, 1916, the title to which by mesne assignments is vested in plaintiff. Defendant denies validity and infringement.

The patent relates to improvements in timers for internal combustion engines. The patent has but one claim, which reads as follows:

"I claim: A timer of the class described, comprising a disk surrounding the timer shaft, an annulus disposed concentrically of said shaft and resting upon said disk, and capable of rotation relatively to said shaft and disk, an arm secured to said shaft and radiating therefrom, a contact brush carried by the outer end of said arm and disposed in a plane parallel with the shaft, a disk seated in the outer end of said annulus and adapted to move therewith, contact plates on the inner surface of said disk, adapted to be successively engaged by said brush in the rotation of the latter under the action of the timer shaft, binding posts projecting through the opposite face of said disk and connected with the wires leading to the spark plugs of the engine, a hood secured to the outer edge of said annulus and inclosing said last-mentioned disk, binding posts and the adjacent ends of the wires and formed with an opening through which the wires pass, and means for moving said annulus, whereby said contact plates will be moved relatively to said brush to change the time of the spark."

To show the prior art, defendant offered the following patents issued by the United States Patent Office: No. 912,683, issued to Robert Jardine, for distributor, dated February 16, 1909, which formed one of the references in the Patent Office; No. 882,876, issued to Charles C. Dodge, for spark-timing apparatus, dated March 24, 1908; No. 886,225, issued to Henri De La Valette, for current distributing device for igniting explosive engines, dated April 28, 1908; No. 952,166, issued to Gilbert Wright, for automatic timer, dated March 15, 1910; and British patent No. 18,534, issued to the firm Robert Bosch, for multiple distributor for electric ignition apparatus.

From a consideration of the said patents and the testimony of Mr. Schwartz, the expert called by the plaintiff, it appears that most, if not all, of the elements of the plaintiff's patent were old and well known. The disk surrounding the timer shaft is old, and is part of the permanent frame of the Ford car, on which both plaintiff's and defendant's timers are used. It was old to have an annulus disposed concentrically of said shaft and resting upon said disk, capable of relative movement. It was old to have an arm mounted on the timer shaft, carrying a brush at the outer end, which successively came in contact with the contact plates, and it was likewise the practice to have the timer shaft disposed horizontally as well as vertically in some cases. The head of the timer shaft in some cases pointed upward and in some cases pointed downward.

Dodge in his patent shows a disk seated in the outer end of said annulus, as the same are called by plaintiff, and adapted to move therewith, the same being made in one piece of insulating material, contact plates on the inner surface of said disk, adapted to be successively engaged by said brush, and binding posts projecting through the opposite face of said disk and connected with wires leading to the spark plugs.

In certain types of apparatus in the electrical art it was common to put a cover over terminals, where they needed to be protected, and in the patent to Jardine, supra, he says (page 1, lines 105-108): "A suitable cover, not appearing in the drawing, closes the top of the distributor against the entrance of moisture and dirt." But I do not find in the prior art a hood secured to the outer edge of the annulus, inclosing the last-mentioned disk, binding posts, and the adjacent ends of the wires formed with an opening through which the wires could pass, although it was a common expedient to have a hole through which the wires could pass.

The patentee originally applied for two claims; the first being the claim finally allowed, and the second reading as follows:

"2. In a timing device of the class described, the combination with a timer shaft, contact plates spaced apart about said shaft concentrically thereof and connected with the sparking devices respectively of the engine, a contact brush carried by said shaft rubbing over said contact plates successively, and a hood enclosing said contact plates and the connections between the latter and the wires leading to the spark plugs."

The first was a very narrow claim. The second was a broad claim, which without question would read on defendant's structure, but the Examiner reported as follows: "Claim 2 is thought to lack invention over Jardine, 912,683, Feb. 16, 1909 (123-167). Claim 1 is allowable, as at present advised."

Plaintiff accepted the decision of the Patent Office and by amendment canceled claim 2, and substituted the following broad claim:

"2. In a timing device of the class described, the combination with a timer shaft, contact plates spaced apart about said shaft concentrically thereof, and a contact brush carried by said shaft and movable in a path at one side of said plates and rubbing over said plates successively."

Claim 2 was again rejected, upon De La Valette, 886,225, April 28, 1908 (123-167). This claim probably would have read on defendant's structure. The plaintiff accepted the decision of the Patent Office and by amendment canceled such claim, and requested the removal of the ordinal from the remaining claim, whereupon the patent was issued with only one claim.

The patentee, having accepted the action of the Patent Office in rejecting the broad claims made by him in order to obtain a patent, cannot now broaden his claim to include anything which was rejected. Van Epps v. United Box Board & Paper Co., 137 F. 418, 75 C. C. A. 77. The only claim of the patent in suit is strictly limited by the plain language used. Royer v. Coupe, 146 U. S. 524, 13 S. Ct. 166, 36 L. Ed. 1073; Merrill v. Yeomans, 94 U. S. 568, 24 L. Ed. 235; Fulton Co. v. Powers Regulator Co. (C. C. A.) 263 F. 578.

The public has a right to rely upon the limitations of the claims in the patent, and...