United States Rubber Co. v. General Tire & Rubber Co.

• Decision Date: 07 May 1942
• Docket Number: No. 8899.,8899.
• Citation: 128 F.2d 104
• Parties: UNITED STATES RUBBER CO. v. GENERAL TIRE & RUBBER CO.
• Court: U.S. Court of Appeals — Sixth Circuit

128 F.2d 104 (1942)

UNITED STATES RUBBER CO. v. GENERAL TIRE & RUBBER CO.

No. 8899.

Circuit Court of Appeals, Sixth Circuit.

May 7, 1942.

F. O. Richey, of Cleveland, Ohio (C. T. Neal, of Springfield, Mass., Richey & Watts, of Cleveland, Ohio, and Chapin & Neal, of Springfield, Mass., on the brief), for appellant.

Albert L. Ely, of Cleveland, Ohio (Wm. C. McCoy, Frank S. Greene, and Evans & McCoy, all of Cleveland, Ohio, on the brief), for appellee.

Before SIMONS, MARTIN, and McALLISTER, Circuit Judges.

MARTIN, Circuit Judge.

This opinion should be read as supplementary to General Tire & Rubber Company v. Fisk Rubber Corporation, 6 Cir., 104 F.2d 740, where claims 1 to 10, inclusive, and claim 14 of Midgley Patent No. 1,742,777 were held valid and infringed.

Some four months after entry in the district court of an interlocutory decree and injunction pursuant to the mandate of this court, the United States Rubber Company, as successor in right, title and interest to the entire patent rights, assets, business and goodwill of the Fisk Rubber Corporation and as substituted plaintiff, moved for a supplemental injunction against the General Tire & Rubber Company to prevent the manufacture, sale and use of a machine termed in the record "defendant's third apparatus," and to enjoin the use of the method employed in that machine. There has been no previous issue presented concerning this so-called "third apparatus."

The motion for the supplemental injunction was referred to the same special master who had served as such throughout the litigation and whose previous findings had been upheld both here and in the district court. The special master found in the "third apparatus" no infringement of the Midgley patent claims and, accordingly, recommended denial of the motion. The district judge overruled exceptions to the special master's report, confirmed the report, and denied the motion for the supplemental injunction. The United States Rubber Company has appealed.

The "defendant's third apparatus" is a four-roll calendar machine, in which three of the rolls are in vertical plane and one of the upper rolls is offset horizontally toward the side from which the sheet of cords advances in an almost horizontal plane and passes downward underneath the offset roll in contract with its under surface. Heat is imparted to the cords from the offset calender roll. After passing under this offset roll, the cords pass over a supporting bar, with a narrow upper edge, then under a spacer bar which has numerous grooves spaced closely to maintain the cords in alignment at correct distances. The cords next slide under a finely tapered, smooth polished steel shoe, or plate. This steel shoe extends close to the bight between the upper and middle vertically placed rolls, and guides the cords until they meet two sheets of rubber; one of which from a bank comes between the two lower vertical rolls, passes up over the middle roll, contacts the cords, which then lie on top of the sheet, and the other of which from another bank comes between the offset roll and the upper vertical roll, passes down around the under side of the latter and against the upper side of the sheet of cords. The cords contact the two sheets of rubber simultaneously, and the united cords and sheets then pass with the middle calender roll around almost one-fourth of the circumference of that roll until the composite sheet passes through the bight of the middle roll and an adjacent small pressure and take-off roll.

In its passage between the upper and middle vertical rolls, the cord is laid upon the rubber sheet carried by the middle roll and, at heavy pressure to form the fabric sheet, is pressed down against the rubber sheet by the top roll, carrying the other rubber sheet. The fabric then proceeds, as described, to the point where it receives added pressure from a smaller roll, which serves also as a take-off roll.

Appellant's expert witness likened the "defendant's third apparatus" to the machine of the Midgley Patent No. 1,172,777, and to the appellee's infringing machine, in that each takes a sheet of hot cords, feeds the cords in spaced and parallel relation to a sheet of rubber on one of the rolls of a calender; applies pressure between the cords and the sheet of rubber by means of a roll which, in function, is alike in each machine; applies tension to the cords in similar manner; feeds a second sheet of rubber to the cords lying on the sheet of the rubber which is supported by one of the rolls; and applies final pressure by two calender rolls as the two sheets of rubber with the cords between them pass through the bight of the last mentioned rolls. The expert made the added point that, in each machine, there is a substantial are between the two bights, over which the cords are stretched in contact with the sheet of rubber on which they rest.

Appellant contends that the infringing machine, the use of which has been enjoined, and the accused "third apparatus" are alike in that, in both, product and results are identical; that the speed of the two machines is the same; that there are two bights in each machine and an intervening arc of approximately ninety degrees; that rubber and cords pass through each bight and around the arc in each machine; that there is cord embedding and sheet reducing pressure in each bight; that there is pull on the outgoing end of the fabric in each machine; that the cords are embedded in the lower sheet over the arc in each; that sheets of rubber are formed between bights in similar manner in each machine; that, in each, a tension is maintained beyond the point of entry of the cords into the bight of the pressure rolls, aiding in the affixing of the cords in the rubber; and that pressure is placed upon the off-take roll in the "third apparatus" to cause reduction in the sheet and embedment of the cords in the fabric.

In rejoinder, the appellee insists that its "third apparatus" lacks the vital element of the Midgley Patent combination, which was present in its infringing first apparatus. It is pointed out that in the Midgley Patent the cord-placing roller is in contact with the sheet of rubber on the surface of the next-to-the-top calender roll; the cords are fed over the cord-placing roller and pressed and anchored into the rubber sheet, and thus anchored are carried by the sheet through the arc on the calender roll to the bight between it and the next-to-the-bottom calender roll, where a second sheet of rubber is met on the last mentioned roll and the calender bight pressure is applied. Upon comparison, it is shown that the same combination and arrangement of elements appear in the adjudicated infringing apparatus, but it is urged that the "third apparatus" reveals an entirely different organization of elements. It is admitted that the four calender rolls, each pair forming a sheet of rubber with the two sheets meeting at the bight between the top roll and the middle roll of the vertically placed calender rolls, are present in the "third apparatus".

But it is emphasized that the Midgley grooved roll 62, which presses the hot cords directly into the rubber sheet and holds them therein at the bight between roll B and roll 62, as depicted by Midgley, is conspicuous by its absence from the "third apparatus." As the appellee points out, there is in the "third apparatus" no preliminary application of the cords to the sheet of rubber on either of the two top vertically placed calender rolls before the cords enter the bight between them, nor is there an arc through which the underlying layer of rubber and layer of cords are carried before entering the bight, affording no opportunity, therefore, for the cords to be anchored in one sheet of rubber or to embed themselves therein before encountering pressure at the calender bight. The argument runs that the designer of the "third apparatus" devised an entirely different method of holding the cords in position under heavy pressure at the calender bight, in that the mechanical guides provided by the "third apparatus" hold the cords so firmly and accurately that although both sheets of rubber are met simultaneously at the bight the cords "stay put"; while Midgley relied upon the anchoring effect of the cords in the first sheet of rubber and counteracted the disturbing effect of the calender pressure in the bight by using the one sheet of rubber as an anchorage or foundation for the bank of cords, so that the cords would be held therein and prevented by the rubber from floating around in the calender bight.

It is argued further that Midgley roll 62 and the small roll of the infringing apparatus each performed the office of leading the cords to the rubber sheet on the calender roll in advance of the bight, while in the "third apparatus" this step, essential to Midgley and to the adjudged infringing machine, is omitted entirely and the cords are led directly into the calender bight, arriving there simultaneously with the two sheets of rubber and being subjected to a heavy pressure which would disarrange the cords, unless held right up to the bight by the mechanical guides. It is stressed...