Water Hammer Arrester Corporation v. Tower

• Decision Date: 31 August 1946
• Docket Number: No. 8900.,8900.
• Citation: 156 F.2d 775
• Parties: WATER HAMMER ARRESTER CORPORATION v. TOWER.
• Court: U.S. Court of Appeals — Seventh Circuit

156 F.2d 775 (1946)

WATER HAMMER ARRESTER CORPORATION v. TOWER.

No. 8900.

Circuit Court of Appeals, Seventh Circuit.

July 3, 1946.

Rehearing Denied August 31, 1946.

Elwin A. Andrus, of Milwaukee, Wis., and Harold Olson, of Chicago, Ill., for appellant.

Bertram Wm. Coltman, of Chicago, Ill., and Ralph W. Brown, of Milwaukee, Wis., for appellee.

Before SPARKS and MAJOR, Circuit Judges, and BRIGGLE, District Judge.

SPARKS, Circuit Judge.

By this complaint Water Hammer Arrester Corporation sought a declaratory judgment against the defendant relative to United States patent to Tower, No. 2,273,766, issued February 17, 1942, upon an application filed August 4, 1940. The alleged invention covered by the patent relates to a water hammer arrester, or other energy absorbing appliance of the type in which abnormal impulses or fluctuations in pressure of water or other liquid in a pipe or other conduit are suppressed by compression of a gas or other compressible fluid medium to prevent water hammer.

Plaintiff is now engaged in the manufacture and sale of water hammer arresters, and it or the Fleming Manufacturing Company have been thus engaged since midyear of 1936. During that time Cook Electric Company has been engaged in manufacturing the steel bellows used by plaintiff and the Fleming Company in their devices. On February 19, 1942, defendant, within three days after the issuance of his patent, notified plaintiff and Cook Electric Company that plaintiff's devices were infringements of his patent, and on May 10, 1942, plaintiff received from defendant a second notice of such infringement. This action followed on June 3, 1942.

The complaint further alleges that defendant was not the original and first inventor or discoverer of the subject matter of the patent, and that he secured its issuance by reason of his false oath to the effect that he was.

The relief prayed for was that defendant be temporarily and perpetually enjoined from sending notices of infringement of his patent to plaintiff's customers or prospective customers or to parties engaged in the manufacture of parts for plaintiff's use in the manufacture of its water hammer arresters, and from threatening with suit, or from suing plaintiff's customers or prospective customers charging infringement of his letters patent; that defendant be temporarily restrained pendente lite, and permanently thereafter from transferring title or any interest in and to his letters patent to others; that the court decree his letters patent No. 2,273,766 invalid and void and not infringed by plaintiff's devices, for costs against the defendant and all other proper relief.

Aside from the formal parts of the complaint, the defendant denied its material allegations. One week before the trial of the case defendant moved for a summary judgment in his favor, for the alleged reason that an actual and justiciable controversy in law did not then exist between the parties upon the facts set forth in his motion, which in substance are as follows:

"The only water hammer arresters the plaintiff has ever made, used or sold, or now makes, uses, or sells, are shown in the drawings, Plaintiff Exhibits 1 and 2 of the complaint, and shown in the drawings, Defendant Exhibit 1, adduced on adverse examination of the president of the plaintiff corporation, and these water hammer arresters have a one-sixteenth inch clearance between the bellows and the casing and not a close fit to throttle the displacement of fluid as described in the patent in suit and defined by express terms in the claims thereof.

"The defendant admits in its answer to the complaint that the water hammer arresters in Plaintiff Exhibits 1 and 2 do not infringe the patent in suit, * * *

* * * * * *

"Wherefore, as appears from the facts shown in the record and the admissions made by the defendant thereon, the plaintiff, * * *, is absolved by the defendant from any charge of infringement of the patent in suit as to the water hammer arresters shown in Plaintiff Exhibits 1 and 2 and Defendant Exhibit 1, and therefore, an actual and justiciable controversy between the parties does not exist upon which the suit for a declaratory judgment may be maintained * * *."

The District Court overruled defendant's motion for a summary judgment. It wrote an opinion (66 F.Supp. 732), and found the facts specially at great length. It stated its conclusions of law thereon and rendered a decree adverse to the defendant, granting the relief prayed in the bill for declaratory judgment. Costs were assessed against appellant. From this decree the defendant appeals.

The theory of defendant's motion for a summary judgment is that since defendant by his motion admits that plaintiff's device does not infringe the patent, the plaintiff can no longer urge the question of validity. A study of this record discloses beyond any peradventure that the motion is based upon alleged facts which are unsupported by the evidence. For instance, defendant assumes and alleges in his motion that all of plaintiff's arresters have a 1/16 inch clearance between the bellows and the casing, and not a close fit as described in the patent and its claims. Of course neither the patent claims nor its specifications contain any limitations upon the words "close fit." However, he insists that the clearance referred to in the manufactured device of the patent is 1/32 inch, although he and his expert witness both admitted that the patented device would work successfully with a greater clearance than 1/32 inch, and they were unable to state the precise limitation, in fact, the defendant's expert said it could not be stated except by trial and error method.

The defendant's motion avers that the only water hammer arresters that plaintiff ever made, used, or sold or now makes, uses or sells have a 1/16 inch clearance, and at first he contended that a clearance of that dimension would not work successfully. However, after witnessing the demonstrations and successful working of certain of plaintiff's devices he concluded and now insists that plaintiff's devices do not infringe the patent so long as plaintiff's clearances are not less than 1/16 inch, notwithstanding the fact that the patent claims read perfectly upon plaintiff's devices. Regardless of defendant's averment to the contrary, this record discloses that some of plaintiff's devices did have a less clearance than 1/16 inch, and greater than 1/32 inch and that they worked successfully. In support of his statement defendant relies on plaintiff's exhibit 1. It is a drawing made by the Cook Electric Company which manufactures and supplies the bellows used by plaintiff and its predecessor. This drawing was made on October 7, 1936. It illustrates the arrester made by Fleming Manufacturing Company in the same year. It shows a bellows with 51 flanges, each of a diameter of 5 7/8 inches, and incorporated in a casing having an interior chamber of a diameter of 6 1/16 inches. Each tenth flange has a skid wire carried thereby which increases the diameter of the bellows flange about 1/32 inch. This creates a restricted passage of 1/16 inch at every tenth flange between the bellows and the casing, and a restricted passage of 3/32 inch between all other flanges of the bellows and the casing.

The restricted passages of this arrester create a throttling action of the water being squeezed from between the convolutions of the bellows into the restricted passages between the casing and the outer periphery of the bellows, by reason of the frictional resistance caused by such flow of the water. Defendant was given a blue print copy of this drawing during the first week of April 1937, and its constructional operation was explained to him at that time. This exhibit discloses the water hammer arrester covered by the claims of the patent.

Exhibit 2 is also a drawing made by Cook Electric Company, on October 19, 1936. It also illustrates an arrester made by Fleming Manufacturing Company, in 1936, and a blue print of it was given defendant in the first week of April, 1937. A bellows of 76 flanges, each of a diameter of 2 12/32 inches, is incorporated in the casing having an interior chamber of a diameter of 2 15/32 inches. Every tenth flange has a skid wire carried thereby which increases the diameter of each of those flanges 1/32 inch. A restricted passage of 3/64 inch exists between all other flanges of the bellows and their casing. Its construction and operation was fully explained to the defendant when he first received it in April 1937. It responds perfectly to each of the claims in the patent.

Plaintiff introduced many exhibits such as drawings, sketches, arresters made and used by it, correspondence between defendant and plaintiff and its authorized agents, prior public use, prior publication of such uses, more than 3000 test run sheets, prior art, and reports of its agents engaged in such research. As early as July 11, 1936, Mr. Baker of Cook Electric Company, who was also engaged in plaintiff's research, made a pencil sketch, used to prepare plaintiff's Exhibit 90, which disclosed a clearance of precisely 1/32 inch. All of this information disclosed by plaintiff's exhibits and evidence was fully known by defendant when he filed his application. Under these circumstances we think defendant's concession of no infringement by plaintiff's devices where the clearance is not less than 1/16 inch does not give plaintiff the relief to which it is entitled. There was no error in overruling defendant's motion for a summary judgment. See Maryland Casualty Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 61 S.Ct. 510, 85 L.Ed. 826; Altvater v. Freeman, 319 U.S. 359, 63 S.Ct. 1115, 87 L.Ed. 1450; Allegheny Steel & Brass Corporation v. Elting, 7 Cir., 141 F.2d 148.

Whether an invention or discovery is valid and patentable depends upon certain conditions set forth in 35 U.S.C.A. § 31. It provides that any person may obtain a patent for anything within the...