Westinghouse Electric Corp. v. Bulldog Elec. Prod. Co.

• Decision Date: 24 July 1953
• Docket Number: No. 6544.,6544.
• Citation: 206 F.2d 574
• Parties: WESTINGHOUSE ELECTRIC CORP. v. BULLDOG ELECTRIC PRODUCTS CO.
• Court: U.S. Court of Appeals — Fourth Circuit

206 F.2d 574 (1953)

WESTINGHOUSE ELECTRIC CORP. v. BULLDOG ELECTRIC PRODUCTS CO.

No. 6544.

United States Court of Appeals Fourth Circuit.

Argued June 5, 1953.

Decided July 24, 1953.

Carl S. Lloyd, Chicago, Ill. (James M. Guiher, Clarksburg, W. Va., and Ralph H. Swingle, East Pittsburgh, Pa., on brief), for appellant.

Arthur W. Dickey and Jacob L. Keidan Detroit, Mich. (C. Lee Spillers, Goodwin, Spillers & Mead, Wheeling, W. Va., S. Eugene Bychinsky, Butzel, Levin, Winston & Quint, Cyrus G. Minkler and Harness, Dickey & Pierce, Detroit, Mich., on brief), for appellee.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

DOBIE, Circuit Judge.

This is an appeal from a final judgment of the United States District Court for the Northern District of West Virginia, entered September 5, 1952, dismissing a complaint of Westinghouse for infringement by Bulldog of seven patents, six of which relate to electric circuit breakers and one to a circuit breaker panelboard. The complaint was in usual form charging infringement of the seven Westinghouse patents. The answer denied validity and infringement of all of the patents in suit, set up an unclean hands defense, and as to one of the patents in suit, alleged a failure to disclaim certain claims of this patent which had been held to be invalid.

Four only of the seven patents sued upon are relied upon on this appeal, namely Jennings Reissue 19,887 (claims 1, 5, 6 and 9 only); Hodgkins 2,073,103 (claims 31, 32, 33 and 39-44); Jennings 2,190,517 (claims 15, 19-23, 25 and 27-35); and Swingle 2,329,362 (claims 27, 53, 54, 69, 70 and 76-80). The questions involved are the validity and infringement of these patents. The elaborate opinion of the District Judge is reported in 106 F.Supp. 819.

The Defense of Unclean Hands or Misuse of Patents.

This case was before us once before on this issue, 4 Cir., 179 F.2d 139. The District Court had granted a summary judgment of dismissal on the ground that plaintiff had been guilty of illegally using the patents in suit in restraint of trade. We reversed this judgment and sent the case back to the District Court.

Bulldog stoutly insists that upon the evidence adduced at the instant trial, this defense is valid. We find nothing in the present record to support this contention, and it is not necessary to add to what was said by Judge Parker in his opinion on the former appeal. The District Court held this defense to be unfounded.

Jennings Reissue Patent No. 19,887.

This patent covers a panelboard for electric circuit breakers. The Jennings panelboard uses a metal housing, comprising a bottom wall, side walls, and end walls forming a box-like structure. Fastened to the inside of this casing are longitudinally extending bars on which are mounted the circuit breakers in two rows.

The inner ends of the individual breaker enclosures each have a vent opening extending from adjacent the contacts into the space between the two rows of breakers. This space is divided by a barrier into two separate flues or conduits which are closed by a cover plate. The gases formed by the arc drawn between the contacts adjacent the vent opening at the inner end of each circuit breaker escape into the conduit between the rows of breakers and are conducted to the upper end of the outer metal housing.

In panelboards having switches and fuses, there is no problem of safely dissipating arc gases given off during the interruption of short circuits. The switches do not interrupt short circuit currents, since that function is performed by the fuses; and the fuses are totally enclosed devices which are thrown away after each use and no gases are emitted therefrom. One important problem in a circuit breaker panelboard is to get the arc gases, generated during the interruption of a short circuit, out of the space between the contacts without conductive particles being deposited on the walls adjacent the contacts, so that the device will maintain high dielectric strength and be able to operate successively, which is not required of fuses. At the same time, there must be no flashover between adjacent circuit breakers which are at different potentials.

The Circuit Master panelboard of Bulldog, the accused infringing device, consists of an outer metal box with a bottom and side walls. The two spaced rows of circuit breakers are mounted on channel bars. Each circuit breaker is enclosed in its own housing comprising a base having a cover. Each breaker has an opening adjacent its inner end for venting the gases, formed when an arc is drawn between the contacts, into the space between the two rows of breakers. This space is covered by a plate and thus forms a chimney. There is a plate at the upper end of the chimney which is provided with perforations, so that the gases may escape from the top of the chimney into the larger space within the metal box.

Prior patents in this field are Wesley, No. 926,372, O'Neill, No. 1,313,555, Burnham, No. 1,562,739, Starrett, No. 1,629,645, Greene, No. 1,741,839, and Baxter, No. 1768,879. The record contains stipulated testimony which seems to establish prior public uses of panel boards containing circuit breakers in the Glassow residence in Minneapolis, Minnesota, and in the Pittsfield Building in Chicago, Illinois, in which central, side, top and bottom spaces are provided in the panel boxes between and around the circuit breakers in which air or gas could circulate.

The District Judge held (Conclusions of Law Nos. 2 and 4):

"2. None of the patents in suit are pioneer patents entitled to a wide range of equivalents; none of the devices shown in the drawings and described in the specifications thereof, except the Jennings Patent Re. 19,887, have had any material or substantial commercial success; all are improvements patents, and all are to be construed in the light of their respective specifications and drawings, and of the prior art, and limited substantially to the devices disclosed in their respective specifications and drawings.

* * * * * *

"4. Jennings Patent Re. No. 19,887, claims 1, 4, 5, 6, 7 and 9, when construed in the light of the specification and drawings of the patent and in view of the prior art, are not infringed by defendant\'s Panelboard, Plaintiff\'s Exhibit 29.

"Claims 4 and 7 of this patent are invalid for want of invention in view of the prior art. Westinghouse Electric & Mfg. Co. v. Powerlite Switchboard Co., 6 Cir., 142 F.2d 965.

"Since plaintiff has entered no disclaimer of the claims 4 and 7 of Jennings Re. 19,887 held invalid in the prior suit, Westinghouse Electric & Mfg. Co. v. Powerlite Switchboard Co., supra, it has unreasonably neglected and delayed to file such a disclaimer, and in view thereof is not entitled to maintain this suit for infringement of claims 1, 5, 6, and 9, which were not adjudicated in said prior suit. 35 U.S.C.A. § 71, A. G. Triplett v. Lowell, 297 U.S. 638-649, 56 S.Ct. 645, 80 L.Ed. 949." 106 F.Supp. at pages 870, 871.

There is, of course, nothing new about a panelboard of the general type covered in this patent. And, too, metal conduits for the transmission or release of gases are very, very old. We agree with the District Judge that this is in no sense a pioneer patent and that its claims and specifications must be narrowly construed and limited to the specific device therein disclosed.

As thus interpreted, the only important improvement disclosed by this patent is the construction of two special conduits, between the rows of circuit breakers, formed by the continuous barrier, for the escape of the arc gases. While it may be conceded that this feature is an improvement over the prior art, we do not think it rises to the dignity of patentable invention. As a rather slender performance, it would seem to fall within the condemnation of the recent case of Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corporation, 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162. We, therefore, hold this patent invalid for lack of invention.

If this patent be valid under a narrow construction of its claims and specifications, we agree with the District Judge that it is not infringed by the Circuit Master panelboard, the accused device of Bulldog. This device does not contain either the continuous barrier or the two special conduits of Jennings thereby formed. On the contrary, Circuit Master uses (for the escape of arc gases) only the air circulation passages and spaces between the rows of circuit breakers, which were present and available in panelboards prior to the Jennings patent.

Our holdings set out above make it unnecessary for us to pass upon the defense set up by Bulldog, of the failure of Westinghouse to disclaim as to Claims 4 and 7 of this patent. The District Court held this a valid defense. In this connection, we are told, in the Westinghouse brief: "This patent has now expired so only the question of liability for past infringement is involved. * * * The facts are that these claims were held invalid in June, 1944, in the Westinghouse v. Powerlite suit, 142 F.2d 965; but before this decision, the case at bar was filed (in November, 1943) so that there was no delay between the decision in the Powerlite case and the filing of this suit."

Hodgkins Patent No. 2,073,103.

This patent for an automatic electric circuit breaker was asserted by Westinghouse against both Circuit Master and Pushmatic breakers, the accused infringing devices of Bulldog. Claims 31, 32, 33, 41 and 44 were asserted against Circuit Master, while claims 39-43 were asserted against Pushmatic.

We append the holdings of the District Judge as to this patent:

"6. The Hodgkins Patent No. 2,073,103, claims 31, 32, 33 and 44 are invalid in view of the prior patent to Krantz No. 1,726,233, dated August 27, 1929, if construed broadly enough to cover and include within their scope the defendant\'s Circuit Master circuit breaker.

"The Hodgkins patent claims 31, 32 and 33 are invalid also in view of the prior

...