Wine Ry. Appliance Co. v. Baltimore & OR Co.

• Decision Date: 15 June 1935
• Docket Number: No. 3791.,3791.
• Parties: WINE RY. APPLIANCE CO. v. BALTIMORE & O. R. CO.
• Court: U.S. Court of Appeals — Fourth Circuit

78 F.2d 312 (1935)

WINE RY. APPLIANCE CO. v. BALTIMORE & O. R. CO.

No. 3791.

Circuit Court of Appeals, Fourth Circuit.

June 15, 1935.

Gilbert P. Ritter, of Washington, D. C. (Henry K. Muir and Ritter, Mechlin & O'Neill, all of Washington, D. C., on the brief), for appellant.

Edwin S. Clarkson, of Washington, D. C., for appellee.

Before PARKER, NORTHCOTT, and SOPER, Circuit Judges.

PARKER, Circuit Judge.

This is an appeal in a suit which asked relief on account of the infringement of fifteen patents relating to locking devices for the doors of drop bottom or hopper bottom railroad cars. Four of these patents and a number of the claims of the remaining eleven were withdrawn from suit at the time of the hearing in the court below. Three of the patents were held valid and infringed as to the claims involved; and the defendant has not appealed from this holding. Three others were held invalid; and complainant assigns no error with respect to them. This appeal relates to the remaining five of the patents, and their respective claims which were in suit below, viz., Kadel and Pilcher patent No. 1,268,725, claims 2 and 11; Wine patent No. 1,431,499, claim 1; Kadel patent No. 1,738,057, claims 7, 15, 16, 22, and 27; Kadel patent No. 1,743,144, claims 8, 9, 15, and 18; and Wine patent No. 1,486,210, claims 1 and 4. The court below found the first of these valid, but not infringed as to the claims in suit, and the remaining four invalid; and from a decree in accordance with these findings, the complainant has appealed. The facts are fully set forth in the opinion of the District Judge, reported in 5 F. Supp. 219, and need not be repeated here.

We agree with the court below as to the validity of the Kadel and Pilcher patent No. 1,268,725. It is true that all of the elements of the combination which it covers are old in the art; but no one before had brought them together to produce a manually operable closing door with an automatic catch to hold it in closed position for drop bottom or hopper bottom railroad cars. Theretofore, the closing of such doors had been effected by the use of heavy and complicated machinery which accomplished but imperfectly the purpose for which it was intended, with the result that there was considerable loss of lading from their improper closing. The door of the patent, on the other hand, was simple in operation; by eliminating the weight of winding machinery, it increased the carrying capacity of the cars; and it reduced to a minimum the loss resulting from imperfect closing of the doors. That it filled a real need and constituted an important contribution to the art is shown by the fact that it entered into immediate use, so that, whereas some form of winding mechanism for closing the doors of such cars was in universal use by railroads at the time of the invention, this was supplanted within a very few years by doors embodying the principle of the patent. In the year 1918, when the patent was granted, only 402 car sets of the device of the patent were sold; in 1931 96 per cent. of all new hopper cars built were equipped with this type of mechanism. Its value may be judged from the fact that the Norfolk & Western Railroad in 1923, when only 10 per cent. of its cars was equipped with the mechanism, was paying approximately $31,000 per quarter on account of losses of coal in shipment, whereas at the end of 1925, with 87 per cent. of its cars so equipped, claims due to coal losses had been reduced to $3,500 per quarter.

The rule which we think applicable in the case was well stated by Judge Severens, speaking for the Circuit Court of Appeals of the Sixth Circuit in Western Electric Co. v. North Electric Co., 135 F. 79, 89, and quoted with approval by us in Black & Decker Mfg. Co. v. Baltimore Truck Tire Service Corporation (C. C. A. 4th) 40 F.(2d) 910, 913, a case very much in point here. He said: "While the mere assembling in a new organization of parts of old structures to perform the same function in their new place that they did in the old is not invention, yet where they are so taken and are organized in a new and useful manner, so as to produce a more beneficial result, there may be invention; and when the combination displays the exercise of intuitive skill and genius beyond that possessed and exercised by those well skilled in the practice of their art, and the discovery is of something new and useful, invention should be recognized."

In Webster Loom Co. v. Higgins, 105 U. S. 580, 591, 26 L. Ed. 1177, Mr. Justice Bradley stated the rule as follows: "It may be laid down as a general rule, though perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result, never attained before, it is evidence of invention. It was certainly a new and useful result to make a loom produce fifty yards a day when it never before had produced more than forty; and we think that the combination of elements by which this was effected, even if those elements were separately known before, was invention sufficient to form the basis of a patent."

In like manner it may be said that it was a new and useful result to produce a door with locking device for drop bottom or hopper bottom railroad cars which would be manually operable, and which would eliminate the waste, dead weight, and inconvenience resulting from the use of doors with the winding devices then universally used. While commercial success is, of course, not an infallible criterion of invention, it is well settled that there is a presumption in favor of the validity of a patent where it supplies a need in the industry and enters into immediate use. Temco Co. v. Apco Co., 275 U. S. 319, 48 S. Ct. 170, 72 L. Ed. 298; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220 U. S. 428, 441, 31 S. Ct. 444, 55 L. Ed. 527; Black & Decker Mfg. Co. v. Baltimore Truck Tire Service Corporation (C. C. A. 4th) 40 F.(2d) 910, 914; Pangborn Corporation v. W. W. Sly Mfg. Co. (C. C. A. 4th) 284 F. 217.

And we think that the patent was infringed by the Enterprise device used by defendant and also by its X. L. T. devices. That the use of the Enterprise device was an infringement seems perfectly clear. That device has all of the elements of the patent and all operate in the same way, except that the stiffening door bar of the Enterprise device has a notch into which the pivoted hook may drop and support the door in partially closed position, making possible a two-step closing operation. Both devices, however, have doors opening under force of gravity; both use gravity operated hooks with locking cams for catching the doors and holding them in closed position; both use door bars for stiffening the doors with ends projecting beyond the sides of the doors for engagement with the hooks; both are equipped with sockets designed to furnish a fulcrum for the use of an operating lever in closing; and both are designed for manual operation without necessity for the use of winding machinery. Their similarity in all essential particulars is readily apparent from the following drawings which illustrate their operation:

The notch in the projection of the door bar, making possible the two-step closing operation, was covered by Kadel patent No. 1,434,953; and the Enterprise device was held to be an infringement of that device by the court below and also by the Circuit Court of Appeals of the Sixth Circuit in Wine Railway Appliance Co. v. Enterprise Railway Equipment Co., 25 F.(2d) 236. This furnishes no reason, however, for limiting the claims of patent No. 1,268,725 so as not to cover an infringing device. Patent No. 1,434,953 was a mere improvement patent; and it is perfectly well settled that a device which embodies the principles of a basic patent as well as one for an improvement infringes both. The rule was thus stated by Mr. Justice Bradley in Cochrane v. Deener, 94 U. S. 780, 787, 24 L. Ed. 514: "One invention may include within it many others, and each and all may be valid at the same time. This only consequence follows, that each inventor is precluded from using inventions made and patented prior to his own, except by license from the owners thereof. His invention and his patent are equally entitled to protection from infringement, as if they were independent of any connection with them."

In Cantrell v. Wallick, 117 U. S. 689, 694, 6 S. Ct. 970, 973, 29 L. Ed. 1017, the rule was stated by Mr. Justice Woods, speaking for the Supreme Court, as follows: "Two patents may both be valid when the second is an improvement on the first, in which event, if the second includes the first, neither of the two patentees can lawfully use the invention of the other without the other's consent. Star Salt Caster Co. v. Crossman, 4 Cliff. 568 Fed. Cas. No. 13,321. Therefore, letters patent for an improvement on a patented invention cannot be declared void because they include such patented invention. Much less does it lie in the mouth of a party who is infringing both the improvement and the original invention to set up the existence of the first patent as an excuse for infringing the improvement. It is only the patentee of the original invention who has the right to complain of the use made of his invention."

See, also, Frick Co. v. Lindsay (C. C. A. 4th) 27 F.(2d) 59, 63; Lauter & Suter Co. v. Hildreth (C. C. A. 4th) 219 F. 753; New Jersey Zinc Co. v. Singmaster (C. C. A. 2d) 71 F.(2d) 277, 279, and Herman v. Youngstown Car Mfg. Co. (C. C. A. 6th) 191 F. 579, 584. In the case last cited Judge Denison made the following statement of the rule, which we quoted with approval in Frick Co. v. Lindsay, supra, and which is peculiarly applicable here: "We think that the granting of the later patent and defendant's conformity thereto are not of importance in this case on the infringement issue. There are expressions in some reported cases implying that by the later patent the government has granted a right to make and use the...