Brose v. Sears, Roebuck & Co.

326 F. Supp. 1015, 168 U.S.P.Q. (BNA) 496, 1970 U.S. Dist. LEXIS 8949
CourtDistrict Court, S.D. Florida
DecidedDecember 31, 1970
DocketCiv. No. 68-860
StatusPublished

This text of 326 F. Supp. 1015 (Brose v. Sears, Roebuck & Co.) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Brose v. Sears, Roebuck & Co., 326 F. Supp. 1015, 168 U.S.P.Q. (BNA) 496, 1970 U.S. Dist. LEXIS 8949 (S.D. Fla. 1970).

Opinion

FINDINGS OF FACT AND CONCLUSIONS OF LAW

ATKINS, District Judge.

FINDINGS OF FACT

I. Preliminary

1. This is an action under the patent laws of the United States for infringement of Brose Reissue Patent 26,368. The patent was granted April 9, 1968, entitled “Tire Repair Insert” (hereinafter patent in suit or reissue patent). It is used to repair tubeless tires which went into public use about 1955.

2. Jurisdiction is based on Title 28 United States Code, Section 1338.

3. Plaintiff Horace B. Brose (hereinafter Brose) owns the patent in suit. He alleges claims 1, 11, 14 and 16 (hereinafter claims in issue) are representative and are the only claims considered by the Court.

4. The defendant, Sears, Roebuck and Co., sold a Tubeless Tire Repair No. Kit 28-1048, and defendant Huffman sold a Wizard Tubeless Tire Repair Kit No. A4414 within six years prior to filing this suit. These goods (hereinafter accused goods or defendants’ kits) are alleged to infringe the claims in issue.

5. Defendants allege in a counterclaim for declaratory judgment that the patent in suit is invalid and not infringed.

II. Definition of Objects and Identification of People

6. The term “needle” is used by the Court to refer to a hand tool used for inserting tubeless tire repairs. A needle includes a shank, a handle on one end of the shank, and an eye or other opening along the shank or at its other end. The needle eye may be either open or closed making the needle either an “open eye needle” or a “closed eye needle”. An open eye needle may be a style known as a tuning fork needle in which one of the forks is longer than the other, or an English needle '(sometimes called an English eye needle). In a closed eye needle, the eye on the shank is completely closed so that an insert threaded through the eye cannot be removed unless the insert is cut or unthreaded.

7. A tubeless tire repair insert (hereinafter insert) is a small piece of resilient material such as rubber which may be layered or laminated of various types of rubber and which is inserted into an injury opening in the tire by a needle to repair the tire by plugging the injury opening. The insert may have a vulcanizable layer or layers which are vulcanizable to the walls of the tire injury opening. A vulcanizing cement can be used in the vulcanizing process.

[1016]*10168. John Kraly (hereinafter Kraly), now deceased, was in the tubeless tire repair business from 1941 through 1960. He was also an acquaintance and former business associate of Brose.

9. Ephraim Banning, III (hereinafter Banning) is a patent attorney, now retired, who represented Brose in the preparation and prosecution of the patent in suit and its preceding applications. He also represented Kraly in the preparation and solicitation of Kraly patent 3,095,342, filed December 15, 1961, granted June 23, 1963, (hereinafter Kraly patent). Banning is a member of the Illinois Bar. He prosecuted, over a period of 40 years, an estimated 4000 patent applications.

10. Robert A. Flory (hereinafter Flory) is Chief Chemist and Plant Superintendent of H. B. Egan Manufacturing Co., a purveyor of rubber for tire repairs.

11. H. B. Egan Manufacturing Co. (hereinafter Egan) manufactures the accused goods (plaintiff’s Exhibits 2 and 3) for the named defendants, with a license under the Kraly patent.

III. The Patent in Suit

12. The patent in suit, reissue patent 26,368, is a reissue of original patent 3,174,525, granted March 23, 1965, on an application filed November 21, 1963. Original patent 3,174,525 was a continuation-in-part of a Brose application filed January 22, 1962, serial No. 167,724, now abandoned.

13. The patent in suit discloses an insert which desirably consists of a multiply wafer having a resilient base lamination of cured rubber and a pair of uncured vulcaiiizable facings. One convenient size of the laminated insert, in a commercial embodiment, is one inch by one half inch with a thickness about .086 inch. See Fig. 1, Exhibit A, appended.

14. The patent in suit discloses the insert is installed with an English eye needle by placing the insert with its midpoint in the eye of the needle (see Fig. 3, Exhibit A, appended) and then, after lubricating the insert and injury opening, forcing the insert carried by the eye of the needle through the injury opening until the handle of the needle is stopped by the trailing legs of the insert at the outside of the tire casing. See Fig. 11, Exhibit A, appended. The needle is then withdrawn and the portion of the insert which has been carried to the inside of the tire casing by the needle eye is free resiliently to contract and form an “eye roll”. The pressure thus formed engages the inside surface of the tire casing surrounding the injury opening to provide a seal. See Fig. 12, Exhibit A, appended.

15. The term “eye roll” is defined in the patent in suit, by eight characteristic physical features. These include “a substantial area of the roll periphery which is deformed to engage flat-wise with the inner face * * * of the tire in the area immediately surrounding the * * * injury opening” and “the eye roll head is maintained in tight resilient engagement with the tire inner face to provide an effective seal thereat.” See Fig. 6, Exhibit A, appended. Brose stated that the eye roll is the inventive concept and gist of his invention.

16. The patent in suit also discloses a chemical bond between the insert and the tire. This is accomplished by vulcanization of the uncured facing layer, of the insert to the walls of the injury opening by the utilization of vulcanizable cement. The mechanical interlock provided by the eye roll “may prove inadequate” and “pop out * * * of the insert * * * (which) is a possibility.” Thus there is a need for a vulcanized bond of the insert to the tire.

IY. The Claims in Issue

17. Claim 1 is a claim to a method of forming an eye roll head. This claim includes as essential elements the following steps: (1) folding the insert transversely upon itself, (2) applying a tractive force inwardly of the insert fold to advance the insert into the lubricated injury opening, (3) halting the applica[1017]*1017tion of tractive force when the insert has advanced to a predetermined position, (4) controllably withdrawing the application of tractive force to permit contraction of the insert and thereby produce an eye roll head in sealing position against the inner tire face. The eye roll head is laterally deformed to engage continuously with the inner face of the tire casing over an extended area surrounding the end of the injury opening.

18. Claim 11 is a claim to the combination of a tire with an injury opening. An insert is placed in the opening utilizing rubber based cement to provide a short lived lubricant. The insert is installed so as to provide an eye roll head deformed to engage sealingly with the inner surface of the tire casing around the injury opening. The installed insert’s outer layers are vulcanized to the walls of the injury opening and to the insert’s base layer.

19. Claim 14 is directed to a method of repairing an injury opening in a tire. A needle and an insert are utilized by moving the needle inwardly until its handle engages outwardly the projecting ends of the insert.

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Bluebook (online)
326 F. Supp. 1015, 168 U.S.P.Q. (BNA) 496, 1970 U.S. Dist. LEXIS 8949, Counsel Stack Legal Research, https://law.counselstack.com/opinion/brose-v-sears-roebuck-co-flsd-1970.