Picard v. United Aircraft Corporation

128 F.2d 632, 53 U.S.P.Q. (BNA) 563, 1942 U.S. App. LEXIS 3661, 1942 WL 37407

• Court: Court of Appeals for the Second Circuit
• Decided: May 28, 1942
• Docket: 244
• Status: Published

Opinions

L. PIAND, Circuit Judge.

Both parties appeal from a judgment in an action to enjoin infringement of claims 2, 3, 4, 5, 11, 14, 15, 16, 17, 18, 19 and 20 of Reissue Patent No. 21,031, originally issued on July 21, 1931, to Martin J. Schenk (No. 1,815,868)', the reissue being granted on March 34, 1939. The district judge held claims 4 and 14 — original claims— valid and infringed; he held claims 2, .3, 5, 11, 15 and 16 — likewise original claims —not infringed; and he held claims 17, 18, 19 and 20 — reissue claims — invalid because broadened over the original claims, and also .because of laches in the application. Each side appealed from so much of the judgment as went against sit. In the view we take, it will not.be necessary, to pass upon the plaintiff’s appeal, because we think that the claims in suit are all invalid for lack of invention.

The patent was for a luhricatjng and cooling system for “radial” air-cooled combustion engines, and was primarily; -nor exclusively, intended for aeroplanes. “Radial” engines are like ordinary combustion engines except for location of the cylinders as to the driving shaft, which in ordinary engines are either set “in line” or in a V— two parallel lines, inclined to each other. In a “radial” engine the cylinders xu'e set around the driving shaft like the ,,,/okcs of a wheel — ordinarily nine in nui ’ ■ and it follows that some of then c a,re vertical — heading up or down; — some «zúlirie upwards, some are horizontal and soffi,e incline downwards. The train of elements in the patent-in-suit which operate;, the poppet valves in each cylinder starts with a cam in the crank case which engages a “cam follower” (divided into two parts), or “valve tappet.” The upper surface of the “cam follower” holds the end of. a hollow push rod — enclosed in a case- — and the upper end of the push rod abuts ‘ upon one end of a rocker-arm. The rocker-arm is journalled in a housing Oi ..box which completely .encases it; its other e>nd abuts upon the stem of the poppet valv.e, depressing it against a spring tó dislodge it from its seat in the cylinder head. Thus, by means of this train the cam in the, crank case alternately seats and unseats fife valve. All this was old in the art. r;

Oil is pumped by a standard pressure pump through passages in the “cam follower” not necessary to describe, whence it flows through the inside of the hollow push rod, oiling the joint between it and the “cam follower” as it passes. It emerges from the upper end of the push rod and enters a passage in the rocker-arm, oiling the joint between them; thence it passes through the bearing of the rocker-arm and through a passage out of its other end and into the stem of the poppet valve, oiling the joint between these. It is not necessary to describe the further course of the oil during which it cools the valve, because concededly the defendant does not use it. It is enough to say that after passing through certain'passages and a chamber in, the valve, the oil spills into the rocker-arm box. In the infringement the oil, having lubricated the joint between the end of the rocker-arm and the stem of the valve, similarly spills into the rocker-arm box. Schenk disposes of the oil so spilled by tapping into each • rocker-arm box at its lowest part a pipe which leads to a circular manifold. Since the boxes dra by gravity the manifold has to run below each, and this is accomplished by passing it between the crank case and the boxr-o h? the case of all boxes which are aboco tho level of the crank case, and below the boxes in the case of all that are below that level. The manifold drains into a sump from which a scavenging pump sucks it bacjc-to the main oil reservoir.

There was nothing new^n the train .which leads from the oiil pump to the jofet between valve stpin and the rocker-armj, That had been ,/áhown for a “radial” engiine in Scott’s Patent No. 1,321,338 in 1919,' although the /'oil did not pass beyond the' .,uc ,- the f rocker-arm. Obviously no inv ■ - '• sary to pass it to the joxt^t bci.. "i <1 iv> rocker-arm and the end of Vjhe valve s. l . Moreover, if any had.beer-i, Simes fully disclosed it for an “in line” engine in . Figure 2 of his British Patent Nq. 223,393 of 1924. However, in these disclosures the rocker-arm and its joints were exposed to the air so that the joints could, and did, gather dirt; but in the Pratt & Whitney “radial” engine the rocker-arm and its joints were housed exactly as in Schenk’s disclosure, and indeed he copied this feature from the Pratt & Whitney design.' In that engine the bearing of the rocker-arm and its joints with the ■push rod and the valve stem, were lubricated by a grease gun which had to be used periodically at intervals of from ten to ^fifteen hours of flight, and which could not -,be used during flight without difficulty and clanger. Schenk’s invention, so far as the defendant borrowed from it, can therefore be fairly stated as substituting the automatic oil feed of Scott or Simes in the Pratt & Whitney engine, and making the necessary adjustments to drain back the oiHj to the reservoir. It is in the drainage of the rocker-arm boxes that the invention, if awy, must lie.

There had never been any complete anticipation of Schenk’s method of oil disposal vn the prior art; the nearest was the Curtías R-14S4 engine about which the evidence has very largely centered. The plaintiff challenges its relevancy, first, because she denies that it is properly a part of the prior art at all; and-second, because even though it is, the step between it and Schenk’s disclosure required invention. She wishes us to disregard it because it was only an “abandoned experiment.” The district judge thought otherwise, and so do we. Three of these engines were made under a contract with the United States Army and completed in 1925 or 1926 at a cost of over $50,000. They were to be put to a fifty hour endurance test — greater than would be demanded in service — and one of them was. The same one was later installed in a plane, though it does not definitely appear that it was ever used in flight; and in any event it was never exploited, but was taken out and placed in a museum where it was at the time of the trial, accessible to visitors- and open for examination. All three of these engines were certainly “experimental”; all three were "abandoned” if by that is meant that the model never went into production and became an historical exhibit. But that is by no means conclusive on the issue of novelty. It is true that the designer, Heron, said that the engine was not successful and that he was surprised that it “worked at all,” but he was not speaking of the lubricating system; the defects he referred to were in the crank case, crank shaft and connecting rod; these were the cause of any abandonment, and they were' remedied in the Pratt & Whitney engine. In that, however, the lubrication remained what it had been before — manual greasing —automatic oil lubrication being deferred until 1934 when “the customers squawked” for it. It is true that the plaintiff’s expert Woeltjen testified that the Curtiss engine would foul the cylinders because the suction was so arranged as not to empty the rocker-arm boxes, and perhaps that was true, though the judge made no finding on the matter. Be that as it may, the testimony does not show that the defect — if it was one — made the engine inoperative.

On this showing the engine must be considered a part of the prior art. To be patentable, an invention cannot have been “known or used by others” in this country before the inventor “invented or discovered” it. § 31,. Title 35, U.S.C.A. “Knowledge” in this sense is to be distinguished from a public use or sale by the inventor himself for more than a year before he files his application, which is ipso facto an abandonment. Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651. In computing the year the inventor will be allowed for any time during which he may have publicly used the invention honestly to perfect it, and such a period is frequently spoken of as one of “experiment.” Elizabeth v. Pavement Co., 97 U.S. 126, 24 L.Ed. 1000; Egbert v. Lippmann, 104 U.S. 333, 26 L.Ed. 755; Thomson-Houston Electric Co. v. Lorain Steel Co., 2 Cir., 117 F. 249. It is also true that another’s experiment, imperfect and never perfected, will not serve either as an anticipation or as part of the prior art, for it has not served to enrich it. The patented invention does not become “known” by such a use or sale, or by anything of which the art cannot take hold and make use as it stands. But the mere fact that an earlier “machine” or “manufacture,” sold or used, was an experiment does not prevent its becoming an anticipation or a part of the prior art, provided it was perfected and thereafter became publicly known. Whether it does become so depends upon how far it becomes a part of the stock of knowledge of the art in question. Coffin v. Ogden, 18 Wall. 120, 21 L.Ed. 821; Brush v. Condit, 132 U.S. 39, 44-48, 10 S.Ct. 1, 33 L.Ed. 251; Parker v. Ferguson, Fed.Cas.No. 10,733, 1 Blatchf. 407; Stitt v. Eastern Railway Co., C.C., 22 F. 649. Our own decision in Universal Winding Co. v. Willimantic Linen Co., 2 Cir., 92 F. 391, accepting in this respect Judge Townsend’s opinion, C.C., 82 F. 228, 239, 240, is an illustration extremely apt to the case at bar. Judged by that standard, the Curtiss engine was not an “abandoned experiment”; it had been perfected; it had withstood a severer test than was neqessary in use; it had been sold; it remained permanently accessible to the art, a contribution to the sum of knowledge so far as it went.

It is another question how far it did go'. Even though we take the final form which was made before the fifty hour test was completed, the rocker-arm boxes were not drained by gravity, though gravity contributed to draining those which were inclined above the horizontal. The disclosure differed from Schenk’s in that the drainage was by suction direct from the manifold, which for that reason did not drain into a sump. Woolson’s second patent (No. 1,836,637) which was applied for about two and a half years before Schenk filed his application (October 17, 1929) filled the hiatus; it was for a lubrication system in a V engine in which the cylinders were inverted and the boxes which enclosed the valve actuating means drained at their lowest point into pipes which led to a scavenging pump. The following passage so discloses (page 2, lines 38-41): “oil from the valve housings, 26, is .also removed through separate conduits, 36, and delivered to the reservoir by a pump, 37.” Woolsen’s engine had apparently been made and used two years before his filing date, and; as the art stood when Schenk filed his original application, oil from the rocker-arm boxes of a “radial” engine had been drained by suction from pipes leading to a manifold, and by gravity from the inverted cylinders'of a V engine.

It is always .troublesome to know what, improvements — for Schenk’s disclosure was undubitably an improvement— deserve to be called inventions; as we have often said, the safest test is to try to reconstruct the history of the art before and after -their appearance and judge from that how far they demanded exceptional talents. Unhappily,, that- .seldom really helps much to. an answer because we cannot isolate the contributing factors. The plaintiff argues that the art was - not content with the laborious method of repeatedly greasing the rocker-arm boxes at short intervals ; that Heron, an exceptionally qualified engineer, if he did not fail (and we have seen that he did not), at least did not hit upon the method which finally pre-, vailed; and that the need of automatic lubrication had existed for ten or more years before Schenk. This convinced the judge, and we too feel its force; but it does not seem .to us to take into account the whole situation. Schenk must be judged as though he had knowledge of Woolson’s disclosure as well as of the Curtiss .engine; and both were only four years old when he filed; the art had not had long to wait for the change, and the only evidence is that much qf greater importance was occupying designers. The Curtiss engine being weak in other and more serious parts than its lubricating system, the Pratt & Whitney engine supplanted-it; but that engine was itself still in course of development-and was not stabilized until 1933. Wilgoos, its designer, testified' that until 1934 he and his associates “were engaged in work so much more important to the- development of our engines which required the entire faculties of our engineering and development group -that the pressure lubrication was left as a later item.” We can well believe 'that, as Heron said, it destroys the organization of a factory to keep introducing a multitude of innovations, and that the orderly development of a machine so complicated, so dangerous and so fragile, may have to proceed step by step. We cannot say in the face of this that it took uncommon ingenuity merely to conceive of draining the rocker-arm boxes by gravity. That had already been in part done in the Curtiss engine in the upper boxes; it was common practice in “in line” engines and V engines; and we 'have Schenk’s own word' for it that the difficulties which his invention met were common to both the “radial” and vertical engines. Nor can we say that, once. conceived, the design was difficult. Woolson had disclosed it for the lower boxes; what remained to be done was to carry the manifold so that it should be below each box to be drained. A' “dry sump” was already common in such éngines. Unless we are to mistake for invention the slow but-inevitable progress of an industry through trial and error, and confer a monopoly merely upon the exercise of persistent and intelligent search for improvement, there was no invention in this. Nor will we weigh heavily the hortatory commendation in the defendant’s advertisements — even when vouched for by experts —or its devious efforts to. procure the invention from Schenk. Even if the last was discreditable, there is more at stake than the issues between the two parties; and the 'industry must not be bitted because one infringer’s conduct-has not been commendable. We cannot, moreover, ignore the fact that' the Supreme Court, whose word is final, has for a decade or more shown an increasing disposition to raise the standard of originality necessary for a patent. In this we recognize “a pronounced new doctrinal trend” which it is our “duty, cautiously tó be sure, to follow not to resist.” Perkins v. Endicott Johnson Corp., 2 Cir., 128 F.2d 208. We hold that the claims in suit are invalid for lack of invention.

. The plaintiff also asserts that her complaint alleged a second cause of action based upon Schenk’s disclosure “in confidence” to the defendant’s vice-president, Tillinghast, of certain details of his engine not shown in his specifications. The defendant took Schenk’s deposition before trial, the important part of which for this purpose was the following: “I asked him whether it would be all right, that I was taking him into my confidence because I did not-have any patents on that part of it, and I was disclosing something that was not covered by any patents, or ’ anything else, and he assured me that anything that I would mention or talk to him about automatic lubrication would be perfectly in confidence and he would not permit it to become public in ' any way. He said a company of their reputation would not in any way consider doing anything that was not right toward an inventor.” The allegations of the complaint were indeed vague, but under modern practice they were enough, we think, to support a cause of action for violating an implied agreement not to make ' use of any disclosure not “covered by any patents.” At the trial the defendant read in evidence parts of Schenk’s deposition and the plaintiff offered the rest of it, including the part just quoted. To this the defendant objected on the ground that the complaint had not alleged the cause of action to which alone that part was relevant. The judge sustained this" objection provisionally, but declared that he would take the point under advisement and make a final ruling later. Nothing more was done until he filed his opinion and findings when he admitted the whole deposition, but ruled that such. an agreement as Schenk had sworn to, would not survive issuance of the patent, because the breach, if any, had occurred after the patent issued. The plaintiff. answers that since the details on which she relies were not in the specifications, Schenk did not dedicate them to the public; they were improvements and the defendant might promise not to make use of them anc, should be held to its promise after issue as well as before.

As a general principle a patentee dedicates or surrenders all that he discloses except so far as the claims reserve it. Mahn v. Harwood, 112 U.S. 354, 361, 5 S.Ct. 174, 6 S.Ct. 451, 28 L.Ed. 665; McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800; Ball & Roller Bearing Co. v. Sanford Mfg. Co., 2 Cir., 297 F. 163, 168. The question has several times arisen whether if he has imparted the disclosure to another under an implied promise not to use it — i.e. “in confidence” — he may hold the promisor after the patent issues. Clearly he should be allowed to hold him for any breach during the period between the imparting of the secret and the issue of the patent. Hoeltke v. C. M. Kemp Mfg. Co., 4 Cir., 80 F.2d 912, 923. And the Sixth and Seventh Circuits have held that he may also hold him for- a breach after issue on the notion that

although issue puts the disclosure in the public demesne whether the patent be valid or' not, the promisor has surrendered his privilege as a member of the public. Smith Corp. v. Petroleum Iron Works Co., 6 Cir., 74 F.2d 934; Shellmar Products Co. v. Allen-Qualley Co., 7 Cir., 87 F.2d 104, 107, 108. (In Booth v. Stutz Motor Car Co., 7 Cir., 56 F.2d 962, it does not appear that the disclosure of the invalid patent included the pirated design.) No doubt the parties may agree if they wish that the prom-isor shall not use the disclosure, should the pending patent issue but turn out to be invalid. Indeed, they might even agree that he shall not use it even if the patent proves valid; e.g. the patentee might wish more than seventeen years’ protection. But the expression of such an intent should be explicit, for in most cases the applicant will not need protection unless the patent does not issue, or if it does," only while its issue is undetermined. The prom-isor should not be held to an interpretation extending the agreement to the .possibility that the patent may prove invalid, because.. the applicant is proposing to broadcast the invention to the world at large, reserving as his protection only the claims which he may secure; and there is ordinarily no reason ,to supposé that he means to exact any greater protection against the promisor than he will have against others., At any rate, if he does, he should say so. Hence if the agreement in the case at bar had been merely a general promise not to use the disclosure, the judge would certainly have been right.

Schenk says that it Concerned two matters not disclosed, variants of the specifications ; ' a “valve tappet” (“cam f ollower”) in one piece, not two; and a manifold — not strictly a manifold at all —consisting of a series of pipes connecting each rocker-arm box to its neighbor, with a sump placed between the two lowest boxes. If these variants had not been species of the, genus covered by the claims there would be good reason for saying that the promise was not to end with issue. But they were only species and the claims did cover them, and Schenk did not need the promise except in the interim before issue, or in case he got no patent at all. Besides, we are not left to conjecture as to his intent for he expressly said that the “confidence” which he exacted was for -matters “not covered by any patents”; apparently he supposed that the variants were not covered. Be that' as it may, Tillinghast could only have understood him as asking that the disclosure should be protected after issue only so far as the claims would not protect it, for it would have been absurd for him to assume that Schenk was asking for more protection as to these relatively trifling details than he was to get for the very kernel of his invention. The natural meaning to impute to the transaction was that until issue no part of the disclosure was to be used, and after issue no part which was “not covered by any patents.”

Decree modified to hold invalid claims 4 and 14, and otherwise affirmed; complaint dismissed.