The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a patent suit in which plaintiff claims infringement of claims 1, 2, 3, and 4 of patent No. 1,434,655, issued to Walter A. Garratt, for sounding device, dated November 7, 1922, on application filed November 26, 1919; and of claim 4 of patent No. 1,391,887, issued to Walter A. Garratt, for pneumatic horn, dated September 27, 1921, on application filed January 30, 1920.
The bill of complaint also alleged infringement by the defendant of patent No. 1,434,657, issued to Walter A. Garratt, but that patent was withdrawn from this action on the trial, and therefore the plaintiff rests this action on the two patents above described.
The defendant has by answer interposed the defenses of invalidity and noninfringement.
The plaintiff has title to the two patents in suit.
The plaintiff has been, since its incorporation in 1918, engaged principally in the manufacture of vacuum windshield wipers, and has built up a very large business.
The first warning signal it has put on the market is the present "Trico Clarion Horn," which it introduced in November, 1930, and realizing the inoperativeness of this horn under certain conditions, plaintiff has provided an automatic transfer which causes the electric horn carried by the car as standard equipment to sound if the vacuum horn should fail to do so.
The defendant and its predecessor in business, the Automobile Supply Manufacturing Company, has been, since 1903, continuously engaged in manufacturing automobile horns, and has built up a very large business.
The defendant's horn, which is charged herein as being an infringement, exemplified by Plaintiff's Exhibits 4 and 5, is a vacuum operated novelty or fashion type of horn, sold under the trade name of "E. A. Supertone Horn."
No manufacturer of automobiles has adopted the vacuum operated horn as standard equipment. Vacuum operated horns are inherently inoperative when used in connection with vacuums obtainable in certain motors, when traveling at high speed.
The "E. A. Supertone Horn" represents only 2 per cent. or 3 per cent. of the defendant's total horn production.
There is a similarity in the operation and tonal qualities of the "E. A. Supertone Horn" of defendant and the "Trico Clarion Horn" of the plaintiff, the tone being loud, penetrating, and musical in character, and may be heard at a substantial distance.
This is not true of the horn of the patents in suit, in both of which the patentee intended sound to be produced by the striking of one member against the other, independent of the sound resulting in the rapid interruptions of the air current, and so specifies in the specifications; and after hearing the sounds produced by Defendant's Exhibits K and L, I agree with the statement of the patentee in his specification in the patent in suit, No. 1,391,887:
"The sound produced by this mechanism is of a peculiarly penetrating and disagreeable character, and acts as a startling warning when used in connection with a motor vehicle."
The parties to this suit are, respectively, the owners of other patents which cover specifically the commercial structure of their respective horns; in fact, the plaintiff's own horn is alleged to be covered by only a single claim of one of the patents in suit, and defendant contests that allegation.
It therefore follows that commercial success has not been shown for the patents in suit, as the only horns built in accordance with the drawings and specifications of the patents in suit, except models constructed by the defendant for use on, and offered as, exhibits on this trial, samples submitted to defendant by the patentee at the time he offered the patent for sale, which could not be made to operate so as to give a suitable sound for warning purposes, and a few other models made by the patentee but not produced by plaintiff at the trial.
The patentee offered these patents for sale to the defendant in 1927, but the defendant, after careful investigation, refused to purchase them because of what it considered the inoperativeness of the structure disclosed.
They were subsequently purchased by plaintiff.
The attempt of the plaintiff to show that defendant was guilty of copyist tactics at the Cleveland show, in November, 1930, failed, as I believe the testimony of the witness Toepel, who was in charge of the defendant's exhibit at that show and swears that he set up the exhibit, and that there were exhibited Supertone vacuum operated horns, and that he explained to people referred to him by the salesmen, that it was a vacuum operated horn, and the purposes of such horns.
He is corroborated by the photograph which he caused to be taken of defendant's exhibit at that show.
The patents in suit cover a horn or warning signal operated by the vacuum obtainable from the intake manifold of an automobile engine, and is briefly described as follows:
A chamber is provided, one wall of which is formed of a flexible diaphragm having a central aperture. Co-operating with this aperture and normally sealing the same is a closure member. When vacuum is applied to the chamber, the atmospheric pressure on the other side of the diaphragm forces it away from the closure, allowing air to rush through the diaphragm aperture into the chamber, thus bringing about an equalization of pressure.
When this occurs, the diaphragm springs back to place, due to its own resiliency, once more effecting a seal with the closure, and allowing the cycle to be reinitiated. It is the rapid opening and closing of the valve, with the accompanying hammering of the diaphragm against the closure, that Garratt depends upon for the production of sound.
The defendant offered in evidence a number of prior art patents and a publication.
These may be most conveniently considered in groups, as they were by the defendant's expert.
The pneumatic sounding device art found its origin in the old reed, illustrated by organ reeds or clarinet reeds, or other reeds, and is as old as the history of man.
Examples of such reed structures are found in United States patents No. 15,921 to Briggs, October 21, 1856; No. 177,610 to Arno, May 23, 1876; and ...