The opinion of the court was delivered by: MOSCOWITZ
MOSCOWITZ, District Judge.
This is an action brought on reissue patent No. 15,061, granted March 15, 1921, to the Cantrell-Miller Manufacturing Company of San Francisco, on an application for reissue filed November 10, 1920. The original patent No. 1,291,397 was granted January 14, 1919, to Cantrell & Miller on their application, filed September 5, 1917.
The subject-matter of the patent in suit and the claims in issue is an oil retainer. The oil retainer or seal of the patent is an annulus which is inserted in the rear axle of an automobile, or elsewhere, where it is desired to prevent the leakage of oil, to form an oil-tight joint between the surrounding housing and the rotating axle shaft.
The ownership of the patent by the plaintiff is established by the stipulated title papers.
The nominal defendant, the Consolidated Motor Parts Company, sells the infringing oil seals which are made by the Victor Manufacturing & Gasket Company, which is conducting the defense of the case.
The claims in suit are 8, 9, and 10, which read as follows:
"Claim 8. An oil retaining means including a pliant diaphragm having a sleeve extending from one side, and a ductile ring secured to the peripheral portion of the diaphram and adapted to be expressed into secure position of a contiguous support.
"Claim 9. An oil retaining means including a pliant diaphragm having a sleeve extending from one side, and a ductile ring secured to the peripheral portion of the diaphragm and adapted to be expressed into secure position on a contiguous support and form therewith a tight, leak-proof joint.
"Claim 10. An oil retaining means including a pliant diaphragm having an elongated contractile sleeve extending from one side, and a ductile ring secured to the peripheral portion of the diaphragm and adapted to be expressed into secure position on a contiguous support."
The findings suggested by the plaintiff are adopted.
Before the invention of Cantrell & Miller there was no known means to obtain an oil-tight seal inside the housing between it and the axle of an automobile, or in any similar situation. The problem was a serious one. The lack of such a seal permitted the escape of oil from the axle onto the brake drums and wheels and onto the garage floor and the road. This created a strong demand for means to stop such oil leakage, which demand continued unsatisfied and constituted a long-felt want for many years prior to Cantrell & Miller's invention. They were the first to solve this problem by producing an oil seal, that shown and described in the patent in suit, which went into wide and successful commercial use. It was a valuable contribution to the art.
In 1928 Cantrell & Miller went out of business after having netted over $500,000 from the invention. One cause for their retirement was the advent of the Model A Ford in 1928, in which the oil seals that Cantrell & Miller were making would not fit. Their seal was designed to fit the housing in the Model T Ford, the predecessor of the Model A. The Model A Ford was equipped with oil seals which embodied a ductile steel ring instead of a lead ring. These were made by the Chicago Rawhide Manufacturing Company, which later took a license permitting it to make these seals under the patent in suit.
The plaintiff bought the patent in 1931 and began the manufacture under it of similar steel-ring oil seals. Later, it granted licenses for substantial considerations to other manufacturers to make and sell such seals under the patent. Up to date, 50,000,000 of these steel-ring oil seals have been made and sold, of which the plaintiff and its licensees have made about 95 per cent. Automobiles use about 10,000,000 in a normal year. Every car made to-day has three or more such seals.
The marked commercial success of the Cantrell & Miller patent, together with the fact that plaintiff's rivals in business have paid substantial sums for licenses under this patent, is entitled to some weight. Benjamin Electric Mfg. Co. v. Northwestern Electric Equipment Co. (C.C.A.) 251 F. 288; Wahl Clipper Corporation v. Andis Clipper Company (C.C.A.) 66 F.2d 162; Collins v. Hupp Motor Car Corporation (D.C.) 4 F.2d 272.
The defendant's seal is substantially identical with the seals made by the plaintiff and its licensees under the patent. They are shown in the chart plaintiff's Exhibit 46. There is no other kind of seal known to-day that could take the place of these seals made by the plaintiff, its licensees, and the defendant. It is the only kind of seal used to-day for its particular purpose.
[See Illustration in Original]
Cantrell & Miller were the first to devise an oil seal to be used inside a housing which prevented the leakage of any oil between the housing and an inside rotating shaft. This was a new result. They were the first to combine an oil-tight seal on such shaft with an oil-tight peripheral seal against the inside of the housing. Its mode of operation was new. They were the first to devise the combination of a pliant leather diaphragm having a contractile sleeve, oil-tight on the shaft, secured to an outer ring composed of metal having functional ductility and resiliency. This was a new means.
Cantrell & Miller were the first to utilize in this combination the ductility of the metal to permit its periphery to be squeezed outward or "expressed" so as to fill the irregularities and out-of-roundnesses in the supporting housing to form therewith a secure oil-tight leak-proof joint. They were the first to utilize in this combination the resiliency of the metal of the ring to express and hold its periphery in a secure oil-tight radially-pressed fit, and a contractile pliant leather sleeve to make an oil-tight fit on a moving shaft. They were also the first to secure to a pliant leather diaphragm, having a contractile sleeve pressed onto a rotating shaft, a ductile metal ring which, by its tight peripheral fit inside the housing, anchored the entire device against rotation.
The patent in suit shows the oil seal applied to the rear axle of the Model T Ford which was the automobile with which Cantrell & Miller were particularly concerned. The oil retainer or oil seal is a self-contained unit. It consists of a pliant diaphragm, formed of leather, composed of an elongated contractile sleeve 2, which is adapted to fit on the rotating axle, a conical portion 3, and a circumferential flange 4. The sleeve portion 2 is contracted by the springs 8. Secured to this pliant diaphragm is a ductile metal washer 9, so that there is an oil-tight seal between ...