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April 21, 1936


The opinion of the court was delivered by: CAMPBELL

CAMPBELL, District Judge.

This is a suit for alleged patent infringement involving two patents.

The first patent in suit is No. 1,254,196, issued to Carl Bergmann, Jr., for automatic clutching or starting device, granted January 22, 1918, on an application filed December 23, 1916. This patent expired on January 22, 1935, after the bill of complaint herein was filed in 1933.

 The second patent in suit, No. 1,527,588, issued to William O. Kennington, assignor, by mesne assignments to Eclipse Machine Company, for gearing for starting internal-combustion engines, granted February 24, 1925, on an application filed May 13, 1915.

 Plaintiff, Eclipse Machine Company, is a manufacturer of engine starter drives, among other things, and defendant, E. Krieger & Son, Inc., is a distributor of the infringing device which is known as the "Charter Drive."

 It is admitted that defendant sold the accused structures in this district within six years prior to the institution of the present suit.

 The drive which is sold by defendant is manufactured by Burgess-Norton Manufacturing Company, Geneva, Ill., which company is the exclusive licensee of Charter Drive, Inc., the owner of the legal title to Charter patents Nos. 1,554,623 and 1,920,187, dated August 1, 1933, which latter patent it is stipulated illustrates and describes the devices complained of.

 Plaintiff is the owner of both of the patents in suit, and notice of infringement of both of the patents in suit was given to the defendant before the institution of this suit.

 Defendant has interposed an answer setting up the defenses of invalidity and noninfringement as to both patents in suit.

 I will consider the patents in suit in the order named.

 First Patent No. 1,254,196 to Bergmann.

 This patent has never been litigated heretofore. It expired on January 22, 1935, approximately a year and a half after the bill of complaint herein was filed. Therefore no injunction can issue as prayed for in the bill of complaint herein as to said Bergmann patent, even if the patent be found to be valid and infringed, but plaintiff is entitled to proceed on its claim for an accounting for alleged past infringement.

 The Bergmann patent relates to starters for automobile engines of the automatic mesh and demesh type, wherein a driving pinion normally out of mesh with the engine flywheel is automatically translated along a shaft by virtue of a helical relationship therewith into driving relation with the flywheel, and is automatically translated along a shaft in the opposite direction to demesh the same from the flywheel when the engine starts and operates under its own power.

 The Bergmann patent has expired. The devices disclosed in this patent never appeared on the market, and plaintiff, the owner of the patent since its issuance, never made and sold commercially the devices disclosed in this patent, nor did it ever mark any starter drives manufactured and sold by it with the number of the patent. It is definitely in the paper patent class.

 Claims 1 and 2 of this patent are in suit and claim 1 reads as follows: "1 A driver shaft, an axially movable driving part upon said shaft, a coiled spring, a complementary driven part, and means for producing relative axial movement between said shaft and one of said spring and driving part to bring said driving part into engagement with said complementary driven part."

 Claim 2 differs from claim 1 only in that it calls for a coiled spring of polygonal material. This is a feature which is shown in the prior Bendix patent, No. 1,258,302, which was sustained by this court. Eclipse Mach. Co. v. J.H. Specialty Mfg. Co., 4 F.Supp. 306.

 This feature does not add any patentability to claim 2 over claim 1.

 Defendant offered in evidence 15 alleged prior art patents, but I see no necessity for analyzing them separately, as both claims are fulfilled in all respects by all of such prior art patents, except patent No. 728,949 to Mason.

 I do not agree with plaintiff's counsel that in substance each of the claims in suit is alternative in the sense that it covers each of two different specific forms of the invention.

 The claims were drafted to include Figs. 1, 2, and 3 of the patent in suit, but plaintiff seeks to have this court interpret the claims in suit as covering only Fig. 3. This cannot be done. White v. Dunbar, 119 U.S. 47, 51, 52, 7 S. Ct. 72, 30 L. Ed. 303; Keystone Bridge Co. v. Phoenix Iron Co., 95 U.S. 274, 278, 24 L. Ed. 344; McCarty v. Lehigh Railroad Co., 160 U.S. 110, 16 S. Ct. 240, 40 L. Ed. 358; Altoona Publix Theatres, Inc., v. American Tri-Ergon Corp., 294 U.S. 477, 487, 55 S. Ct. 455, 79 L. Ed. 1005.

 While it is true that the courts have on a few occasions, in order to save a meritorious invention, interpreted claims in such a manner as to restrict them, to the structure disclosed in the specification, that would not be sufficient nor is it what is requested to save the claims in suit. To save the claims in suit, it would be necessary to go much further than that, in that they must be restricted to one of the three forms shown in the application. Even if we were dealing with a meritorious invention, this would not be permitted, and it cannot be done in this instance, where the patent is a mere paper patent and the structures disclosed therein are impractical. No merit can be ascribed to the patent by pointing to the defendant's device, as the record clearly shows that defendant has not adopted any of the forms shown in the Bergmann patent and that its devices operate on a different principle. This may not be done, for the further reason that, when the grant of the broad claims in suit was solicited, the Patent Office suggested that claims limited as plaintiff now proposes be presented, and this suggestion and invitation by the Patent Office was rejected in Bergmann's behalf. Broad claims free from the suggested limitation were insisted on and were what the libelant wanted.

 Smokador Mfg. Co., Inc., v. Tubular Products Co. (C.C.A.) 31 F.2d 255, cited on behalf of the plaintiff, is not in point, but clearly distinguished, as in that case it was made clear by the whole specification that what the patentee intended to cover and what he considered as his advance in the art was the use of a glass container, but the claims did not contain a definite limitation to the glass container. An actual advance having been made by the patentee and the specification having clearly indicated that the use of the glass container was the invention advance, the court interpreted the claims as covering the use of the glass container. There were other facts in that case which must have had weight with the Court in arriving at its decision.

 Wachs et al. v. Balsam (C.C.A.) 38 F.2d 50, 52, cited on behalf of plaintiff, is not in point, but clearly distinguished as in that case the issue was not of making over claims, but the ordinary one of patent infringement and the determination of whether what the plaintiff had done was an equivalent of what was claimed.

 Claim 1 of the Bergmann patent in suit is anticipated by the Kennington patent, No. 1,527,588, in suit, Bendix patent, No. 1,124,264, and Bijur patent, No. 1,561,685, and, as I have hereinbefore found that claim 2 is literally the same as claim 1, except that it calls for a spring of polygonal cross-section, a feature which is shown in the prior Bendix patent, No. 1,258,302, and does not add any patentability to claim 2 over claim 1, therefore claim 2 is likewise anticipated by the same patents.

 The Bergmann patent, No. 1,254,196, in suit, is invalid as to claims 1 and 2. Second Patent No. 1,527,588 to Kennington.

 This patent relates to a starting device for automatically starting internal combustion engines, and discloses the combination of a motor with an armature, having a period of free rotation or free running start, in combination with a pinion that is carried by, and has a helical relationship with, the armature shaft of the motor, whereby it is automatically meshed with a gear of the engine to be started, and means for controlling the rate of deceleration of the rapidly rotating armature and associated parts caused by the establishment of the driving connection between the motor and engine, whereby the deceleration torque is utilized to assist the electrical torque of the motor in the work of turning over the engine to be started.

 The construction and operation of the device illustrated in the Kennington patent in suit with respect to the starting structure and function thereof is as follows: A starting motor 11, having an armature 14, and referring to Fig. 4 particularly, an extension of the armature shaft 26 with which there is associated in helical driving relationship a pinion 27 adapted to be engaged with the engine gear 24. When the electric motor begins to operate, it starts off with a very high acceleration, and the rotation of the armature and associated extension of the shaft causes the pinion to travel longitudinally to the left into engagement with gear 24, since the pinion does not tend to rotate with the shaft immediately, both because of its inertia and because of the assistance of the spring-pressed friction arms 31, which arms are not present in the commercial embodiment of Exhibit 20; in that case the inertia resistance to rotation of the pinion being depended upon to cause longitudinal movement of the pinion.

 After the pinion has traveled to the left into engagement with the flywheel gear during the period of free running start of the electric motor, it begins to be arrested when it comes in contact with the washer 28 backed up by the spring 30. In the case of the commercial embodiment, the spring has no washer ahead of it; the pinion contacts the spring direct. This spring is compressed from this beginning of the arresting of the pinion movement or the beginning of the deceleration period until its compression equals the longitudinal comoonent from the screw-thread action between the shaft and the pinion.The helical relation between the two I have referred to in this case takes the form of a narrow thread. At that time is encountered the beginning of the driving relationship, the flywheel begins to rotate, and in such rotation ultimately starts the engine. When the engine starts of its own power, the pinion 27 being driven from the gear 24 faster than it is being driven from the armature shaft, the pinion will be constrained to travel to the right and, due to the operation of the helical relationship action between the two, out of mesh with the flywheel gear. During that period that the pinion is being rotated both while it is in and when it comes out of mesh, the arms 31 have flown out on their hinged connection against the resistance of the spring 32 so that they do not interfere with such demeshing of the pinion. Those arms I have previously referred to are not present in the commercial embodiment; the inertia resistance to rotation having been found sufficient.

 The application for the Kennington patent in suit was filed May 13, 1915. Plaintiff contends that this application was a continuation in part of a joint application filed May 25, 1912, by McDermott & Kennington.Each of these applications discloses a transmission for an engine starter of the automatic mesh and demesh type, and in each the starter is provided with a spring. There are, however, differences between the two application, both as to what is illustrated in their drawings and as to the disclosures in the application as filed, which differences concern the elements that are the critical ones in this controversy. As an instance in the McDermott & Kennington, drawing the spring is illustrated as not compressed at all by the movement of the pinion, whereas in the Kennington application and the patent in suit the spring is illustrated as substantially compressed by the pinion. Defendant contends that, because of these differences of illustration and description, the patent in suit may not properly be considered a division or continuation of the earlier filed McDermott & Kennington application.

 Prior to the filing of either of these applications, that is, on March 13, 1912, Bijur filed an application disclosing and claiming broadly a transmission for an engine starter of the automatic mesh and demesh type. Patent No. 1,095,696 issued on this application on May 5, 1914. The joint McDermott & Kennington application was placed in interference with this Bijur patent on broad claims for the automatic mesh and demesh starter; claims making no mention of the spring. Testimony taken in this interference by McDermott & Kennington in March, 1915, disclosed that McDermott took no part in originating the main features of the starter of the joint application, that having been the work of Kennington alone, and accordingly the Kennington sole application in the interference. This interference terminated in July, 1916, with a final judgment in favor of Bijur after decision by the Examiner of Interferences; Kennington having failed to prosecute an appeal from that decision. Shortly thereafter all claims relating to the broad automatic mesh and demesh feature were canceled from the Kennington application. The Kennington application was thereafter necessarily limited to such additions as Kennington claimed to have made to a transmission of the automatic mesh and demesh types. These additions included principally a certain type of spring. We are not here concerned with other minor features.

 Kennington in his specification, after broadly describing the automatic mesh and demesh type starter, describes the spring as follows: "Near the left hand end, the shaft 13 has an externally threaded portion 26 and the extreme outer end of the shaft is reduced in diameter. An internally threaded pinion 27 is screwed on to the threaded portion 26 of the shaft 13 and its movement to the left towards the end of the shaft is limited by means of a collar 28 which surrounds the shaft and is free to slide thereon. A collar 29 is secured upon the end of the shaft with a spring 30 surrounding the shaft and lying between the collars 28 and 29, said collars and spring serving as a spring buffer to gradually stop the outward movement of the pinion 27."

 With reference to the operation the specification states that, after the teeth of the pinion have become engaged with the teeth of the engine gear, "the pinion continues to travel longitudinally of the shaft 13 until it strikes the buffer collar 28 which gradually stops its further movement."

 Up to this point there has been described no more than the function of the spring to take up the shock due to the longitudinal momentum obtained by the pinion in its axial movement along the shaft. This constituted the sole description of ...

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