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December 16, 1941


The opinion of the court was delivered by: KNIGHT

KNIGHT, District Judge.

On Rehearing.

A rehearing was granted herein for the reconsideration of the patent to Taylor No. 1,438,507, and the consideration of the patent to Sutton No. 1,341,395, granted May 25, 1920. This was limited to the questions of anticipation and validity.

 The plaintiff bases its suit for infringement on these features of its automobile shock absorber: (1) a three-part working casing with abutments integral with the intermediate member; (2) means for holding the three parts together in fixed relation; (3) and an automatic replenishment reservoir. It asserts that the problem in the shock absorber art had been (1) to secure a permanently rigid and accurate recovery chamber, (2) automatic replenishment of the working liquid, (3) freedom from leakage and service attention, and (4) adaption to low production; and that the aforesaid features of its device in the combination with the other parts shown solved these problems.

 Taylor, like Pennington, is of the single vane or eccentric type and discloses an hydraulic shock absorber with a three-part working chamber casing held together by studs and bolts, rather than by cap screws and dowel pins or dowel bolts, as in Pennington, and abutments integral with the intermediate member. In Taylor the casing receptacle is movable and the vane (partition) immovable, and in Pennington the reverse is the operation, but the relative movements between the casings and vanes, effecting the pressure of the fluid within the chambers, are the same. Taylor does not show any reservoir for the recovery of leakage. Both show equal facilities for broaching the interior of the chambers and machining the re-entrance corners therein, and the interior contours of the working chambers are comparably alike. Concededly the Taylor device is inoperative as an effective shock absorber due to the fact that the link connecting the absorber and frame of the vehicle is pivoted on the absorber. There are other defects.

 The Sutton patent discloses an hydraulic shock absorber with three-part working chamber casing in which the intermediate casing is provided with inwardly projecting abutment members integral therewith. It discloses a double action shock absorber of the balanced or concentric type. The abutments divide the two chambers in two parts, and vane and chamber casing function in the manner long known in the art. In Sutton the three parts are neither held together by bolts and screws nor dowel pins or dowel bolts. To secure them the front member may be either screwed in the open end of the cup-shaped member by threads on the inside of the cup, and this method is comparable with the accused structure, stipulated Exhibit C, and is the equivalent of the Houde 1922 structure in that respect, or it may be in the form of a cap provided with an "angular flange" which screws over the end portion of the intermediate member, as shown in the physical exhibit of the Sutton structure in evidence. Sutton does not disclose any method for automatic recovery of the leakage. It shows facilities for broaching or machining equal to those of Pennington. In this structure the casing is stationary and the vane movable.

 The drawing below show the casings and vanes of the devices of Pennington, Taylor, Sutton and an accused structure:

 [See Illustration in Original]

 The drawings below show the three casing parts and hub and vane of Pennington and Taylor:

 [See Illustration in Original]

 Neither Taylor nor Sutton anticipates Pennington, since all the elements of Pennington are not found in either "performing substantially the same work in substantially the same way." Walker on Patents, Deller Ed., p. 255.

 Johnson Patent No. 1,578,319, a prior art reference on the original trial, discloses a three-part concentrically arranged single vane type of shock absorber. There is no flat lateral surface engagement between the intermediate part and the other two parts, but grooves are provided in the outside parts to receive the end of the intermediate casing part. The parts are held together by cap screws, and lateral shifting is further prevented by the prooves in the flat surface which receive the ends of the intermediate part. It shows no dowel pins. It discloses no abutment or abutments integral with the intermediate part. It shows a reservoir for the recovery of leakage through the joints between the casing parts, and communication therefrom through check valves into the working chamber.

 Thayer No. 1,883,436, also a prior art reference on the trial, shows a three-part single vane concentric type of absorber with the abutment member secured by means of pins or bolts. The peripheral casing wall of the working chamber is formed in part by a tubular member and the separate abutment. The intermediate part has flat lateral surfaces engaging the flat surfaces of the other parts. The means employed here for securing the parts together is by threaded engagement of the outer or cover part in an outer casing part. This again in this respect is like Stipulated Exhibit C and also the 1922 structure. It shows a non-pressure reservoir chamber between the "walls" of the working chamber parts and the "shell" or outside casing, comparably like Pennington, with check valve control. It discloses no dowel bolts or dowel pins. Automatic replenishment of the working liquid and freedom from leakage are obtained in Thayer.

 Neither Johnson nor Thayer anticipates Pennington. Each lacks the integral abutment feature, and it was this feature which plaintiff has pointed out to show they do not anticipate.

 While, as seen, none of the four patents hereinbefore described anticipates Pennington, each is material on the question of the state of the art.

 Drawings of Johnson and Thayer follow:

 [See Illustration in Original]

 As I said in my opinion heretofore rendered: "It is the new abutment integral with the peripheral wall in combination with old elements which constitutes invention." It was my opinion then that it was the single feature of the abutment assembled in the combination shown in Pennington that made Pennington patentable. In other words, that all other parts of the continuation were either old in the art or in themselves were within the competence of one skilled in the art. As plaintiff states in its main brief with regard to its abutment feature "integrality is of the essence of the combinations." I hold to that opinion now. Taylor was not heretofore given the consideration now given it because it concededly is not effectively operable. Sutton, however, now first presented, is not subject to that criticism.

 It has been clearly shown that abutments integral with the intermediate member in a three-part casing chamber shock absorber were not new with Pennington. None of the three claims in suit contains any language stating the means of securing the three casing chamber members together. The specifications, however, do so, and the drawings show them. Resort here is not had to the specifications to change or add to the meaning of the claims, as in White v. Dunbar, 119 U.S. 47, 7 S. Ct. 72, 30 L. Ed. 303, and Altoona Publix Theatres, Inc., v. American Tri-Ergon Corp., 294 U.S. 477, 55 S. Ct. 455, 79 L. Ed. 1005. Claims are to be construed in the light of the specifications. Glade v. Walgreen Co., 7 Cir., 122 F.2d 306, 311; Aero Spark Plug Co., Inc., v. B.G. Corp., D.C., 40 F.Supp. 386. But the patentee is to be held to the specified means or their equivalents.

 The specifications state: "The three parts are tightly and rigidly secured together by cap screws * * * and dowel bolts * * *." These cap screws pass loosely through the front and intermediate part and are screwed into the back plate. Pennington in its preferred form uses four cap screws or what might be termed "cap bolts". These "cap bolts" prevent the pulling apart of the three member casing chamber. The dowel bolts pass through the front and intermediate parts, and, tightly fitting, through the rear part, and serve to secure the casing to the frame of the vehicle and prevent lateral shifting of the casing parts with respect to each other as well as to help to hold the parts together. The tight fit prevents lateral movement. A "dowel bolt" means nothing more than a pin, normally circular, fitted into corresponding holes in two or more pieces to hold pieces in a fixed position. Their use is common for ourposes comparable to Pennington's. The defendant's so-called "ring wing" or intermediate member does have a dowel or machined surface on the outer periphery of that member, in order that it may be accurately and closely fitted in the cup-shaped member. But lateral shifting of the parts is secured by the engagement of the intermediate part in the cup-shaped member. The flange or the wall of the cup of defendant's earlier structure prevented later shifting of the abutment in the same manner. No comparison can be seen between the reamed holes to secure the casing chamber parts together and position them as in Pennington and the accurately machined outer periphery of the intermediate member. It is plaintiff's contention that the ring wing member is the equivalent of the plaintiff's dowel bolts. It seems to me that in the accused structures that is not so.

 The accused structures show two pins or dowels fitted into the ring wing. These pins do not extend through the front member of the three part casing. They are loosely fitted and serve the purpose of holding the intermediate member against turning and in approximate angular alignment. They do not hold the three parts in fixed relation.

 The defendant does not employ the equivalent of the Pennington "cap screws." In Stipulated Exhibits A and B, the front plate is positioned by the engement of threads formed on the cup-shaped member with a threaded ring. In Stipulated Exhibit C a threaded front plate engages the flange. The 1922 structure of the defendant has an end wall held in a similar engagement. Further, the use of the cap screws in Pennington, as there used, in view of the studs and bolts shown in Taylor and the bolts shown in Johnson, was merely a development obvious to those skilled in the art. Further, Thayer shows a threaded end plug to hold the parts together in a manner the equivalent of the 1922 structure.

 As regards the liquid replenishment feature, Claims 27 and 28 read: "in a shock absorber * * * having an outer casing secured on the inner casing with an intervening reservoir space * * * and covering the joints between the three parts of the casing * * *."

 And Claim 37 reads: "means forming a liquid reservoir space disposed to receive liquid leaking outward through the joints between the flat surfaces of the three casing parts."

 A reservoir space for the recovery of the leakage was known in the prior art. The replenishment chambers in the accused structures and the 1922 structures are arranged and constructed in substantially the same manner and they function for the same purpose. The equivalent of Pennington in these respects is shown in the patent to Schultz et al. No. 1,627,810. Pennington shows two joints from which there may be leakage. The accused structures show but one. This difference results because the ring wing member of the defendant is forced tightly against the flange and the bottom of the cup-shaped member, while the cover of the Pennington device is loosely fitted over the three parts of the casing. In the accused structure there are no "joints between the three parts of the casing" nor are there "joints between the flat surfaces of the three casing parts." It is true that in the accused structures the rear outer corner of intermediate member is chamferred, two grooves are made across the outer surface of intermediate member and the outer rear corner of the front member is chamferred, and that such construction permits the flow of the liquid between the working chamber and the replenishment chamber, but such a construction does not read on any of the claims in suit. As has been pointed out, Johnson shows a non-pressure casing enveloping the joints between the casing parts, and in the Thayer structure the three-part working chamber is enveloped by a non-pressure replenishing chamber from which liquid is recovered in the joints between the three casing parts. The accused structures show a single joint opening into a non-pressure zone at the end of the cup leading into the inside of the cover.

 It is quite clear that the plaintiff did not teach defendant anything in the way of preventing leakage from the absorber itself. The Houde structures prior to Pennington admittedly show that the vane shafts in them were suitably packed to prevent leakage, and substantially the equivalent methods for so preventing it are employed in the accused structures.

 As to low cost production it is to be said that the same means to procure it were shown in Taylor and Sutton. As heretofore pointed out, the three structures show equal or comparable facilities for broaching and machinging. Plaintiff lays emphasis upon the statement that the defendant in forming its accused structures uses a method comparable with that employed by the plaintiff. We are not here concerned with a method patent, and equivalency in this regard is material only in so far as it relates to the question of equivalent parts. Again, it is to be said that the methods employed by the plaintiff in broaching and machining parts were employable in Taylor and Sutton, and also in Johnson and Thayer.

 The only features shown in Pennington claimed to have been appropriated by the defendant were old in the art or within the inventive skill of one trained in the art. Pennington shows a combination of old parts working the same way to effect the same results as theretofore shown. The prior art leaves nothing of patentable novelty which could have been derived by the defendant from the plaintiff, and the only features of Pennington which can be said to be new, novel and useful are in the specific form of the recovery of liquid through the joints and also in the use of its dowel pins for the particular purpose stated in the patent. Patentability of Pennington depends upon these two features. They are the only ones which we could say "reveal the flash of creative genius not merely the skill of the calling." Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S. Ct. 37, 41, 86 L. Ed. , decided November 10, 1941. It follows that if the patent is valid it is not infringed by the defendant and if invalid, obviously the same conclusion must be drawn.

 On the rehearing the defendant introduced in evidence numerous patents disclosing various methods of mounting shock absorbers utilized prior to Pennington, particularly to show a change in mounting by which it is claimed the Taylor device could be converted into an operative one. The claims have no reference to the method of mounting, and it does not seem necessary to me to consider these patents in connection with the issues here. It has been thought that it is not necessary now to further detail and differentiate the inclusions in claims 27, 28 and 38 which are the only claims in question now. So far as is necessary they have been stated.

 It is clear that the prior art disclosed in the three-part working casing a construction suited for broaching and machining and for low cost production, the equivalent of and equal in these advantages to Pennington. It is also clear that the Houde 1922 shock absorber was a permanently rigid structure in which the working chamber parts and the vane were held in a fixed relation, else the defendant could not have marketed year after year millions of this type of structure. We are considering a greatly crowded art. The Pennington patent is not a basic patent. These considerations require searching inquiry for novelty.

 It is possible that the defendant obtained ideas suggesting changes in its shock absorber from the disclosures made by the plaintiff to the defendant in or about April, 1931, and just before the Peo application was filed later in that year. But, if so, such were old in the art and defendant had the lawful right to adopt them in so far as this plaintiff is concerned.

 Since no infringement is found there can be no recovery on the plaintiff's alleged cause of action for breach of confidence. This is not a case where the patented subject matter did not disclose all of the features of such patent utilized by the defendant. Booth v. Stutz Motor Car Co., 7 Cir., 56 F.2d 962, cited by the plaintiff, is, therefore, not in point.

 It is concluded that the defendant does not infringe any of the claims in suit.

 The complaint must be dismissed with costs.

 Findings are herewith filed and are to be taken as a part of the decision.


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