Appeal from the District Court of the United States for the Western District of New York.
Before SWAN, CHASE, and FRANK, Circuit Judges.
The appeal is from a decree in the usual suit in equity holding valid and infringed claims 1 to 7 inclusive and 15 and 18 of Patent No. 2,095,223 granted to A. O. Samuels on October 5, 1937 and duly assigned to the plaintiff.
The patent in suit is for a fan of the motor-driven type having flexible blades, made of a suitable material like rubber, which will be efficient for producing air currents and hold their shape when not in operation and yet will be comparatively harmless when being run without a guard because the blades will yield readily to any solid obstruction which they hit and will resume their normal shape and efficiency when the obstruction is withdrawn.
Only one of the other objects of the invention as stated in the specifications need how be noticed and that merely to emphasize the substantial difference between the real issue on this appeal and what was decided when this patent was previously considered by this court upon two former appeals. It is that, "A further object of this invention is to provide the fan blades with novel fastening means and a novel mode of mounting to provide for a quick and efficient attachment of the blades to the rotating member in a normally radial position thereto." It was with that feature as disclosed and claimed that we were primarily concerned both in Samson-United Corp. v. Sears, Roebuck & Co., Inc., 2 Cir., 103 F.2d 312, certiorari denied 307 U.S. 638, 59 S. Ct. 1039, 83 L. Ed. 1519 and in Samson-United Corp. v. Emanuel, 2 Cir. 109 F.2d 922. We held the patent valid in each instance and the device with cupped blades constructed with the accused means of attachment of fan blades to the hub or nose an infringement. This defendant has not used the novel method of fan-blade attachment disclosed in the patent but has foregone any advantage there may be in having detachable blades and constructed its fan with nose and blades integral by molding them of rubber into one piece. The present issues are whether the patent is valid in the light of some additional evidence as to the prior art and the identity of the actual inventor and, if so, whether there are valid claims broad enough to cover the accused fan.
When new evidence is presented, a patent previously held valid may, of course, be found the contrary. Cf. Smith v. Hall, 2 Cir., 83 F.2d 217, affirmed 301 U.S. 216, 57 S. Ct. 711, 81 L. Ed. 1049. The several prior art patents which were not considered in our previous opinions which are now relied on will be discussed following a re-statement of the scope of the patent to dissipate any idea that it is limited to the mere method of the attachment of demountable fan blades to the hub or that the avoidance of that feature is a by-pass of the entire patent.
The specifications show, inter alia, that "the blades may be cut, molded, or otherwise constructed or formed into any desired conformation to produce the desired results. For the best results, the blades are preferably relatively wide and sufficiently rigid, that is, stable, to be selfsustaining, and may extend substantially perpendicularly or radially with reference thereto at all times." And also that, "A convenient shape of the blade is with a width relatively wide with reference to its length radial to the hub, and with reference to the width of blades commonly employed on electric fans. I find a ration of one-to-one, or even a width greater than the radial length, a suitable arrangement as shown in the drawings. However, I do not intend to limit my invention to any particular width of blade and I may employ any structure of blade which will produce the results to which my invention is directed." * * * "In making the fan blades of rubber they may be molded into the proper shape and in molding the weight of the blades is distributed in the body thereof to make them balance when mounted to their hub or motor housing."
As was stated in the Sears, Roebuck case and reiterated in the Emanuel case the mere use of soft rubber was not new in fan blades, and this patent does not have such a broad scope. What Samuels did show, however, was a conformation which was a means of attaining sufficient rigidity in the blades so that they would keep their shape and utility; look like fan blades when the fan was not in operation - an important selling feature - while at the same time the requisite softness was preserved to prevent damage to a solid object coming into contact with the revolving blades or permanent damage to the blades themselves. Included in this teaching, to be sure, was the specific method of attaching the rubber blades to a metal hub. This feature is a part of claims 8-14, 16 and 17, but it is not the whole of the invention that was otherwise covered by the claims in suit. Included also is the general idea of the use of cupped resilient blades with a considerable width in relation to their length, which factor enables them to be efficient; to return to efficient shape after meeting some obstruction and to retain or resume their shape when in and out of use. It is not without significance that this construction had to wait for this comparatively recent invention though metal power fans of similar shape had long been in wide use before 1937; rubber was a well known and easily obtained resilient material; and attempts to make satisfactory rubber fan blades were neither lacking nor successful enough to be commercially of comparable value.
Three of the patents presented for consideration here which were not mentioned in the previous opinions may be treated together. In Carlson No. 1,370,284, Gilbert No. 2,022,417, both involving metalbladed fans with blades similar in shape to Samuels but inherently stable, and Read No. 92,884, reissue No. 4,391 showing an improved screw propeller made of hard rubber for a water-mater the problem of curving and cupping the blade in order to preserve both its yielding qualities and its efficient shape in use was not presented. So the fact that the blades were of somewhat the same shape in Carlson and Gilbert cannot be said to have been any part of the prior art of shaping flexible blades for power fans to give them the practical advantages of flexibility and the efficiency of inflexibility.
Ljungstrom No. 1,868,113, showing a hub with loops of fabric attached to form blades, is far from the sphere of Samuels as it embodies precisely one of the elements he sought to avoid; that of a fan with blades to limp that it did not resemble the conventional fan when not in motion. French Patent No. 735,817 showing a fan with blades of rubber, fabric or other soft material is also called to our attention. This apparently did not even consider the problem of the shape of the blades, much less solve it, and without that it is merely a type of fan with non-rigid blades and no forerunner of the Samuels invention. Without repeating what we have before said on the question of validity, we reach here the same result for the same reasons since we find nothing in the new evidence on that subject which should lead to a different conclusion.
The appellant also claims that Samuels was not the first inventor of the fan blade for which he obtained his patent, but that Humphreys was. There is conflict in the testimony as to what occurred at a meeting held on August 21, 1935, when plans for the development of the rubber-bladed fan were first laid. Both Samuels and Humphreys were present at the meeting, and the outcome was that Humphreys was commissioned to build a fan with rubber blades for the Samson-United Corp. He was to do this at the factory of K-W Ignition Co., by whom he was employed at the time and which had husiness relations with Samson-United in that it supplied them with electric motors. The disagreement related to who suggested what at the meeting. The District Judge, who had the benefit of observing the witnesses, concluded that Humphreys' claim to the invention was not to be believed.The explanation given by Humphreys for his failure to assert his claim to invention before now is that his employer, K-W Ignition Co., wishing to keep on friendly terms with Samson-United in order to get their motor business, had urged him not to object to Samuels' filing of the application for the patent. But this excuse could have existed only until September, 1937, for at that time he left K-W. His continued silence thereafter while Samson-United defended the patent in three suits and proved its commercial value does not comport with normal human conduct. Also, as the lower court pointed out, Humphreys' credibility may be affected by the fact that he is presently employed by the Ohio Rubber Co. which makes the rubber hub and blade assembly for the accused fans. In the premises the trial judge would not have been warranted in finding that he had rebutted the presumption flowing from the grant of the patent to Samuels that the grantee was the first inventor. Mumm v. Jacob E. Decker & Sons, 301 U.S. 168, 57 S. Ct. 675, 81 L. Ed. 983; Cantrell v. Wallick, 117 U.S. 689, 6 S. Ct. 970, 29 L. Ed. 1017.
On the question of infringement there is little which need be said since the defendant's fan is so obviously a copy except as to hub material and the method of blade attachment. The scope of the patent, as above shown, is broad enough to cover the defendant's fan and the claims relied on, not limited to detachably mounted blades, cover it as well. The accused fan is to all intents and purposes a copy of the assembled patented fan. The difference, as previously stated, is that it has the hub and blades molded in one piece of rubber. The shape of the blades gives them all the characteristics of those of the patented fan. They have the same utility and the same general appearance for the same reasons. There is no difference at all in the fans patent-wise. Barber v. Otis Motor Sales Co., 2 Cir., 240 F. 723; Arthur Colton Co. v. McKesson & Robbins, Inc., 2 Cir., 58 F.2d 157. Merely to mold in one piece what the patentee elected to assemble from more than one was but to substitute an obvious equivalent for what the specifications disclosed. Hookless Fastener Co. v. G. E. Prentice Mfg. Co., 2 Cir., 75 F.2d 264.