Appeal from the District Court of United States for the Eastern Division of the Northern District of Illinois.
Before ALSCHULER, EVANS, and ANDERSON, Circuit Judges.
Presented for determination on this appeal are questions involving the validity and infringement of three patents. They all relate to outboard motors. Two of them were issued to Carl H. Hult and Oscar W. Hult, Nos. 1,207,761 and 1,166,523. The first enumerated is known as the "A" patent, the latter as the "B" patent. A third patent, No. 1,467,641, to L. J. Johnson also deals with an "outboard motor." The first-named appellant owns the patents, while the Johnson Motor Company is a licensee and manufacturer of the motors embodying the patent. Appellee is a customer of the Evinrude Motor Company, which is defending the suit.
The court found for appellee on all issues.
Johnson patent, No. 1,467,641: The advance in the art of the outboard motors represented by this patent may be best described in the language of the inventor, who in the specifications of his patent, thus spoke:
"The invention relates to out-board motors * * * and * * * is pivoted to a detachable bracket carried by the gunwale, and pivotally mounted in a sleeve in such a manner that the device may be moved entirely around or for 360 degrees in a horizontal plane. Also to provide the attaching bracket with outwardly extending slotted arms concentric with the pivotal point of the device with the detachable bracket, said arms having adjustably mounted therebetween a segmentally shaped plate, which plate limits the forward movement of the tubular shaft casing and at the same time allows the tubular shaft casing and the device as a whole to be tilted in a vertical plane.
A further object is to provide the tubular casing with a sleeve having inwardly extending segmentally shaped flanges, which flanges are so positioned that when the tubular casing has been rotated for placing the propeller in reverse position, for instance in backing, the inwardly extending flanges will engage over segmentally shaped ribs on the segmentally shaped plate, thereby holding the device against movement in a vertical plane during a backing operation.
"A further object is to provide in connection with a pivoted out-board motor, which motor is pivoted to move in a horizontal plane or a vertical plane and comprising a tubular casing on the upper end of which is mounted a motor, and the lower end provided with a propeller driven by shafting from the motor and extending through the tubular casing, a cooling circuit for the motor substantially entirely encased in such a manner that the piping from the pump located adjacent the propeller passes through the tubular casing to a point above the pivotal points of the device, and thence to the engine jacket. Also to provide a pipe connection to the engine jacket, which pipe connection extends downwardly through the tubular casing and discharges through the tubular casing wall at a point below the gunwale of the boat, and preferably above the water line, thereby preventing discharge of water into the boat when the boat is backing or when the device is being used not only for driving but for steering purposes."
Two claims (2 and 9) set forth (and also mark the limitations of) the inventions. They are rather unusually dissimilar and disconnected for two claims appearing in the same patent. The disposition of the contentions respecting one claim in no way aids in the determination of the validity or infringement of the other.
"9. The combination with an outboard motor comprising
(a) an engine supported on a tubular propeller drive shaft casing,
(b) and cooled from a pump adjacent the lower end of the tubular casing,
(c) of a pipe connecting the pump and the engine cooling system,
(d) said pipe extending through the tubular propeller drive shaft casing to one side of the center of the casing."
If appellee avoids infringement of this claim, it is because his water pipe does not actually pass through the wall of the tubular casing but lies in an indentation therein. Appellants argued that such location of appellee's water pipe is the mechanical equivalent of element (d) of the above-quoted claim.
The issue is simplified by a study of the file wrapper. When the application was pending, Johnson amended this claim 9 and then stressed element (d) in this language:
"Claims 7 to 12 have been amended to more definitely define the investion and to avoid the Hult citation. It will be seen that these claims have been amended to include the idea of the pipe connections 31 and 41 extending through the propeller drive shaft casing, which Hult does not do. In the Hult citation a water jacket is formed around the outer periphery of the drive shaft casing a. Hult requires the use of an extra sleeve b, while applicant uses the shaft casing and consequently eliminates an extra sleeve around the shaft casing, thereby reducing the cost to a minimum and forming the device in a compact form. It will be noted that applicant's structure eliminates extra packings at the upper and lower ends of the casing, and Hult does not show means for discharging from the engine jacket at a point below the engine casing as claimed by applicant."
Our conclusion is that appellee avoided infringement of claim 9 and kindred claims in the patent by the locating his water pipe outside the wall of the tubular casing.
Claim 2, analyzed into its elements, reads:
(a) A pivoted outboard motor pivoted to a bracket ...