Appeal from the District of the United States for the Northern District of Illinois, Eastern Division; Hon. John P. Barnes, District Judge.
Before TREANOR and KERNER, Circuit Judges, and LINDLEY, District Judge.
This is an appeal from an interlocutory decree entered upon a finding that defendant-appellant had infringed a valid patent which had been assigned to the plaintiff-appellee. The decree ordered an accounting of profits and damages and enjoined further infringement. Defendant assigns as error here the findings of validity and infringement.
The patent in suit, No. 1,927,450, was issued to plaintiff's assignor, Balfe, and relates to improvements in the structure of a gasket for internal combustion engines. The gaskets involved in this suit are used as cylinder head gaskets. They are inserted between the cylinder block and cylinder head of automobile engines, and the cylinder head and block are fastened together by appropriate fastening devices, such as bolts. The gaskets, which are thin strips of material, separate the metal surfaces of the cylinder head and block and because of the compressibility and the resiliency of the gasket material the gaskets serve to seal the joined surfaces against leakage which, without the presence of the gaskets, would occur as the result of the lack of absolute smoothness of the contact surface of the cylinder head and block. The gaskets conform to the surfaces and openings of the cylinder head and block having appropriate water and bolt holes and larger openings for the combustion chambers of the automobile engine. The edge of the gasket is, in effect, a part of the internal wall of the combustion chamber, and the explosions in the combustion chamber create pressure which tends to force the gasket out of its normal shape and position; this is known as the "blowing of gaskets." The edges of the gasket opening around the combustion chamber and the portion of the gasket in the relatively narrow space between the different combustion chambers are particulary exposed to the force of the pressure which tends to "blow them." In the higher compression motors of recent models, in which a mixture of gasoline and air is subjected to increased compression before the mixture is ignited, there is an increase in the pressure and heat resulting from the explosion.
The essential functional characteristic of internal combustion engine gaskets, to which the patent relates, are as follows: (1) compressibility, (2) elasticity or rebound under constantly varying clamping pressure, (3) resistance to burning in the presence of heat over 3000 degress F., and (4) resistance to "blowing" under pressures in excess of 900 pounds.
Prior to the introduction of plaintiff's patent to the automotive trade in 1930 a gasket known as the metal clad gasket was used in automobile engines. This type of gasket consists of a sheet of asbestos or other suitable packing material inclosed within two thin sheets of metal, usually copper. Defendant manufactures such gaskets.
Plaintiff's patented article is known in the trade as a metal insert gasket and is sold under the trade name "Steelbestos." It consists of a center layer of steel sandwiched between layers of packing material consisting of asbestos cushions. From the surfaces of the metal plate numerous thin projections extend into and through each of the layers of asbestos, and at the outer surface of each of the layers the ends of the projections are bent and clinched over the surface. The projections are described as tongue-like and referred to as tangs. Plaintiff's device has met with commercial success in the field of lower priced cars. but is not used in the higher priced cars. The latter use the copper clad gaskets exclusively, and sales of copper clad gaskets preponderate for replacements, even for use in cars whose standard equipment includes plaintiff's gaskets.
Plaintiff claims for his device that by extending outwardly from the metal insert the tongue-like projections, or tangs, and by causing the ends of these tangs to be bent over the cushion material at the surface thereof without projecting thereabove, there are provided cushion surfaces devoid of metallic projections; and, further claims that the tongue-like projections, or tangs, afford a multiplicity of successive metallic barriers throughout the asbestos cushions, which furnish strong resistance against "blowing." And plaintiff also claims that there is a special benefit from having the clinched ends of the tangs at the surfaces of the cushion material, since such metallic ends contact the metallic surfaces of the cylinder head and block of the automobile engine and "partially overcome the insulating effect of said elastic layers in transferring heat between surfaces contacting said gaskets."
If the foregoing claims of functional merit are material to the question of invention their materiality is qualified considerably by the fact that the article manufactured by plaintiff for the automobile trade, and which has met with commercial success, has an important departure from the patent claims and specifications. This departure was made shortly after the introduction of plaintiff's gasket to the trade and consists in the use of "grommets", the grommet being a metal edge binder which faces and reinforces the edges of the gasket openings. In copper clad gaskets a grommet may be made by folding over one of the copper sheets; but in the metal insert gaskets it is a separate edge binding which encases the edges of the gasket openings. The extent of the departure from the patent in suit, by the use of grommets, is disclosed by the specifications. We learn from the specifications that theretofore conventional types of gaskets had resorted to "various types of reinforcing and binding means along the gasket edge and particlarly the edge which is exposed to the high pressure in the combustion chamber." There is the further recital that "instead of a single reinforced or non-reinforced barrier around the edge of the gasket, I provide throughout the entire width of the gasket and over substantially its entire area a larger number of these barriers which, by extending throughout the thickness or width of the gasket, offer successively available walls to resist blowing, * * * ." The patent drawings and claims not merely omit grommets, but the language shows that the patentee was claiming a barrier arrangement which was intended to replace the grommet barrier.
The use of grommets by plaintiff cannot be considered merely as an improvement on the patent as plaintiff contends; it must be considered as a departure since the patent states that instead of grommets tangs will be used. The use of the metal grommets relatively decreses the value of the tangs for heat transference, and increases heat and pressure resistance of the gasket.
The claims of the patent herein involved are Nos. 1, 2, and 3.*fn1
In a prior suit involving this same patent*fn2 only claims 1 and 3 were considered. In that suit the Circuit Court of Appeals for the Second Circuit held that the claims were invalid for want of invention. The addition of claim 2 in the present suit neither strengthens nor weakens plaintiff's cause since claim 2 adds nothing of substance to claims 1 and 3 and the decision by the Circuit Court of Appeals for the Second Circuit is as applicable to claim 2 as it is to claims 1 and 3.
We shall first consider the claim of defendant that the patent in suit discloses no inventive ...