Appeal from the District Court of the United States for the Eastern District of Wisconsin; F. Ryan Duffy, Judge.
Before SPARKS and MINTON, Circuit Judges, and LINDLEY, District Judge.
The plaintiffs charged the defendant with infringement of United States Reissue Patent No. 19,445, to Chandler. This patent is a reissue of a former patent to Chandler issued prior to February 18, 1930. On that date United States Patent No. 1,747,594 was issued to Panish, covering the same subject matter as that disclosed by Chandler's application for his reissue, whereupon Chandler inserted in his reissue application identical copies of twenty-five claims of the Panish patent, and an interference was declared. Thereupon, by stipulation, the factual question of prior invention was submitted to arbitrators and Chandler prevailed. As a result thereof the reissue patent in suit was issued to Chandler on February 5, 1935. Panish has never filed a disclaimer as to any of his claims which were included and allowed in the Chandler reissue patent.
The defendant's answer denied infringement and alleged invalidity. It also filed a counterclaim in which it sought a declaratory judgment declaring the Panish patent void. Plaintiffs replied in the nature of a counter claim, alleging validity of the Panish patent and infringement thereof by the defendant. Thereupon, the defendant moved for judgment on the pleadings with respect to its counterclaim, and for a dismissal of the Panish counterclaim, which motions were denied by the court. 31 F.Supp. 451.
On April 10, 1933, Panish acquired an exclusive license under the chandler reissue patent, and the right to grant sublicenses within certain fields. Since October 16, 1935, the Philadelphia Gear Works, Inc., has been exclusive licensee, from Panish, under the reissue patent. It was admitted that the plaintiffs and the Philadelphia Gear Works, Inc., notified the cities of Saint Paul and Minneapolis, before the institution of this action, of their infringement of both the Chandler and the Panish patents. These notifications, it was claimed by the defendant, constituted such conduct as would bar the plaintiffs from relief in this action. The District Court held that such notifications were in good faith on the part of the plaintiffs and their licensee and would not bar the plaintiffs in this action. We think there was no error in this ruling.
Originally one of the questions raised by the issues in this case was whether the Chandler patent was operative. Inasmuch as the defendant by its counterclaim first brought the Panish patent into the case, the court deemed it proper to permit the plaintiffs to file their conterclaim in which they sought relief upon the Panish patent in case the Chandler patent was declared to be inoperative. During the course of the trial the defendant withdrew its claim that the Chandler structure was inoperative and the District Court ruled that Chandler was the first inventor of the twenty-five claims common to both patents, and dismissed plaintiffs' counterclaim with respect to the twenty-five common claims.
The District Court found the facts specially and rendered its conclusions of law thereon, thereby holding the reissue patent valid and that none of the claims relied upon were infringed by any of the accused devices. The real controversy presented is whether the claims relied upon are entitled to such a broad construction as to include the accused devices. The District Court held that under the circumstances the claims relied upon should be construed quite narrowly and that when so construed they are not infringed by defendant's devices. The defendant, on the other hand, does not contend that the patent is invalid unless the claims are construed so broadly as to read upon the accused devices.
The District Court has supported his rulings by a very carefully prepared opinion, 45 F.Supp. 158, and we deem it unnecessary to repeat here much of what is there set forth. We are convinced from the record that all the claims relied upon, except one, are valid, and we are further convinced that none of the claims relied upon, except one, is entitled to such a board construction as to include the accused devices.
It is contended by plaintiffs that the defendant's device referred to as his TN type infringes claims 22, 23, 24, 27, 28, 29, 31, 32, 41, 42, 44, and 45, and that the defendant's device referred to as BB type infringes claims 11, 21, 22, 23, 24, 27, 28, 29, 31, 32, 33, 39, 41, and 42. Of all these claims those numbered 11 and 21 are the only ones which originated with Chandler. The others originated with Panish.
The disclosure of the reissue patent pertains to remote control mechanisms for the operation of value controls in water, steam and fuel lines, especially those of a very large and heavy character. The development of such devices and the necessity therefor are well set forth in the District Court's opinion, and they will not be here repeated.
It is sufficient to say that the filing date of Chandler's reissue was June 21, 1923, and at that time valve controls were well known in the art. They included position limit switch controls with and without compression springs, with slip clutches, with overload relays, and controls having overload relay switching mechanisms.
Chandler disclosed a valve operator having a mechanical torque limit switch which operated in both directions, and described a switch-actuating mechanism which automatically controlled both the opening and closing movements of the valve. In the power train he utilized a crown-toothed slip clutch and associated parts to provide for a slip under high torque conditions for the purpose of actuating the circuit switches for discontinuing the supply of power to the motor.
In the defendant's device BB, the opening movement is controlled by a position limit switch. When the valve reaches the limit of its travel in the opening direction, the position limit switch, upon being actuated, shuts off the power to the motor, and the electromagnet controlling the instantaneous release is deenergized, thus preventing drift, or motor inertia, from further driving the valve against the bonnet bushing. In the closing operation the movement of the valve is controlled by a position limit switch up to the point where the seating zone is reached; thereupon the control is shifted to a mechanical torque responsive switch, and when the valve reaches its seat, the torque-responsive switch mechanism shuts off the motor ...