This is the usual hill in equity for the infringement of ten patents, all owned by the plaintiff. A list of the patents with the claims in suit are as follows:
Morris, No. 1,227,481, issued May 22, 1917; claim 2.
Bloom, No. 1,632,724, issued June 14, 1927; claims 1 & 2.
Bloom, No. 1,632,767, issued June 14, 1927; claim 15.
Bijur, No. 1,632,771, issued June 14, 1927; claims 8, 34, 39.
Bijur, No. 1,632,772, issued June 14, 1927; claims 10, 22, 28, 29.
Bijur, No. 1,732,212, issued Oct. 15,1929; claims 1 to 21 inclusive, and 25 to 39 inclusive.
Bijur, No. 1,732,828, issued October 22, 1929; claims 4, 6, 10.
Bijur, No. 1,734,026, issued October 29, 1929; claims 1, 4, 31.
Bijur, No. 1,734,027, issued October 29, 1929; claims 1, 5, 14, 24.
Bijur, No. 1,746,139, issued February 4, 1930; claims 1, 2, 9, 23, 26.
General lubricating systems for motorcars had existed before the filing date of any of the patents in suit except Morris; as for example, the Fergus system, 1915, the Skelly, in 1919; the Guy, in 1920. The plaintiff’s position is, however, that the improvements disclosed in the patents in suit, and especially in the seven Bijur patents, alone made possible any effective system in which a single pump could distribute oil differentially to various bearings, located at greatly different distances from the pump. The judge held that all the claims were valid and infringed and granted a decree upon all. We shall take up each in the order of its issue.
The Morris Patent.
This system was not for a motor-ear, but it disclosed a central pump, forcing oil to mechanical bearings removed at different distances. In each lead which fed a given bearing and near the bearing, was a reservoir, containing a wire screen, designed to act as an impedance and filter. The oil after being so strained, passed to the bearing and after use went back again to the pump. The filters were varied in size according to the needs of the bearing, and the theory was that they would set up a resistance proportional to that size and those needs. As the screens filled with dirt, the pressure on the pump increased, but the relation of the feeds to the different bearings was preserved. The only claim.in suit, No. 2, is as follows: “In mechanism of the class described the combination of circulating means, a plurality of conduits connected thereto, and flow impeding elements in each of said conduits, said elements being adapted to maintain their relative resistance capacities, while increasing their individual resistance capacities.” A disclaimer, filed after suit brought, further limited this to a combination “when said flow-impeding elements have diverse relative resistance capacities, maintained in such relative diversity as to be proportionate to the requirements of the bearings served thereby.”
The claim, with or without the disclaimer, cannot cover the supposed infringement. Read without regard to the disclosure, something could be said, but it is scarcely necessary to say that no claim can be so read. The plaintiff’s position is that no one before Morris had ever conceived the idea of impeding the flow of oil in a general lubricating system by déviees-placed near the bearings,
The Bloom Patents.
These are two patents, one for a system of lubrication for motor-cars; tbe other for tbe plugs which immediately feed the bearings. The system comprised a reservoir which drained to a cylinder, which in turn was emptied by tbe plunger of a manually operated pump. Tbe forward stroke, foreed oil into a general lubricating system, any return to the cylinder being prevented by a check-valve. Tbe system branched out into various separate lines, leading to the several bearings. At the end of each line was a choke plug, through which a minute linear opening emptied upon the bearing. For present purposes it is not important whether the feed was in part by flooding the bearings on the forward stroke of the plunger, or by the shaking of the ear, or by both. The openings in the ehoke-plugs, or fittings, wore described as capillary in size, so small as to prevent the entrance of air into the system, but this is not a feature shared by tbe defendant, any more than the feed by shaking. Claim 15 of tbe first patent was for the general system; claims 1 and 2 of the second, for the plugs. All three claim feeds, graduated according to the needs of the bearings.
Tbe contribution of Bloom over Morris’s general idea was therefore in the form of the choke-plug or fitting. His plugs were somewhat similar to Manzel’s though Manzel’s openings were not linear or capillary in size. They were not like Emmet’s, from whom the defendant borrowed. In addition to these references, the art between the applications of Morris and Bloom bad developed other devices for regulating the flow of! oil to bearings of different needs. Thus Lemp and Stock, No. 1,257,258, showed a plug with a passage partly occluded by a pin, much like some of Bijur’s later forms. The pins could bo changed so as to vary the resistance of tbe plug. The patent was not indeed for a motor-ear, but that makes no difference. Skelly, 1,326,142, was, however, specifically for motor-cars, and showed constricted noz
Thus the case stands as to Bloom’s patents as it did as to Morris’s. The underlying idea, so far as the defendant took it, was an old one in the art; there had been central lubricating systems before, driven by a single pump, terminating at the several bearings, at or near which were impedances which regulated the pressure and flow to the needs of a particular bearing. The form of these had indeed varied much; so had their supposed operation. But the defendant took none of these except Emmet’s, and the claims can cover its structure only in ease we extend them to a pattern which we can indeed find in the disclosure, but so bereft of all particulars as to impinge upon the prior art. We hold these patents not infringed.
Bijur Patent 1,632,771.
The disclosure in this patent was of a lubricating system like that of Bloom, differing however in the pump-, the choke-plugs or fittings, and the cheek-valves. The system being once filled with oil so that all air was excluded, the driver, for instance at the beginning of a day’s run, would manually draw back the plunger of the pump, against the pressure of a spring. When he let go, the plunger under the compression of the spring was forced against the column of oil, setting up a constant pressure throughout the whole system, except as it was diminished by friction, whieh continued until the spring was again fully extended. Thus the spring slowly forced the oil through the fittings into the bearings. The fittings were all of a kind, a straight bore through a solid plug, partly filled by a pin fitted within it. The more nearly the pin occupied the whole bore, the greater the resistance. When the flow was to be small, the pin must be large, and vice versa. To prevent the leakage of oil out of lower fittings, by siphoning, cheek-valves were set at the discharge end of the bore; these consisted of discs of oiled fabric held in place against the lower end of the opening by a spring, whose compression must be overcome by the pressure of the pump to feed the bearing.
Again the possible scope of the claims is limited by the prior art. As these patents are the plaintiff’s chief reliance, we may go back to the beginning of lubricating systems for motor-ears. The Fergus system of central lubrication was the first. The pump there used was the engine; the lubrication was general, that is, in a single branched system, but the feed was apparently differentiated only by friction, the further bearings in this way getting somewhat less than those nearer the head of the intake. This was in 1915; it was apparent^ only a crude device. Skelly’s system of 1919 was the next. We have already discussed it; the alternative form provided for a differential oil feed, very different in detail from Bijur’s, but in outline like his. The preferred form went into some use, but not the alternate, so far as appears. The Guy system of 1920 was the next; this had an intermittent pump operated only when the wheel was put over hard to the right, and a central piping system, ending at the several bearings. The evidence is too scanty to say that the pipe endings were restricted to accommodate to the needs of each bearing, though that result was claimed, and probably accomplished in that way, aided by the use of wieking. Possibly it was not a serviceable system, and it was not of course an anticipation of the later systems, but it served to pave the way. Though Litle, 1920, had no pump, for as we have said, he depended on gravity, he did have a central system, and his fittings were modified each to serve its bearing by means of devices very similar to Bijur’s. Again, the general plan was disclosed.
Thus, when Bloom filed his applications in May, 1922, a few months before Bijur’s
Bijur, 1,732,212.
This patent was again for the system as a whole, as distinguished from the fitting. The pump was connected with the brake so as to be operated whenever this was applied. Thus by a series of small increments of charge, the oil was forced into the system. In the original specifications an essential feature was an air-bell, which was to act as an “accumulator,” and whose pressure was slowly to feed the system by the compressed air. In the final form the air-bell appears as only optional, (“if required”), and the operation was thus radically changed. This was a divisional application and must date back to the original. Meanwhile Bijur had bought Bloom’s patent and before issue omitted some pregnant passages, as wo have seen, showing that the system was probably oil filled. This coupled with the change in the divisional application as to the air-bell, is sufficient evidence of the truth of the defendant’s argument that Bijur in order to establish a factitious distinction between his own and Bloom’s invention, changed his own theory in this regard, and that originally he had no notion of a completely oil filled system. As we have just said, we do not regard this as important, but even if it were, we should hold that it was a later introduction, to which the patent was not entitled against the defendant, whose system had already appeared when the change was made. Webster Electric Co. v. Splitdorf Electrical Co., 264 U. S. 463, 44 S. Ct. 342, 68 L. Ed. 792.
Bijur disclosed several kinds of fittings; the old bore and pin with a spring check-valve beyond it; a flap of metal or leather, acting as a cheek-valve; and a stuffing box, analogous to that earlier disclosed in the application of Locke and Doseh. Except in so far as the second form may have some bearing upon the check-valve employed by the defendant in connection with its helical feed, it has taken nothing from this patent that was not old in the art. We find that the claims in suit, and for that matter any valid claims which could have been drawn, were not infringed. We reserve for the moment the question of the check-valve.
Bijur Patent 1,746,139.
This is the remaining patent for the general system and is chiefly to bo distinguished by its pump; which was connected with the manifold intake of the engine, by which it was operated. Like the defendant’s, it was not therefore intermittent; but we do not see how infringement can bo made out. It was a division out of the heterogeneous mass which formed the original application, and must be limited to the specific disclosures, if it is to be valid at all. The defendant took nothing resembling it that we can find, except as it was already in the art. Indeed even verbally claims 1, 2 and 9 were not infringed; the defendant’s pump was not operated by the “lubricated mechanism,” which in them
Bijur Nós. 1,632,722; 1,732,828; 1,734,026; 1,734,027.
These patents are for fittings and check-valves. The defendant, as we have said, used a helical passage for reducing pressure, varied in length to accommodate the final discharge to the needs of each bearing. This was fully disclosed in Emmet’s lubricating system for turbines, long before any general lubricating system for motor-ears was devised. Later it was somewhat improved by Junggren, 993,831. Fifty years before Bijur filed his application, it was already a known device for regulating the flow of a lubricant. Barnett & Eckford, 122,427; Ross, 143,422. As is usual, when an old device is put to a new use the patentee protests against the assumption that the adaptation was obvious. That indeed depends upon the facts of each ease, but here we have no question, Emmet wished to divide a single column of lubricant to the two ends of a turbine by means of a single pump. Sometimes he had a separate pump for each machine, sometimes he linked several turbines in series to one pump; the problem was precisely the same in each case, because there were always at least two feeds to each pump, one at the base, the other at the top, of the turbine shaft. Turbines may weigh tons, and yet to revolve upon their shafts the oil must be forced beneath them with -enough pressure to lift them from their seats. The top of the shaft needs nothing of the sort; it revolves within one or more guides. So it was necessary if one pump was used, to reduce the pressure at the upper guides very greatly, but keep it exceedingly high at the base. Emmet resorted to a helical reducing device for this purpose; so did Junggren. The problem to be answered was precisely the same as in the ease of a central lubricating system for a motor-ear, except quantitatively; it was to change a constant pressure from a single source to varying pressures at bearings with different needs. It is no answer to say that the diameter of the helical groove was the same as that of the pipe, were that true, or that it was some distance from the bearing. Ncr did the back pressures of the turbine make a difference; at the guides these pressures were “very small” (page 1, line 39), due to the “accurate balancing of the rotating parts.” Besides, the language in Emmet’s specifications relied on to show that the holieal passage was of the same area in cross-section as the pipe is far from establishing that fact, if it were material, which it is not. The passage is not to be “throttled or wire-drawn” and is to be “nowhere contracted,” but this is consistent with a uniform passage of less area than the pipe. No doubt the passage could be-made in either way. The relevant point is that exactly the same device was used for exactly the same purpose in a closely related art. We conclude that by no claims in any patent, could the helical passage used by the-defendant be monopolized when used to reduce the pressure and flow of oil to a bearing of any kind.
This limits the consideration necessary to-the four patents to the cheek-valve employed by the defendant. The same question also-arises as to No. 1,732,212, which we reserved, above. As we said at the outset, this was a loose disc of oiled silk interposed in advaneeof the helical passage, and designed to prevent seepage of oil, especially in the lower bearings through which it might otherwise siphon out. There had been spring check-valves set at the same place before; for example, in Skelly. Bijur disclosed six sorts in. his original application; one of these, Fig-29, was a combination of a check-valve and' an impedance, of which the valve closed the pipe, when no oil was being forced through, but opened under pressure. It was the nearest to the defendant’s valve of any, and if the claims for it are not infringed, there is-nothing better. This valve was originally described according to the figure and nothing more was said about it. One edge of a leather or steel disc was clamped between the end plug and a ledge in the cartridge into which the plug was inserted. Below the disc was also clamped a bowl, which we apprehend to be the impedance in this fitting. In operation, the oil pressed the free end of the disc downward, allowing the oil to come out; after-wards the valve “automatically seats” itself, preventing the entrance of air. In the ease of' a steel spring the reseating was certainly from the resiliency of the metal. To a lesser degree this would also be true of leather, though how much did not appear. In 1927 Zerk applied for a patent on the loose, i. e., floating, valve, which the defendant had begun to use at least as early as 1926. The divisional application for Bijur’s patent, 1,-734,027, was applied for in June, 1928, in which the valve was then repeatedly spoken of as “loose,” and the leather form as not depending upon its resiliency. In No. 1,732,-212, the leather is said to be seated only by a “return impulse,” and as devoid of any re
Thus Bijur got no monopoly upon a “loose” cheek valve, properly so called; on the contrary, he never conceived of any such. Flexible valves attached to one edge were not unknown in the prior art. Spencer, 555,-588; Lott, 670,794. His original disclosure coupled leather with steel indistinguishably, and there is no basis for supposing that he meant that a truly “loose” valve would serve. His claim must be confined to his disclosure. Indeed, we should not in any event be disposed to enlarge by implication disclosures which are so multifarious and so specific. Bijur was indeed entitled to show as many new fittings and vaRes as he had invented; the combinations between them may have all been valid patents; if eaeh was a separate invention, a patent upon it covered its employment in any system. But they must be strictly limited, especially since Zerk’s loose valve, whether it operated by return pressure, or capillary attraction, or both, had meanwhile intervened. The art got from Bijur no cue to let the valve float between the pipe end and the fitting.
We conclude that none of the patents are infringed. Bijur’s invention, that is, one of the many covered by the industry of Ms solicitors, Las had indeed a substantial acceptance, though even so, only a very small fraction of the industry has adopted it. But it would be gratuitous to ascribe Ms success to the factors common to him and the defendant. The general outlines of a central lubricating system wore in no sense due to him; ho merely perfected details of what his forerunners had begun. The defendant took nothing from Mm of these details, and we will not be drawn away from the essentials by a labyrinth of claims couched in the customary confusion, and spreading their web to catch all that may fall within their abstract verbiage. We agree with the defendant that the plaintiff should not have been allowed to withdraw any claims at trial. All those which remained in suit when the trial opened will be held not infringed.
Decree reversed; cause remanded with instructions to dismiss the bill for non-infringement.