Opinion
No. 42620.
October 6, 1941.
Action by Walter Kidde Company, Incorporated, against the United States to recover for infringement of patents.
Judgment for defendant in accordance with opinion.
This case having been heard by the Court of Claims, the court, upon the evidence and the report of a commissioner, makes the following special findings of fact:
1. Plaintiff is a corporation duly organized under the laws of the State of New York.
2. Plaintiff is the owner of two United States patents, No. 1,919,149, granted to Daniel Mapes, July 18, 1933, for "Discharge Control Means for Stored Pressure Medium Containers" and No. 1,920,127, granted to Henry E. Heigis for "Stored Pressure Medium Container," on July 25, 1933.
On April 7, 1932, Daniel Mapes assigned to plaintiff the inventions and improvements of an application which eventuated in patent No. 1,919,149, recorded in Liber S-156, page 405 in the United States Patent Office, and hereinafter referred to as the Mapes patent. On April 28, 1932, Henry Ernest Heigis assigned to plaintiff an application which later issued as patent No. 1,920,127, recorded in Liber U-156, page 203, in the United States Patent Office, and hereinafter referred to as the Heigis patent.
Copies of United States patents Nos. 1,919,149 and 1,920,127, plaintiff's exhibits 1 and 2, are by reference made a part of this finding.
3. The defendant is sued for the use of the two patents in suit used in connection with a life-preserver apparatus which is worn by aviators. The patents do not per se relate to life saving apparatus, but only to the means used in the claimed infringement for inflating the life-preservers.
The Mapes Patent in Suit4. Primarily the Mapes patent relates to fire-extinguishing apparatus of the type in common use wherein a sealed cartridge of compressed air or gas is located within a larger vessel filled with fire extinguishing fluid. When the extinguisher is used, the gas container is punctured and the escaping gas propels the extinguishing liquid through a hose.
In the patent Fig. 2 of the drawing (not reproduced herein) represents at 1 a standard shell or container for holding a liquid fire extinguishing medium up to the level indicated at 2. The container 1 is provided with a handle 3 for carrying in an upright position and another handle 4 located in the bottom, an outlet elbow 6 and a hose 7 having a discharge nozzle 8. A cage consisting of a flange 9 and a bottom plate 10 and suspension rods 11 is supported upon a shoulder 12 in the neck of the shell. This cage supports a cartridge 13 containing a pressure medium such as carbon dioxide, for forcing the extinguishing medium through the hose 7 out of the shell.
The cartridge 13 has threaded into its neck a closure member 14 which contains means for effecting release of the pressure medium from the cartridge. This is accomplished by inverting the shell 1, whereupon the cartridge 13 slides down guide rods 11 and forcibly encounters a projection 15 which is attached to a cap 16, the projection extending into the shell cavity. See Fig. 3.
The cap 16 seals the shell 1 and is attached to the shell by screw threads with a gas-tight gasket 17.
Cap 16 also secures flange 9 of the cage in a fixed position.
Fig. 3 illustrates the fire extinguisher in inverted or operative position, the cartridge 13 having slid down inside the guide rods 11 and forcibly contacted projection 15 which sets in motion the mechanism of the closure member 14 and liberates the carbon dioxide.
The foregoing description shows the setting of the mechanism controlling the release and operation of the gas from the cartridge 13 into the shell of the fire extinguisher.
5. In Fig. 1 of the Mapes patent a closure member 14 with an extension 19 is threaded into the neck of cartridge 13. Carried on the end of extension 19 is a strainer 20 designed to prevent particles of dirt, etc., from entering the bore 22 of extension 19 from the cartridge 13. This bore 22 communicates with a passage 23 which extends through the closure and terminates in chamber 24. A thimble 25 with a central passage 27 is threaded into the closure member 14, and is provided with a frangible disc 28 at its lower end which rests upon a washer 29 and seals the passage 27 off from the compressed gas from the cartridge 13 which but for this disc would flow up into passage 27.
Projecting into passage 27 is a hollow puncturing element 32 which the patentee calls a "metering element." This puncturing means has a chamfered cutting edge at its lowest extremity and is hollow and closely fitted into the passage 27. The passage 33 of the puncturing element is of a predetermined diameter and controls the flow of gas, after the disc 28 is punctured, from the cartridge 13 to the interior of the shell of the fire extinguisher. Simply stated, the hollow puncturing device 32, through which the compressed gas must flow, determines by its diameter the amount of gas that is delivered into the surrounding shell of the extinguisher, once the flow of gas is effected. It is a "metering element" because of its control over the rate at which the gas can pass through its bore. The puncturing element 32, at its top has a flange 34 against which a spring 35 presses which holds the pointed end of element 32 above and away from the frangible disc 28, and holds the top against a stop ring 36.
A disc 39 of thin bakelite or other frangible material is located on top of stop ring 36, with a watertight seal to protect the puncturing element from corrosion.
The disc 39 also serves, if it is fractured, and when it is visible, as an indication that the disc 28 has been ruptured or broken and that the apparatus is not ready for use.
The patentee states in regard to the operation of the extinguisher, lines 74 to 85, page 2, of the specification: "With the extinguisher in its erect position as shown in Figure 2, operation of the extinguisher involves overturning it, grasping it by the handle 4, and jarring the extinguisher as by striking it on the floor or ground, so as to cause the disc 39 (Figure 1) to be fractured by forcible contact with the projection 15 on the inner side of the cap 16 and the frangible disc 28 to be punctured by the element 32, in connection with which it should be noted that Figure 3 illustrates the inverted operated position of the extinguisher."
6. The patentee stresses the importance of the fact that the size of the passage 33 in the puncturing element 32 controls and is vital to the operation of the device, saying, page 2, lines 97 to 105 of the specification of the patent: "In view of the fact that the diameter of the passage 33 can be accurately controlled at the time of manufacture, and in fact, subject to a discharge rate test, it will be apparent that the desired rate of discharge can be obtained whenever an extinguisher is used so that a stream of liquid fire extinguishing medium of uniform range can be maintained over a desired predetermined period of time."
In addition to the apparatus shown in Fig. 1, for the predetermination and control of the gas flow, the patentee describes and illustrates two other forms for the same purpose, shown in Figs. 4 and 5 of the drawings.
In Fig. 4 the metering of the gas is accomplished by the provision of a disc 44 in which "an accurately proportioned orifice" 43, through which the gas flows, is substituted for the bore 33 of the puncturing element 32 shown in Fig. 1.
The patentee speaks of this as follows, lines 113 to 119, page 2 of the specification: "With this construction the same advantages are had as are obtained with the construction shown in Figure 1 but in the present embodiment of the invention the passage 45, through the disc puncturing element 32 is larger than the orifice 43 and exerts no controlling effect on the rate of discharge."
As another example of gas control means the patentee in Fig. 5 employs a porous material 46 of steel wool or fibrous material such as cotton or blotting material through which the gas must pass from the cartridge 13 to the shell of the extinguisher. Describing this construction the specification states, line 123, page 2, to line 9, page 3: "In this construction a screen 47 is preferably employed and the desired predetermined quantity of porous material is inserted in the passage 22 before the strainer 20 is secured in position in the manner described in Figure 1. In this construction, as with the construction in Figure 4, the passage 45 in the disc puncturing element 32 does not exact a controlling effect on the rate of discharge. The controlling effect of the material 46, while capable of being carefully predetermined, can be checked by testing the entire assembly of the closure member 14 in a suitable fixture which, however, does not form a part of the present invention."
7. The claims in issue of the Mapes patent are Nos. 9, 10, and 11 which read as follows:
"9. As an article of manufacture a vessel for containing a medium under pressure, said vessel being formed with at least one end open, a closure member for an open end of the vessel, a passage through said closure member, a frangible disc within the closure member to close the passage against the escape of the pressure medium, securing means to secure the disc over the end of the passage, a passage through the securing means, and puncturing means to puncture the disc to permit the escape of the medium when desired, said puncturing means being provided with a passage of preformed accurately controlled cross-section to permit definitely controlled discharge of the medium therethrough independently of the extent of opening of said frangible disc by said puncturing means and being formed for a close-working fit within the passage in the securing means to prevent escape of the medium past the close-working fit to an extent which would negative the controlling effect of the passage in the puncturing means.
"10. As an article of manufacture a vessel for containing a medium under pressure, said vessel being formed with at least one end open, a closure member for an open end of the vessel, a passage through said closure member, means within the closure member to close the passage against the escape of the pressure medium and to permit the escape of the medium when desired, means within the closure member to control the rate of discharge of the medium from the vessel independently of the extent of opening of said passage by said last named means comprising a controlling element having a preformed fixed flow control characteristic, said controlling means comprising a restricted passage having a preformed accurately controlled cross-sectional area, and straining means within the closure member for preventing conveyance to the restricted passage of material which would clog the restricted passage and destroy its controlling effect.
"11. As an article of manufacturing a vessel for containing a medium under pressure, said vessel being formed with at least one end open, a closure member for an open end of the vessel, a passage through said closure member, means within the closure member to close the passage against the escape of the pressure medium and to permit the escape of the medium when desired, means within the closure member to control the rate of discharge of the medium from the vessel independently of the extent of opening of said passage by said last named means comprising a controlling element having a preformed fixed flow control characteristic, and straining means within the closure member for preventing conveyance to the controlling means of material which would clog it and destroy its controlling effect."
8. This patent is concerned with apparatus broadly the same as that shown and described in the Mapes patent in suit.
The differences reside in the terminology of the claims rather than in apparatus; for example, claim 1 of the Heigis patent, in addition to setting forth the elements contained in the Mapes patent, specifically claims a fracturable seal member 39, Fig. 1, which acts as a guard against corrosion and an indicator of the condition within the vessel.
Claim 2 contains the seal element referred to and specific reference to the flange 34 of the puncturing means 32 and compression spring 35 and stop ring 36.
Claim 3 includes with the fracturable seal means for holding the puncturing means out of contact with the frangible disc 28.
The Mapes patent has the definite object of metering or controlling gas flow; the Heigis patent adds a fracturable seal 39 to the apparatus of the Mapes patent.
Identical drawings and numerals are used in both patents, Fig. 2 of Heigis corresponds to Fig. 1 of Mapes, while Fig. 1 of Heigis is the same as Fig. 2 of Mapes.
The claims of the Heigis patent are set forth below:
"1. As an article of manufacture a vessel for containing a medium under pressure, said vessel being formed with at least one end open, a closure member for an open end of the vessel, a passage through said closure member, a frangible disc within the closure member to close the passage against the escape of the pressure medium, securing means to secure the disc over the end of the passage, a passage through the securing means, puncturing means to puncture the disc to permit the escape of the medium when desired, said puncturing means being provided with a passage to permit discharge of the medium therethrough, means to normally maintain the puncturing means out of contact with the frangible disc, and a fracturable seal beyond the last-named means normally obstructing the path of discharge of the pressure medium and serving both as a guard against corrosion within the closure member and as a means of indicating the discharge of the pressure medium, when the seal is fractured.
"2. As an article of manufacture a vessel for containing a medium under pressure, said vessel being formed with at least one end open, a closure member for an open end of the vessel, a passage through said closure member, a frangible disc within the closure member to close the passage against the escape of the pressure medium, securing means to secure the disc over the end of the passage, a passage through the securing means, puncturing means to puncture the disc to permit the escape of the medium when desired, said puncturing means being provided with a passage to permit discharge of the medium therethrough, means to normally maintain the puncturing means out of contact with the frangible disc, the last-named means comprising a flange on the puncturing means, a compression spring seated within the closure member and bearing against the flange, and a stop member secured within the coupling and serving as a stop for said flange and having a passage for the pressure medium when released, and a fracturable seal beyond the stop member normally obstructing the path of discharge of the pressure medium and serving both as a guard against corrosion within the closure member and a means of indicating the discharge of the pressure medium, when the seal is fractured.
"3. As an article of manufacture a vessel for containing a medium under pressure, said vessel being formed with at least one end open, a closure member for an open end of the vessel, a passage through said closure member, a frangible disc within the closure member to close the passage against the escape of the pressure medium, puncturing means to puncture the disc to permit the escape of the medium when desired, means to normally maintain the puncturing means out of contact with the frangible disc, and a fracturable seal beyond the last-named means normally obstructing the path of discharge of the pressure medium and serving both as a guard against corrosion within the closure member and as a means of indicating the discharge of the pressure medium, when the seal is fractured."
History of the Development9. As early as 1932 plaintiff company through its representatives was discussing the general subject of gas inflated vests or life preservers for use in aviation, with representatives of the defendant at Dayton Wright Field.
There is no satisfactory evidence as to whether plaintiff or the defendant's agents initiated the discussion.
It appears however that a drawing and a specification of a very general nature were transmitted by the plaintiff company to technicians at the Dayton Field. This drawing and specification are in evidence, plaintiff's exhibit 9, and made a part of this finding.
The drawing discloses a cross sectional view of a cartridge threaded onto a bushing which carries a cam to operate puncturing mechanism for releasing gas from the cartridge and mechanism for conducting the gas into the life preserver structure. Other views show the nature of the fittings for conducting the gas, the various pipes and leads, and the cam mechanism adapted to be affixed to the cartridge.
The disclosures of the drawings insofar as they relate to the subject matter of the patents here under discussion, are too incomplete to define their exact structure. The disc puncturing mechanism shows no opening through which the gas can travel, no strainer is shown in the device and the disc for sealing the open end of the cartridge is not present. The blue print as its title, "Inflator Assembly Life Preserver Vest", implies, relates to the accompanying elements of the vest and connections rather than to the mechanism of the cartridge.
No aid as to the exact internal construction of the cartridge is found in the "General Description of Inflation Gear for Life Preserver Vest", also a part of exhibit 9.
After April 26, 1933, and before May 24, 1933, plaintiff company through its representatives in Dayton communicated or disclosed to the air corps at Dayton Wright Field assembly drawings and description of the various materials of the "Inflatable Vest Equipment," plaintiff's exhibit 10, by reference made a part of this finding.
The assembly drawings of this exhibit show the complete assembly of vest equipment including the cartridge, but do not show the internal details of the cartridge. Exterior dimensions, sizes, of screw threads, and materials are shown but the operative construction of the puncturing device and its diameter, the details of the spring or flange, on the plunger and on the indicator disc are not shown or described.
10. On May 24, 1933, the United States through the War Department, Air Corps, Matériel Division, sent out invitations for bids for 2000 Vest life preservers and for 2000 cartridges styled "Cylinder CO2 for Type B-2 life preservers vest, in accordance with U.S. Army A.C. Specification No. 40227 dated May 10, 1933." See plaintiff's exhibit 11, by reference made a part of this finding.
This proposal for bids included a specification No. 40227, and attached thereto blue prints Figs. 1 and 2. The specification, among other requirements, set forth, page 2, general descriptions of the elements necessary to be included in the cartridge. Paragraphs 6, 7, 8, and 9 provide as follows:
"6. Discharge Device. The discharge device shall provide for proper metering to discharge the cylinder completely within 4 seconds at 20 deg. C. (68 deg. F.). The discharge device shall be located between the sealing disc and the indicator disc and shall be held away from the sealing disc by a nickel-plated phosphor bronze spring. The discharge device shall be made of pure nickel.
"7. Sealing Disc. The sealing disc shall be of rolled gold on copper base metal and designed to rupture between 2,350 and 2,900 pounds per square inch pressure.
"8. Indicator Disc. An indicator disc of sufficient strength to prevent breaking from the pressure of the spring or by normal usage but sufficiently fragile to rupture under CO2 pressure in event of leakage or discharge at the sealing disc shall be provided. The indicator disc shall be installed in the bushing so as to be gas tight.
"9. Strainer. A monel metal, 100 mesh per inch strainer shall be installed in the bushing between the sealing disc and the cylinder."
The blue prints Figs. 1 and 2 do not illustrate all the elements set forth in the paragraphs 6, 7, 8, and 9 just quoted, but give only overall dimensions of the cartridge and bushing. The puncturing device, spring, sealing disc, and strainer are not shown.
11. The paucity of detail of the construction of the puncturing device and its accessories conforms to the policy set forth in a letter from H.E. Heigis, an officer of plaintiff, to H.B. Teter in Dayton, Ohio, the representatives of plaintiff negotiating with the Air Corps at Dayton Wright Field.
"Mr. H.B. Teter, Bloomfield, 4-26-33.
"Miriam Hotel, Dayton,
"Inflatable Vest Equipment"After speaking with you, I called Mr. Freygang and he absolutely forbids the sending out of our detail prints. He claims that the Navy has often requested the same but has always been satisfied to take assembly drawings, with necessary thread data, etc., given.
"We are therefore enclosing the following prints:
"No. 76893 62500 62480 9082 9209 7635
"Essential details of the various parts are given below."
None of the drawings listed above disclose the puncturing device, flange, spring or indicating disc.
12. In answer to the invitation to bid, plaintiff, among other manufacturers, submitted bids but did not receive an award.
The Sun Typewriter Company, which had received an award, later defaulted and plaintiff took over the contract from the surety company and supplied to the defendant 2000 inflatable vests and 2000 CO2 cartridges for which it received payment in full.
The Air Cruisers, Inc., of Clifton, N.J., also entered into a contract for 2000 CO2 cartridges dated June 26, 1933, numbered 33 — 6106P upon specification 40227. These cartridges were delivered to the United States Army at Wright Field, Dayton, Ohio, and paid for by the defendant between December 4, 1933, and April 25, 1934.
Plaintiff notified the defendant on November 29, 1933, of the alleged infringement of the patent in suit. The CO2 cartridges complained of are the ones that were manufactured and supplied by Air Cruisers, Inc.
In reply to the notice of infringement, the Assistant Secretary of War advised the plaintiff that in the event of infringement by the United States there was an adequate remedy by suit in the United States Court of Claims.
The Government Structure13. The cartridge used by the defendant and manufactured by Air Cruisers, Inc., was about four inches long and one inch in diameter. Testimony directed to its structure, dimensions and operation clearly identifies the cartridge with a drawing, plaintiff's exhibit 17. The figure on the left of this drawing illustrates the Government structure and bears the legend "Air Cruiser."
On the right hand side of plaintiff's exhibit 17 is shown a detail drawing of plaintiff's CO2 cartridge. The two devices are substantially identical; in fact, the only difference lies in the fractional dimensions of the cutter member and the channel for that member through the bushing. A comparison of the diameters of the cutter members and the channels in the bushings is shown below:
---------------------------------------------- | Air | Plaintiff's | Cruiser | cartridge --------------------|-----------|------------- Outside diameter of | | cutter ........... | .062 | .062 | | Inside diameter of | | cutter .......... | .0216 | .020 | | Diameter of channel | | in bushing ....... | .066 | .063 ----------------------------------------------
14. The CO2 cartridge manufactured and supplied to the defendant by Air Cruisers, Inc., corresponds to and incorporates the elements contained in plaintiff's patents Nos. 1,919,149 and 1,920,127 as defined by the claims in suit. The cartridge had a frangible diaphragm of bakelite to prevent outside air or dust from coming into contact with the mechanism of the cartridge until the gas should be released, a thin metal disc sufficient to confine the compressed gas, but puncturable, a hollow punch with a chamfered end, serving both as a puncturing means for the confining disc and as a passage for the escaping gas. The punch moved inside a close fitting passage and was held from unintended contact with the disc by a coil spring through which the flanged head of the punch would not pass. A ring above the punch prevented it from being blown out of the passage by escaping gas while the apparatus was in operation. The cartridge was also provided with a screen to strain any particles of solid material from the gas before it entered the hollow punch.
15. The following prior art patents were available to those skilled in the art prior to the filing of the applications which materialized into the patents in suit:
United States patent No. 1,320,587 of 1919 to Thompson, Defendant's Exhibit 1.
United States patent No. 1,725,775 of 1929 to Badger, Defendant's Exhibit 2.
United States patent No. 1,691,041 of 1928 to Badger, Defendant's Exhibit 3.
No. 1,715,347 of 1929 to Badger, Defendant's Exhibit 4.
United States patent No. 822,826 of 1906 to Coleman, Defendant's Exhibit 5.
United States patent No. 1,671,369 of 1928 to Johann, Defendant's Exhibit 6.
United States patent No. 1,890,517 of 1932 to Laengel, Defendant's Exhibit 7.
United States patent No. 1,753,871 of 1930 to Schworetzky, Defendant's Exhibit 8.
United States patent No. 940,614 of 1909 to Read and Campbell, Defendant's Exhibit 9.
United States patent No. 1,099,767 of 1914 to Read, Defendant's Exhibit 10.
United States patent No. 1,022,301 of 1912 to Campbell, Defendant's Exhibit 11.
United States patent No. 827,665 of 1906 to Quick, Defendant's exhibit 13. United States patent No. 1,891,045 of 1932 to Freygang, Defendant's exhibit 14.
United States patent No. 1,670,806 of 1928 to Griffiths, Defendant's exhibit 15.
British patent No. 299,096 of 1928 to Schworetzky, Defendant's exhibit 12.
British patent No. 230,504 of 1925 to Deutschwerft, Defendant's exhibit 16.
Copies of these patents, defendant's exhibits 1 to 16, are by reference made a part of this finding.
Thompson Patent16. Patent No. 1,320,587 issued to Thompson November 4, 1919, is entitled "Fire-extinguisher" and relates to that class of extinguishers wherein an inner flask or container precharged with a gas is located within an outer container in which the fire extinguisher fluid is contained. Referring to the drawings, Fig. 2 shows the inner flask 29 of compressed gas located within the outer container 1.
At the top or neck of flask 29 there is provided a screw threaded nipple 30, which screws into the collar 8. An outlet duct or passage 33 is provided in nipple 30. This passage has its lower end contracted to provide a limited outlet port 34 through which the compressed fluid of the flask 29 must flow. The diameter of the port 34 limits and determines the amount of gas which can pass through the nipple 30 into the outer container 1. The upper end of nipple 30 is milled out as shown at 35, Fig. 8, and a steel cap 36 adapted to be brazed thereon. A steel diaphragm 36' located between the wall of the nipple 30 and the cap 36 closes the passage 33 and seals off the compressed fluid in the flask from entering the outer container 1. A collar 8 (Fig. 2) is threaded on the nipple 30, having hangers 7 which in turn are fastened to a screw cap 6 which closes the outer container 1 at the neck portion 5. A plunger 10 fitted at its lower end with a hardened point 11 is slidably mounted in cap 6 through a packing gland 14 located on the top of the cap. An operating lever 12 is suitably arranged with respect to the plunger 10 so that a blow directed to a hand piece 18 carried by the lever 12 projects the plunger downward through the nipple, pierces the diaphragm 36' and liberates the compressed gas in the flask.
To insure the positive flow of the contents of the flask to the container, the spring 21 is placed upon the cap 6 exerting upward pressure on the lever 12, the effect of which is to retract the plunger 10, after the point 11 has pierced the diaphragm 36', so that no interference with the escape of the pressure medium is possible.
The patentee states in his specification, page 3, lines 8 to 17: "At this point I wish it to be noted that as soon as the lever is released the spring 21 returns to its original position and clears the piercing point from the diaphragm and also that the flow of air is not dependent on the area of the hole punctured by the piercing point but directly dependent on the cross sectional area of the outlet port 34. Accordingly the discharge of air is positively controlled."
17. The testimony shows that this patent discloses the purpose and means for accomplishing the determination of the rate of flow and the so-called metering of the pressure medium contained in the flask. This patent was not cited by the Patent Office on the occasion of the prosecution of the patent in suit.
Badger Patents 18. Patent No. 1,725,775, issued August 27, 1929, to A.C. Badger covers a "Fire Extinguisher," defendant's exhibit 2.This patent, Fig. 1, illustrates an outer shell 10 of sheet metal which contains the liquid extinguishing means, in the top of which is carried a compressed gas container or cartridge 15, preferably filled with liquid carbon dioxide.
The top of the container or head 11 has a neck 12 screw threaded, which carries a cover cap 13, a gasket 14 being interposed between cover cap and neck.
The cover cap 13 has a stuffing box 22 centrally located through which a shank 21 carrying a punch 20 is adapted to slide.
Figs. 2, 3, and 4 show the details of the puncturing mechanism described in the specification page 2, lines 58 to 88, as follows: "The operative part of the punch
is substantially cylindrical, i.e., of uniform transverse dimensions, except the extreme end, which is tapered externally somewhat, but not to a sharp point, at 27. This last item is important, namely, that the end of the punch has substantial area, which may be nearly as great as the full diameter of the punch, but preferably is a little less. The end face of the punch is slightly recessed, as shown in Figs. 3 and 4, in order to provide a distinct annular edge 28 the major part of which is a cutting edge sharp enough to sever cleanly the opposed wall of the cartridge and make a hole therein of the same outline as the edge 28. A limited portion of the edge 28 at one side of the punch is dull to insure that the puncturing cut out of the cartridge will remain attached at one side of the hole. One side of the punch is cut back or recessed, above the tapered extremity, as indicated at 26, for a sufficient distance from the end of the punch and far enough inward from the continuation of the periphery of the punch, to leave an opening between the rim of the hole formed in the cartridge and that part of the punch which occupies the hole, of exactly the right size to permit discharge of the contents of the cartridge at the prescribed rate."
The punch 20 has at one side a recess 26 which, when the punch has penetrated the cartridge 15 and advanced to its ultimate position, i.e., when stop 30 contacts the top of the cartridge, and is held there by latch 25, leaves an outlet for the carbon dioxide of a definite predetermined size.
The patentee describes this feature, line 124, page 2 to line 8, page 3: "Thus the only outlet left for discharge of the gas is that bounded by the recessed area and the portion of the rim of the hole which crosses the recess. The size of this opening may be made of any value desired, so that an exact regulation of the pressure applied to expel the extinguishing liquid is afforded, and danger of exerting an excessive initial pressure is avoided, the supply of pressure gas is conserved so as to continue exertion of a substantial pressure on the liquid until it is all exhausted, and the liquid is discharged from the extinguisher with the force which will throw it to the desired distance."
The patent to Badger discloses the idea of controlling the rate and amount of CO2 which is liberated from a cartridge. The means for this purpose is the punch 26 which is intended to cooperate with the rim of the hole which it makes in the cartridge to meter the flow of the gas in the predetermined volume.
19. Badger Patent No. 1,691,041 issued November 13, 1928, also discloses a mechanism for use in fire extinguishers which consists of a cartridge constructed to contain CO2 to be discharged by the operation of a plunger or puncturing means 28, Fig. 1, which is held out of engagement with the cartridge 17 by a spring 54. When force is applied to the knob 31 the plunger is driven downward into the cartridge and the gas escapes or flows upward through the groove 30 which together with the rim of the hole made by the plunger forms a restricted channel, metering the gas flow. The patentee describing this states page 3 of the specification, lines 75 to 78, that: "Such channel may be made of any depth and width desired to permit release of the charge of gas at any desired rate of speed." This is another example of releasing the CO2 at a predetermined rate by proportioning the outlet area of plunger or puncturing means.
20. Badger Patent No. 1,715,347 issued June 4, 1929, like the former ones to Badger, is directed to fire extinguishers employing devices to eject the extinguishing fluid by means of gas pressure. It also illustrates mechanisms for "puncturing the cartridge and maintaining an open passage of prescribed and invariable area for escape of the confined gas," page 1, specification, lines 24 to 27.
Figs. 1, 3 and 4 illustrate the sealed cartridge 26, the punch 36 carried by the stem 37. The punch is held above and out of contact with the top of the cartridge 26 by a spring 29 so that a blow or pressure must be applied to the knob 39 forcing the stem and punch downwardly to fracture the CO2 cartridge. A groove 45 in the punch 36 constitutes the gas outlet from the cartridge and the patentee states, page 3 of the specifications, lines 14 to 27: "The dimensions of the opening bounded by this groove and the side of the hole in the cartridge wall which crosses it are of exactly known values, so that a passage of the same size is opened in all cartridges, permitting outflow of the gas at a rate which has been determined as best suited to maintain flow of the extinguishing liquid throughout the whole period of discharge thereof * * * and without either imposing too much pressure at the beginning, or causing the pressure to become too small at the end of the discharging period."
This Badger patent was cited by the Patent Office against claims 9, 10 and 11 of the Mapes application, the Mapes claims in suit herein.
21. British Patent No. 299,096 of 1928 granted to Schworetzky, defendant's exhibit No. 12, discloses a cartridge for holding compressed gas provided with a diaphragm m adapted to be perforated or broken by the plunger p. Plunger p has below its upper end portion a reduced portion p1 and toward the lower end a wider circular part p2 which acts to perforate the diaphragm m when the plunger is forced downwardly.
A groove r1 in the plunger is the means of metering or controlling the escape of gas from the cartridge. The area of this groove r1 predetermines the rate of flow of the gas from the cartridge. The specification states lines, 83 to 92, page 1: "In order to ensure a uniform discharge of gas in definite quantities after the diaphragm has been perforated, the central portion p1 of the punch is provided with a groove r and the guide member p of the punch with a groove r1, so that the gas can escape past the punch through the inner part of the nipple-like member h, and thus the gas-discharge channel cannot become clogged." There is also provided on this cartridge a cap 1 "of easily deformable material" which surrounds and covers the top of the punch p and holds it in operative position. This cap 1 is soldered to the nipple-like member h and the cartridge neck b and is ruptured or torn when the punch is driven into the cartridge and the gas pressure is released.
The control of the discharge of the gas depends upon the retention of the plunger p within the sleeve h after the punch p2 has been driven through the diaphragm and clear into the cartridge. No means is shown for preventing the plunger from being blown out by the pressure of the escaping gas after the cap and diaphragm have been ruptured.
22. These prior art patents, viz., defendant's exhibits 1, 2, 3, 4, and 12, clearly establish that long prior to the dates of the patents in suit those familiar with this art were aware of the importance of predetermining the flow of the compressed gas from the container or cartridge. To meter the flow of gas was a well known and recognized practice in the manufacture of fire extinguishing apparatus.
23. United States Patent No. 1,753,871 granted to Schworetzky shows a "high pressure gas-developing cartridge" provided with a diaphragm to protect the opening mechanism, described as follows by the patentee, page 1, lines `58 to 64: "This pin i [the striking pin] is guided at one end by the locking screw s and at the other end it is riveted into the diaphragm m soldered on and protecting the opening mechanism of the bottle. When the cartridge is rendered operative by forcing the striking pin into it this diaphragm is also driven inwards."
24. Patent No. 822,826 granted to Coleman, defendant's exhibit 5, shows a screen and cotton which "serve to arrest minute carbon particles which might otherwise be withdrawn, together with the explosive fluid when the tank is discharged."
25. In British Patent No. 230,504, Marks and Clerk also employed a screen to strain solid materials from the emerging stream. It is described as follows, lines 34 to 48: "The object of the present invention is to provide a closure for containers for liquified carbon dioxide for fire-extinguishing purposes, acting as an outlet and furnished with a part extending into the neck of the container, characterized by the feature that the inner outlet opening is covered by a sieve-like cap provided with curved guide blades which give a twist to the liquid as it leaves the bottle. Through this twist, which is imparted to the liquid as it reaches the sieve, the coarse particles of dirt are thrown out of the emerging stream before it reaches the sieve."
The Prior Art Puncturing Devices26. A great variety of devices to puncture the gas seal in the cartridges is found in the prior art. Defendant's exhibit No. 6, patent No. 1,671,369 to Johann, shows a punch 21 of tubular construction with a chamfered point and lateral outlet ports on its upper end, through which the gas from the cartridge 10 is designed to flow. This punch works in a guide 22 which is threaded upon a cap 14 which in turn has a central bore closed by the interposition of a seal 16 which prevents escape of gas from the container 10 through the outlet. The inner diameter of the punch 15 determines the rate of gas flow from the cartridge when the seal is broken. As in the patents in suit the puncturing device of this patent is a hollow tubular structure adapted to form the only passage of the gas from the cartridge to the other parts of the extinguisher.
27. The puncturing devices of the Read Patent No. 1,099,767, defendant's exhibit 10, as shown in Figs. 1 and 2, consist of a
sharp pointed element 13 held away from the diaphragm which closes the gas passage of the cartridge 6, by a coil spring 21 which is seated at one end upon a shoulder of the piercer 13 and at the other end upon a holding ring which is screwed down upon the diaphragm. This piercer, though not hollow, has the same mode of operation and pierces the diaphragm of the device in the same manner as do the puncturing devices of the patent in suit. Both are held out of position by a coil spring surrounding the puncturing device, one end of the spring seating against a shoulder of the piercer, the other against the element which holds the diaphragm in place. The dull end of the puncturing pin 13 rests on a depression in the cam 20.
28. The patents to Badger Nos. 1,725,775, 1,691,041, and 1,715,347, defendant's exhibits 2, 3, and 4, all depict punches which liberate the gas from the cartridge in the same general manner. The mechanism consists of a plunger or punch held away from contact with the CO2 cartridge by a coil
spring which is interposed between a shoulder or flange on the plunger and the top of the cartridge. They operate when the punch is normal to keep the cutting edge of the punch out of contact with the cartridge. When the punch is forced into the cartridge appropriate means lock the punch in that relation and the compressed gas flows from the cartridge through a channel formed by the rim of the hole and a groove in the plunger proportioned to allow a predetermined flow of gas.
29. While no one of the prior art patents can be deemed an anticipation in itself, they show that the patentee Mapes rendered at most an engineering contribution in which good design and not invention was the result.
To substitute a particular form of hollow plunger as shown by Johann's patent, defendant's exhibit 6, with the several operating elements of the puncturing devices shown in the prior art specifically referred to above would require only mechanical skill and would not contribute any new or unexpected result to the art.
30. Claim 9 of the Mapes patent is invalid as not requiring the exercise of invention in view of the prior art.
31. Claims 10 and 11 of the Mapes patent are particularly differentiated from Claim 9 by the provision of a strainer 20, see Figs. 3 and 4, plaintiff's exhibit 1. The addition of a strainer to prevent clogging of an outlet does not add patentability to the device and the claim is invalid.
32. Claims 1, 2, 3, of the Heigis patent are directed to apparatus which is shown and described in the Mapes patent in suit, with the exception of an added element 39, which is a disk of fragile material such as bakelite or glass, for the purpose of indicating discharge of the contents and as a protection from dust, etc. The patentee makes the fact that this is the only distinction between the Mapes and Heigis patents plain for he states, lines 1 to 16 in patent No. 1,920,127, plaintiff's exhibit 2: "In the application of Daniel Mapes, Serial No. 604,334, filed April 9, 1932, there is shown apparatus embodying certain features which are broadly part of the present invention, which accordingly relates to fire extinguishing apparatus employing a fire extinguishing liquid propelled by a medium stored under pressure in a cartridge or other container, and which embodies more specifically an improved design of cartridge in which the pressure medium releasing means are unitary with the cartridge and in which means are provided to seal the pressure medium releasing means against the corrosive action of external media and to indicate the charge condition of the cartridge."
33. Such a seal was used in the prior art and also is a mechanical means for a purpose so usual as not to call for the exercise of invention. Claims 1, 2, 3 of the Heigis patent are invalid as not presenting invention by the addition of a protective seal to the cartridge set forth in the Mapes patent also in suit.
John S. Bradley, of New York City, for plaintiff.
Titian W. Johnson, of Washington, D.C., and Francis M. Shea, Asst. Atty. Gen. (T. Hayward Brown, of Washington, D.C., of counsel), for defendant.
Before WHALEY, Chief Justice, and LITTLETON, JONES, and MADDEN, Judges.
Plaintiff claims that the defendant infringed patents owned by plaintiff, when in 1933 the defendant contracted with Air Cruisers, Inc., for the manufacture and delivery of 2,000 gas pressure cartridges to be used for inflating vests to be worn by aviators as life preservers, and later accepted delivery of and paid for the cartridges.
The patents claimed to be infringed are the Mapes patent, granted to Daniel Mapes July 18, 1933, and the Heigis patent, granted to Henry Heigis July 25, 1933. Mapes and Heigis each had after application, and before granting of his respective patent, assigned his application to plaintiff. The defendant had express notice from plaintiff of plaintiff's claim of infringement at the time the defendant accepted and paid for the cartridges between December 3, 1933, and April 25, 1934.
The gas pressure cartridges were about four inches long and one inch in diameter and so constructed as to be able to confine CO2 gas under a pressure of many hundred pounds per square inch, and when needed, to release it under control, but within four seconds, into an aviator's vest through a manifold, thus inflating the vest and converting it into a life preserver against the perils of water.
The cartridges as manufactured by Air Cruisers, Inc., and bought by the defendant, used the devices claimed in plaintiff's patents, and therefore infringed them if they are valid patents. The defendant claims that the patents are not valid, that they did not involve invention, but only mechanical improvement of devices earlier patented or earlier used. It claims that some fifteen United States patents and two British patents, by their disclosures, anticipate the claims of plaintiff's patents.
The usefulness of a device whereby gas could be confined under great pressure and quickly released had been formerly almost entirely in connection with fire extinguishers to be operated by hand. These extinguishers follow the same general plan. There is an outside container some eight inches in diameter and three feet long to hold a liquid containing ingredients having fire extinguishing properties. Inside this large container is placed a small flask of sufficiently heavy construction to confine a gas under great pressure. The neck of the flask has placed in it by some means a thin metal disc, a small part of the surface of the disc being exposed to the pressure of the gas in the flask. The operation of the extinguisher in the case of fire calls for the puncturing of the disc in order to release the gas from the flask and thereby put the extinguishing liquid which is in the outside vessel under pressure so as to propel it through the attached small hose with enough force so that it can be played upon the fire.
The puncture is made in the diaphragm in the neck of the flask by some sort of punch. This punch may be forced toward the diaphragm by a blow on the other end of the punch, or the punch may be stationary and the flask movable along guides so that when the end of the extinguisher where the punch is, is jounced against a solid object, the flask will move to the punch and the diaphragm will be punctured.
It is desirable that the gas flow steadily and not too rapidly from the inside flask into the outside container so that the extinguisher may be sure to operate and may be played upon the fire for as long as possible. This requires that the hole through the diaphragm into the gas flask be small, but that the passage for the gas be an unobstructed one of a predetermined size.
Since the necessary mechanism in the neck of the gas flask may be somewhat complicated and since the parts are small and delicate, it is desirable that they be not exposed to the possible corroding and clogging which might occur if they were open either to the extinguishing liquid in the external container, or to the outside air and dust. Such exposure may be avoided by having another diaphragm of thin frangible material, such as bakelite, not constructed to withstand any substantial pressure, but only to be air and liquid tight, so placed in the neck of the flask that it will keep liquid, air, or dust, from the puncturing and controlling mechanism. This second diaphragm also serves the purpose of showing, when it is visible and intact, that the gas has not escaped from the flask.
To prevent any obstruction of the small passage through which the gas must escape from the flask a fine meshed screen, so placed inside the flask as to strain the gas before it enters the passage, is desirable.
Air Cruisers, Inc., in manufacturing the safety vest cartridges whose purchase and use by the defendant constitute the alleged infringement, used a frangible diaphragm of bakelite to prevent outside air or dust from coming into contact with the mechanism of the cartridge until the gas should be released, a thin metal disc sufficient to confine the compressed gas, but puncturable, a hollow punch with a chamfered or slanted end, intended both to puncture the confining disc and to serve as a passage for the escaping gas, the hollow punch moving inside a close fitting passage and held from unintended contact with the disc by a coil spring through which its flanged head would not pass, a ring above the punch which prevented the punch from being blown out of the passage by the escaping gas after the punch has been operated, and a screen to strain any particles from the gas before it entered the small passage through the hollow tube.
Plaintiff claims that the combination of these devices so as to produce a controlled and dependable flow of gas was an infringement of the Mapes patent and that the use of the easily frangible bakelite diaphragm to keep air and dust from the mechanism and to indicate whether gas had escaped was an infringement of the Heigis patent.
In the vest inflation equipment manufactured for the defendant, the device to bring force to bear upon the puncturing pin was located in the manifold and was operated by a lever. It is not claimed as an infringement in this suit.
We think that neither the Mapes nor the Heigis patent was valid as to the element here claimed to have been infringed.
Plaintiff relies principally as to the Mapes patent upon the control exercised by a device manufactured according to its specifications, over the flow of the compressed gas from the flask. This is accomplished by the screen which prevents solid particles which might clog the small outlet from reaching it; by the hollow puncturing instrument fitting closely in the passage through which it moves, so that the only outlet, assuming perfection in manufacture, is through the tube and the rate of escape is determined by the size of the hole through the tube and the amount of pressure the gas is under, and by the fact that the hollow puncturing instrument cannot be blown out of its passage by escaping gas since it has a flanged head which cannot move farther than the stop ring above it.
The idea of controlling the rate of escape of the gas is conceded by plaintiff not to be original. Thompson in his 1919 patent controlled escape by the size of the outlet port through which the gas had to pass before it reached the hole punched in the disc. Badger in his 1928 and 1929 patents controlled it by compelling the gas to pass through a groove in the side of the punch, the punch having a cutting end which cuts a clean, round hole through the disc, the groove on the punch commencing not at the end but still on the part of the punch which projects through the disc after it is punctured. The Johann patent of 1928 controlled the rate of escape by making the puncturing pin hollow at the puncturing end, with lateral outlets farther up the pin. Schworetzky in his 1928 British patent exercised control by means of a groove in the puncturing instrument, which has a circular cutting end. Badger and Thompson stated in their disclosures what would have been obvious without stating, that their devices were intended to control the escape of gas. Johann's device was in this respect identical with plaintiff's except that the gas after passing into the hollow end of the puncturing pin was allowed to escape through lateral holes instead of passing through the whole length of a hollow pin. This difference, not serving any original purpose, is not invention.
Coleman's 1906 patent, and the Marks and Clerk British patent of 1925, used a screen to keep particles of solid material from clogging the outlet of the pressure flask.
The device of a coil spring to keep the point of the puncturing pin from unintended contact with the disc was used in the Read 1914 patent.
In the Badger patents the puncturing pin was kept from being blown out of the hole by a latch. In the Read 1914 patent the pin is stopped by a depression in the cam. In the Mapes patent this is accomplished by having a flange or head on the pin, which cannot pass a ring screwed into the apparatus above it. We do not think that this stopping device constitutes invention.
The only additional element claimed in the Heigis patent beyond the claims of the Mapes patent, is the external sealing disc which serves to prevent outside air or liquid from coming in contact with and corroding or clogging the delicate mechanism for puncturing the flask and controlling the escape of the gas and also serves, when visible, as an indicator of whether gas has escaped or been released from the flask.
The 1930 patent to Schworetzky has a diaphragm "protecting the opening mechanism of the bottle," from outside contact and driven in when the puncturing pin is struck. The 1928 patent to Schworetzky has the flask covered with a cap of "easily deformable" material which is driven in when the punch is driven in, and is ruptured by the gas pressure when the punch passes through the disc. Both these Schworetzky devices serve the same purposes as the Heigis external seal, and in the same way; they seal off the operating parts of the flask mechanism, and if intact, indicate, if they are visible, that the gas is still in the flask. If used in a fire extinguisher neither they nor the Heigis device would be visible unless the outside shell of the extinguisher was opened. In the vest inflating apparatus all three would be visible until the cartridge was attached to the manifold.
Plaintiff's claim that it has, without using any new elements, combined old elements "into a new combination which work, and are bound to work, as intended" is not fortified by proof that the apparatus covered by prior patents intended to accomplish the same purposes did not work. Plaintiff's mechanical design seems to be excellent but plaintiff has not proved, as the patentee did in the cases plaintiff relies on, Webster Loom Company v. Higgins, 105 U.S. 580, 26 L.Ed. 1177; Richmond Screw Anchor Co. v. United States, 61 Ct. Cl. 397; Id., 275 U.S. 331, 48 S.Ct. 194, 72 L.Ed. 303; Allgrunn v. United States, 67 Ct.Cl. 1; Harry F. Waite v. United States, 63 Ct.Cl. 438, that it has accomplished something which could not be done with the former devices. The words of Chief Justice (then Associate Justice) Stone, "An improvement to an apparatus or method, to be patentable, must be the result of invention, and not the mere exercise of the skill of the calling or an advance plainly indicated by the prior art," Altoona Theatres v. Tri-Ergon Corp., 294 U.S. 477, 486, 55 S.Ct. 455, 458, 79 L.Ed. 1005, are applicable here.
We conclude that plaintiff's combination of elements did not constitute invention, and that its patents are therefore invalid. The petition will be dismissed. It is so ordered.
WHITAKER, Judge, took no part in the decision of this case.