1. Patent No. 941,962, granted to one State, November 30, 1909,
Claims 4-7, inclusive, 12, 13, and 22-26, inclusive, for the making
of the outer shoes or casings of pneumatic automobile tires
composed of woven fabric treated with rubber, is void for lack of
invention, viewed either as a mechanical or as a method patent. P.
264 U. S.
327.
2. The fact that wide and successful use of a device has been
made under license from the patentee may be evidence of patentable
novelty, but is by no means conclusive, and must be weighed in the
light of all the circumstances. P.
264 U. S.
329.
284 F. 746 reversed.
Certiorari to a decree of the circuit court of appeals holding
the respondent's patent valid and infringed by the petitioner and
reversing a decree of the district court which dismissed the
respondent's bill to enjoin infringement.
Page 264 U. S. 321
MR. CHIEF JUSTICE TAFT delivered the opinion of the Court.
This is a suit to enjoin the infringement of a patent for the
making of the outer shoes or casings of pneumatic automobile tires,
composed of woven fabric treated with rubber. We have brought it
here because of a conflict of opinion between the Circuit Courts of
Appeals of the Sixth and the Third Circuits.
The suit in each circuit was begun by Frank A. Seiberling, as
assignee. That in the Sixth Circuit was filed in 1914 against the
Firestone Tire & Rubber Company, and was based on alleged
infringement of 3 claims of a patent to Seiberling and Stevens, No.
762,561, of June 14, 1904, and 16 claims of a patent to one State,
No. 941,962, dated November 30, 1909. The district judge found both
patents valid and infringed. 234 F. 370. The Firestone Company
appealed, and the Circuit Court of Appeals for the Sixth Circuit
reversed the district court, holding that all the claims of the
State patent were invalid, and that, of the three claims of the
Seiberling and Stevens patent, two were invalid and one was not
infringed. 257 F. 74. The bill in the case before us was brought in
1914 in the District of New Jersey on the same two patents. After
the decision in the Sixth Circuit in December, 1918, the plaintiff,
Seiberling, filed in the Patent Office a disclaimer absolute as to
eight claims of the State patent and qualified as to the other
eleven. No proofs were made in this case to sustain suit upon the
Seiberling and Stevens patent, State, the patentee of the other
patent, having testified that it had failed. The district judge
dismissed the bill on the ground that the effect of the disclaimers
on the State patent was to change it from a machine patent, and to
make it a method or process
Page 264 U. S. 322
patent, and that the method was old. On appeal to the Circuit
Court of Appeals for the Third Circuit, a majority of that court
held that the record herein in respect to the State patent was
substantially different from that in the Sixth Circuit, and that
the State patent was qualified by the disclaimers was valid and
infringed. 284 F. 746. The third judge dissented on the ground that
the disclaimers were of such a character as not to be permitted by
the statute.
The making of rubber tires for automobiles began by hand, and
the proof seems to show that, while power and complicated mechanism
have been applied to secure much greater speed in production and
possibly greater uniformity in the product, there is even now no
successful device for their completely automatic manufacture.
A hand tire was framed on an annular metallic core of the proper
size, with spokes and a hub mounted and revolving on a shaft. It
was made up of layers of fabric stuck together by a proper adhesive
material and formed into a tube with a narrow opening on the
inside, called the bead. The ends of the tube were united together
to make it circular and endless. The layers were arranged to give a
solid rubber tread along the outer periphery to make contact with
the road. The workman began by coating the core with a suitable
cement, and affixed a strip of the rubber impregnated fabric,
stretching it and cutting it so as to cover the circumference of
the core. In width it was somewhat less than enough to cover the
sides of the core. He then revolved the core slowly, patting and
stretching the woven strip on it, pressing and shaping it with his
fingers and hand tools, so that it adhered smoothly to the core
without wrinkles. He followed this with another strip of fabric,
attaching it to the one before by the rubber cement. This operation
he repeated with as many layers as were needed.
The strips of the fabric were cut on the bias, and the warp
threads of one strip, when set in place, were intended
Page 264 U. S. 323
to run from one inner open edge or bead, in a diagonal course,
along, across, and around the tube to its other open edge, or bead.
The next strip or layer was reversed, so that its warp threads
crossed those of the first strip at a selected angle.
There was no difficulty in making the part of the layer on the
tread easy and smooth, because the curvature there was small, but,
as the fabric was pressed against the sides and inside of the core,
it tended to bagginess, and did not lie so smoothly. It would
gather and wrinkle. This, if carried into the permanent condition
of the fabric, would greatly weaken the tire. The tendency of woven
material, however, is to contract in one direction as it stretches
in another. The fabric lengthens circumferentially as it is
stretched on the outer periphery. The square meshes thus become
diamond-shaped along the tread. There is a corresponding
longitudinal contraction in the fabric as it is stretched laterally
down the sides, so that its shrinking will be greatest as the edges
are approached. Thus, the wrinkling and bagginess of the fabric
may, by proper treatment with hand and tool, be made to disappear,
and the strip be shaped smoothly to the sides and beads of the core
surface.
At first, the skirts of the fabric were stretched radially along
the sides of the core, and treated by a saw-tooth tool to avoid
wrinkles, and then a spinning roll or wheel was spun along the
fabric down the core side in a spiral course. There was thus given
to the fabric what was called the double stretch, and this was
supposed to give greater strength and smoothness to the fabric as
set upon the core. The workmen, however, found that they could work
more rapidly and with less pains if they gave up the saw-tooth
stretch and depended only on the use of the spinning wheel, with
which, by increasing the hand speed of the core, they could smooth
the fabric against the core without wrinkles. The spinning or
stitching of the sides
Page 264 U. S. 324
by the rapid revolution of the core had been previously shown in
the kindred art of shaping thin metal sheets over a power driven
core. The evidence was that rotation of the core by hand to a speed
of 50 or 60 revolutions a minute would give a centrifugal tendency
to the skirt of the fabric, keeping it away from the core. By thus
doing what the foreman of the shops at first deprecated, the
workmen developed a successful improvement in the hand making of
tires. The spinning was usually done one side at a time; but
powerful workmen were known to work the spinning wheels together on
both sides of the core. The spinning of the fabric by rotating the
core rapidly was more usual in tires of smaller sizes, because the
fabric was so stiff that such a method by hand in larger tires was
impracticable.
One of the early power machines to make tire casings was
patented to Moore in 1894. It disclosed an expansible core upon
which an endless rubber fabric was placed and stretched. The core
was rotated rapidly by power, and the fabric was rolled down by a
set of rollers, of which one was a spinning roller. This was
pivoted to swing radially toward the core, but the handle of the
spinning wheel was so fixed that it could not travel as far down as
the bead.
The Seiberling and Stevens patent of 1904 for making tires
sought to do the work of fitting the fabric to the core wholly by
machinery --
i.e., automatically, without the intervention
of the hand of the operator. It comprised:
1st. A main power-driven shaft, to drive the core capable of low
or quick revolutions, or entire release;
2nd. A reel, carrying the rubber impregnated strip;
3rd. A tension roller, retarding the reel and stretching the
fabric on the periphery after the free end is attached to the
core;
4th. A pressure roller, concave in form, to match the tread of
the strip and press it to the core as it revolves;
Page 264 U. S. 325
5th. An arm, carrying a laterally spring-pressed finger, called
a jigger finger, intended to be reciprocated rapidly, radially of
the core, traveling in and out between the tread and in its outer
edge, functioning like a human finger in pressing the fabric down
against the core and stretching it into shape; and
6th. A further pressure wheel or spinning roller, applied along
the edge of the fabric to press it into a crease. The spinning
roller was set in a plane at a receding angle to the plane of the
core.
The evidence in this record shows that Seiberling and Stevens'
device was not successful in its operation, and that the automatic
operation of the finger was not effective.
The Vincent patent of 1905 had a power-driven core to draw and
stretch the fabric, with guide rolls through which the fabric was
led on its way to the core, and which were geared so as to resist
the pull of the fabric. As soon as the fabric was spread
circumferentially on the core, its skirts or edges were formed down
the sides by two sets of spring-actuated hammers, arranged
progressively in a radial direction, so that, as the core rotated,
the fabric was tapped on the sides from their outer portion
inwardly toward the bead. This device seems to have had
considerable commercial use.
The Mathern Belgian patent of 1906 had a core arranged to be
power-driven at high and low speeds, effected by changing gears;
the ratio between the two being 20 to 1. It had a stock roll from
which the fabric passed at a tension around guide rolls and between
conical gears, to secure uniform puckers in the outer edges of the
fabric and to hold it out from the core as its middle is delivered
circumferentially to become the tread. A screw-fed slide was
arranged to be moved radially to the core, having suspended on pins
a pair of spinning rolls, the handles of which enable the operator
to press them laterally against
Page 264 U. S. 326
the skirts of the fabric on the core during their inward radial
movement.
The Belgian Mathern patent is attacked as a paper patent,
because it was allowed to expire through failure to pay the annual
Belgian tax. The evidence shows, however, that in 1911, it was
offered commercially to the Hood Company, which preferred a German
patent of the same inventor, and the Belgian machine was actually
used for the making of tires which proved to be commercially
satisfactory. We do not doubt from the record that it was a
practical tiremaking machine.
The State patent was applied for March 26, 1909. It was of the
same general type as that of Seiberling and Stevens. State's most
substantial change was that he discarded the reciprocal,
spring-pressed, in and out forming finger of Seiberling and
Stevens, and substituted spring-pressed spinning rolls which he
supplemented with stitching rolls, if needed. He provided, in the
same general way as Seiberling and Stevens, a core, a fabric reel,
a retarding or tension device, whereby he attached his strip of
fabric to the core for the width of the tread portion, leaving the
skirts or wings projecting outwardly. Fixed to the base of the
frame carrying the core was a standard, traveling in a horizontal
track with a turret, having four tools mounted at four equidistant
points and independent of each other, except for their common base.
One carried a tread roller, the second the spinning rollers, the
third the stitching rolls, and the fourth the bead-attaching rolls.
The operator revolved the turret, so as to make the tread roller
bear against the tread on the core, then the spinning roll device,
then the stitching roll, and then the bead-forming roll, the latter
two of which were not always used. There was no real combination of
the operation of the four tools. It was an aggregation not
different from a successive use by an operator of hand tools, and
so the Circuit Court of Appeals
Page 264 U. S. 327
of the Sixth Circuit held. This was what led to the disclaimer
of eight of the claims. It possibly gave the change in the
character of the record and proof in this case from that in the
Sixth Circuit, as remarked upon by the Circuit Court of Appeals of
the Third Circuit.
Eleven claims are left. While qualified by disclaimers,
consideration of the original claims will serve our purpose. Claims
4, 5, 6, and 7 are for combinations of a sheet fabric supply, a
power-driven ring core, a radially moving support laterally
spring-pressed toward the core, with a spinning roll mounted on the
support to shape the sheeted fabric to the core. The variety in the
claims is in adding to the spinning roll the element of a receding
angle to the plane of the core in the 5th; in giving the spinning
roll a round disk-shaped edge in the sixth; in giving both the
receding angle and the disk-shaped edge to the spinning roll in the
7th.
Claims 12 and 13 comprise in their combinations all the above
and the slow-speed mechanism for actuating the core when the fabric
is received from the stock roll, and the high-speed mechanism for
the spinning rolls to pass over the fabric on the core and shape
it.
Claims 22, 23, 24, 25, and 26 cover the same combinations, save
that they emphasize the feature of the radially moving support of
the spinning roll, which is power-pressed toward the core.
There was no novelty in the combination of a power-operated core
with fabric rolls for delivering the rubber impregnated strips
through tension rolls to the core, or in the use of pressure rolls
to stretch and press the tread at the slow speed of the core
followed by the spinning of the stretching or spinning rolls with
high speed down the sides from the outer line of the tread to the
bead edge of the fabric, or in the use of the tangential force upon
the skirts of the fabric to keep them away from the core. The use
of power to revolve the core was seen
Page 264 U. S. 328
in earlier patents in Seiberling and Stevens, in Vincent, and in
the Belgian Mathern. The change of gears from slow to rapid
revolution, by shifting of the gears, was shown in the first and
third of these. The receding angle of the spinning roller to the
plane of the core was not new with state. It was seen in Seiberling
and Stevens.
The operation of the spinning wheel in the State patent is said
to be automatic. We do not find it to be so. It is partly
automatic, in that the spinning rolls, when properly placed, are
brought closer to the fabric by the springs. The Belgian Mathern
device is partly automatic in an analogous way. But, when the
process of spinning is carried to its completion, the adjustment
and pressure of the wheels to the fabric as it approaches the bead
edge need the hand of the operator, just as in the handmaking of
tires. It is true that the spinning rolls in all these patents are
steadied against the fabric in one way or another, as by the
power-pressed radially moving support in the State patent; but, in
the end, the hand is needed to complete the spinning process as it
nears the bead edge. We do not think that the use of the springs by
State in such a combination involves patentable invention when we
weigh its inconsiderable importance and note the suggestion of the
use of such springs for analogous purposes in Vincent, and in
Seiberling and Stevens.
The change from hand to the use of machinery often involves
invention. In the making of tires, it has in fact resulted because
of the use of power, in speed of manufacture, and possibly in some
greater uniformity of the product. But the record does not show
that there has been substantial change in the mechanics or method
of making. The steps are the same, and the succession from one to
the other are as in the manual art, and the transfer from hand to
power was by the usual appliances, and had all been indicated
before the State patent.
Page 264 U. S. 329
These conclusions as to the lack of novelty in the elements and
combinations of the State patent were reached by the Circuit Court
of Appeals for the Sixth Circuit, and we agree with them.
The majority opinion of the Third Circuit Court of Appeals in
this case attributed much importance and novelty to the effect of
the centrifugal force of the revolving core upon the fabric. Its
view was that State had discovered that the fabric was thus
substantially stretched radially as the spinning wheels hinged
against the flowing fabric, and the square meshes on the sides were
elongated substantially by the centrifugal force, so that, at the
bead, they were lozenge shaped, and easily smoothed. We do not find
such a new result, or anything different from what was shown in the
making of tires by hand. If there were such a newly developed,
substantial addition to the stretching of the material by
tangential force, it must have occurred in the Mathern Belgian
patent, before State. But we find it in neither. The discovery of
such a new source of radial stretching power is not testified to by
the experts in either hearing.
We are pressed with the argument that many tires, reaching into
the millions, have been made under a license granted by Seiberling,
and that the success of the device shows the utility and novelty of
what he licensed. He gave to his licensees not only the use of
State patent, but also that of Seiberling and Stevens patent. Both
patents made large and sweeping claims, which were well calculated
to induce acquiescence by those without sufficient knowledge of the
prior art or adequate capital to resist. Yet the more comprehensive
claims of the State patent have now been disclaimed, and the
Seiberling and Stevens patent included in his licenses has been
abandoned. There has been a complete change about in the Third
Circuit lawsuit. Mr. Seiberling, when these licenses were
Page 264 U. S. 330
granted, was at the head of the great Goodyear Company. He could
give great vogue to a device owned and used by him. The license was
not a heavy tax, equal to less than 1 percent of the cost of a
machine, and purchase of peace was a wise course for the smaller
manufacturer. Evidence of this kind is often very persuasive,
especially when patentable novelty is in doubt.
Potts v.
Creager, 155 U. S. 597,
155 U. S. 609;
Magowan v. New York Belting Co., 141 U.
S. 332,
141 U. S. 343.
But it is by no means conclusive, and must be weighed in the light
of all the circumstances, to accord to it its proper significance.
Eibel Co. v. Paper Co., 261 U. S. 45,
261 U. S. 56;
McClain v. Ortmayer, 141 U. S. 419,
141 U. S. 428.
In the case before us, we do not think it can overcome the lack of
novelty and invention.
Seiberling disclaimed combination Claims of 4, 5, 6, and 7,
except when constructed and coordinated in a certain way. He
disclaimed Claims 12 and 13, except for the combined operations of
a certain kind, and unless the recited elements were constructed
and coordinated as he described. He disclaimed Claims 22, 23, 24,
25, and 26, except when constructed and coordinated for a
particular purpose and unless the power drive functioned as he
pointed out. As we have found that there is nothing really new in
the method or mechanism of state, it will serve no purpose to go
through the qualifying disclaimers in detail and consider their
effect.
The disclaimers are attacked on the ground that they exceed the
legal function of a disclaimer, and are an attempt to change a
mechanical patent to a process or method patent, something which
could only be properly accomplished by a reissue. The Circuit Court
of Appeals for the Sixth Circuit examined the possibility of
sustaining the alleged invention of State as a process of method
patent, but concluded that it was fully anticipated by the method
of making tires by hand. We do not find it
Page 264 U. S. 331
necessary to pass upon the validity of the method of making
disclaimers here pursued, because we agree with the Sixth Circuit
Court in failing to find invention in the state device either as a
mechanical or as a method patent.
The decree of the circuit court of appeals is reversed, and the
case is remanded to the district court with directions to dismiss
the bill.