The sidewall stock is a blend of natural, reclaimed natural, and GR-S rubbers, except white sidewalls, which are of special white sidewall stock.
The toe strip stock is of natural rubber only.
Alleged infringing elements.
1. The sealing ribs.
There is and can be no question that the ribs on defendant's tires are located within the rib area of Claim 19, and that in 'plurality', continuity, integral molding, and shape, defendant's ribs answer the descriptive language of Claim 19.
However, Claim 19 calls for ribs 'of the same material as the side walls of said body.' Admittedly, the ribs of defendant's tires are not of sidewall stock. Plaintiff counters by saying that 'they are of the same general type material.' But during the prosecution of its application in the Patent Office, plaintiff chose deliberately to limit this claim to ribs of sidewall stock. It may not limit for purposes of validity, and enlarge for purposes of infringement. The rule of 'file wrapper estoppel' is applicable. Exhibit Supply Co. v. Ace Patents Corp., 1942, 315 U.S. 126, 137, 62 S. Ct. 513, 86 L. Ed. 736; Smith v. Magic City Kennel Club, Inc., 1931, 282 U.S. 784, 789-790, 51 ? . Ct. 291, 75 L. Ed. 707; Shepard v. Carrigan, 1886, 116 U.S. 593, 598, 6 S. Ct. 493, 29 L. Ed. 723; Jones v. Bodaness, 10 Cir., 1951, 189 F.2d 838, 841; see also Imperial Bottle Cap & Mach. Co. v. Crown Cork & Seal Co., 4 Cir., 1905, 139 F. 312, 323.
The court concludes that the ribs of defendant's tires do not infringe Claim 19. In this connection, it is not without significance that until October 1952, the sidewalls of plaintiff's tires were of natural rubber, and the ribs were formed in and of such sidewalls. In October 1952, synthetic rubber was used in sidewall construction. The sidewall stopped short of the heel of the bead. Plaintiff inserted a small chafer strip of natural rubber which either met or lapped the edge of the sidewall, and extended around the heel of the bead, terminating under the bead base. Ideally, three ribs were formed in the sidewall, and four in the chafer strip.
In March 1954, defendant, which has always made the sidewalls of its tubeless tires of a blend of natural, reclaimed natural, and GR-S rubbers, began the use of a natural rubber toe strip, which extends from above the rim flange down around the heel, across the base, around the toe and up the inner side, in which strip all the ribs are formed. In July 1954, on its puncture sealant tubeless tires, and in January 1955, on its non-puncture sealant tubeless tires, plaintiff began the use of a chafer strip coated on the inside with liner stock and on the outside with natural rubber stock, covering approximately the same area as defendant's March 1954 construction, except that a portion was tucked under the sidewall, three of the ribs being formed in the sidewall (of either natural or synthetic rubber) and four in the natural rubber portion of the chafer.
2. The liner.
a. 'Of substantially impervious butyl type rubber composition.' (Calim 19.)
Neither plaintiff nor defendant contends that, insofar as this litigation is involved, the composition of defendant's tubeless tire differs from the conventional tire, except as to the sealing ribs and liner. The function of the liner in both plaintiff's and defendant's tires is the same; to prevent any harmful diffusion of air into the carcass. The litigation has at least implicitly assumed that defendant's liner adequately performs this function. If the factor -- the liner -- that accomplishes this end can properly be described as 'substantially impervious', then obviously defendant's liner is 'substantially impervious', and falls within that portion of Claim 19.
The fundamental question therefore is whether or not the liner used in defendant's tires is 'of * * * butyl type rubber composition.' In substance, plaintiff claims that these 'liners are relatively impermeable because of their use of butyl';
and that 'Butyl-type composition means * * * something that operates the way it does because of butyl.'
In the course of argument
plaintiff in effect took the position that any material used to decrease permeability, and containing any butyl, was a butyl type rubber composition. Defendant took the opposite pole, and contended that a butyl type rubber composition was one in which a type of butyl was the only rubber component; that whenever another rubber, such as natural rubber or GR-S, is used with butyl in a compound, the two rubbers are referred to as a 'mixture' or 'blend', and the compound or composition is referred to as a composition of the mixture or blend; and that when the term 'compound' or 'composition' is used, the name of one of the two rubbers is never used alone to characterize the composition. However awkward the phraseology may be, defendant contends that a product composed, e.g. of butyl and GR-S, should be referred to as 'a composition made of a mixture of butyl and GR-S.' This terminology was sustained by the testimony of defendant's expert Bull and by another expert
called for that sole purpose, who supported his own conclusion by reference to technical literature.
Plaintiff called no expert on this question,
and did not attempt to rebut it. Indeed, in the Sarbach application, filed June 18, 1949 (patent No. 2,676,636 issued April 27, 1954) plaintiff (through its patent attorneys) speaks of a "Butyl' composition' when the sole rubbery component is butyl; and refers to the blending of such butyl composition with other 'rubbery compositions' (natural rubber, GR-S, or natural rubber and GR-S) 'to form a liner composition * * *.' The resultant 'liner element' is then claimed to be superior in several respects to 'conventional 'Butyl' liners * * *.'
Defendant also urges that as Claim 19 calls for a liner 'of butyl type rubber composition' this excludes other rubber-like compositions; defendant refers by contrast to Claim 2 that describes the puncture-sealing material as 'comprising butyl type rubber'; and defendant cites Robie v. Carlton, 1948, 171 F.2d 310, 311, 36 C.C.P.A., Patents, 739, holding that 'of' means consisting 'entirely of the specified material', and that where the intention is to convey the idea that the article 'contains the specified substance as one of its ingredients, the usual practice is to use such a word as 'including' or 'comprising' * * *.'
On the basis of the expert testimony the court finds that the liner of defendant's tubeless tire, as it contains a substantial proportion of rubber other than butyl (50% of natural rubber in one case and 64.5% of natural rubber and GR-S in the other) is not made 'of a * * * butyl type rubber composition' as called for in Claim 19.
However, apart from the conclusory aspect of the expert testimony. the court is of the opinion that as used in the Herzegh patent, and as understood by plaintiff prior to this litigation, the term 'lining of substantially impervious butyl type rubber composition' meant a lining in which the only type of rubber was some type of butyl rubber.
(i) The only type of rubber mentioned in the specifications as 'well suited for the purpose of this lining layer'
is 'the butyl type of synthetic rubbers.'
(ii) In the only example of liner given in the patent, and which is described as having 'given excellent results for the purposes of this invention in extensive tire tests',
the only rubber is butyl rubber.
(iii) In the 'Remarks' to the last amendments of the Herzegh application in the Patent Office, Herzegh's counsel attempts to make a great virtue of the fact that 'the puncture sealing layer in the crown region * * * is adhesively compatible with the lining of butyltype rubber composition'. Now butyl rubber was known to be incompatible with natural rubber or GR-S; the puncture sealing layer described in the patent, and in general use by plaintiff for that purpose, had butyl rubber as the sole rubber component; therefore counsel was speaking of compatibility of butyl with butyl.
(iv) The liners of the tires first produced by plaintiff followed the patent in composition, and contained only butyl rubber.
(v) Herzegh, in his talk on 'Puncture Sealing Tubeless Tire' in 1949, spoke of the diffusion problem having been solved by the invention of 'Butyl rubber.'
(vi) Plaintiff's Sarbach patent, previously discussed, used the term "Butyl' Composition' only where the sole rubber component was butyl.
(vii) In the summary of the 'Tubeless Tire Patent Situation' made by plaintiff's house patent counsel on February 5, 1951, he described the Herzegh patent application as 'claiming a tubeless tire with bead-sealing ridges, a butyl liner', and referred to the Goodyear (Wingfoot) 1943 application as showing a 'butyl liner.'
(viii) In the letter of March 9, 1951, of special patent counsel to plaintiff's house patent counsel on the 'Tubeless Tire Situation', with reference to the prosecution of the Herzegh application, and the adverse citation of Lightbown by the Examiner, it is said:
'The essence of the Lightbown teaching is that the gum must contain both butyl rubber and natural rubber, whereas the Herzegh liner contains no natural rubber whatever.'
The court therefore finds as a fact that the liner used in defendant's tubeless tire is not a liner 'of butyl type rubber composition' as that language is employed in Claim 19 of the Herzegh patent.
b. The surface covered by the liner.
The liner in the Herzegh patent covers 100% of the inner surface of the tire, being 'preferably extended down to the bead portions, around the toe 26 of the bead portion and to the heel 27.'
Defendant's current construction tubeless tires (selected by plaintiff as 'typical' on the point of infringement) have liners which cover 97% or 95% of the inner surface of the tires. This obviously is not a literal infringement. However, if defendant's departure were but 'unimportant and insubstantial changes and substitutions' ( Graver Tank & Mfg. Co. v. Linde Air Products Co., 1950, 339 U.S. 605, 607-608, 70 S. Ct. 854, 856, 94 L. Ed. 1097; City of Grafton v. Otis Elevator, 4 Cir., 1948, 166 F.2d 816, 821; Specialty Equipment & Mach. Corp. v. Zell Motor Car Co., 4 Cir., 1952, 193 F.2d 515, 518-9) the court of course would not hesitate to find infringement. But plaintiff's claim for 100% liner coverage of the inner surface of the tire was founded upon the recognition that if any portion of a cord was exposed to air under pressure, it would act as an air wick. Claim 19 therefore called for a lining 'covering the inner surface' of the tire. Defendant has covered the remaining 3-5% of the inner surface with natural rubber instead of with the liner.
Plaintiff counters by saying that where 97%
of the inner surface of the tire is covered solely with butyl material and the remaining 3% solely with natural rubber toe stock, the total diffusion rate for the entire inner surface would be the same as if the two rubbers were intermingled and the whole homogeneous mass used to line the entire inner surface of the tire. This was and is incomprehensible to the court. A roof with a surface of 100 square feet certainly does not afford the same defense to permeation by the elements, if it has three square feet completely uncovered
and the remaining ninety-seven square feet covered by slates on inch thick, that it would have if the entire area were covered by slates each 0.97 inches thick. A leaded window made for 100 panes of glass, each 1/4 (0.25) inch thick, three of which are missing, certainly does not afford the same protection against the elements that would be provided if it had 100 panes each 0.2425 inches thick. A new pair of trousers from which moths have eaten three percent is not (regardless of the locale of the depredations) the same as a pair with an overall wear of three percent.
The court therefore finds as a fact that the extent and termination of the liner, called for by Claim 19, is not found in defendant's tires.
Plaintiff founds its alleged invention on the 'combination' of liner and ribs; specifically, as described in Claim 19. For infringement, every element of the combination must be embodied in the alleged infringing device. Montgomery Ward & Co., Inc. v. Rogers, 4 Cir., 1939, 100 F.2d 721, 722; I.T.S. Rubber Co. v. Essex Rubber Co., 1926, 272 U.S. 429, 444, 47 S. Ct. 136, 71 L. Ed. 335; Lektophone Corporation v. Rola Co., 1930, 282 U.S. 168, 171, 51 S. Ct. 93, 75 L. Ed. 274; Bailey v. Galion Iron Works & Mfg. Co., 4 Cir., 1936, 80 F.2d 805, 807; Walker on Patents (Deller's Ed.) sec. 461, p. 1697.
Therefore, the omission from defendant's tubeless tire of the sealing ribs, or specific liner, or specific extent and termination of the liner of Claim 19, would avoid infringement. A fortiori, the omission of all three, as found by the court, necessarily results in the conclusion of law that the accused device does not infringe Claim 19. As plaintiff has agreed that the decision of that claim is determinative of all the claims in suit, the court concludes as a matter of law that defendant does not infringe any or all of Claims 11, 12, 13, 19 and 20 of plaintiff's patent No. 2,587,470.
Claims 11, 12, 13, 19 and 20 of patent No. 2,587,470 are invalid; but if valid, are not infringed by defendant; and the complaint must be dismissed.
The foregoing opinion embodies those findings of fact and conclusions of law deemed necessary by the court for the disposition of the case (F.R.C.P. rule 52, 28 U.S.C.). Counsel may, if they desire, submit requests for further, or more specific, findings.
An appropriate judgment will be entered upon submission.