320 



THE INDIA RUBBER WORLD 



[July i, 1902. 



A DECISION m FAVOR OF THE GRANT TIRE PATENT. 



ANOTHER judicial decision has been rendered, bearing 

 upon the Grant patent for solid rubber wheel tires, this 

 time in n The Consolidated Rubber Tire Co., el al. v. 

 The Finley Rubber Tire Co., <?/ al. The case was tried 

 in the United States circuit court (or the northern district of 

 Georgia, at Atlanta, the decision being handed down by Judge 

 Newman, on June 2. Before final hearing, The Goodyear Tire 

 and Rubber Co., alleging that they were the real party at in- 

 terest, rather than the Finley company, were made party de- 

 fendant. 



The original bill sought to enjoin the infringement by the 

 defendants of the Grant patent. The contention for defend- 

 ants was that the invention claimed by Grant is a mere com- 

 bination, or aggregation, of old elements, each of which was 

 well known to the prior art before the date of the Grant pat- 

 ent. Defendants claim that combining these various elements 

 required only ordinary mechanical skill, and involved no dis- 

 covery and no new principles. 



The court reviews the former decisions, bearing upon the 

 same patent, by Judge Thomas, at Brooklyn, and by Judge 

 Wing, at Toledo, and concurs in their finding that the Grant 

 patent does disclose patentable invention, though the several 

 parts which constitute the essential features of the invention 

 were each used in different combinations in previous inven- 

 tions. In support of this position the court refers to numerous 

 prior decisions in patent cases. One such decision, in a case 

 wherein it was argued that a certain combination of devices did 

 not constitute invention, runs, in part : 



This argument would be sound if the combination claimed by W. was 

 an obvious one for obtaining the advantages proposed — one which 

 would occur to any mechanic skilled in the art. But it is plain from the 

 evidence, and from the very fact that it was not sooner adopted and 

 used, that it did not for years occur in this light to even the most skill- 

 ful person. It may have been under their very eyes, they may be al- 

 most said to have stumbled over it ; but they certainly failed to see it, to 

 estimate its value, and to bring it into notice. Who was the first to see 

 it, to understand its value, to give it shape and form, to bring it into no- 

 tice, and urge its adoption, is a question to which we will shortly give 

 our attention. At this point we are constrained to say that we cannot 

 yield our assent to the argument, that the combination of the different 

 parts or elements for attaining the object in view was so obvious as to 

 merit no title to invention. Now that it has succeeded it may seem very 

 plain to any one that he could have done it as well. This is often the 

 case with inventions of the greatest merit. It may be laid down as a gen- 

 eral rule, though perhaps not an invariable one, that if a new combina- 



NoTR.— This litigation relates to United States patent No. 554,^75. for confining 

 a solid rubber tire in the steel channel on a wheel rim by means of longitudinal 

 wires through the rubber, the wires being jointed by electric welding. The patent 

 was issued to Arthur W. Grant and disposed of by him- 

 to The Rubber Tire Wheel Co., merged later in The Con- 

 solidated Rubber Tire Co. The first suit for infringe- 

 ment brought to trial was decided at Brooklyn, New 

 I York, in favor of the plaintiffs. The second was de- 

 cided at Toledo, Ohio, in a court of similar standing, 

 also in favor of the plaintiffs. This decision, however, 

 was reserved in May last, at Cincinnati, by a higher 

 court, in the same jurisdiction, declaring the patent 

 void for want of patentable novelty. The decision re- 

 ported on this page at Atlanta, rendered also in a 

 court of first resort, is favorable to the plaintiffs, 

 the court holding that it is not necessarily controlled by the finding of a higher 

 court outside of that circuit, or jurisdiction. It is now announced by The Consol- 

 idated Rubber Tire Co. that they will appeal from the Cincinnati decision to the 

 United States supreme court. 



tioii and arrangement of known elements produce a new and beneficial 

 result, never attained before, it is evidence of invention. 



But, says the decision, whether its conclusion is correct or 

 not, the defendant Finley is estopped for setting up the inval- 

 idity of the Grant patent. At one time Finley entered into a 

 contract with the Rubber Tire Wheel Co., then owners of the 

 Grant patent, for the exclusive sale of tires made under that 

 patent, in certain territory, in said contract acknowledging the 

 validity of the Grant patent and agreeing not to sell any other 

 tires than those covered by this patent during the life of the 

 patent — unless the contract should sooner terminate by the 

 fault of Rubber Tire Wheel Co., or its successors. This 

 contract was assignable by Finley with the consent of the other 

 party to the contract, and in time Finley disposed of his inter- 

 est to what is now the Munford Rubber Tire Co., of Atlanta. 

 The decision says : 



It would work little profit to Munford to have obtained this right 

 [to sell tires] if the patent by virtue of which the Rubber Tire 

 Wheel Co. was authorized to make such an exclusive grant should be 

 invalid. Finley having recently received a valuable consideration for 

 the exclusive right to sell the Grant patent in certain states, certainly 

 he cannot be heard in a court of equity when he seeks to invalidate this 

 patent as against his assignee. 



It had been urged, by the way, in behalf of Finley, that in 

 view of certain circumstances the contract referred to had be- 

 come void, but the court held that these circumstances, being 

 connected solely with the merger of the Rubber Tire Wheel 

 Co. in the Consolidated Rubber Tire Co. — which was clearly 

 within the right of the former company — in no way affected 

 the legal status of the contract entered into originally by the 

 Rubber Tire Wheel Co. and Finley. 



The next question presented in the case was whether the tire 

 which Finley was marketing when this bill was filed infringes 

 the Grant patent. The tire in question is the Goodyear 

 " wing " tire, covered by United States patent No. 623,703, 

 granted to Joseph A. Burroughs, April 25, 1899. On this 

 point the decision reads : 



I agree thoroughly with Judge Wing in what he says [decision rend- 

 ered in re The Rubber Tire Wheel Co. z'.The Goodyeai Tire and Rubber 

 Co., at Toledo. Ohio, November 23, igoi], as follows: "The infringe- 

 ment of the defendants is clear. While it is urged by the defense in their 

 answer that they are operating under a patent issued to Burroughs, the 

 proof shows that the device shown and described in the Burroughs pat- 

 ent is not the one which the defendants are using, but they have been 

 and are using the exact device shown and described in the complain- 

 ant's patent, except that on the rubber part of the tire used by the de- 

 fendants there is a thin excresence of rubber which performs no function 

 whatever." 



Judge Newman states, in conclusion, that after having pre- 

 pared his decision, but before it was filed, he received and ex- 

 amined the decision in the United States circuit court of ap- 

 peals at Cincinnati, declaring the Grant patent "' void for want 

 of patentable novelty." He held, however, that the court over 

 which he presided should " exercise and express its independ- 

 ent judgment," instead of being controlled by a decision in 



another circuit. 



* • * 



It will bo remembered that in November last, in a suit for 

 infringement of the Grant patent in France, a decision was 

 rendered similar to that reported above, after a hearing of the 

 same testimony as to want of novelty in the patent. 



