The opinion of the court was delivered by: MCVICAR
Plaintiffs, the owners of two United States patents numbered 1,803,262 and 1,954,082, brought this action for an accounting and for injunctive relief against the defendant, alleging that it had infringed said patents. The answer raised the issues of validity and infringement. A hearing was held. After hearing, the court makes the following findings of fact and conclusions of law:
Lanova Corporation, plaintiff, is a Delaware corporation having its principal place of business in Long Island City, New York; Acro Aktiengesellschaft, plaintiff, is a stock corporation of Switzerland, located at Kussnacht on the Rigi; the National Supply Company, defendant, is a Pennsylvania corporation having its principal place of business in Pittsburgh, Pennsylvania.
United States Letters Patent No. 1,803,262, one of the two patents in suit, issued to said Acro Aktiengesellschaft on April 28, 1931, upon an application of Franz Lang, of Stuttgart, Germany, assignor to Acro Aktiengesellschaft, filed in the United States Patent Office on March 11, 1926, based upon a patent application filed in Germany on February 13, 1926.
In October, 1937, said Acro Aktiengesellschaft, while possessed of said patent No. 1,803,262, granted to said Lanova Corporation the exclusive license right to its engine patents, including said patent No. 1,803,262, with the right to grant simple, nontransferable sub-licenses thereunder, said right including the right to sue infringers of said engine patents, including said patent No. 1,803,262, in the United States; and said rights of said Lanova Corporation have ever since remained accordingly.
United States Letters Patent No. 1,954,082, the other of the two patents in suit, issued to Lanova Aktiengesellschaft, a corporation of the principality of Liechtenstein, of Vaduz, Liechtenstein, on April 10, 1934, upon an application of Franz Lang, Munich, Germany, assignor to Lanova Aktiengesellschaft, filed in the United States Patent Office on January 22, 1932, based upon a patent application filed in Germany on January 24, 1931.
On April 17, 1937, said Lanova Aktiengesellschaft, while possessed of said patent No. 1,954,082, assigned the entire right, title and interest therein and thereto, to said Lanova Corporation, plaintiff, and said entire right, title and interest therein and thereto, have ever since remained accordingly.
Said Lanova Corporation employs a corps of technical men and it has a drafting room and laboratory where it is engaged in the design, building or rebuilding, and demonstration testing of example compression-ignition engines for its licensees or prospective licensees, mostly engine manufacturers operating under or considering operating under license agreements with said corporation. It derives its main revenue by way of royalties from its licensees under its patent rights.
Compression-ignition engines were originally relatively low speed engines and had always the advantages of higher economy than other classes of engines and of capability of using lower grade liquid fuels, but there were certain disadvantages indigenous to such engines which became particularly manifest when attempts were made to go to higher speeds. The invention of the first patent in suit (1,803,262) came at a time when engines were changing from medium speed to higher speeds.
The engine described in patent No. 1,803,262 is described therein as a "self-igniting oil motor." The patent states: "This invention relates to self-igniting motors in which the chamber wherein the air is compressed by the piston on its compression-stroke is subdivided into at least two chambers which communicate by at least one aperture having a throttling cross-sectional area. One of the chambers at least is arranged to be reduced in size or volume as the compression proceeds so as to force a flow of compressed air into the other chamber or chambers through a throttling constriction of the aperture or communication. According to the invention the parts are so arranged and constructed that fuel injected into the chamber before the end of the compression-stroke in a direction toward, or practically toward, the constriction meets such air-flow in a funnel-shaped space tapering toward and arranged in advance of the constriction. More specifically, under this invention at least a portion of the walls of the compartment with fixed volume is arranged in a fixed relation to the cylinder of the motor and the compression is increased to such a degree, that the charge of mixed fuel and air, even at the normal starting of the cold engine, is ignited without requiring any auxiliary igniting device."
The drawings contain seven forms of construction. The patent states relative to construction:
"In all seven modifications the cylinder is indicated by the reference character Z, the piston by a or a' respectively, the two compartments of the compression chamber by b and d and the fuel nozzle arranged on the cylinder by c. The two compartments b and d are connected with each other at least during the last part of the compression stroke by a throttling constriction f, which preferably is formed as short as possible.
"As shown, the fuel-nozzle c is arranged outside of and separate from the compartment b, which compartment is entirely imperforate, access thereto being only through the constriction f.
"The transit from the chamber d to the throttling constriction f is formed by a funnel-shaped mixing passage g, which latter materially assists in the ignition and combustion, as experience has shown. This funnel-shaped passage or mixing chamber, as shown, lies between the fuel-injector-nozzle c and the throttling constriction f and tapers from the nozzle c to the constriction f, the nozzle being at the widest portion of the funnel-shaped passage or chamber."
Plaintiffs declare upon and rely upon claims 1 and 2 of said patent. Claim 1 reads as follows: "1. In an oil-motor for self-ignition comprising a cylinder and a piston cooperating to form a compartment arranged to be reduced in volume by the piston, said cylinder being provided with a second compartment of fixed dimensions communicating with the first compartment by a passage tapering from the first compartment toward the second compartment and a throttling constriction between the tapering passage and the second compartment, in combination with a fuel-injector arranged in advance of the tapering passage to inject fuel into and toward the same substantially at the end of the compression-stroke of the piston, said piston being arranged to compress the air in said compartments so highly as to ignite by the heat of compression fuel injected into said highly compressed air."
Claim 2 is the same as claim 1, except that it adds, in relation to the fuel-injector, the words, "whose axis coincides with the axis of the tapering passage."
The function of chamber b of patent No. 1,803,262 is that of an auxiliary combustion chamber. The function of chamber g is to first mix the fuel and air therein, and to thereafter act as a combustion chamber for such fuel and air mixture, supported by additional pure air which is delivered into the chamber g from the chamber b during the power stroke of the piston. The shape of chamber g is not important in accomplishing quick discharge of the contents of chamber b.
Chambers b, g and d of patent No. 1,803,262 each performs a separate and distinct function and must each be present and cooperating in an engine embodying the combination claimed by either claim 1 or claim 2 of said patent.
The only novel feature of the engine shown and described in patent 1,803,262 is the specific form of the mixing and combustion chamber g referred to in the claims as "a passage tapering from the first compartment toward the second compartment."
The injection of fuel "substantially at the end of the compression-stroke of the piston", as called for by each of claims 1 and 2 of patent 1,803,262, was old and well-known in the art of self-igniting oil motors for many years prior to the date of application for said patent.
It was old and well-known in the art of self-igniting oil motors for many years prior to the date of the application for patent 1,803,262 to have the piston compress the air in the compression space "so highly as to ignite by the heat of compression fuel injected into said highly compressed air," as called for by each of claims 1 and 2 of patent 1,803,262.
The auxiliary combustion chamber b in patent 1,803,262 and the combination of elements as defined in claims 1 and 2 are defined in White patent 170,433 and were known in the prior art.
Defendant's engine which is charged to infringe is manufactured under and in accordance with the drawings of Ramsey patent 2,067,461, which issued to defendant on January 12, 1937.
There is no element in defendant's engine which corresponds either in form or function to the chamber g of patent 1,803,262.
The auxiliary chamber of defendant's engine marked "9" in the drawings of the Ramsey patent 2,067,461 functions as an auxiliary combustion chamber.
In defendant's engine the fuel spray has clearly defined characteristics whereby the finely divided fuel envelope is delivered to the main combustion chamber marked "7" in the Ramsey patent, and the core of the fuel spray comprising the heavier particles of oil is delivered by the force of the ...