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 Fed. 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 3 claims of the Seiberling and Stevens patent, 2 were invalid and 1 was not infringed. 257 Fed. 74, 168 C. C. A. 286. The bill in the case before us was brought in 1914 in 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 8 claims of the State patent and qualified as to the other 11. 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 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 Fed. 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 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.