Plaintiff, John Halstead, doing business as a partnership under the name, Western Manufacturing Company, is the owner of two patents in the vehicle lifting field. Patent 2,949,978 (hereafter referred to as ’978) relates to a type of frame contact automobile hoist. 1 Patent 2,956,643 (hereafter referred to as ’643) relates to an automatic safety leg used in conjunction with vehicle lifts. 2

Plaintiff charges defendant, Globe Hoist Company, with manufacturing devices which infringe Claims 3, 4 and 5 of the ’978 patent, and Claims 1 and 2 of the ’643 patent.

Defendant challenges the validity of both patents. With regard to infringement, defendant admits that if the patents in suit are valid, patent ’978 is infringed by its FN-10 vehicle lift and patent ’643 by the first of the accused safety legs. However, defendant denies that the ’978 patent is infringed by its FS-10 (new) and FS-27 vehicle lifts and also denies that the ’643 patent is infringed by the second of its accused safety legs. As a further defense, defendant asserts that it was granted a free license by plaintiff to manufacture safety legs covered by the ’643 patent.

THE HALSTEAD ’978 PATENT

The subject matter of this patent is a vehicle hoist or lift used in service stations or garages for raising automobiles and light trucks to an elevated position so that the undersides of such vehicles may be lubricated and repaired. The patent itself relates solely to the superstructure of the lift, that is, to that part of the lift which is normally supported on the upper end of a cylinder raised and lowered by hydraulic or hydraulic-pneumatic means. Both the patented lift and all the other lifts referred to herein are of a type commonly referred to as “frame lifts” because they engage a vehicle by its frame in order to lift it.

Frame lifts first gained acceptance in the early 1950’s as a means of lifting a vehicle with a minimum of obstruction of the vehicle underbody by the lift superstructure. In this they were superior to previous “drive on” wheel lifts and axle lifts. Most of the autos and light trucks on the road at that time had frames of substantially standard configuration and, therefore, the first frame lifts were relatively inflexible. These lifts generally employed two parallel rails joined in the manner of an H, which rails were fitted with movable adapting devices to accommodate the minor variances that might be encountered from one vehicle frame to another. Appropriately, this type of lift was called an “H frame” lift.

In the mid 1950’s the shapes and dimensions of the frames of automobiles used in the United States began to show more variance from make to make. Therefore, it became necessary for lift manufacturers to devise more flexible frame lifts.

At about this time, plaintiff began producing an H frame lift which employed, *1014 on each of the four rails of the H member, a relatively versatile adapter. (Halstead 2,899,020, not here sued upon, issued August 11, 1959.) This adapter was mounted for both sliding and rotation with respect to the H rail on which it was supported. In addition, the adapter could slide in or out along its rotational axis so that it could serve as an arm for reaching to either side of the rigid rail. Defendant, during this period, also produced an H frame lift employing actual arm-like adapters which were slidable on and pivotable from the H rails. (Wallace 2,958,395, not here accused, issued November 1, 1960.)

Increased reaching flexibility was also achieved in another manner by a type of frame lift commonly called a “swinging arm” lift which employed four swinging arms directly connected to a small central base member. (Cochin 2,878,897, issued March 24, 1959.) The significant difference between the swinging arm lift and the H frame lift is that in the H frame lift, the rails are stationary and the adapter arms pivot in and out from these rails, while in the swinging arm lift, the rails themselves are pivoted from the central base member.

A feature common to lifts introduced in both the early and mid 1950’s is the lifting pad. This is a separate metal surface, secured to the lift base member or adapter, which provides the actual contact area between the lift and the vehicle frame. In the early Pelouch patent 2,769,508, issued November 6, 1956, a lifting pad is shown attached to the end of each of the four rails of the H shaped base member. This pad is pivoted for offset rotation with respect to the end of its respective rail. In Cochin 2,777,538, issued January 15, 1957, and Wallace 2,958,395, the lifting pads are secured to the ends of the adapter arms which are slidably and pivotably mounted with respect to the rails of the II shaped base member. In the Cochin patent, each pad is circular in shape and-rotatably affixed to the adapter arm. while in the Wallace patent, each pad is rectangular and non-rotatable with respect to the arm. In plaintiff’s prior art, Halstead 2,899,020, the rectangular lifting pads are co-extensive with the length of the adapter arms and although not rotatable with respect to such arms, are rotatable with respect to the rails of the H shaped base member. In the Cochin 2,878,897 swinging arm patent, non-rotatable rectangular pads are mounted on shoes slidable the length of the swinging arms.

The later of these lift patents show hinged jacks or tip-ups incorporated into the lifting pads. (Cochin 2,878,897; Halstead 2,899,020; Wallace 2,958,395.) Such jacks, when lying in a horizontal position, form a part of the flat lifting pad, but when tilted into an upright position, they serve to contact parts of the vehicle located in a portion of the under-body too high to be reached by the flat lifting pad. In Halstead 2,899,020, the jack is rotatable with respect to the H rail.

In the late 1950’s two developments caused lift manufacturers to seek to make their products even more flexible. These were: (1) The large increase in this country in the number of foreign cars with small wheel bases and eccentrie lifting points 3 and (2) the development by American manufacturers of new vehicle underbodies such as X frames and unitized body structures. It was during this period that plaintiff designed the lift claimed by the ’978 patent in suit in an effort to meet all lifting problems then in existence in a safe and convenient manner. In June, 1958, plaintiff began to market a commercial embodiment of the ’978 patent called the “Du-Al”. The “Du-Al” is an H frame lift which employs an H shaped base member, more narrow than that of plaintiff’s prior lift (Halstead 2,899,020) so that it can be straddled by the small foreign autos. To compensate for the narrower base *1015 member, the adapter arms are made longer than in previous lifts so that American ■cars and trucks can also be accommodated.

Basically, the patent in suit claims a combination of the following elements. 4

It is the combination of these elements In this manner which the plaintiff claims as his patentable invention. Although plaintiff admits that all of the basic elements of the patented device are shown in the prior art, he contends that he has •combined them in a new way to form a lift able to perform lifting functions of -which the prior art lifts were incapable. He, therefore, asserts that his claims -were rightfully patented. This assertion is dealt with, infra, in the court’s opin-ion relating to the validity of the ’978 patent.

Plaintiff further asserts, and defend- . ant denies, that these claims, in addition to covering H shaped frame lifts, are broad enough to cover swinging arm type frame lifts such as plaintiff’s “Rota- : Swing” and defendant’s FS-10 (new) and FS-27. This is dealt with, infra, in the court’s opinion relating to infringement of the ’978 patent. However, it is necessary to note at this point that this court there holds that the ’978 patent does not cover swinging arm lifts. Therefore, the court’s remarks with regard to the validity issue proceed on the assumption that the elongated pivoting arms referred to in the patent claims are adapter arms slidably and pivotably mounted on the rails of an H shaped base member and not the swinging rails pivot-ably mounted on a small central base member as shown by Cochin 2,878,897 swinging arm lift.

VALIDITY

In testing the validity of the patent claims here in suit, the court has been mindful that a presumption of validity attaches to a patent granted by the patent office, and that this presumption may only be overcome by clear and convincing proof. Patterson-Ballagh Corp. v. Moss, 201 F.2d 403 (9th Cir., 1953); Moon v. Cabot Shops, 270 F.2d 539 (9th Cir., 1959). Still, the ultimate responsibility in determining whether the combination here claimed is patentable lies solely with the court, and the responsibility for determination of that question cannot be abdicated to another agency. Farr Co., v. American Air Filter Co., 318 F.2d 500 (9th Cir., 1963).

During the course of the trial it was demonstrated that the Halstead ’978 device met the necessary requirements of novelty and utility set forth in the patent statute. 35 U.S.C. §§ 101 , 102. But from the outset of the trial, the court has been much perplexed as to whether plaintiff’s patented device met the equally necessary statutory requirement of non-obviousness. 35 U.S.C. § 103 . In deciding this question in the negative, the court has been guided by the principles set forth by the Supreme Court in the landmark case of Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Co., 340 U.S. 147, 152 , 71 S.Ct. 127 , *1016 95 L.Ed. 162 (1950). It was there pointed out that the function of a patent is to add to the sum of useful knowledge and that a patent should not be upheld when its effect is to subtract from the resources formerly available to persons skilled in the art. When a device brings only old elements together, it is not patentable unless it can be found that they perform not only an additional or different function in the combination than they do out of it, but that the combination is not “wanting in any unusual or surprising consequences”.

Applying these standards to the ’978 patent, it seems clear that the mechanical combinations claimed therein produce no unusual or surprising results.

Claims 3 and 5: The mounting of a rectangular lifting pad for offset rotation with respect to a pivotable adapter arm does, as asserted, minimize obstruction by allowing displacement of the adapter arm to either side of the pad once the pad has been properly located under a lifting point. However, it is clear from the evidence that a person skilled in the art, desirous of achieving such a result, would have had no difficulty in settling upon this particular combination of elements old in the art. 5 As soon as the narrowing of the H shaped base member necessitated the use of adapter arms of a length sufficient to create an obstruction of substantial areas of a vehicle underbody, offset rotation of the lifting pad was employed to reduce such obstruction. It was an obvious thing to do. The problem did not puzzle the industry for any length of time.

Claim U: This claim teaches a rectangular lifting pad containing a jack or tip-up which is rotatable (not specifically about an offset axis) and slidable with respect to a pivotable adapter arm. As such it encompasses the combination of elements which functions to permit the proper angling of the pad or, when tipped up, the jack under a vehicle lifting point for secure engagement of that point. However, plaintiff’s own prior art 2,899,-020 patent teaches a relatively similar pad and jack different only in that it is slidable and rotatable with respect to a rigid H rail rather than a pivotable adapter arm. 6 In the ’978 patent, plaintiff merely followed the simple expedient of mounting a pad and jack slidably and rotatably with respect to an elongated pivotable adapter arm rather than with respect to a rigid H rail. Such a positional change was essentially dictated by the dimensional relationship between the narrowed base member and lengthened adapter arm contemplated for the ’978 device. To anyone who had the 2,899,020 patent and the other pertinent prior art before him, it seems clear on the face of things (and the evidence shows it was to those skilled in the art) that relocation of the pad and jack was an obvious means of accomplishing the objectives of Claim 4. The Court of Appeals for the Ninth Circuit recently included in its opinion in Pierce v. Ben-Ko-Matic, Inc., 310 F.2d 475, 477 (1962), the following apt statement from Perfect Circle Corp. v. Hastings Manufacturing Co., 162 F.Supp. 777, 784 (D.C.W.D.Mich., 1958):

Although no single lift shows the exact combination of ’978, the difference between the total teachings of the prior art and plaintiff’s patent is insubstantial and plaintiff’s combination must be held to have been obvious to one skilled in the art. Griffith Rubber Mills v. Hoffar, 313 F.2d 1 (9th Cir., 1963).

It is true that the embodiment of the ’978 patent met with commercial success. Such evidence, however, is but “a weak reed for a patentee to lean upon” and when invention is clearly lacking it will not make for patentability. McCord Corp. v. Beacon Auto Radiator Co., 193 F.2d 985, 989 (1st Cir., 1952); Farr Co. v. American Air Filter Co., 318 F.2d 500 (9th Cir., 1963).

Therefore, since there is nothing in Claims 3, 4 and 5 of the ’978 patent which produces results which would not have been obvious to one skilled in the art, these claims are declared invalid.

INFRINGEMENT

Since the above claims of the patent are invalid, they cannot be infringed. Dresser Industries v. Smith-Blair, Inc., 322 F.2d 878 (9th Cir., 1963); Bergman v. Aluminum Lock Shingle Corp. of America, 251 F.2d 801 (9th Cir., 1957). But to completely dispose of the case, the court now decides the issue of infringement, assuming for that purpose that the ’978 patent is valid.

Since defendant has admitted that its FN-10 device, employing a rigid H shaped base member, infringes Claims 3, 4 and 5 of the patent in suit (assuming validity), the court must resolve only the question of whether its swinging arm lifts, the FS-10 (new) and the FS-27 infringe, as charged, Claims 3 and 4. It is concluded that they do not.

Both Claim 3 and Claim 4 of the ’978 patent teach a lift containing, among other elements: A horizontally extend-

ing base member; and, elongated arms pivotably supported on the base member. When pivoted, these arms describe arcs of circles overlapping the corresponding circles of adjacent arms. It is well established that the claims of a patent are to be understood and interpreted in the light of their specifications. Schriber-Schroth v. Cleveland Trust Co., 311 U.S. 211 , 61 S.Ct. 235 , 85 L.Ed. 132 (1940); Oregon Saw Chain v. McCulloch Motors Corp., 323 F.2d 758 (9th Cir., 1963); Kemart Corp. v. Printing Arts Research Labs., Inc., 201 F.2d 624 (9th Cir., 1953). Reading these claims accordingly, the components taught are a base member which is unmistakably H shaped and adapter arms which can rotate through a full 360 degree circle. There is nothing in either the specifications or the drawings of the patent to indicate that the patentee had in mind mechanical components differing in any substantial degree from those he there set forth.' 7 The *1018 drawings repeatedly show only a rigid ll shaped base member. Claim 5 specifically describes such a base. The more vague description of a “horizontally extending base member” in Claims 3 and 4 cannot enlarge the patent to cover a base member so radically different from that taught by the drawings and specifications.

Defendant’s FS-10 (new) and FS-27 lifts contain neither a base member nor adapter arms of the type taught by the ’978 patent. In the FS-10 (new), the base member from which the swinging arms are pivoted can be analogized to an H shape only by an unwarranted stretch of the imagination. In reality, it is nothing more than a practically rectangular metal plate with a means provided at each of the four corners for pivoting the swinging arms. There is a slight protrusion at each of the corners to accommodate those pivot means, but the base member contains no equivalent to the long H rails which make up the “horizontally extending” element of the H shaped base member taught by the drawings and specifications of the ’978 patent. The FS-27 device departs even further from the horizontally extending base member taught by ’978. It is a swinging arm lift employing two un-joined base members, supported on separate hydraulic cylinders As for 360 degree rotation of the pivoted arms, both the FS-10 (new) and the FS-27 show arms which are limited in their rotation to an angle of approximately 45 degrees. Thus, the accused devices are more than mere cdorabie departures from the 978 patent They embody elements which are substantially different from those taught by the claims drawings and spec-lfications of that patent.

_ In Lockwood et al. v. Langendorf United Bakeries, et al., 324 F.2d 82 , 88 (1963), the Court of Appeals for the Ninth Circuit recently reiterated the following well settled principles: -

since tLe court finds that the accused pg_10 (new) and FS_27 deviees lack tbe aboye twQ elements or their functional equivalents, it holds that these de-yiceg do not infri ^ >978 patent,

THE HALSTEAD ’643 PATENT

Tbe subject matter of tMg atent is, an automatic safety ieg for use with automoMe Hftg to nt ^ m from accidentally falling should the hydraulic preggure faiL The t of gafet legg inyolyed in thig cage congigt bagicalI of. A hollow tubular casing sunk below the-level of the floor and parallel to the hydraulic lift cylinder; a piston fitting telescopically into such casing and connected at its upper end to the lift superstructure; a latch bar pivotably mounted in a diametric slot through the piston, When the lift superstructure is at floor level, the full length of the piston rests, inside the casing and the latch bar i* *1019 within the piston in a substantially verfical position. As the lift rises, the piston rises, and when the piston reaches a height at which the diametric slot is above the top of the casing, the latch bar rotates by automatic means into a horizontal latched position. In the latching position, the ends of the bar project out of either side of the piston slot and prevent the piston from falling back into the casing. Since the piston is connected to the lift itself, this prevents the lift from falling. 8

m Turning to plaintiffs ’643 patent, it teaches a latch bar m which one end is longer and heavier than the other, the heavier end being substantially as wide as the inside of the casing. Viewed from the side, the longer end has a substantially straight lower edge and the shorter end an upwardly curved lower edge. This latch bar is designed to move from its vertical set position to its horizontal latched position solely by the force of gravity. It is mounted on its pivot in such a way that when the bar is fully within the piston in the vertical set position, its center of gravity lies to one side of its pivot pin. It is restrained from falling from this position to the latched position only by the inner wall of the tubular casing. When the piston is raised out of the casing, this restraint is removed and the force of gravity pulls the latch bar into the horizontal latched position. In the latched position, the long end extends out to one side of the piston and the short end to the other, The center of gravity of the bar, although moving downward with the long -end of the bar, remains to the same side of the pivot pin as in the vertical set position. To permit the lift to be lowered, the operator of the lift places his hand or foot under the long end of the latch bar and rotates it backwards to an unlatched position at which the long end extends obliquely to the opposite side of the piston (the short end being completely within the piston). As it moves backward to the oblique unlatched position, the long end of the bar describes an obtuse angle and the center of gravity of the bar passes to the opposite side of the pivot pin from that to which it lies in the set and latched positions. As the lift is lowered, the lip of the tubular casing engages the obliquely extending end of the latch bar and cams it back into the vertical set position within the piston. As the bar is so cammed, its center of gravity passes back to the other ., ... / f . _ side of its pivot pm. 9

VALIDITY

Careful scrutiny of the prior safety leg art, as well as the art of those fields which could be considered even remotely analogous to it, reveals no device that has the design and operational characteristics of the ’643 patent. Plaintiff was the first to make a latch mechanism with but a single moving part with these features: (1) Movement by gravity from a position within a piston to a latched position in which the ends extend either side of said piston and (2) movement to an opposing oblique position to be reset in the manner described above.

The evidence as to this patent, rather than overcoming the presumption of validity, has strengthened that presumption into a certainty on the part of this court that plaintiff’s automatic safety leg is a new, useful and non-obvious advance over the prior art. The tests for patent-ability set forth in 35 U.S.C. §§ 101 ,102, 103 are met and the patent is, therefore, valid,

THE ALLEGED FEEE LICENSE

Prefatory to dealing with the issue of infringement, the court disposes of defendant’s contention that it was granted *1020 a free license by plaintiff to produce and sell safety legs covered by the ’643 patent.

The evidence discloses that plaintiff did offer defendant a license during a discussion at a 1957 Washington, D. C., convention. The license, however, was not to be “free”. In return for such a license, plaintiff contemplated that defendant’s sales of the patented device would help create commercial acceptance of it. But the court finds that plaintiff’s offer was not unlimited as to time, nor, indeed, that it was meant to continue for a substantial time after it was made. Defendant did not then accept the offer. It did not begin producing safety legs which copied the ’643 device until the latter part of 1960. Even if it is assumed arguendo that the offer was for a unilateral contract and that defendant could accept by the mere doing of the act bargained for, it is basic contract law that an offer not specifically limited as to time will expire within a reasonable-lapse of time and cannot, thereafter, be accepted. 10 Certainly under the commercial circumstances, three years was an unreasonable length of time for such an offer to remain open and defendant’s manufacture of infringing safety legs, if intended to be an acceptance of plaintiff’s offer, was too late.

INFRINGEMENT

Defendant admits that the first of its accused safety legs was derived from plaintiff’s ’643 patented device and that if, as is the case, the patent is valid and no free license to copy existed, it has infringed by manufacture of this first device.

The second of defendant’s accused safety legs, however, departs in several important respects from the device taught by the claims, drawings and specifications of the ’643 patent. The latch bar in the accused device is not of the shape specified in the ’643 patent. Its lower edge, when viewed from the side, is substantially straight at both the long and the short ends. The bar does not move solely by the force of gravity from the vertical set position to the horizontal latched position, but is assisted at the outset of this downward movement by the thrust of a spring. 11 To unlatch the latch bar in the accused device, it must be pushed horizontally forward on its pivot pin rather than rotated backward through an obtuse angle. In the unlatched position, therefore, the long end of defendant’s latch bar extends further to the same side of the piston it occupies in the latched position. It is not, as in the ’643 device, moved to an oblique angle on the opposite side of the piston. The center of gravity of the latch bar remains on the same side of the pivot pin in the set, latched and unlatched position. It is not, as in plaintiff’s device, rotated to the opposite side of the pivot pin when the bar is moved to its unlatched position.

It is held that plaintiff’s ’643 patent finds neither literal nor equivalent response in the second of defendant’s accused safety legs. Therefore, defendant’s second device does not infringe that patent. Lockwood et al. v. Langendorf United Bakeries, et al., supra.

Counsel shall undertake within thirty (30) days to agree upon a judgment carrying out the foregoing which constitute the court’s findings and conclusions. If they cannot agree, the court will consider and resolve their differences.

APPENDIX

Halstead Patent No. 2,949,978, Claims 8, 4 and 5.

Halstead Patent No. 2,956,643, Claims 1 and 2.

. Applied for December 19, 1958; Issued August 23, 1960.

. Applied for July 2, 1957; Issued October 18, 1960.

. The manufacturers of Volks'wagens, for instance, recommend that these cars be lifted iet the rear by the tortion bar tube.

. Claims 3, 4 and 5 of the ’978 patent are set out in the Appendix.

. Offset rotation of a lifting pad is found in Pelouch 2,769,508; the rectangular lifting surface of the adapter in Halstead 2,899,020 can be positioned for offset rotation with respect to the rigid H rail; swinging adapter arms are found in Halstead 2,899,020 and Wallace 2,958,395.

. As pointed out, supra, at page 1014, the lifting surface although actually on the 2,899,020 adapter arm is rotatable only with respect to the H rail.

. The fact that plaintiff, during prosecution of his patent, presented a brochure to the patent office showing an H frame lift with fully rotatable adapter arms which it was claimed would reach “an endless variety of pick-up positions” indicates that the H shaped base member and the complete rotatability were deemed features involved in the claimed invention.

. Safety legs also serve the function of keeping the lift superstructure from rotating around the axis of the lifting cylinder since they secure the lift at a point additional to the top of the lifting cylinder,

. Claims 1 and 2 of the '643 patent are set out in the Appendix.

. Restatement, Contracts, Section 40. (1932).

. There is evidence that it is not uncommon for the pivot pin in a safety leg’s latching mechanism to become clogged with grit and oil. When this happens, gravity alone will not suffice to start the latch bar on its downward rotation into the latched position. Therefore, the use of a spring to give initial impetus to the latch bar is an important feature and is more than a mere colorable departure from plaintiff’s device.