133 F.2d 541 (2nd Cir. 1942), 74, Cover v. Schwartz

Docket Nº:74, 75.
Citation:133 F.2d 541, 56 U.S.P.Q. 188, 56 U.S.P.Q. 37
Opinion Judge:FRANK, Circuit Judge.
Attorney:Joshua R. H. Potts, Eugene Vincent Clarke, and Basil H. Brune, all of Chicago, Ill., and John M. Cole, of New York City, for appellant. Nathan Schwartz, pro se, for appellee.
Judge Panel:CLARK, Circuit Judge, dissenting in part. Before L. HAND, CLARK, and FRANK, Circuit Judges. FRANK, Circuit Judge. CLARK, Circuit Judge (dissenting in part). CLARK, Circuit Judge (concurring):
Case Date:December 17, 1942
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

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133 F.2d 541 (2nd Cir. 1942)

56 U.S.P.Q. 188, 56 U.S.P.Q. 37




Nos. 74, 75.

United States Court of Appeals, Second Circuit.

December 17, 1942

Rehearing Denied Jan. 8, 1943.

CLARK, Circuit Judge, dissenting in part.

Appeal from the District Court of the United States for the Southern District of New York.

Two suits by Harry S. Cover against Nathan Schwartz, doing business as Hygeia Respirator Co., one for infringement of claims 1 to 8 and 10 of Patent No. 2,065,304, issued to the plaintiff, and the other for infringement of claims 2 and 3 of Patent No. 2,120,230, and of claims 5, 6, 7, 9, 10, 12, 13 and 14 of Patent No. 2,000,064, both issued to the plaintiff. The suits were consolidated. From a judgment of the District Court for the Southern District of New York, dismissing the complaints in the two suits, plaintiff appeals. Affirmed as to Patents No. 2,065,304 and No. 2,120,230. Appeal dismissed as to Patent No. 2,000,064.

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[Copyrighted Material Omitted]

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Joshua R. H. Potts, Eugene Vincent Clarke, and Basil H. Brune, all of Chicago, Ill., and John M. Cole, of New York City, for appellant.

Nathan Schwartz, pro se, for appellee.

Before L. HAND, CLARK, and FRANK, Circuit Judges.

FRANK, Circuit Judge.

All three patents are concerned with a respiratory mask for miners, the purpose of which is to protect the wearer against dust and poisonous gases.

1. Patent No. 2,065,304. The lower court held this patent invalid for lack of invention, finding as a fact that a prior patent, No. 2,019,918, issued on November 5, 1935 to Punton, showed 'substantially the same arrangement, and what differences there are, are merely the result of mechanical skill.' we agree.

The constituent elements of the Punton mask were a face-piece, covering the nose and mouth, an exhaust valve, and two filter units, attached to the face-piece. The filter units were a pair of cylindrical casings, each consisting of a base and side wall, a metal cover, and a circular paper filter supported around its edge between the cover and the wall of the casing. The cover, which screwed on to the side wall, was perforated to permit the ingress of unfiltered air to the filter. This was the state of the prior art when, on January 9, 1936, appellant filed an application for the patent in issue, No. 2,065,304.

Essentially, all that appellant has done is to remove the necessity for a perforated cover. 1 When on oral argument, appellant's counsel was asked whether appellant had done any more, he could not deny that appellant had not. Cover's removal of the cover was no more than an act of mechanical skill. The man who first found out that it is unnecessary to burn down a house to roast a pig was perhaps a genius. But the discovery that certain parts of a process or device are useless is not necessarily evidence of invention. The discovery may involve no more than the ordinary skill of the art and that we think to be the case here. Cf. Cuno Corp. v. Automatic Service Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 86 L.Ed. 58. Someone has to be the first to hit upon an idea, even if it involves no more than such skill. In Buchanan v. Wyeth H. & M. Co., 8 Cir., 47 F.2d 704, 712, the court said: 'It seems that no one did discover this exact use for the locknut in combination with other elements up to Buchanan's time, but some one had to think of it first, even if it constituted merely mechanical skill. The fact that Buchanan was the first so to think bears on the question of invention, but is not at all decisive.

Appellant advances the 'long-felt want' argument. But it has often been held that commercial success is a relatively poor test of invention and that it is only when invention is in considerable doubt, as it is not here, that that factor has any significance. See, e.g., Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474, 55 S.Ct. 449, 79 L.Ed. 997; DeForest Radio Co. v. General Electric Co., 283 U.S. 664, 685, 51 S.Ct. 563, 75 L.Ed. 1339; Textile Machine Works v. Louis Hirsch Textile Machines, 302 U.S. 490, 58 S.Ct. 291, 82 L.Ed. 382.

2. Patent No. 2,120,230. This is a patent for a twin-filter respirator in the form of a transverse wedge, with a foldable rubber body. The prior art discloses that a British patent on a twin-filter device had been previously issued. See Goeke's British Patent No. 323,164. Appellant simply added the characteristic of foldability to Goeke's patent. But a foldable respiratory mask was already part of the prior art, for appellee had previously obtained such a patent on January 21, 1919. Certainly, thus to combine two ideas, both part of the prior art, was not invention. Cuno Corp. v. Automatic Service Corp., supra; Cf. Toledo Pressed Steel Co., v. Standard Parts, Inc., 307 U.S. 350, 355, 356, 59 S.Ct. 897, 83 L.Ed. 1334; Powers-Kennedy Contracting Corp. et al. v. Concrete Mixing & Conveying Co., 282 U.S. 175, 51 S.Ct. 95, 75 L.Ed. 278.

3. Patent No. 2,000,064. The appeal as to this patent must be dismissed for the following

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reasons: In his pleadings in the trial court, appellant alleged that appellee had infringed and still is infringing the patent and 'will continue to do so unless enjoined by this court. ' He made no alternative allegation to the effect that, while appellee had not yet infringed, he was threatening to do so in the future. He alleged a past and continuing infringement.

The trial court denied appellant relief as to this patent on the ground that it was invalid; the findings and judgment of the trial court are based solely on that ground. The trial court, however, in its memorandum opinion, did indicate that the patent was not infringed.

Appellee filed a counterclaim setting up certain of his own patents which, he alleged, appellant was infringing. The trial court dismissed this counterclaim on the specific ground that appellee's patents were invalid. From this judgment appellee did not appeal. Accordingly, this court, by order, directed that the counterclaim be excluded from the printed record on appeal.

In appellant's statement of points relied upon in this appeal, he stated that the trial court erred in finding and adjudging that the patent was invalid and in failing to find and adjudge that the patent was valid and infringed. However, in his brief filed in this court on this appeal, he stated that 'appellant does not challenge that part of the judgment which holds the claims not infringed. Appellant challenges only the holding of invalidity of the claims involved. ' This language can mean only that appellant has abandoned any contention that appellee has infringed or is infringing his patent. His position now is that, although there is an absence of any past, present or threatened future infringement, he is entitled to have this court determine that the judgment of the trial court as to invalidity was in error.

In other words, appellant is stating that he is asking no relief against anybody before the court (or so far as we know against anyone else), that there is no real dispute, no case or controversy, but that he wants an advisory opinion that his patent is valid. Of course, no federal court can constitutionally give an advisory opinion, since the Constitution confers jurisdiction on federal courts only where there exists a case or controversy. It is suggested that the words 'cases' and 'controversies,' contained in Article III, Sec. 2 of the Constitution involve merely a 'procedural technicality.' We cannot accept that suggestion. The Supreme Court has always given great weight to those words and has regarded them as imposing anything but a mere 'procedural technicality.' It has rejected jurisdiction whenever there was no definite and concrete 'controversy,' i.e., one 'touching the legal relations of parties having adverse legal interests'; there must be 'a real and substantial controversy admitting of specific relief through a decree of a conclusive character, as distinguished from an opinion advising what the law would be upon a hypothetical state of facts.' 2 The Declaratory Judgment Act, 28 U.S.C.A. § 400, affords a new remedy of inestimable value. But that remedy must stay within the constitutional bounds of jurisdiction contained in Article III, Sec. 2. In construing that Act, the Supreme Court noted that it was restricted by Congress to 'cases of actual controversy' and that, in thus restricting it, Congress had had in mind the constitutional provision, so that the Act 'is operative only in respect to controversies which are such in the constitutional sense.' 3 In the case at bar, the elements necessary to give rise to an actual controversy, under the Declaratory Judgment Act and the constitutional provision, are non-existent.

The situation is not like that which often confront us where infringement and invalidity are both in issue before us. A patentee-plaintiff must, of course, lose unless he proves (a) that his patent is valid

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and (b) that the defendant has committed acts of infringement. In this respect, he is like a plaintiff in a suit for trespass to land who must prove (a) that he has a right to possession of the land and (b) that the defendant has committed acts of trespass; if he fails to prove either, he must lose. If the court decides against the plaintiff, there is no impropriety in resting the decision on either ground or on both grounds. If, however, a court (a trial court or an appellate court) holds against the plaintiff on either issue, it may not go on to decide the other issue in his favor, since the adverse decision on one of those issues means that there is no case or controversy which justifies a decision in the plaintiff's favor on the other issue. And so in a patent suit: The court, in deciding against a patentee-plaintiff, may, with propriety, hold (1) that his patent is invalid, or (2) that the defendant has not committed acts of...

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