United States Gypsum Co. v. Bestwall Mfg. Co.

• Decision Date: 21 July 1925
• Docket Number: No. 779.,779.
• Citation: 15 F.2d 704
• Parties: UNITED STATES GYPSUM CO. v. BESTWALL MFG. CO. et al.
• Court: U.S. District Court — Northern District of Illinois

15 F.2d 704 (1925)

UNITED STATES GYPSUM CO. v. BESTWALL MFG. CO. et al.

No. 779.

District Court, N. D. Illinois, E. D.

July 21, 1925.

Jones, Addington, Ames & Seibold, W. Clyde Jones, Arthur B. Seibold, and Arthur A. Olson, all of Chicago, Ill., for plaintiff.

Emery, Booth, Janney & Varney, Laurence A. Janney, Roland C. Rehm, Edward S. White, and Howard S. Laughlin, all of Chicago, Ill., for defendants.

WILKERSON, District Judge.

The original bill in this case named Bestwall Manufacturing Company as sole defendant. It charged infringement of letters patent No. 1,029,328 and No. 1,034,746. The first covers a method of manufacturing plaster board; the second covers the product. The case was tried by Judge Sanborn, who held all claims of both patents valid and infringed. (D. C.) 258 F. 647. That decree was affirmed by the Circuit Court of Appeals. 270 F. 542.

In June, 1921, plaintiff filed a supplemental bill, bringing in new defendants and charging other infringements. An application for a preliminary injunction, based upon the supplemental bill, was denied by Judge Page, sitting in the District Court. Plaintiff appealed, and the order denying the injunction was affirmed by the Circuit Court of Appeals on April 8, 1923. 290 F. 800. In July, 1922, the Bestwall Manufacturing Company applied to the Circuit Court of Appeals for leave to open the decree in the District Court for the purpose of introducing evidence to the effect that one Brown was really the inventor, and that the patents are therefore invalid. That petition was denied on April 18, 1923. 290 F. 798.

Motions were then made by the plaintiff to strike out certain portions of the answers of defendants and to limit the proofs at the trial. Those motions were overruled on February 24, 1924, and the case made by the supplemental bill and the answer thereto was heard in open court, the trial ending on December 23, 1924. Briefs were then filed by the respective parties, and the case is now submitted for decision.

1. Defendants American Cement Plaster Company, the Beaver Board Companies and the Beaver Products Company, Inc., are not barred by the order of the Circuit Court of Appeals in Bestwall Manufacturing Company v. United States Gypsum Company, 290 F. 798, from asserting the defense of invalidity based upon the alleged prior invention of Brown. They were not parties to the original decree in this case, and the evidence fails to establish a privity of relationship which makes the original decree herein and the order of the Circuit Court of Appeals binding upon them. The rules concerning "the law of the circuit" and "the law of the case," invoked by plaintiff, must yield, of course, to the basic principle that a party is entitled to his day in court. The three new defendants have not had their day in court, either personally or by representation, upon any of the issues involved in this case; and they are entitled to the same kind of a hearing as if the supplemental bill were an original suit in which they were defendants.

2. Plaintiff contends that, under the rule stated in 290 F. 798, the defense of invalidity based on Brown's alleged invention must be overruled. Defendants assert that the opinion in that case, if given the interpretation for which plaintiff argues, contravenes section 8 of article I of the Constitution and section 4886, R. S. (Comp. St. § 9430), as well as the opinion of the Supreme Court in Thompson Spot Welder Co. v. Ford Motor Co., 265 U. S. 445, 44 S. Ct. 533, 68 L. Ed. 1098, decided June 2, 1924. Counsel for plaintiff have much to say about the "law of the case" and "the law of the circuit." Luminous Unit Co. v. Freeman-Sweet Co. (C. C. A.) 3 F.(2d) 577, states the limitations upon those doctrines. Defendants American Cement Plaster Company, the Beaver Board Companies, and the Beaver Products Company, Inc., have the right, in my opinion, to show prior invention by Brown as a basis for the claim of invalidity. The statute confers no power upon an employer to declare that one of his employees is an inventor, when, in fact, the employee has made no invention. A patent which is not supported by the oath of the inventor, but is applied for by one who is not the inventor, is unauthorized by law and void, and, whether taken out in the name of the applicant or of any assignee of his, confers no rights as against the public. Kennedy v. Hazelton, 128 U. S. 668, 9 S. Ct. 202, 32 L. Ed. 576.

3. A process may be patentable, irrespective of the particular form of the instrumentalities used. Cochrane v. Deener, 94 U. S. 780, 24 L. Ed. 139; Carnegie v. Cambria, 185 U. S. 403, 22 S. Ct. 698, 46 L. Ed. 968. But in a process patent, as in all patents, the teaching of the specifications and the disclosure by the patentee must be such that, after the patent has expired, a user thereof shall not be left to the blind groping of experimental work, but by the plain teaching of the specification be enabled to use the process with certainty. Concept, alone, is not patentable. Symington Co. v. National Malleable Castings Co. et al., 250 U. S. 383, 386, 39 S. Ct. 542, 63 L. Ed. 1045. Though claims for a new product, which has denfiite characteristics by which it may be identified, and which distinguish it from the process by which it is made, are not limited to the product as made under the disclosed process, nevertheless, product claims are not sustainable unless the specification discloses at least one practicable way in which to make the product. Hemming Mfg. Co. v. Cutler-Hammer Mfg. Co., 243 F. 595, 600, 156 C. C. A. 243.

The so-called demonstration made by Brown at the Grand Rapids plant, and the disclosures in his application for a patent, in my opinion, did not advance the art a single step. His ideas were inchoate, nebulous, and indeterminate. They do not furnish sufficient basis for assailing the validity or narrowing the scope of the patents relied upon by plaintiff. Those patents should be interpreted and applied precisely as if the defense based upon the acts of Brown had not been brought into the case.

4. In this view of the Brown defense, it is not necessary to decide certain...