Dix-Seal Corporation v. New Haven Trap Rock Company

• Citation: 236 F. Supp. 914
• Decision Date: 12 December 1964
• Docket Number: Civ. A. No. 8505.
• Court: U.S. District Court — District of Connecticut
• Parties: The DIX-SEAL CORPORATION v. The NEW HAVEN TRAP ROCK COMPANY et al.

236 F. Supp. 914

The DIX-SEAL CORPORATION v. The NEW HAVEN TRAP ROCK COMPANY et al.

Civ. A. No. 8505.

United States District Court D. Connecticut.

December 12, 1964.

David Goldstein, Jacob D. Zeldes, Goldstein & Peck, Bridgeport, Conn., I. Jordan Kunik, Hartford, Conn., for plaintiff.

Harold M. Mulvey, Atty. Gen., Frederick Neusner, Asst. Atty. Gen., Hartford, Conn., for State of Connecticut.

William D. Templeton, Hartford, Conn., H. Meade Alcorn, Jr., R. Graeme Smith, Alcorn, Bakewell & Smith, Hartford, Conn., for defendant Material Service.

John W. Barclay, Thompson, Weir & Barclay, New Haven, Conn., Charles C. Winchester, W. R. Hulbert, Fish, Richardson & Neave, Boston, Mass., for defendant New Haven Trap Rock.

BLUMENFELD, District Judge.

This is a suit for infringement of a patent for a "HOT BITUMINOUS SURFACE TREATMENT AND PROCESS." The patent, United States Letters Patent No. 2,884,841, was issued to its inventor, Howard E. Dickinson, on May 5, 1959, on an application filed by him on August 21, 1957. The patent was then assigned to the plaintiff pursuant to an agreement executed on October 21, 1958, and recorded in the Patent Office on July 17, 1959. The original defendants are two Connecticut corporations who have admittedly used the patented process for many years. A third defendant, the State of Connecticut, was brought into the action after its inception.

The case arises under the Patent Laws of 35 U.S.C. § 281, and jurisdiction for the court is founded on 28 U.S.C. § 1338. The defendants have counterclaimed under 28 U.S.C. §§ 2201, 2202, seeking a declaratory judgment or decree holding said patent invalid or, if valid, not infringed by defendants.

The defendants have set forth in their answer a series of defenses to the infringement claim. They have challenged the validity of the patent on the ground that plaintiff's invention was "known or used by others in this country, * * * or described in a printed publication * * * before the invention thereof by the applicant for patent, * * *" under 35 U.S.C. § 102(a).¹ They have also raised the defense of shop rights in the State of Connecticut which would allow for continued use of the process by the State or its agents. A third defense raised is that the patent is invalid because the process disclosed therein was described in a printed publication and/or was in public use for more than one year prior to the filing of the patent application. It is this double-barreled third defense that the court considers first.²

The relevant statutory section is 35 U.S.C. § 102(b) which provides:

"A person shall be entitled to a patent unless —

* * * * *

"(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, * * *."

The plaintiff has argued that the section is not applicable here for two reasons:

(1) That for a public use or a printed publication to defeat the validity of his patent it must be identical with the patented process, and that such identity has not been established; and

(2) that as to the uses, they were primarily for the purpose of experimentation.

STATUTORY HISTORY AND PURPOSE

All United States patent laws are founded upon article 1, section 8 of the Constitution. Congress has been granted the power "to promote the Progress of Science and useful Arts, by securing for limited Times, to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The first patent act, the Patent Act of 1790, 1 Stat. 109, followed closely its English counterpart and contained the requirement that the invention must not have been "before known or used." Only three years later, however, the clause was enlarged to "not known or used before the application." Patent Act of 1793, 1 Stat. 318. It was this part of the act which was the forerunner of the present § 102(b) and the introduction of that specific time period points up a distinction in the patent act which has often been overlooked. Section 102(b) is concerned with the actions of the inventor once he makes an invention that is novel and patentable. It imposes a condition that the inventor act with deliberate speed in filing his patent application or his rights to a legal monopoly will be barred.

The rationale for this requirement was set forth by Mr. Justice Story in Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19, 7 L.Ed. 327 (1829):

"There is much reason for the limitation thus imposed by the act. While one great object was, by holding out a reasonable reward to inventors, and giving them an exclusive right to their inventions for a limited period, to stimulate the efforts of genius; the main object was `to promote the progress of science and useful arts;' and this could be done best, by giving the public at large a right to make, construct, use and vend the thing invented, at as early a period as possible, having a due regard to the rights of the inventor. If an inventor should be permitted to hold back from the knowledge of the public the secrets of his invention; if he should, for a long period of years, retain the monopoly, and make and sell his invention publicly, and thus gather the whole profits of it, relying upon his superior skill and knowledge of the structure; and then, and then only, when the danger of competition should force him to secure the exclusive right, he should be allowed to take out a patent, and thus exclude the public from any further use than what should be derived under it, during his fourteen years; it would materially retard the progress of science and the useful arts, and give a premium to those who should be least prompt to communicate their discoveries."

The dual purposes of preventing exploitation and giving the public the fruits of the discovery as soon as possible were reiterated by the Second Circuit 127 years later in Metallizing Eng'r Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir.), cert. denied, 328 U.S. 840, 66 S.Ct. 1016, 90 L.Ed. 1615 (1946). To make the objectives of the law unmistakably clear, Judge Learned Hand separated them into two doctrines at p. 520 of 153 F.2d:

"(1) The effect upon his right to a patent of the inventor's competitive exploitation of his machine or of his process; (2) the contribution which a prior use by another person makes to the art. Both do indeed come within the phrase, `prior use'; but the first is a defence for quite different reasons from the second. It had its origin — at least in this country — in the passage we have quoted from Pennock v. Dialogue, supra, 2 Pet. 1, 7 L.Ed. 327; i. e., that it is a condition upon an inventor's right to a patent that he shall not exploit his discovery competitively after it is ready for patenting; he must content himself with either secrecy, or legal monopoly. It is true that for the limited period of two years he was allowed to do so, possibly in order to give him time to prepare an application; and even that has been recently cut down by half. But if he goes beyond that period of probation, he forfeits his right regardless of how little the public may have learned about the invention; just as he can forfeit it by too long concealment, even without exploiting the invention at all. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159; Macbeth-Evans Glass Co. v. General Electric Co., supra, 6 Cir., 246 F. 695. Such a forfeiture has nothing to do with abandonment, which presupposes a deliberate, though not necessarily an express, surrender of any right to a patent. Although the evidence of both may at times overlap, each comes from a quite different legal source; one, from the fact that by renouncing the right the inventor irrevocably surrenders it; the other, from the fiat of Congress that it is part of the consideration for a patent that the public shall as soon as possible begin to enjoy the disclosure."

Similar discussions may be found in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871 (1917); Kendall v. Winsor, 62 U.S. 322, 16 L.Ed. 80 (1858); Macbeth-Evans Glass Co. v. General Elec. Co., 246 Fed. 695 (6th Cir. 1917), cert. denied, 246 U.S. 659, 38 S.Ct. 316, 62 L.Ed. 926 (1918); National Cash Register Co. v. American Cash Register Co., 178 Fed. 79 (2d Cir. 1910); Hautau v. Kearney & Trecker Corp., 191 F.Supp. 430 (E.D. Mich.1961).

DEGREE OF IDENTITY REQUIRED BY SECTION 102(b)

The plaintiff's first contention is that there was a lack of identity between the prior uses of the mix and the patented process. The plaintiff not only maintains that § 102(b) requires a greater degree of identity than that required for infringement purposes, but claims that defendants must prove that the public uses were exactly identical. This raises an interesting question concerning the interpretation of the statutory section.

As authority for his contention of law, the plaintiff relies on Draper v. Wattles, 7 Fed.Cas. 1061 (No. 4,073) (C.C.D. Mass.1878). There the court stated at p. 1063:

"The sale or use, to defeat the patent, must have been of the thing patented; and we are of opinion that, in order to defeat the patent, it is not enough to prove that the inventor has sold an earlier and less perfect article — that is, less perfect in the sense of the patent law, even if the thing sold would be within the claim of the patent. In other words, the test is not, necessarily, whether the article sold would infringe the invention by embodying a part of it, but whether it is the invention — that is, embodies the whole of it. The law does not intend to say that a patentee dedicates to the public whatever he sells more than two years before he applies for a patent, but that he dedicates his invention if he sells it for that period."

But in Draper, the court itself noted that there was a substantial and "patentable" difference between...