Bergman v. Aluminum Lock Shingle Corp. of America
Decision Date | 14 February 1958 |
Docket Number | No. 15589.,15589. |
Citation | 251 F.2d 801 |
Parties | Harry X. BERGMAN, Perma-Lox Aluminum Shingle Corporation and Victor H. Langville, doing business under the assumed name of Langville Manufacturing Company, Appellants, v. ALUMINUM LOCK SHINGLE CORPORATION OF AMERICA, Appellee. |
Court | U.S. Court of Appeals — Ninth Circuit |
J. Pierre Kolisch, Ramsey & Kolisch, Portland, Ore., for appellants.
S. J. Bischoff, Portland, Ore., for appellee.
Before HEALY, POPE and LEMMON, Circuit Judges.
Twilight is falling upon "gadgets" as subjects of patents. The dusk commenced to gather half a dozen years ago when, in an epochal decision,1 the Supreme Court fixed its canon against dignifying combined "segments of prior art" with the title of "inventions".
In a concurring opinion in that case, Mr. Justice Douglas compiled a devastating list of "gadgets" that have been placed "under the armour of patents".2 The specification at bar proclaims at the outset that it is a "drain slot which forms the basis of this invention". If the trivial devices listed by Mr. Justice Douglas are "gadgets", then, in the hierarchy of invention, a slot should be classified as a subgadget — comparable to the hole in a doughnut!
This is the second time that the patent in suit, Korter No. 2,631,552 has been before this Court. The first appeal was dismissed because the so-called decree of the Court below was not a final decision, within the meaning of 28 U.S.C.A. § 1291, and was therefore not appealable. Bergman v. Aluminum Lock Shingle Corp. of America, 9 Cir., 1956, 237 F.2d 386, 387.
This second appeal is on the merits. For our present purposes, the earlier opinion contains a sufficient statement of the case, except that it should be added that the District Court amended its original decree by stating:
"That there is no just reason for delay in entering final judgment and decree for plaintiff and against the defendants on the following issues:"
By this amendment the lower court conformed to the requirements of Fed. Rules Civ.Proc. Rule 54(b), 28 U.S.C.A. relative to a "Judgment Upon Multiple Claims".
The District Court adhered to its original decree in holding that (1) the patent in suit is valid; that (2) it has been infringed; and that the appellants were enjoined from making, selling, etc., "any aluminum shingles which infringe" the patent in suit.
On September 24, 1957, the appellee filed a motion to strike from the appellants' brief filed on the former appeal a copy of Patent No. 2,173,774, issued to Birch and Childers, on the ground that the document was not included in the appellants' contentions in the pretrial order, etc. The motion is granted.
On October 10, 1957, the appellants moved to strike the appellee's supplemental brief on the grounds that it was filed too late and not in accordance with the requirements of Rule 18(3) of this Court, 28 U.S.C.A.; that is to say, on September 24, 1957. Although we believe that the appellants are technically correct in their contention, we are also of the view that in a case of this complexity, the rule can be properly relaxed, so as to give the Court the benefit of counsel's views. The motion is denied.
The instant patent contains only one claim, which reads as follows:
On the first day of the trial, counsel for the appellants started to discuss the case of Kwikset Locks, Inc., v. Hillgren, 9 Cir., 1954, 210 F.2d 483, certiorari denied 1954, 347 U.S. 989, 74 S.Ct. 852, 98 L.Ed. 1123, rehearing denied 1954, 348 U.S. 852, 75 S.Ct. 19, 99 L.Ed. 671, certiorari denied 1954, 348 U.S. 855, 75 S. Ct. 78, 99 L.Ed. 673. The following colloquy ensued:
The appellants complain that the District Court erred in this holding.
We agree with the appellants that the above statement of the Court was erroneous.
In Atlantic & Pacific, supra, 340 U.S. at page 155, 71 S.Ct. at page 132, in the concurring opinion of Mr. Justice Douglas, we find the following correct statement of the law:
"The standard of patentability is a constitutional standard; and the question of validity of a patent is a question of law."
Mr. Justice Douglas cited the case of Mahn v. Harwood, 1884, 112 U.S. 354, 358-359, 5 S.Ct. 174, 177, 6 S.Ct. 451, 28 L.Ed. 665, in which the Supreme Court used the following language:
If further authority were needed, it could be found in the bulging libraries of text and decisional patent law.
There is a growing and pragmatical tendency among courts not to inquire into the alleged infringement of a patent once it has been found to be invalid.
This trend probably has been encouraged by an observation in Sinclair & Carroll Co., Inc., v. Interchemical Corporation, 1945, 325 U.S. 327, 330, 65 S. Ct. 1143, 1145, 89 L.Ed. 1644, where the Court said:
Emphasis supplied.
Realizing that an invalid patent cannot be infringed, many Federal courts have correctly proceeded no further after finding a patent void.
In J. R. Clark Company v. Murray Metal Products Company, 5 Cir., 1955, 219 F.2d 313, 318, the Court said:
And in National Transformer Corp. v. France Mfg. Co., 6 Cir., 1954, 215 F.2d 343, 359, the Court thus tersely expressed the current trend:
3
In their answer, the appellants asserted that the appellee's alleged invention has been anticipated in thirteen letters patent. In the pre-trial order, the appellants' "Contentions" are alleged to include, inter alia, assertions that the alleged invention was anticipated by eight domestic and one foreign patent. The appellants' exhibits listed in the pre-trial order, however, include copies of eleven patents.
We will confine our discussion to those patents principally relied upon by the appellants in their briefs in this Court. And under the facts of this case, we need not be concerned with the proceedings in the Patent Office. In Westinghouse Electric & Mfg. Co. v. Condit Electrical Mfg. Co., 2 Cir., 1911, 194 F. 427, 430, Judge Noyes (not Judge Learned Hand, as appellee states)4 used the following language:
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