Leishman v. Associated Wholesale Electric Co.

• Decision Date: 31 January 1941
• Docket Number: No. 1463-BH.,1463-BH.
• Parties: LEISHMAN v. ASSOCIATED WHOLESALE ELECTRIC CO.
• Court: U.S. District Court — Southern District of California

36 F. Supp. 804

LEISHMAN v. ASSOCIATED WHOLESALE ELECTRIC CO.

No. 1463-BH.

District Court, S. D. California, Central Division.

January 31, 1941.

John Flam, of Los Angeles, Cal., for plaintiff.

Lyon & Lyon, of Los Angeles, Cal., and Gibson Yungblut, of Cincinnati, Ohio, for defendant.

HARRISON, District Judge.

This is an action for infringement of reissue patent No. 20,827, issued August 16, 1938, upon application dated May 23, 1938. The original patent, under No. 2,108,538, was issued February 15, 1938. Claims 7, 8, 9, 10 and 11 only are involved.

The principal defenses are invalidity, lack of infringement and intervening rights.

The Crosley Corporation of Cincinnati, Ohio, the manufacturer of the accused device, has assumed the defense of this action.

The reissue patent is a device for the manual operation of a tuning mechanism for a radio receiving set and is designated in the patent as "Means and Method for Turning Rotatable Objects to Pre-determined Positions". The original patent consisted of six claims, only one of which pertained to a radio tuning device. The reissue patent in suit contains twelve claims. Heretofore, plaintiff has disclaimed claim 5 in its entirety and filed qualifying disclaimers involving claims 8, 9 and 10. The patent in suit covers a device not only for the automatic setting of a dial of a radio receiving set, but also for the simultaneous setting of both a radio and television receiving set by one operation. In this case we are only concerned with the device in so far as it applies solely to a radio receiving set.

Prior to the patent of plaintiff, the industry had used but two different manually operated devices for the tuning of a radio set by automatic means. Originally, the Zenith Radio used a device patented by J. M. Schaefer, under patent No. 1,906,106, issued April 25, 1933, but after a couple of years' use it was discarded. At the time the original patent was issued to plaintiff, the radio industry was using what was known as "Telephone Dial Type" tuning device. This type was considered by the industry as a makeshift.

The physical part of the patent consists of a rocker and an adjustable tappet. The rocker rotates on a shaft that is connected with the hand of the dial of a radio and as it rotates it moves the hand of the dial to a predetermined station. The rocker is moved from one position to another by the movement of the tappet, which is brought into contact with the rocker by a cash register type lever. Through adjustable means the tappet is set so that it will revolve the rocker to a predetermined position, which in turn will move the hand of the dial to a predetermined point on the dial of the radio. There is a recess in the rocker which enables the axis of the tappet to become coaxial with the axis of the rocker. The combination of the rocker with an adjustable tappet, which are coaxial when completely engaged represents, if any, the patentable features of the claims involved.

The evidence in this case discloses that the Crosley Corporation, in the later part of 1936 or the early part of 1937, requested its engineering department to design a push button type tuner, but up until August, 1938, such a tuner had not been developed. The advertisements carried by the corporation in the fall of 1937 still carried the "Telephone Dial Type" tuner as a feature of its radio products.

In August and September, 1937, plaintiff conferred with certain officials of the Crosley Corporation and attempted to interest them in a patent he had on a different type of tuner represented by Patent No. 2,084,851, but the negotiations came to naught.

In the fall of 1937, the engineering department of the Crosley Corporation developed independently the accused tuning device. The plaintiff contends that its tuner was borrowed from his invention but I have been unable to find anything in the record that justifies this contention. In fact, the plaintiff testified in substance to the effect that he made no disclosures of the device in suit to the Crosley Corporation until after its tuner was on the market. The file wrapper of Patent No. 2,084,851 discloses drawings of the patent in suit and plaintiff insists that the "independent discovery" of the Crosley Corporation was obtained from this file wrapper, but there is no evidence to this effect; in fact, the evidence is to the contrary. Such appropriation cannot be inferred from such circumstances. They tend against the presence of invention. American Chain Co., Inc., v. Cox Brass Mfg. Co., D.C., 292 F. 624.

The accused device met all the requirements of the industry. It was simple, compact and inexpensive to manufacture. The tuning device described in plaintiff's patent was a bulky piece of mechanism due to the cash register type of lever used as the operating means, while the accused device used a push button or plunger as the operating means. But it cannot be seriously denied that the accused device uses the rotatable rocker, adjustable tappet and when brought to rest the two parts are coaxial—the essential elements contained in the plaintiff's structure.

Defendant insists that the patent of the plaintiff fails to demonstrate inventive genius. In discussing this feature of the litigation I am appreciative of the fact that there is no method by which a court can determine the exact point at which mechanical skill rises to the dignity of inventive genius. It is dependent upon the judgment of the court before whom the case is being heard, and as a case passes through different courts on its route to finality, different minds react differently upon the same set of facts. McClain v. Ortmayer, 141 U.S. 419, 12 S.Ct. 76, 35 L.Ed. 800; Automatic Draft & Stove Co., Inc., v. Auto Stove Works, D.C., 34 F. Supp. 472.

The plaintiff vigorously contends that the case at bar presents an ideal setting for an invention. All the customary features are present; a demand existing over a long period of time; experiments seeking to fill it; eventual success and wide acceptance by the industry. He further insists that this inventon comes clearly within the purview of the land mark case of Eibel Process Company v. Minnesota & Ontario Paper Company, 261 U. S. 45, 43 S.Ct. 322, 67 L.Ed. 523. See also Johnson Co., Inc., v. Philad Co. et al., 9 Cir., 96 F.2d 442. Clearly, if plaintiff's contentions are correct, we would be faced with evidence of invention. It will therefore be necessary to analyze his contentions and examine each one in detail in order that proper consideration may be given this evidence. The question whether mechanical skill or inventive genius is involved is a question of fact. Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098.

Plaintiff's first premise is that there has been a demand in the industry for a long period of time for a successful tuner. The facts in this case do not indicate an appreciable demand for a tuner until about the fall of 1936. The Schaefer patent No. 1,906,106 was issued in 1933 and the Flaherty patent No. 1,948,373 in 1934. The evidence reveals no other issued patents until 1937 and 1938 when the plaintiff obtained two patents. The record discloses that there was a tuner electrically controlled and the "Telephone Dial Type" tuner in limited use at the time of the issuance of the patent of which the reissue is an off shoot.

When one examines the various decisions that use the expression "a long period of time", generally speaking the facts will reflect a period of several years. In Eibel Process Company v. Minnesota & Ontario Paper Co., supra, the demand existed for years. In Gilbert Spruance Co. v. Ellis-Foster Co., 3 Cir., 114 F.2d 771, a forward step had been sought from 1919 to 1936; Washburn & Moen Mfg. Co. et al. v. Beat'Em All Barbed-Wire Co. et al., 143 U.S. 275, 12 S.Ct. 443, 36 L.Ed. 154, at least six years; Kelley v. Coe, 69 App.D.C. 202, 99 F.2d 435, thirty years; Webster Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177, for years. When the time element is considered as evidence of invention, naturally greater weight will be given where a demand has existed in a particular field for many years, than where the demand has existed for a comparatively short time. The shorter the time, the weaker does this evidence become.

The demand for an automatic tuning device did not become acute in the radio industry until the later part of 1936 or the early part of 1937. This is demonstrated in many ways. The record discloses a dearth of inventions in this field. The plaintiff's original patent was primarily for a simultaneous tuning device for a radio and television receiving set, evidenced by the fact that but one claim out of six applied solely to radio tuning. But the strongest evidence comes from the lips of the plaintiff when he testified, in response to an inquiry by the court, that the development in the radio industry itself made it feasible to use an automatic tuner that they could not use before. He further testified that the "automatic frequency control circuits were developed about this time by means of which, if you got a receiver almost in tune, this circuit would pull it in tune; some manufacturers referred to that type of tuning as magnetic tuning because it would pull it right in tune."

Thus it will seem that instead of a demand over a long period of time, as a matter of fact the industry had not been developed to the point where an actual and existing demand had been created. It seems to me that it was a case of one step following another. One improvement calling for another. New York Scaffolding Co. v. Chain Belt Co., 254 U.S. 32, 41 S. Ct. 21, 65 L.Ed. 116.

Under plaintif...