Ostby & Barton Co. v. Jungersen

• Decision Date: 07 May 1946
• Docket Number: No. 1438.,1438.
• Court: U.S. District Court — District of New Jersey
• Parties: OSTBY & BARTON CO. v. JUNGERSEN.

65 F. Supp. 652

OSTBY & BARTON CO. v. JUNGERSEN.

No. 1438.

District Court, D. New Jersey.

May 7, 1946.

Milton, McNulty & Augelli and John L. Milton, Jr., all of Jersey City, N. J. (Fish, Richardson & Neave, John Vaughan Groner and John B. Cunningham, all of New York City, and Edwards & Angell, of Providence, R. I., and Edward Winsor, of Providence, R. I., of counsel), for plaintiff.

George D. Richards, of Newark, N. J., (Cooper, Kerr & Dunham, Drury W. Cooper, and John N. Cooper, Jr., all of New York City, and Karl W. Flocks, of Washington, D. C., of counsel), for defendant.

MEANEY, District Judge.

This is an action for a declaratory judgment instituted under section 274d of the Judicial Code, 28 U.S.C.A. § 400 and under the patent laws, and plaintiff seeks a declaration of invalidity and non-infringement of Jungersen Patent No. 2,118,468.

Defendant, Jungersen, the owner of the patent in suit, by counterclaim alleges infringement by plaintiff, Ostby & Barton, of the said patent and seeks an injunction and an accounting for infringement of claims 5 and 6 of his patent.

The original controversy between the parties was founded upon an accusation by the defendant that plaintiff infringed the patent, and the complaint seeks a declaration of invalidity of the entire patent. In view of these circumstances, the issues to be considered will involve the entire patent and will not be confined to a determination of validity of claims 5 and 6 of the patent alone. The issue of validity having been raised initially, the court is of the opinion that the validity of the entire patent becomes a question of general importance and should be considered and determined.

At the initial stages of this case American Associates, Inc., moved to be added as a party plaintiff and on a showing of its acquisition of all of the assets of the plaintiff corporation the motion is granted.

The patent in suit relates to a method of casting articles of intricate design and a product thereof and is concerned primarily with casting articles of jewelry, rings, and the like, of intricate detail, frequently designed with hollows, undercut portions and perforations. The patent has six claims, the first five of which are for a process and the sixth for a resultant article of jewelry.

Claims one to four of the Jungersen process are concerned with a method of casting articles of jewelry of intricate design. They involve the making of a model which may contain undercut surfaces, hollows or perforations. The model is placed on a base and a primary mould of rubber is built around it with the top surface forming a parting line. The mould is then vulcanized and forms a permanent shape.

The model is then removed and a suitable quantity of molten wax or other low temperature fusing material is cast under applied force by rotating in a centrifugal casting machine, the centrifugal action thus forcing the wax into the mould and displacing the air, thereby filling the finest cavities completely.

The two sections of the primary mould are then separated. The flexible rubber mould permits the wax pattern to be withdrawn without injury to undercut surfaces or delicate parts. The wax pattern is then invested in a material such as plaster of Paris forming a secondary mould. The nature of the investment material is such that it closely surrounds the surface of the wax pattern and after removal of the pattern from the hardened mould, the cavity remaining is a practically perfect reproduction of the wax pattern and the original model.

After investment, the plaster mould is subjected to sufficient heat to melt the wax without in any way affecting the cavity thereby produced. The molten precious metal is then cast centrifugally in the secondary or plaster mould and finally the mould is separated from the final casting. The resultant product is an exact replica of the original model, requiring only that the sprue be removed and the piece polished.

Claims five and six of the patent are for a method of casting and a resultant article thereby obtained. Claim five involves a method of casting an article of jewelry or a part thereof of intricate design having one or more small projections or depressions, "comprising first producing" a model of the article to be cast, then forming about said model a primary mould, then removing the model from the primary mould, then introducing into the mould by force sufficient to deposit the material into the depression or depressions of the primary mould, molten wax or other material of low fusing point that will not injure the primary mould, to form a pattern and employing the pattern so made for the manufacture of a casting mould.

Prior to the Jungersen patent disclosure, the only known and generally practiced processes in the jewelry casting art were the "Cuttle fish" and "sand" casting methods. Neither method was efficient and admittedly each was inferior to the method disclosed in the patent in suit. Under these prior methods the castings were without detail and required extensive hand tooling and chasing by a master artisan, thus greatly increasing the cost of the completed article. The Jungersen method reduces to a minimum the necessary hand finishing of the cast article and makes possible the reproduction in any desired number of exact replicas of the original model.

The plaintiff, seeking a declaration of invalidity of the entire patent, contends that the Jungersen Patent is fully anticipated in prior patent and prior publication disclosures (in non-analogous casting arts) as well as by several asserted methods allegedly in public use in both analogous and non-analogous arts.

It is evident from a review of prior patents and publications in the sculptural and industrial casting arts that reproductions of original models or patterns by casting method is of ancient practice. Thus, Cellini in the 16th century taught the use of a multi-part mould and the "lost wax" process. Similarly, the making of a primary mould about the original model of a flexible mould forming material or in sectional parts is revealed in patents to Spencer, No. 748,996, Haseltine (Br. 2467), and Kralund 1,238,789. The same steps are taught in publications of Cellini and in the translation of La Gravure, and are employed in the Slatis-Dee ring casting method as described by Slatis, and in the Austenal method for dental casting. The same prior disclosures and patents teach the "lost wax" process.

Prior patents to McManus, No. 1,457,040 and Perry No. 1,121,659 describes the use of centrifugal force in casting molten metal for the final reproduction. Use of centrifugal force is also revealed in publications on die casting methods and its use is asserted in the Slatis-Dee and Austenal methods.

It is evident that many of the steps employed in the Jungersen patent are old and were known in other casting arts. But the utilization of centrifugal force to introduce the molten wax into the primary mould is a new step in any art. The use of centrifugal force to cast the primary pattern is not only new, but it is a vital component to the success of the Jungersen method.

It is important to note that in none of the non-analogous sculptural and industrial arts was a high degree of exactness required in reproducing intricate design to the finest detail, and a reading of the prior art would not of itself be sufficient to enable one skilled in the art to perform the requisites of the jewelers trade.

It was not until Jungersen added the additional step of casting the wax pattern in the primary mould by the use of centrifugal force, that jewelry casting became a practically and commercially successful art.

Since the additional step used in the Jungersen patent is new, it represents an advance over any prior art and is a distinct advance in the jewelry art. Since the patent is found to be novel, the question remains whether it is patentably so. In determining validity, the question at issue is not whether the method proposed is better or more efficient; the requisite of patentability is the exhibition or manifestation of imaginative inventiveness sufficient to raise the alleged invention from the hand maiden state of improvement to the higher status of inspired discovery and application.

The fact that the Jungersen patent is in part a combination of old elements, to which a new element has been added, is not ground upon which to deny validity. However, to find the patent valid, the additional step must involve more than the exercise of mere mechanical skill. Thus, in Textile Machine Works v. Louis Hirsch Textile Machines, 302 U.S. 490, 497, 58 S.Ct. 291, 294, 82 L.Ed. 382, the Supreme Court stated: "The addition of a new and useful element to an old combination may be patentable; but the addition must be the result of invention rather than the mere exercise of the skill of the calling, and not one plainly indicated by the prior art." See also Electric Cable Joint Co. v. Edison Co., 292 U.S. 69, 79, 54 S.Ct. 586, 78 L.Ed. 1131; McIvor v. Chemurgic Corporation, 9 Cir., 104 F.2d 58.

In the present case, the prior knowledge was in the field of...