Kennedy v. Trimble Nurseryland Furniture, 37.

• Decision Date: 07 November 1938
• Docket Number: No. 37.,37.
• Citation: 99 F.2d 786
• Parties: KENNEDY et al. v. TRIMBLE NURSERYLAND FURNITURE, Inc.
• Court: U.S. Court of Appeals — Second Circuit

99 F.2d 786 (1938)

KENNEDY et al. v. TRIMBLE NURSERYLAND FURNITURE, Inc.

No. 37.

Circuit Court of Appeals, Second Circuit.

November 7, 1938.

Pennie, Davis, Marvin & Edmonds, of New York City (William H. Davis, Merton W. Sage, and Albert J. Clark, all of New York City, of counsel), for appellants.

Harold E. Stonebraker and Kenneth B. Keating, both of Rochester, N. Y., for appellee.

Before MANTON, L. HAND, and SWAN, Circuit Judges.

MANTON, Circuit Judge.

This suit is on three patents relating to an infant's bathing apparatus — No. 1,510,596, patented October 7, 1924 on an application filed March 6, 1920, claims 11 and 12 are in suit; No. 1,767,800, patented June 24, 1930 on an application filed July 25, 1921, claims 7 and 8 are in suit; and No. 1,693,389, patented November 27, 1928 on an application filed July 23, 1923, claim 5 is in suit.

Patent No. 1,510,596 covers the combination of flexible bath tub having a collapsible or folding support, and a dressing table which may assume a position overlying the tub for dressing and undressing the infant, and may be swung to a vertical out-of-the-way position when the infant is not being bathed in the tub. No. 1,767,800 extends the combination to include a screen guard arranged along one side of the table which may be erected to protect the infant when the table is in use, and folded when it is not in use. No. 1,693,389 provides a screen carried by the support and having racks for the reception of appliances.

In the first of these the inventor had in mind the combined infant's bath tub and dressing table in which the tub is expansible to set-up relation and when so set up, the dressing table can be swung on a horizontal axis along one side of the tub to an operative position overlying the tub for undressing the infant. The dressing table is next swung to its verticle position (inoperative and out of the way) and the tub employed to bathe the infant. After bathing, the dressing table is again swung to its horizontal position overlying the table for dressing the infant. This combination is so constructed that the tub and the dressing table can be folded or collapsed into compact form so as to take up little space when it is not in use.

The Kennedy brothers developed and exploited this invention. They manufactured a combination bath tub and dressing table under a trade mark "Bathinette". After manufacturing for some time, their corporation became financially involved but a new enterprise was later financed by the royalties received for use of the patent under a license to the Woodstock Company and bank loans. The Woodstock Company failed and payment of royalties ceased, whereupon on March 30, 1923, an agreement was made between Kennedy Bros.' Corp. and appellee to take over and fulfill all current and future orders for the baby bath tubs. By a supplemental agreement of May 17, 1923, appellee purchased all the corporation's assets, provided for a compromise with its creditors and it was agreed that the indebtedness of Kennedy Brothers for loans from banks would be paid out of royalties until the indebtedness to the banks was liquidated. Title to pending applications for patents was vested in the appellants and the appellee was granted exclusive licenses under the applications. Appellee thus acquired the business and exclusive licenses under the Kennedy patent applications.

For seven years appellee had every right, except the legal title, to the inventions of the patents in suit and publicly asserted that right and interest and threated to proceed against infringers. During these years appellants were obligated not to engage directly or indirectly in the manufacture or sale of infant's bath tubs. All royalties were paid by appellee to the banks in liquidation of the indebtedness incurred by appellants' corporation in initially developing and exploiting these inventions.

On July 11, 1930, appellee elected to cancel the license agreement. Thereafter appellants resumed the manufacture and sale of the baby bathing devices employing the inventions of the patents in suit. After terminating the license, the appellee continued to make and sell under the trade mark "Kiddie Bath", infant's bathing devices which it is claimed infringe the patents in suit.

Two types of baths were manufactured under patent No. 1,510,596, the cabinet and the cross leg models. The cabinet model was first to be manufactured but was found to be expensive. The cross leg model was cheaper and it was this model which gained commercial success in the market. The cabinet model was discontinued in the Spring of 1923 before the appellee took over the business. Both models embodied the same characteristic features of patentable novelty. Both were combinations of a flexible bath tub having a collapsible or folding support with a dressing table having an operative position overlying the bath tub and adapted to swing on an axis along one side of the tub to an out of the way inoperative vertical position. The original cabinet model was described in the application of March 6, 1920, resulting in the patent of which claims 11 and 12 are here in suit. The generic concept of this combination is stated in these claims as (1) a collapsible support embodying members adapted to be extended from each other; (2) a collapsible bath tub of flexible material supported thereby and adapted to fold between the members when collapsed, and (3) a dressing table having a pivotal connection with the support to fold on an axis lying along one side of the tub and in a direction transverse to its own plane to a vertical position or to overlie the tub when extended in a horizontal...