Allen v. Barr
| Citation | 93 F. Supp. 589 |
| Decision Date | 19 October 1950 |
| Docket Number | No. 8245.,8245. |
| Parties | ALLEN et al. v. BARR et al. |
| Court | U.S. District Court — Western District of Michigan |
COPYRIGHT MATERIAL OMITTED
Edward M. Apple, Thomas S. Donnelly, Detroit, Mich., for plaintiffs.
E. J. Balluff, Harry E. Warning, Detroit, Mich., for defendants.
Plaintiffs charge infringement of Patent No. 2,467,001, granted April 12, 1949, to plaintiff Perry E. Allen, for "Improvement of Scuff Pads for Automobile Fender," on his application dated July 5, 1947: they also charge defendants with infringement of their "No-Mar" trade-mark, and unfair competition relating to the patented device and trade-mark use, and demand injunction, accounting, and damages. Defendants deny validity or infringement of patent and trade-mark, they deny unfair competition, and, by counterclaim seek injunction and judgment for damages against plaintiffs for allegedly unwarranted and vexatious litigation.
All parties hereto are residents or citizens of the State of Michigan.
Jurisdiction of the issues of validity and infringement of the patent is based upon the Patent Laws of the United States and 28 U.S.C.A. § 1338. Jurisdictional issues of unfair competition, validity and infringement of trade-mark, and defendant's counterclaim are discussed and determined in the second part of this opinion.
Plaintiff Allen organized and is president and general manager of both plaintiff corporations, one of which is engaged in the manufacture of scuff pads, referred to as "door guards" throughout the trial, and the other in selling the manufactured product. Since the filing of this suit there was a merger of the two plaintiff corporations. Allen is the sole stockholder in the merged corporation. Prior to and since the issuance of the patent to him, Allen has engaged in the manufacture and sale of a product described as the "No-Mar Gasoline Door Guard." The purpose of the manufactured device is to serve as a protective shield to prevent the scratching or marring of an automobile rear fender area, immediately below the gasoline door opening, by the metal portion or nozzle of the gasoline supply hose, when filling the automobile tank with gasoline. This manufactured article, however, is not the flat, plate-like scuff pad described in the specifications and patent claims, but is a device with a crown-body.
Defendant Budd Barr, a manufacturer in his own right, purchased several thousand of the crown-body scuff pads from one Herman Hill, who had a license from Allen to manufacture and sell the device, and proceeded to sell them to the public in his "Bar-Mar" cardboard cartons imitative of the cartons in which Allen was selling his product. Early in 1949 he manufactured these scuff pads in his own plant and sold them at first in the "Bar-Mar" carton, and later in a "Budd Barr Gas Door Guard" carton. Allen's carton was labeled "No-Mar Gasoline Door Guard," while defendant Budd Barr's carton contained the words "Bar-Mar Gasoline Door Guard." Except for the color and the names of the respective companies on the cartons, defendant Barr's carton was a complete imitation of Allen's carton.
Allen concedes defendant Barr's right to sell the scuff pads or door guards purchased from Hill, but challenges his right to sell the device in the Bar-Mar Cartons, claiming such sales to be unfair competition.
The claims of the patent are:
The only difference between Claims 1 and 2 is that Claim 2 includes "apertures in said web adapted to accommodate fastening means," while in Claim 1 nothing is said about the apertures, which are simply two small holes through which screws are inserted to be fastened to the depressed portions or flanges of the gasoline door opening in the fender. Neither of the two claims of the patent disclose the invention as relating to an opening for a gasoline door in a fender, but relate only to a "cut-out portion of said fender."
The patent is not a primary one. Conventional types of automobiles have an opening in the rear fender for supplying gasoline to the gas tank. In some types of automobiles the filler cap is positioned below the level of the fender, and is made accessible through the opening formed in the fender, which opening is closed by a hinged plate, or door, when not used. Although the patent is for an improvement in scuff pads for automobile fenders, the patented device is advertised and commonly referred to as a gasoline door guard.
The patent specifications state that "the invention resides in the provision of a protective plate which may be made of metal or gasoline resistant synthetic plastic material, or any other suitable material."
The file wrapper of the Patent Office discloses that the patentee originally submitted six drawings or figures embodying his invention and illustrating the embodiment as a "plate like" device. Approximately 18 months later, he filed amended Claims and drawings 7, 8 and 9 embodying a "crown body" device. In addition, his proposed amendments to the original application would include an "all metal embodiment of the protective member," and capable of providing "a perfect contact for grounding any static electricity which may be stored in the gasoline filler hose." All three amendments to the original application and specifications were rejected by the Patent Office as having no basis in the application as originally filed and being a departure therefrom. The proposed amendments were cancelled and withdrawn by Allen.
The file wrapper shows the following patents to have been cited against the device on the issue of invention:
Number Name Date
581,977 Clingman May 4, 1897
1,480,274 LaBarre Jan. 8, 1924
2,282,443 Wilson May 12, 1942
2,368,200 Cavanagh Jan. 30, 1945
2,417,324 Rivard et al. Mar. 11, 1947
All relate to protective pads or shields, some on automobile fenders. The patentee eventually, by direction of the Patent Office, cancelled all claims except those specifically reading on Fig. 6 of the patent which he elected to rely upon for his patent, disclosing a flat or plate-like protecting shield affixed to the fender in a position beneath the gasoline door opening. No generic claims were allowed.
In rejecting patentee's amended claim providing for a device having a "crowned body", the Patent Office reasoned that this was new matter and was not disclosed in either the drawings, description or claims as originally filed, and that, furthermore, the proposed amended claim was not readable on the elected species represented by Fig. 6 of the drawings. There is little, if any, difference between Allen's proposed and cancelled amended claim providing for a crown-body, and defendant Barr's product of a similar device.
The patentee cannot urge here a construction for his claims broader than given him by the Patent Office. Were this Court now to hold that Claims 1 and 2 of the patent were infringed by defendant's device, it would, in effect, be giving Allen a claim of the scope of his rejected Claim 9 which the Patent Office ruled Allen not entitled to, as he did not disclose it in his original application.
"It is axiomatic in the patent law that infringement depends, not upon what is manufactured or sold by the patentee, but upon what he has patented." Walker on Patents, Deller's Edition, Vol. 3, p. 1681.
At the trial, plaintiffs' counsel argued that the invention resides in the depressed portions of the device. He said, "The invention is so constructed, this door guard, that it has these flanges, an inwardly projecting one and one at right-angles to it to correspond with the flanges on the fenders, so that there is intimate contact at both the end flanges and along the base." (Transcript p. 238.) The device, then, consists of a scuff pad made of any kind of material, with a depressed portion, web or flange to contact the counterpart of identically formed depressed portions, webs or flanges, and fastening means of two small screws, nuts and rubber washers, which were already furnished by the automobile manufacturer to hold the small door in place.
Since scuff pads, either for automobile fenders, or as protective shields otherwise used, as pointed out by the Patent Office, are not new, it is obvious that the two claims of the patent were allowed solely on the basis of the depressed webs or flanges on the protective device to assist in holding it in position when aligned and fastened to the already existing webs or flanges in the cut-out portion of the fender gasoline door opening. The issue to be determined here, therefore, is whether invention resides in this portion of the device. Obviously no claim is made that the screw, the nut, or the washer, or any combination of the three is novel.
One of the first models embodying his device made by Allen before the patent was issued to him was a flat structure to be laid flush against the fender and attached thereto at the flanges. During the prosecution of his application in the Patent Office, Allen filed the amended No. 9 Claim which provided for a crown-like structure. This was the structure...
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