Anderson Company v. Trico Products Corporation

• Decision Date: 17 January 1958
• Docket Number: Civ. A. No. 5677.
• Citation: 162 F. Supp. 224
• Parties: The ANDERSON COMPANY, and Productive Inventions, Inc., Plaintiffs, v. TRICO PRODUCTS CORPORATION, Defendant.
• Court: U.S. District Court — Western District of New York

162 F. Supp. 224

The ANDERSON COMPANY, and Productive Inventions, Inc., Plaintiffs, v. TRICO PRODUCTS CORPORATION, Defendant.

Civ. A. No. 5677.

United States District Court W. D. New York.

January 17, 1958.

COPYRIGHT MATERIAL OMITTED

Moot, Sprague, Marcy & Gulick, Buffalo, N. Y., Schroeder, Hofgren, Brady & Wegner, Chicago, Ill. (David L. Landy, Buffalo, N. Y., of counsel, Bernard A. Schroeder, James C. Wood, Lloyd W. Mason, Chicago, Ill., of counsel), for plaintiffs.

Raichle & Tucker, Buffalo, N. Y. (Frank G. Raichle, Arnold Weiss, Buffalo, N. Y., of counsel), Bean, Brooks, Buckley & Bean, Buffalo, N. Y. (Edwin T. Bean, Sr., Buffalo, N. Y., of counsel), The Firm of Casper W. Ooms, Chicago, Ill. (Casper W. Ooms, Chicago, Ill., of counsel), Dos T. Hatfield, Washington, D. C., for defendant.

MORGAN, District Judge.

This is a suit for infringement of United States Letters Patent No. 2,596,063 granted May 6, 1952 to John W. Anderson of Gary, Indiana. This patent was subsequently assigned to Productive Inventions, Inc., an Indiana corporation, and suit is here brought by The Anderson Company of Gary, and Productive Inventions, Inc., both of which are substantially owned and controlled by John W. Anderson.

The original complaint was filed March 26, 1953, since which time innumerable pleadings and proceedings have been had in this court. Without reviewing all of them, it is important to know at the outset that by order filed in the Office of the Clerk of the Western District of New York, October 21, 1954, the late John Knight, then Chief Judge of the Western District of New York, granted a motion for summary judgment against Productive Inventions, Inc.; hence future reference in this opinion will be solely to the Anderson Company, as plaintiff.

The defendant is a New York corporation, doing business in Buffalo, New York. The jurisdiction of this court arises under the patent laws of the United States.

Plaintiff seeks a determination by this court that its patent has been infringed by defendant by certain devices manufactured and sold by defendant. Defendant seeks by way of counterclaim, a determination that plaintiff's patent is invalid for several reasons, but principally on the grounds that it embodies no inventive concept, that it is indefinite, that John Anderson is not the true inventor and that plaintiff is without clean hands.

The patent in suit is entitled "Windshield Wiper Blade Linkage Assembly" and the device shown and claimed therein is one for the wiping of a curved windshield. The patent has a rather complicated history, almost seven years having elapsed between the filing date and the patent date. A reading of the file wrapper of the patent in suit discloses the following general sequence of events: On December 13, 1945, plaintiff filed with the Patent Office patent application No. 634,729 and an "improvement" patent application No. 634,730. On October 10, 1957, the Patent Office rejected 23 claims, including 1, 2 and 3 of 634,730. Following this, a Patent Office examiner suggested 6 counts for a proposed interference proceeding between 634,730 and Scinta-Rappl application No. 736,492. Plaintiff adopted 5 of the 6 counts, which were then rejected in toto by the examiner, who suggested a single count as a basis for the interference proceeding. Plaintiff adopted this count, which subsequently became claim 6 of the patent in suit, and is one of the claims here in issue.

Following this, the examiner refused to declare an interference between the Scinta-Rappl application, which thereafter issued as Patent No. 2,543,383 and Anderson 634,730. The examiner likewise rejected Scinta-sole application No. 636,548 as a party to an interference proceeding. During the following interference proceeding, the examiner refused to broaden the interference claim and then awarded priority to Anderson 634,730. On appeal to the Board of Interference Examiners of the Patent Office, and to the United States Court of Customs and Patent Appeals, it was held that the refusal of the examiner to allow substitution of Scinta-sole was not reviewable, but that the decision of the examiner that the Anderson disclosure supported the requirement in the interference claim of an elongated flexible backing strip was not error as a matter of law. Scinta v. Anderson, 193 F.2d 1020, 39 C.C.P.A., Patents, 790. That finding is not binding on this court in this action.

Subsequently, the Patent Office approved claims 1 to 5 of 634,730, all of which had originally been suggested by the examiner as a basis for the interference proceeding and then rejected by him. The Patent Office approved claim 6, the interference count, and claim 7, which had earlier been held unpatentable by the examiner. The Patent Office also approved claims 8 to 17, which had been added by Anderson after 634,730 had been awarded priority, and claims 18 to 31, all reading on a single yoke structure, which were transferred by Anderson from his 634,729 application after the priority award. In May 1952, the patent issued as now constituted.

Plaintiff initiated this action by standing on all of the claims of the patent in suit. However, during the course of trial, plaintiff elected to base its cause on only claims 6, 8, 15 and 17 of the patent. Plaintiff therefore must prevail on these claims or not at all.

After institution of the action, and lengthy pretrial procedure, trial was commenced during June, 1956. It continued for some 25 to 30 trial days, during which time a score or more witnesses were heard, several hundred exhibits introduced, and several thousand pages of trial record produced.

Briefs were submitted during December, 1956 and reply briefs were submitted during February, 1957. After several motions and cross-motions, the parties finally came to agreement on the corrected trial transcript to be submitted to the court during the late fall of 1957. At this point, the court was able to commence its consideration of the case.

The first matter to be considered is defendant's attack upon the validity of the patent in suit on the basis of the prior art.

Prior Art I

Defendant attacks the validity of the patent in suit, asserting first as a basis for such, developments by Trico prior to 1945. Defendant particularly relies upon Scinta-Rappl patent No. 2,543,383 and the Scinta-sole development (Exhibit D-41).

Defendant first argues that Scinta-Rappl and Scinta-sole completely anticipate Anderson application No. 634,729. Even if the court agreed with defendant that plaintiff's 634,729 blade is unpatentable in view of Scinta-sole and Scinta-Rappl 2,543,383, Anderson's 634,729 never went beyond the application state, and several of its claims were later transfered to the patent in suit. There they are to be found in claims 18 through 31 inclusive. Plaintiff, however, rests its case on claims 6, 8, 15, and 17 of the patent in suit, and on these claims only. Therefore, neither the claims under Anderson 634,729, nor claims 18 through 31 of the patent in suit, are at issue between the parties, and the court will make no specific determination with respect to them.

Scinta-Rappl is a single-yoked structure attached to a flexible backing strip enclosed by the rubber wiping element. The yoke is attached to the bare metal extension of the backing strip in a manner allowing sliding contact between the two members, a so-called "lost motion" joint. Scinta-Rappl also calls for a pre-curved leaf-spring flexible backing strip entirely enclosed in the rubber wiping element, and attached to the wiper arm at the center of the blade.

Clearly, neither version of Scinta-Rappl contains the triple-yoke pressure-distributing mechanism which is so fundamentally a part of the Anderson device. They, therefore, cannot be considered to read on the patent in suit.

The Scinta-sole device has never been patented and, along with Scinta-Rappl, has never been put into commercial use. Plaintiff asserts that Scinta-sole was never reduced to practice, and cites several cases laying down a general approach to what constitutes adequate reduction. However, it appears from the record that Scinta-sole was reduced to practice to the extent that it was possible to do so in 1944-1945, since no automobiles were then being manufactured with curved windshields. Thus Scinta-sole could reasonably be expected to be reduced to practice only in a laboratory on a curved glass, or else on a car with flat glass. Scinta-sole has a leaf-spring flexible backing strip entirely enclosed in a hollow wiping element. It has a single yoke which is attached to the rubber covering the backing strip by two movable devices which clamp around the rubber covering. Defendant prefers to call these devices "secondary yokes", pointing out that the Patent Office has so defined them. It should also be recalled that a Patent Office examiner, in a decision affirmed by the Commissioner of Patents, has ruled that claim 6 of the patent in suit could not be read on Scinta-sole. Scinta-sole is in no manner a triple-yoke structure in the sense of the patent in suit. Its so-called secondary yokes are simply extensions of the ends of the yoke, clamping the yoke to the backing strip at a single point adjacent each end of the yoke, rather than being true secondary yokes attached to the backing strip at three or more longitudinally spaced points. The devices apply yoke pressure directly to the backing strip, rather than dividing and applying it. Scinta-sole further lacks the sliding metal to metal connection between the yoke(s) and the backing strip found in the patent in suit. Scinta-sole cannot be considered as anticipating the patent in suit.

Prior Art II

The bulk of the prior art cited by defendant in an attempt to prove the invalidity of the patent in suit is to be found in 16 specific patents relied upon by defendant. This grouping does not include Scinta-sole, Scinta-Rappl or Zaiger triple-yoke devices, which are considered elsewhere...