Bassick Mfg. Co. v. Ready Auto Supply Co.

• Citation: 22 F.2d 331
• Decision Date: 28 October 1927
• Docket Number: No. 2905.,2905.
• Parties: BASSICK MFG. CO. v. READY AUTO SUPPLY CO., Inc.
• Court: U.S. District Court — Eastern District of New York

22 F.2d 331 (1927)

BASSICK MFG. CO. v. READY AUTO SUPPLY CO., Inc.

No. 2905.

District Court, E. D. New York.

October 28, 1927.

COPYRIGHT MATERIAL OMITTED

Lynn A. Williams, of Chicago, Ill., and Stephen H. Philbin, of New York City, for plaintiff.

Charles McC. Chapman, of New York City, for defendant.

CAMPBELL, District Judge.

This is an action in equity, in which plaintiff seeks relief by injunction and damages for the alleged infringement by the defendant of three patents issued by the United States Patent Office, viz.: No. 1,307,733, granted June 24, 1919, to Arthur V. Gullborg, for lubricating apparatus, on application filed February 11, 1918; No. 1,307,734, granted June 24, 1919, to Arthur V. Gullborg, for lubricating means, on application filed December 21, 1918; and No. 1,475,980, to Oscar Zerk, assignor to the Allyne-Zerk Company, of Cleveland, Ohio, for lubricating apparatus, on application filed November 21, 1922.

The defendant not only interposed the defenses of invalidity and noninfringement, but also tendered an issue as to the title of the plaintiff to each of the patents on which this suit is based, and moved to dismiss the bill for the alleged failure of plaintiff's title. The plaintiff claims title to each of said patents as assignee, and I will first consider the issue of title, because a determination of that issue, if in favor of the defendant, would terminate the suit.

The originals of the assignments, to copies of which defendant raised objections in its motion to dismiss, were produced by the plaintiff, and an inspection thereof by the defendant's counsel permitted. I have received in evidence, without objection, the agreement, dated December 13, 1918, between Arthur V. Gullborg and Alemite Metals Company, and the assignment of option contract of the same date, between Douglas F. Fesler and Arthur V. Gullborg, and have allowed photostatic copies of them to be substituted for the originals, and together they may be marked Plaintiff's Exhibit No. 36.

The fact that some of the assignments of the Gullborg patents are made subject to said agreements does not qualify the character of the title transferred, because the right to obtain a reassignment of the legal title given therein, under certain conditions in said agreements expressed, is a condition subsequent, and the title of the plaintiff cannot be assailed except by showing that such reassignment has been made. Bliss v. Reed (C. C. A.) 106 F. 314, 318; D. M. Sechler Carriage Co. v. Deere & Mansur Co. (C. C. A.) 113 F. 285. There was no evidence offered to show any such reassignment.

The assignment by the Alemite Die-Casting & Manufacturing Company to John S. Gullborg, C. M. Hedman, H. R. Hedman et al., cannot be attacked collaterally by the defendant because the said assignment, even if it was made by a corporation through its officers to themselves with others, was not void, but at most voidable by the corporation, an interested stockholder, or creditor, upon a proper showing; but there was no evidence offered to show that it has ever been avoided. Cowell v. McMillin (C. C. A.) 177 F. 25, 39; In re Franklin Brewing Co. (C. C. A.) 263 F. 512, 514; Lembeck & Betz Eagle Brewing Co. v. McAnarney (D. C.) 287 F. 927, 933; New Departure Mfg. Co. v. Rockwell-Drake Corporation (C. C. A.) 287 F. 328, 333.

The objection of the defendant to the assignment made by the Alleyne-Zerk Company to the Bassick Manufacturing Company, that patent No. 1,475,980 states that the inventor was Oscar Zerk, while the assignment states that the name of the inventor was Oscar U. Zerk, is not sustained, because the patent is correctly described by number, date of issue, and title in the assignment, and the addition of a middle initial in the inventor's name is mere surplusage. That Oscar Zerk and Oscar U. Zerk are one and the same person seems to be beyond question, because, when called as a witness in the instant suit, he gave his name as Oscar U. Zerk, and swore that he was the inventor named in the patent in question.

The contention of the defendant that any of the corporate assignments were invalid because of lack of the corporate seal was not sustained. Assignments of patents are not required to be under seal; therefore they are not invalid or void for want of a corporate seal. Gottfried v. Miller, 104 U. S. 521, 527, 26 L. Ed. 851; Westinghouse Co. v. Formica Co., 266 U. S. 342, 348, 45 S. Ct. 117, 69 L. Ed. 316.

The contention of the defendant that there was no evidence to show that the assignee named in the assignment to "the Bassick Manufacturing Company" was the same corporation as the plaintiff was not sustained. Identity of names presumes identity of person. Stebbins v. Duncan, 108 U. S. 32, 47, 2 S. Ct. 313, 27 L. Ed. 641; Fowler v. Stebbins (C. C. A.) 136 F. 365, 367; Campbell & Zell Co. v. American Surety Co. (C. C.) 129 F. 491, affirmed (C. C. A.) 138 F. 531, certiorari denied 199 U. S. 607, 26 S. Ct. 747, 50 L. Ed. 331. The presumption is rebuttable, but no evidence was offered to rebut it, and plaintiff was entitled to rely on the presumption.

There is no necessity for any extended consideration of the assignment, Plaintiff's Exhibit 5f, because that assignment antedated the granting of the patent which was issued to the grantee, and thereby the assignee was vested with the legal title. The motion to dismiss the bill of complaint on the alleged ground of defects in the assignments, alteration in the title deeds, and because the chain of title to the plaintiff herein is clearly defective, is denied.

The patents in suit cover the Alemite and Alemite-Zerk lubricating equipment of the Bassick Manufacturing Company. The equipment in question is what is called high-pressure lubricating equipment and is of two different kinds.

The Alemite equipment in question in the instant suit consists of the pin fittings in and of themselves covered by claims 3, 4, and 5 of Gullborg patent, No. 1,307,733, and the combination of compressor, coupler, and pin fitting, covered by claims 14 and 15 of Gullborg patent, No. 1,307,734; the pin fitting being screwed into an opening leading to each of the bearings to be lubricated, the conduit attached to the compressor connected to the pin fitting by the coupler adapted for that purpose, and by operating the compressor the grease is forced through the conduit and coupler into the pin fitting, and thence to the bearing to be greased.

The Alemite-Zerk equipment in question in the instant suit consists of the Zerk type of fittings or nipples and a grease gun or compressor, terminating in a nozzle adapted to be connected with any one of the nipples by simply pressing the nozzle against the exposed end of the nipple; the metal to metal contact surfaces being so formed that a grease-tight connection is established and insured by a slight pressure of the nozzle against the end of the nipple.

With the exception of claims 3, 4, and 5 of patent No. 1,307,733, which cover the pin fitting in and of itself, the combinations covered by the claims of the patents in suit, on which the suit is based, are never completely assembled, except by the ultimate user of the lubricating equipment. The plaintiff does not make up and assemble any complete combination of compressor, coupler, and pin fitting, but separately catalogues prices, and sells the pin fittings, couplers, and compressors to make up the combinations claimed in the patents in suit.

This character of combination was sustained in the phonograph cases. Leeds & Catlin Co. v. Victor Talking Mach. Co., 213 U. S. 301, 29 S. Ct. 495, 53 L. Ed. 805; Id., 213 U. S. 325, 29 S. Ct. 503, 53 L. Ed. 816. The patents in suit have uniformly been held valid in many actions in District Courts in the Sixth and Seventh Circuits, and in the Circuit Court of Appeals in both the Sixth and Seventh Circuits, as well as on a motion for preliminary injunction in at least one in this circuit. The prior art offered in the instant suit does not seem to differ from that which has been considered in other actions on these patents.

Recognizing the right of this court to reach conclusions at variance with those of all the other federal courts who have considered and decided the questions raised by the defendant herein, I have given those questions careful consideration; but, while this court is not compelled by comity to follow the decisions of other courts, those decisions are persuasive. While I have considered it with care, I find no necessity for going at length into an analysis of all of the prior art, because on the issue of validity the only question presented is whether the introduction of the claimed novel element in the combination evidenced inventive genius, or mere mechanical skill, and I will therefore confine myself, on this point, to such of the prior art patents as were most strongly urged by the defendant, and will consider at length the defenses urged by the defendant.

I see nothing disclosed in the Wilson patent, No. 988,422, circulars, or devices, that teaches high-pressure lubrication, nor did the Gullborg patents in suit follow the teachings of Wilson. The devices of the patents in suit in no sense follow the Wesco oil gun with a spout screw-threaded at the end, adapted to be screwed into the opening of the old-fashioned oil cup, after it had been removed from the bearings, and, after the oil had been poured in, the oil cup or plug screwed back into place. There was no teaching of pressure, but simply the pouring of oil or grease into housings and joints.

The Winkley patent, No. 1,201,414, the original of the Winkley reissue patent, No. 14,667, does not disclose all of the component parts of the Gullborg combination. The cup-shaped perforated washer, which is spring-pressed into sealing contact with the head of the fitting of the Gullborg combination, substituted in place of the cup with top and sides complete of the Winkley combination, gained for the Gullborg combination...