Blankenship v. DAISY MANUFACTURING COMPANY

• Decision Date: 13 June 1961
• Docket Number: Civ. A. No. 1545.
• Citation: 195 F. Supp. 12
• Parties: John P. A. BLANKENSHIP, Plaintiff, v. DAISY MANUFACTURING COMPANY, Defendant.
• Court: U.S. District Court — Western District of Arkansas

195 F. Supp. 12

John P. A. BLANKENSHIP, Plaintiff, v. DAISY MANUFACTURING COMPANY, Defendant.

Civ. A. No. 1545.

United States District Court W. D. Arkansas, Fort Smith Division.

June 13, 1961.

Charles H. Slaughter, Dallas, Tex., Dickson, Putman & Millwee, Fayetteville, Ark., for plaintiff.

Harness, Dickey & Pierce, Detroit, Mich., Harper, Harper, Young & Durden, Fort Smith, Ark., for defendant.

JOHN E. MILLER, Chief Judge.

The plaintiff, John P. A. Blankenship, is a citizen of the State of Texas and a resident of the City and County of Dallas in said state.

The defendant, Daisy Manufacturing Company, is a corporation, organized and existing under the laws of the State of Nevada, and maintains and operates a manufacturing plant in Benton County in the Western District of Arkansas.

On July 16, 1960, the plaintiff filed his complaint, containing two counts, against the defendant. In Count I the plaintiff alleged that on February 23, 1960, Letters Patent No. 2,925,685 were duly and legally issued to him relating to a sound making device for toy guns, which simulates the whine of a bullet as fired from an actual firearm such as a rifle or automatic; that the defendant has infringed the said Letters Patent by making, selling and offering for sale its product embodying the patented invention protected under said Letters Patent.

In Count II the plaintiff alleged that the defendant has engaged in unfair trade practices and unfair competition against him by "presenting to the public a lower quality, priced and cheap imitation of a sound making device, incorporated and made a part of its `Cheyenne Guns' under its Patent No. 2,729,208, in such manner as to convey to the buying public a false impression that the high quality features embodied in this plaintiff's invention embraced in his Letters Patent No. 2,925,685 could be attained at a lower price in its cheap imitation sound making device that defendant represents to the public as having a `Genuine Bullet Whine' feature."

In the prayer of the complaint the plaintiff demands that defendant be enjoined from further infringement of said Patent No. 2,925,685, and an accounting of damages and profits. He further demands that the defendant be enjoined under Count II from continuing to engage in unfair competition and that he be awarded attorneys' fees and all other general and special relief.

On November 1, 1960, the defendant filed its answer in which it denied that it is selling or offering for sale sound making devices embodying the patented invention granted to plaintiff under Letters Patent No. 2,925,685 on February 23, 1960.

Further answering, the defendant, in subparagraph (a) of paragraph IV of its answer, alleged:

"(a) Prior to the alleged invention or discovery of the patentee, John P. A. Blankenship, of the subject matter described and claimed in said United States Letters Patent No. 2,925,685, and more than one year prior to the date of filing in the United States Patent Office of the application on which said patent purports to be based, the subject matter of said Patent No. 2,925,685 and every material and substantial part thereof had been patented and/or described in the patents set forth below, as well as those cited by the United States Patent Office during the course of prosecution of the application upon which said Patent No. 2,925,685 issued, and others, due notice of which will be given to the plaintiff as required by the patent statutes now in force:"

Then follows a list of the patents which the defendant pleads as constituting the prior art. Not all of the patents that were pleaded by the defendant were introduced in evidence, but the following patents were introduced as exhibits by the defendant:¹

                  DX 12—Canadian Patent No. 518,821
                        issued November 22
                        1955, to Oscar Doster
                  DX 13—British Patent No. 734,032
                        issued July 20, 1955, to
                        Hans Mangold
                  DX 14—U. S. Patent No. 2,097,749,
                        issued November 2, 1937,
                        to J. T. Wade.
                  DX 15—U. S. Patent No. 1,272,353,
                        issued July 16, 1918, to M.
                        P. Appell.
                  DX 16—U. S. Patent No. 2,788,613,
                        issued April 16, 1957, to N.
                        M. Gelfand, et al.
                  DX 17—U. S. Patent No. 2,047,784,
                        issued July 14, 1936, to S.
                        Krakowski.
                  DX 18—U. S. Patent No. 1,205,498,
                        issued November 21, 1916,
                        to Byron P. Willett.
                  DX 19—U. S. Patent No. 2,734,310,
                        issued February 14, 1956,
                        to J. W. Christopher.
                

"(b) The patentee, John P. A. Blankenship, is not the first inventor of the subject matter described and claimed in the aforesaid patent as the same was well known to and used by others in this country prior to his alleged invention or discovery thereof by the patentees of those patents referred to in paragraph (a) above, as well as the patentees of the patents listed below, and others including Cass S. Hough, Daisy Manufacturing Company, Rogers, Arkansas, due notice of which will be given to the plaintiff as required by the patent statutes now in force:"

The prior art pleaded in subparagraph (b) is DX 16, U. S. Patent No. 2,788,613, issued April 16, 1957, to N. M. Gelfand, et al.

That the subject matter described and claimed in the patent issued to the plaintiff was obvious to a person having ordinary skill in the art to which said patent pertains at the time alleged invention was made; that both claims of the said patent are invalid and void because no invention was required to devise the alleged invention described and claimed therein in view of the state of the art existing prior to the alleged invention; the claims of the patent issued to plaintiff do not cover devices of the type which defendant is manufacturing and selling and the sale of such devices by the defendant does not constitute an infringement of any of the claims of said patent.

In subparagraphs (g) and (h) of numbered paragraph IV, the defendant alleged:

"(g) By reason of amendments and arguments made by the applicant before the United States Patent Office during the prosecution of the patent application which resulted in said Patent No. 2,925,685 to meet rejections and actions of the Patent Office and in order to induce the issuance of said patent, plaintiff is estopped from asserting or contending that any devices manufactured, used or sold by defendant constitute infringement of any of the claims of said Patent No. 2,925,685.

"(h) Both claims of said Patent No. 2,925,685 are invalid and without any legal effect for the reason that each of said claims does not define a patentable invention, but on the contrary, each of said claims defines an aggregation of unrelated devices and/or elements separately old and well known in the art."

In answer to Count II of the complaint, the defendant denied each and every allegation therein, and further alleged that the plaintiff has never manufactured and sold or offered for sale devices covered by the patent in suit and, therefore, has no trade business or reputation in devices covered by the patent with which the defendant could engage in unfair trade practices and unfair competition; that its products are not imitations or copies of the structure embodied in plaintiff's patent, and the sound making device incorporated in its guns is not visible to purchasers of such guns as the same are displayed or purchased; that the purchasing public could not be confused or deceived as alleged by plaintiff and "no `palming-off' by defendant of an imitation of plaintiff's sound making device could possibly occur."

In an amendment to the complaint filed January 21, 1961, the plaintiff alleged that the defendant had also engaged in unfair trade practices and unfair competition in selling and offering for sale "its other air rifles and noise guns as enumerated in defendant's answer to Interrogatory No. 1 of plaintiff's second set of interrogatories, and such other air rifles, noise guns and other guns that defendant may be producing which are unknown to the plaintiff."

On February 4, 1961, the defendant filed its answer to the amendment to the complaint in which it denied again that it was guilty of any unfair trade practices.

Upon the issues as made by the complaint of the plaintiff and amendment thereto, the answer and amendment thereto of the defendant, the cause proceeded to trial to the court on February 27-28, 1961.

After due consideration of the issues, the contentions of the parties as set forth in their briefs, and all the testimony and exhibits thereto, this opinion is filed embodying the findings of fact and conclusions of law in accordance with Rule 52(a), F.R.Civ.P., 28 U.S.C.A.

During the trial and at the conclusion of the testimony in chief offered by the plaintiff, the defendant separately moved to dismiss each of the counts contained in plaintiff's complaint. The court sustained the defendant's motion to dismiss Count II and the amendment thereto, being the count containing the claim for damages for the alleged unfair trade practices and unfair competition by defendant against plaintiff, but denied the motion to dismiss Count I, being the claim of the plaintiff for damages for the alleged infringement by defendant of the patent in suit.

Jurisdiction of the court is founded upon 28 U.S.C. § 1338(a) and (b). Since the court dismissed the claim of plaintiff based upon the allegations that the defendant had engaged in unfair trade practices and unfair competition against the plaintiff, there remain for decision at this time only two questions: (1) Is the patent issued to plaintiff valid, and (2) if valid, has the defendant infringed the same?

It was stipulated at the beginning of the trial that the claim of plaintiff for damages was reserved until such time as the court determines the two questions above set forth.

In Sinclair & Carroll Co. v. Interchemical Corp., 1945, 325 U.S. 327, beginning at page 330, 65 S.Ct. 1143, at page 1145, 89 L.Ed. 1644, the court said:

"There has

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