Breeden v. Attwood Brass Works

• Decision Date: 26 June 1952
• Docket Number: No. 1423.,1423.
• Citation: 105 F. Supp. 876
• Parties: BREEDEN v. ATTWOOD BRASS WORKS.
• Court: U.S. District Court — Western District of Michigan

105 F. Supp. 876

BREEDEN v. ATTWOOD BRASS WORKS.

No. 1423.

United States District Court W. D. Michigan, S. D.

June 26, 1952.

Ballard, Jennings, Bishop & Fraser and Richard A. Parsons, all of Lansing, Mich., for plaintiff.

Frank E. Liverance, Jr., of Grand Rapids, Mich., for defendant.

STARR, District Judge.

This is a patent suit involving United States Letters Patent No. 2,206,762 issued July 2, 1940, to plaintiff Breeden for "holders for caskets or the like" on application filed October 12, 1938.

In his complaint plaintiff alleged infringement and asks for an injunction against further infringement, an accounting, treble damages, costs of suit, and attorney's fees. Defendant answered, alleging invalidity of patent and denying infringement, and asks for costs of suit. In support of its claim of invalidity of patent because of prior-art anticipation and lack of invention, defendant cites the following: Dibble No. 82,095, Griswold No. 95,999, Frampton No. 187,117, Ferguson No. 215,514, Cox No. 232,463, Heabler No. 674,766, Simola No. 703,312, Anderson No. 800,604, Parsels No. 1,637,239, and Schofield No. 2,132,543.

A hearse is usually provided with rollers projecting slightly above the floor or platform, to facilitate moving a casket in and out of the hearse. The patent in suit relates to a device for securing a casket on the platform of the hearse so as to prevent marring the casket and to preclude shifting or movement of the casket during its transportation in the hearse. The patent provides for two aligned rows of closely spaced vertical holes or sockets in the platform of the hearse, the rows being located approximately equidistant from and parallel to the sides, one row being toward the forward end of the platform and the other toward the rear end, the sockets being so spaced as to accommodate caskets of different lengths. Plaintiff testified that these sockets may be in metal plates fastened to the platform of the hearse, but that such plates are standard equipment for hearses and are not included in his patent. The patent provides for an abutment comprising an upright post to be inserted in one of the sockets in the forward row, having at its upper end a relatively broad plate or clamp, surfaced on one side with sponge rubber or other vacuum-gripping material to press against the forward end of the casket. It also provides for an abutment comprising a post to be inserted in one of the rear row of sockets, the upper end of said post having a relatively broad plate or clamp, one side likewise surfaced with gripping material, said plate being adjustably connected with the post by guide rods rigidly attached to the plate and slidingly fitting corresponding holes in the post, and with a manually operated screw means for advancing and retracting the plate. The forward post is positioned in a socket so as to place the casket approximately centrally of the length of the platform. The casket is moved into the hearse with its front end against the gripping surface of the plate on the forward abutment, and after the casket engages that plate, the abutment with an adjustable plate is positioned in a socket adjacent to the rear of the casket, and the screw means operated to advance the plate so that the casket is gripped at its front and rear ends by the gripping surfaces of both plates. The reverse turning of the screw means releases the casket from the gripping plates. The patent describes the posts of the abutments at the front and rear as being rotatable in their respective sockets so that the gripping surfaces of the plates will square up with the ends of the casket and hold it against both longitudinal and lateral movement. Although the patent illustrations show the casket-holding device as employed in an end-loading hearse, the specifications state that it may also be used in a side-loading hearse.

It is unnecessary to describe defendant's accused structure as it is admitted to be substantially identical with the structure manufactured by plaintiff under his patent, the two claims of which are set out in the margin.¹ If the patent is valid, infringement is admitted. In considering the question of validity, the court recognizes that the decisions of the Supreme Court of the United States in recent years indicate a definite trend toward a higher standard of invention. Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, rehearing denied 340 U.S. 918, 71 S.Ct. 349, 95 L.Ed. 663; United Specialties Co. v. Industrial Wire Cloth Products Corp., 6 Cir., 186 F.2d 426; Foxboro Co. v. Taylor Instrument Cos., 2 Cir., 157 F.2d 226; Trabon Engineering Corporation v. Dirkes, 6 Cir., 136 F.2d 24; Perkins v. Endicott Johnson Corporation, 2 Cir., 128 F.2d 208; In re Shortell, 142 F.2d 292, 31 C.C.P.A., Patents, 1062.

Plaintiff's patent is presumed to be valid, but this presumption is not conclusive and is rebuttable. However, the burden is upon the defendant to establish its claim of invalidity by clear and satisfactory proof. Crosley Corporation v. Westinghouse Electric & Mfg. Co., 3 Cir., 152 F.2d 895; Spring-Air Co. v. Ragains, D.C., 96 F.Supp. 79, and authorities cited at page 81; Reynolds v. Emaus, D.C., 87 F.Supp. 451; Dennis v. Great Northern Ry. Co., D.C., 51 F.2d 796; 2 Walker on Patents, Deller's Ed., pages 1272, 1273, § 276.

It should be noted that the defendant put in evidence several prior-art patents pertinent to the issue involved, which had apparently not been considered by the examiner in the Patent Office. There is no presumption of validity over this prior art which the examiner did not consider. Nordell v. International Filter Co., 7 Cir., 119 F.2d 948. Furthermore, validity is not to be presumed from the mere fact that the defendant admits infringement if the patent is valid. By reproducing the plaintiff's device the defendant challenged the validity of the patent and invited suit for infringement so that the question of validity could be judicially determined. In United States Gypsum Co. v. Consolidated Expanded Metal Cos., 6 Cir., 130 F.2d 888, 889, 890, the court said:

"Though it be elementary to do so at this late date in the development of the patent law, it is necessary to recall that three elements are requisite to validity, to-wit: novelty, utility, and invention. It has been held in adjudications without number, that one who appropriates the teachings of a patent may not deny the utility of the invention. This is, of course, both reasonable and logical. It does not follow, however, that one who is foreclosed from denying the usefulness of a concept is likewise foreclosed from questioning its novelty or the exercise of invention in the development of product, method, or machine. It is illogical to base a presumption of patent validity upon the unauthorized adoption of patent disclosures, since all controversies as to validity arise through infringement, and may not otherwise arise. One who reproduces a patented device proclaims to the world his disbelief in the validity of the patent, his purpose not to be circumscribed by it, and invites a suit for infringement so that validity may be adjudged, and the closer the reproduction the plainer is his challenge to validity. It is only by becoming an infringer that one gains opportunity to assail a patent in his own interest and that of the public. To base a presumption of validity upon such course is as though one were to say that open and adverse possession of land is an admission of a claimant's title. We therefore approach the issue of validity without adding to the usual presumption attaching to the grant of the patent, a presumption of validity based on the absence of an issue of infringement."

Plaintiff's patent is a combination patent comprising an aggregation of old parts or elements, and to constitute patentable invention, these elements must co-operate in such a manner as to produce a new, unobvious, and unexpected result. In the absence of invention, utility and novelty are not alone sufficient to sustain the validity of a combination patent. In re Kaufmann, 193 F.2d 331, 39 C.C.P.A., Patents, ___. In Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., supra, the court said, 340 U.S. at pages 150-152, 71 S.Ct. at page 129:

"It is agreed that the key to patentability of a mechanical device that brings old factors into cooperation is presence or lack of invention. * * *

"The negative rule accrued from many litigations was condensed about as precisely as the subject permits in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 664, 82 L.Ed. 1008: `The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.' To the same end is Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 59 S.Ct. 897, 83 L.Ed. 1334, and Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58. The conjunction or concert of known elements must contribute something; only when the whole in some way exceeds the sum of its parts is the accumulation of old devices patentable. * * *

"Courts should scrutinize combination patent claims with a care proportioned to the difficulty and improbability of finding invention in an assembly of old elements. The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans. A patent for a combination which only unites old elements with no change in their respective functions, * * * obviously withdraws what already is known into the field of its monopoly and diminishes the resources available to skillful men."

See also Sinclair & Carroll Co., Inc., v. Interchemical Corporation, 325...