Brick v. AI Namm & Sons

• Decision Date: 03 February 1927
• Citation: 22 F.2d 693
• Parties: BRICK et al. v. A. I. NAMM & SONS, Inc.
• Court: U.S. District Court — Eastern District of New York

22 F.2d 693 (1927)

BRICK et al. v. A. I. NAMM & SONS, Inc.

District Court, E. D. New York.

February 3, 1927.

Leonard Day, of New York City (Wm. L. Morris, of New York City, of counsel), for plaintiffs.

Lester F. Dittenhoefer, of New York City (Wm. A. Redding, of New York City, of counsel), for defendant.

INCH, District Judge.

This is a suit brought upon letters patent No. 1,553,993 (United States), dated September 15, 1925, to William R. Delaney; application filed May 11, 1923. The patent covers a millinery box, and was duly assigned to the plaintiffs. The technical defendant is a large department store. The real defendant is a competitor of plaintiffs in the millinery box trade.

Delaney's patent states that his invention "is to cause a mechanical co-operative functioning between a completely encircling flange provided on a lid and the open top body portion of a box of this construction (cheap material, such as paper board, straw board, and the like) in such a way that, when the lid is hinged to the body portion, an automatic tucking in or seating function of the body portion into the flange of the lid takes place, and also so that, when the lid is closed, the box structure will have imparted to it considerable reinforcing action by the lid." Lines 14 to 25 of page 1 of patent. He then discusses the previously customary form and in Fig. 4 of the drawings of his patent indicates the then state of the art by a box having heels 6 and 7 disconnected from the continuous rim and requiring the use of the fingers to bend them out in order to close the lid and prevent ruining of the box. A sample of this type was also offered in evidence. Plaintiff's Exhibit 5.

There is but one claim in the patent, which is as follows:

"A self-stiffened combination of band-box with a lid comprising an open-top body portion, the walls of which are somewhat resilient and are comprised of paper board, and which walls include a flat rear wall, a bottom wall, and side walls bulging outwardly from said flat rear wall and extending substantially vertically upward from the rim of said bottom wall, and so that the top rim of said rear wall and bulging side walls are continuous one into the other, and are bounded by the same horizontal plane; a lid for said body, also composed of paper board and consisting of a top wall of a configuration corresponding to the outer circumference of said rear and side walls and a continuous flange pendent at right angles from said top wall, and having a flat rear portion to fit against said flat rear wall and a bulging portion to fit about the said bulging portion of said side walls, the depth of said flange and the bulging of said side walls being such that a mutual camming action and a mutual yielding commence with the closing of said lid from a relatively open position, and continue throughout substantially all of the closing action, to effect the automatic seating of all said flange snugly about said side and rear walls in response to a hinged movement of said lid."

It was probably necessary, from a technical viewpoint, to use this rather long and formidable claim, but as a matter of fact the patent covers a very limited patentable function; that is, the lid and sides of the box are so arranged and shaped that the lid automatically assists the tucking in of the upper edge of the bulging sides of the box when the lid is being closed down upon it. Instead, therefore, of a woman, having the box and its cover separate, or even hinged, being required to adjust the two, and considering the fragile nature of the box, more often than otherwise, causing its destruction, so far as its future usefulness is concerned, or, as in the state of the prior art shown in Fig. 4 and Exhibit 5, having to remember to insert both hands under the cover and spread the "heels" of the rim in bringing it down, a failure to do which also resulted in the destruction of the usefulness of the box, she can now, with plaintiff's box as indicated by the patent (Plaintiff's Exhibit 1) place her hat in the box and simply close the lid, with the practical assurance that not only will it close correctly, without injury to the box, but it will, when closed, result in a very sturdy and useful container, considering the material from which it is made.

Defendant sets up two defenses. One was invalidity of the patent, and the other is noninfringement. I do not think that there is any need of discussing the question of noninfringement, if the patent is found valid, for the reason that Plaintiff's Exhibit 2 (the article sold by defendant and representing the alleged infringing structure) seems to me, for the purpose of this patent, to be practically the same as that described in the patent. This brings us to the question whether or not the patent to Delaney is valid.

The novel idea claimed by Delaney, as I see it, exists in the fact that he claims to have arranged a combination of old elements in such a way as to produce a new result or function in that he has discovered, and applied commercially, to a millinery box a camming action of two members relatively to each other, whereby there is produced a sort of action known in the art as camming. It is a guiding action, like the guiding action of a cam. Testimony of Harrison.

This so-called action starts back where the lid first touches the top of the body portion of the box, and as the lid is pushed down the contact points move around to the front and disappear as the lid goes down. It is a continuous process. Even where the body of the box is warped or twisted slightly one away from the other, when the cover is pressed down this so-called camming or guiding action causes the cover and box to close on each other, each mutually guiding the other. The depth of the flange and its resilience in the cover, with that of the body portion, causes a reinforcement equally distributing the stresses.

"But when, in a class of machines so widely used as those in question, it is made to appear that at last, after repeated and futile attempts, a machine has been contrived which accomplishes the result desired, and when the Patent Office has granted a patent to the successful inventor, the courts should not be ready to adopt a narrow or astute construction, fatal to the grant." Keystone Mfg. Co. v. Adams, 151 U. S. 139, at page 145, 14 S. Ct. 295, 297 (38 L. Ed. 103).

The usual stipulation as to parties, etc., was made a part of the record, and after plaintiff had offered certain proof directed against letters patent No. 1,525,149 (Rappaport), set up as one of the prior art patents, counsel for defendant withdrew same, rendering immaterial any question as to the date of Delaney's invention.

Plaintiff put on the stand a Mr. Whittaker, who testified that for many years he had been acquainted with the millinery box trade and that for the past nine years he had purchased all the supplies, such as hat boxes, for Oppenheim & Collins, a large department store in this city; that his purchases of all kinds of paper boxes totaled a million and a half a year; that he first saw a box like plaintiff's (Plaintiff's Exhibit 6) in 1924; that he purchased one like it from plaintiff, and that he had been purchasing millinery boxes for the past 20 years, but that plaintiff's box was then a new thing on the market; that what appealed to him about the box was "the manner in which the cover went on without pressure"; "it puts itself on without pressure." He also said it was the first box having these features that he had ever heard of. He further testified that he had purchased them from Rappaport (plaintiff's competitor), rather than from plaintiff, because the former offered them cheaper. His testimony evidenced usefulness and commercial success for the patented box.

The inventor, Delaney, also was a witness, and testified as to his experiments with paper boxes of all kinds and descriptions, and his discovery of the idea now covered by his patent. He also states that his box was a new kind of box on the market. There were other witnesses produced by plaintiff along this line, and, while defendant offered testimony...