Bucky v. Sebo

• Decision Date: 27 April 1953
• Parties: BUCKY et al. v. SEBO et al.
• Court: U.S. District Court — Southern District of New York

115 F. Supp. 555

BUCKY et al. v. SEBO et al.

United States District Court, S. D. New York.

April 27, 1953.

Paul Kolisch, New York City, for plaintiffs.

Emanuel R. Posnack, New York City, for defendants.

RYAN, District Judge.

This suit was filed on August 30, 1949 for alleged infringement of three patents — Nos. 2,239,379, 2,292,044 and 2,422,077. The answer denies infringement and alleges invalidity as to all three patents; it contains a counterclaim and a prayer for affirmative relief by declaratory judgment adjudging that the patents in suit were not infringed and are invalid.

Application for patent No. 2,239,379 was filed by plaintiff, Gustav Bucky, on January 12, 1940; the patent issued April 22, 1941. He has been and still is the owner of it. Application for patent No. 2,292,044 was filed by this plaintiff on August 28, 1940; prior to issuance of the patent he assigned his entire interest in this application to plaintiffs, Frida Bucky, Peter A. Bucky and Thomas Lee Bucky; the patent issued to them on August 4, 1942. Application for patent No. 2,422,077 was filed by Gustav Bucky on September 27, 1944; the patent issued June 10, 1947; he has been and still is the owner of this patent.

Prior to trial defendants' motion for summary judgment was in part granted dismissing the complaint insofar as it asserted claims based on patent No. 2,422,077.

Defendant, Carl J. Sebo, was under an agreement with plaintiffs, dated December 4, 1944, the former exclusive licensee of the patents in suit. Defendant, Coreco Research Corporation, under an agreement with Sebo, dated November 15, 1946, was exclusive selling agent or distributor of the commercial products manufactured by Sebo at the Coreco factory under his license from plaintiffs. Until March 26, 1949, this license to Sebo was operative; it was then cancelled by the plaintiffs for non-payment of royalties. It is the commercial product of Sebo which he continued to manufacture and market through and with Coreco after cancellation of the license that is alleged to constitute infringement of the patents. Plaintiffs rely on all the claims of No. 2,239,379 and on the one claim of No. 2,292,044.

Plaintiff Gustav Bucky is a physician who is internationally recognized as an expert in the filed of roentgenology. He is known for his improvements in x-ray techniques. In his professional work he found need for a camera with automatic focusing and exposure devices adapted to photographing parts of the body. He first dealt with Carl J. Sebo, the father of the individual defendant, concerning the manufacture and production of cameras under the patents. After experimentation with Sebo, Sr., a model of a commercial structure was built. Bucky organized a corporation called Consolidated Research Corporation; in trade, he abbreviated the name to Coreco; and sold the first commercial product brought forth in collaboration with Sebo, Sr. under the patents in suit as the "Coreco-Bucky Camera." Thereafter, the licensing agreement of December 4, 1944 was made by Gustav Bucky, as owner of patent No. 2,239,379 and of patent application No. 555,948 (upon which patent No. 2,422,077 later issued) and Frida Bucky, Peter A. Bucky and Thomas Lee Bucky, as owners of patent No. 2,292,044, with Carl J. Sebo, the defendant, granting to Sebo "the exclusive but non-assignable, right and license to manufacture, sell and use the apparatus embodying, employing and containing the inventions" in these patents and application. This agreement is Plaintiffs' exhibit 8 in evidence.

The agreement provides that "the licensee will use the name `Coreco-Bucky' to designate products which he makes and sells under this agreement, and will so mark, label and describe all such products, which practice shall continue during the full term of this agreement unless amended in writing by the parties hereto." It was never so amended.

After the licensing agreement, the defendant corporation — Coreco Research Corporation — was organized and the camera continued to be manufactured by Sebo in the plant of that corporation. Sebo, on November 15, 1946, made an agreement with Coreco Research Corporation. It recites the licensing agreement Sebo had with plaintiffs and states that the purpose of the parties was to arrange to manufacture "under said patent license." In it, Sebo agreed that he would manufacture the cameras exclusively upon the order of the corporation for the life of the patents; that the manufacture of these would be in the plant of the corporation, which plant it agreed to make available to Sebo for that purpose, and that the corporation would have the exclusive right to sell the cameras so manufactured by Sebo. Although the agreement contains a specific undertaking by Sebo "that during the continuance of this agreement, he will well and truly perform all the terms and conditions of the agreement between him and Gustav Bucky, Frida Bucky, Thomas Lee Bucky and Peter A. Bucky, dated December 14th, 1944 (sic)," there is no like or counterpart obligation in words expressed by Coreco Research Corporation. (Defendants' Ex.F).

In the agreement the product to be manufactured by Sebo and sold by Coreco is designated "Coreco Automatic Color Camera"; nowhere in the agreement is it referred to as the "Bucky" or the "Coreco-Bucky" camera. Following the date of this agreement all cameras manufactured by Sebo were sold by Coreco. Royalty payments to plaintiffs under the licensing agreements were made by the Coreco Research Corporation for Sebo, amounting to $17,197.60.

After the agreement, the defendant Sebo functioned as a vice president of the company and was engaged in the manufacture of the camera and its sale by Coreco. Up to the time of the cancellation of the Sebo agreement with Bucky, Sebo owned 50% of the capital stock of the defendant Coreco Research Corporation; although he has since sold his stock he continues to be the chief executive of that corporation.

The patents in suit are designed to be embodied in cameras constructed to fill requirements of clinical photography and to meet the specific needs of research. The patents purport to remove the human element from photography by the substitution of a completely automatic mechanism. It appears that given a working camera, suitable film or plate and proper lighting on the object to be photographed at least four physical conditions must be accurately adjusted to obtain a good photographic reproduction. These are: the distance from the object to be photographed to the lens of the camera; the distance between the lens and the film; the diameter of the aperture or "f" opening by way of which light passes through the lens to the film; and the duration of the exposure of the film to light. These adjustments are made by the use of the metal contrivance disclosed, called the "applicator." In the commercial product, a camera is built into a housing or casing with a slot in the housing permitting the insertion of a bracket affixed to the applicator. The applicator is designed to effect the adjustments by the insertion of it in the slot of the housing. It is undisputed that the gadget has proved efficient and has received commercial acceptance. All represent it as making clinical photography to one not possessed of special knowledge possible "by the complete removal of the human element from photography and by the substitution of a completely automatic mechanism which holds all the photographic factors constant at all times."

A number and variety of applicators and applicator sets have been designed. Thus, there are manufactured and sold the "opthalmological set," the "pathological set," the "eye, ear, nose and throat set," the "standard dental set," and several others. Each set includes an individual applicator; each applicator designed for use in photographing specific areas or cavities of the body, such as the mouth, ear, nose, etc. It has been called a focusing applicator, for by its use automatic focusing is achieved: it sets the correct "f" opening, the film-lens distance, the lens-object distance and applies the camera to the specific area to be photographed.

The applicator is a narrow, rigid metal bar to which another shorter narrow, rigid, metal bar or bracket is permanently affixed at right angles, and to which a small, metal frame is permanently affixed at right angles at one end. The applicator consists then of three elements, each designed to perform a separate function: (a) the right-angle bracket designed to be attached to the camera sets the diameter of the aperture of the lens and the time of exposure; (b) the segment extending rearward of the bracket, which is adapted coincidentally upon its insertion in the camera to shift the film-holder rearward, determines the distance between the lens and the films; and (c) the segment of the bar extending forward of the bracket to the end of which is affixed the frame, fixes the distance between the lens and the object to be photographed. The invention is described as "a focusing device for a photographic camera" including an objective part and a holder part for an element having a light sensitive surface (film). The holder part, as illustrated in the drawings accompanying the patent (No. 2,239,379), consists of the lens, the plate or film holder and the usual light-tight, expansion, bellows-type container, enclosing the space between the lens and the plate or film holder.

With these observations, we consider the patents in suit with particular reference to the accused products.

Patent No. 2,239,379 describes a "Self-Focusing and Illuminating Device for Photographic Cameras." The patent embraces 19 claims. The invention is described as mainly comprising "a member selective as to the size or distance of the object area to be photographed, said member embodying means for adjusting the relative distance between the camera objective and the sensitive surface of the plate or film within said camera. * * *" It...