Casco Products Corporation v. Sinko Tool & Mfg. Co.

• Decision Date: 31 December 1940
• Docket Number: No. 7262.,No. 7261,7263,7261,7262.
• Citation: 116 F.2d 119
• Parties: CASCO PRODUCTS CORPORATION v. SINKO TOOL & MFG. CO. (two cases).
• Court: U.S. Court of Appeals — Seventh Circuit

116 F.2d 119 (1940)

CASCO PRODUCTS CORPORATION v. SINKO TOOL & MFG. CO. (two cases).

Nos. 7261, 7263, No. 7262.

Circuit Court of Appeals, Seventh Circuit.

December 6, 1940.

Rehearing Denied December 31, 1940.

Henry M. Huxley, of Chicago, Ill., and Thos. J. Byrne, of New York City, for appellant.

Russell Wiles, Bernard A. Schroeder, and Geo. A. Chritton, all of Chicago, Ill., for appellee.

Before SPARKS and KERNER, Circuit Judges, and LINDLEY, District Judge.

LINDLEY, District Judge.

These three causes involve appeals from three decisions of the District Court dealing with patents upon cigar lighters consolidated here for hearing and disposition. In 7261 plaintiff sought specific performance of a license agreement to defendant as to all cigar lighters manufactured by defendant in accord with the licensed patents, there being involved necessarily the question of whether defendant infringed the patents and a prayer that the fixed prices prescribed by the license be adhered to. An order granting a preliminary injunction was reversed by this court in Sinko Tool & Manufacturing Company v. Casco Products Corporation, 7 Cir., 89 F. 2d 916, upon the ground that the evidence did not justify a temporary injunction. Upon trial the District Court found no infringement and dismissed the complaint for want of equity. From that judgment, plaintiff appeals.

In 7262, plaintiff complained of infringement of certain patents not covered by the license. The District Court held them invalid and from the resulting decree in favor of defendant, plaintiff appeals.

In 7263, defendant appeals from a decree entered in the District Court upon its counterclaim in the original cause in which was asserted infringement by plaintiff of defendant's patent to Zecchini 1,437,701. The court held the patent invalid and dismissed the counterclaim.

We previously held defendant estopped to deny the validity of the patents under which it was licensed. The true extent of that estoppel is most material. The position of plaintiff is, in substance, that if any of the devices manufactured by defendant read upon any of the claims of the licensed patents, infringement exists. Defendant insists on the contrary that claims should be treated precisely as they would be in any infringement suit, with resulting refusal by the court to enter a decree on any claim found invalid for want of invention.

In Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 45 S.Ct. 117, 120, 69 L.Ed. 316, the Supreme Court adopted the language of Justice Lurton of the United States Circuit Court of Appeals for the Sixth Circuit, Noonan v. Chester Park Athletic Co., 99 F. 90, as follows: "`It seems to be well settled that the assignor of a patent is estopped from saying his patent is void for want of novelty or utility, or because anticipated by prior inventions. But this estoppel, for manifest reasons, does not prevent him from denying infringement. To determine such an issue, it is admissible to show the state of the art involved, that the court may see what the thing was which was assigned, and thus determine the primary or secondary character of the patent assigned, and the extent to which the doctrine of equivalents may be invoked against an infringer. The court will not assume against an assignor, and in favor of his assignee, anything more than that the invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger.'"

Perhaps we should hesitate to enlarge upon this. Despite some trepidation, however, we assert the corollary rule to be that defendant is estopped to assert that patents under which it is licensed merely follow the teaching of the prior art, for to do so would invalidate that which it has covenanted is valid; but that, by the same token, defendant is not estopped to prove that its devices are built wholly according to the teaching of the prior art and that everything necessary to their conception and construction was taught by such art, for such proof clearly negatives infringement. In other words if everything in defendant's construction was taught by the prior art and nothing included therein other than the application of such art, plus ordinary mechanical skill, then the mere fact that the device constructed reads upon the claims of patents, the validity of which it is estopped to deny, does not spell infringement. Our conception of our obligation, therefore, is that we must examine the prior art not only to determine the scope of plaintiff's invention but also to determine whether what is built by defendant springs entirely therefrom. The defendant's position is that its devices intentionally follow its earlier patents and that those patents taught defendant everything necessary to the conception and construction of its devices.

Defendant's "standard equipment" it is charged, infringes Cohen 1,710,531 granted April 23, 1929, Copeland 1,919,159 granted July 18, 1933, and Cohen 1,944,922 granted January 30, 1934, and Cohen 1,944,924 granted January 30, 1934. In the first of these defendant is said to infringe Claim 17.¹

As in all examples of the art the patentee in this claim prescribes a holding device and an igniter unit. The former contains a post member which is electrically grounded on the frame of an automobile. The igniter includes a slit sleeve, the open arms of which are bent inwardly, and a flange connected to the outer end of the resistance element. When the igniter element is placed in position, the sleeve holds it by frictional pressure. Though there results electrical continuity, the circuit is not closed until the igniter unit is pushed inwardly in the socket to make proper electrical contact. The patentee, by using the resilient sleeve, avoids grooves and projections. Under the claim it is essential that the element which receives and supports the removable element or the cooperating part of the lighter itself shall have an integral portion "normally biased to resiliently engage" the other. The patentee does not define the word "biased" but, upon examination of the elements which supply the resilient engagement, it is easily ascertainable that the metal sleeve in the lighter is so slotted as to form elastic tongues which are sprung inwardly to clasp the stationary fixed plug with an elastic pressure. We conclude this is the sense in which the patentee used the word "biased."

In his earlier patent, Zecchini had a socket and a removable plug lighter. In order to achieve the frictional elasticity necessary to hold the plug in place, he employed two spring pressed pins which were mouted in the socket and bore directly on the outside of the removable lighter's outer shell. Thus, it will be seen that Zecchini has a spring pressed part. If Cohen differed, he must have done so by his specification of "integrality." Otherwise he reads upon Zecchini. Defendant may use Zecchini's element but it may not use Cohen's, unless it was taught by the prior art. The device complained of employs a non-integral spring pressed pin as did Zecchini. Its pin, however, is in the plug instead of the socket, but the teaching of the claim is that the socalled biased portion may be placed on either member.

Other earlier patents had employed spring pressed pins and still other integrally formed biased friction fingers. Every mechanic appreciates full well the efficiency of spring fingers as agencies to retain an inserted part. Defendant's reference to such members used for holding chimneys on lamps is pertinent. Discussing the same, the court in Carlton et al. v. Bokee, 17 Wall. 463, 468, 84 U.S. 463, 21 L. Ed. 517, 518, 519, said: "The allegation of the complainants that the defendant uses Reichmann's invention of peripheral springs * * * around the edge of the dome * * * for steadying his chimney we regard as fallacious. The transformation by a mere trick of words and vague generalities of the arms or supports used by Reichmann to sustain his chimney into peripheral springs may be ingenious, but it cannot stand the test of sober consideration."

Cohen's device is simpler than Zecchini, and the same is true of the lighter of defendant complained of. But we think the desired simplicity merely the development of mechanical skill and, after considering all the evidence, conclude that everything done by defendant in this respect was suggested by the prior art.

Plaintiff also asserts infringement of Claims 19 and 20 of Copeland 1,919,159, by defendant's standard equipment.² Copeland built an electric lighter for desk use, the inserting element resting in a cone resembling a golf tee, the top being the shape of a golf ball. It was essential of course, to get current into the removable plug from the bottom and Copeland prescribed a method of so doing. Claim 19 calls for a body with a cavity open at one end, a resistance heater in the cavity and "a contact at the mouth of the cavity for removable engagement with a contact on the holding device" to carry the current to the heating element. This contact at the mouth, plaintiff insists, supplies "a better engagement" with the co-operating terminal in the holding device. Again we refer to the prior art to determine in just what particular Copeland differed from and improved upon its devices. Only thus can we ascertain his true scope.

We find in Zecchini a body at the end of which there is an open cup forming a cavity in which there is a heating element one of whose ends is attached to the cup. The difference in this respect between Copeland and Zecchini is that the former's body is of nonconducting material. Consequently he employed a separate contact at the mouth by the flange he illustrated. Either his claim must be restricted to a contact apart from the body and the cavity or it will read upon Zecchini,...