Century Industries, Inc. v. Wieboldt Stores, Inc., 12423.

• Decision Date: 03 March 1959
• Docket Number: No. 12423.,12423.
• Parties: CENTURY INDUSTRIES, INC., Plaintiff-Appellee, v. WIEBOLDT STORES, INC., Defendant-Appellant, and Marsel Mirror & Glass Products, Inc., Intervening Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

263 F.2d 934 (1959)

CENTURY INDUSTRIES, INC., Plaintiff-Appellee, v. WIEBOLDT STORES, INC., Defendant-Appellant, and Marsel Mirror & Glass Products, Inc., Intervening Defendant-Appellant.

No. 12423.

United States Court of Appeals Seventh Circuit.

March 3, 1959.

Warren C. Horton, Malcolm McCaleb, and Horton, Davis & McCaleb, Chicago, Ill., for appellant.

James R. McKnight, Chicago, Ill., for appellee.

Before SCHNACKENBERG, HASTINGS and KNOCH, Circuit Judges.

HASTINGS, Circuit Judge.

This is an action for patent infringement by Century Industries, Inc., plaintiff-appellee, against Wieboldt Stores, Inc., defendant-appellant, and Marsel Mirror & Glass Products, Inc., intervening defendant-appellant.

The patent in suit, No. 2,677,990, was issued on May 11, 1954 to Arthur Bienenfeld and Harvey L. Hurwitz and is owned by plaintiff under assignment from the patentees. The patent is for a "Mirror Kit for Home Decoration," designed for a "do-it-yourself" installation, the kit being made and sold by plaintiff. Defendant Wieboldt is charged with having infringed through the retail sale of sectional mirrors manufactured by intervening defendant Marsel. Each defendant filed an answer denying infringement and alleging invalidity of plaintiff's patent, together with a counter-claim. Following a trial requiring a part of two days the district court found for plaintiff and rendered judgment holding the patent valid and infringed, permanently enjoining defendants from further infringement and referring the cause to a master for the determination of damages. This appeal followed, the contested issues being those of validity and infringement.

At the outset it is apparent that the findings of fact adopted by the trial court are wholly inadequate to support the conclusions of law and judgment in this case. The findings are six in number, the first three merely reciting the names and residences of the parties and the fourth that plaintiff is the owner of the patent in suit. The remaining two findings are:

"5. Plaintiff has extensively made and sold Mirror kits made in accordance with said Patent No. 2,677,990 and is prepared to supply the demand therefor.

"6. Defendant, Marsel Mirror & Glass Products, Inc., has made and sold and defendant, Wieboldt Stores, Inc., has sold mirror kits subsequent to May 11, 1954 in accordance with said Patent No. 2,677,990."

We need not elaborate upon their insufficiency to sustain a conclusion of validity and infringement.

The oral testimony was brief and limited to plaintiff's general manager, Hoyne Greenberg, and defendant Wieboldt's secretary, Otto E. Haedike. No expert testimony was taken. Plaintiff also read portions of two discovery depositions, taken in New York, of defendant Marsel's president, Marvin Leopold, and its treasurer, Selton Barlow. In addition there are a number of exhibits in evidence, including the patent in suit and its file wrapper, a sample of the patented kit and the accused mirror set, plaintiff's notice of infringement to each defendant, various advertisements of the parties and a number of prior art patents. On this state of the record, rather than remand the case at this juncture for additional findings, we have read and considered the entire record and are prepared to dispose of this appeal on its merits.

The file wrapper discloses that the original application was filed June 13, 1952 and contained three claims. On December 10, 1952 the application was examined by Acting Examiner Anderson who rejected all three claims, citing as references Dieter Patent No. 2,289,634, dated July 14, 1942, and Downham, et al., British Patent No. 609,691, dated October 5, 1948. The first ground of rejection was that the claims failed to claim statutorily patentable matter. The second ground of rejection was that the claims were indefinite and aggregative, and that each was a mere catalogue of parts "without any coaction between the components being positively provided for." The final ground of rejection was that the claims were in any event unpatentable over the Dieter and Downham patent references.

Following the rejection of the claims the applicants, on May 4, 1953, filed several amendments to each claim in order "more definitely to set forth the cooperation between the parts." On March 3, 1954 Examiner Gonsalves rejected all three claims. Claim 1 was rejected as "vague and indefinite," and Claims 2 and 3 were rejected once more as unpatentable over the same references, Dieter and Downham.

On March 8, 1954, the applicants filed a further amendment canceling Claims 2 and 3. Claim 1 was amended by striking out the last two words in the phrase, "a supply of mastic applied be applied." The patent was then allowed by a third Examiner with only Claim 1 as finally amended, which now reads as follows:

"A mirror kit for home decoration comprising twelve square body members formed of mirror glass, a supply of mastic applied to the backs of said body members for bonding them to an appropriate vertical surface, said mastic being free from ingredients deleterious to mirrors, a plurality of clip tabs comprising a piece of cloth gummed on one side, said cloth

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