Charles Peckat Mfg. Co. v. Jacobs

• Decision Date: 13 March 1950
• Docket Number: No. 9846.,9846.
• Citation: 178 F.2d 794
• Parties: CHARLES PECKAT MFG. CO. et al. v. JACOBS.
• Court: U.S. Court of Appeals — Seventh Circuit

178 F.2d 794 (1949)

CHARLES PECKAT MFG. CO. et al. v. JACOBS.

No. 9846.

United States Court of Appeals Seventh Circuit.

December 12, 1949.

Writ of Certiorari Denied March 13, 1950.

Bernard A. Schroeder, Jules L. Brady, Chicago, Illinois; Bradford Wiles, Chicago, Ill. (Schroeder, Merriam, Hofgren & Brady, Chicago, Ill., of counsel), for appellants.

I. Irving Silverman, Chicago, Ill., for appellee.

Before MAJOR, Chief Judge, and DUFFY and LINDLEY, Circuit Judges.

LINDLEY, Circuit Judge.

This suit was instituted by Emma Peckat, owner of the patent in suit and widow of the patentee, Charles Peckat, and Charles Peckat Manufacturing Company, exclusive licensee, for infringement of Patent 2,180,909, issued November 21, 1939, relating to outside sun visors for automobile windshields. The device charged with infringing is manufactured by R. S. B. Manufacturing Company, Inc., and sold by defendant Jacobs. The R. S. B. Company has assumed and is financing the defense.

On October 2, 1946, Rose and Siegal, representatives of R. S. B., entered into a license agreement with the plaintiff manufacturing company, paying in advance the agreed minimum royalty for three months. When no further royalties were remitted, plaintiffs, upon inquiry, were advised that R. S. B., had had a fire loss and would appreciate aid in getting started again. Thereupon, plaintiffs excused payment of royalties for one month. As time passed and no further royalties were forthcoming, plaintiffs cancelled the license, April 17, 1947. However, R. S. B., continued manufacturing the device and selling it in Chicago through Jacobs.

The trial court adopted submitted findings and conclusions that the claims in suit were void but that defendant's device would infringe if the claims were valid. On this appeal, we are not concerned with any question of infringement, for defendant admits that he is manufacturing the patented device. Our sole question is as to validity.

Sun visors upon automobiles are old. In the earlier years of the automobile, cars were largely of the open touring type, with upright standards supporting the tops. Certain visors, attached to the upright posts or to auxiliary members attached to and parallel with such posts, were prevalent in those days. Closed cars grew in number, as they came to be less expensive, and their fronts, that is, the windshields, eventually came to be streamlined or slanting.

With the coming of the closed cars, sun visors which had been used on touring cars practically disappeared, largely because of the difficulty encountered in attaching them without drilling holes in the body and in fitting them to automobiles which had become more and more streamlined. Peckat, an engineer and automobile dealer, became interested in the problem of supplying visors which could be attached without holes in the body of the car or without welding or riveting. His experiments eventually resulted in a flanged bracket, which is tapered down outwardly and has a concealed wedge-shape member which effects a lost motion connection with the flange bracket and, when wedged into its proper position, clamps the device firmly on the gutter of the automobile without perforating the body or welding the attachment to it. He found that the tiny gutters at the edge of the windshield frame were sufficiently rigid and strong to withstand the strain of holding a visor firmly at high speed; that the clamp he devised to adhere to the gutter would not work loose when subjected to the vibration of a moving car; that there was sufficient room to attach a clamping device to grip the opposite upper and lower faces of the gutter so that the gripping parts could be wedged directly against the strongest part of the gutter and thus avoid perforating the gutter or having exposed metal which might cause rusty streaks on the car. In his patent he specified in detail a bracket which successfully solved the problems and resulted in an effective useful practical visor and attachment.

The court found that his patent was anticipated by prior patents and prior uses and, in the alternative, that if the patent is not directly anticipated, it required only the knowledge of a skilled mechanic to conceive the structure described. It found also that the claims in suit are too broad, in that they do not describe the structure with the particularity required by the statute and claim more than the patent shows is novel, if there is novelty; that Claim 7 is invalid in that it is functional in character and describes an inoperative device; that the commissioner of patents did not comply with the statute, and that the examiner in charge did not properly examine the application. Upon appeal plaintiffs urge that there is no evidence to support the finding of invalidity and that the conclusions of law are erroneous.

In its brief, defendant says Peckat "may have invented something." He suggests that there may have been novelty in Peckat's idea of constructing a bracket with a wedging member slidably mounted on the interior of a body having a flanged guide along the top for one edge of the wedge to engage there against, and having a flanged lower edge to clamp under the gutter with the opposite side of the flange engaged in the crook of the gutter so that, when it is desired to tighten the device to the gutter, the wedge is driven into wedging engagement with the gutter, and in providing the brackets so that each could separately and independently be secured to the gutters on opposite sides of the windshield. Though expressing doubt that this comprises invention, he assumes, for the sake of argument, that novelty rests in the structure but that the claims are insufficient.

After careful analysis of the evidence of the prior art, we are convinced that the assumption of the defendant, for the purpose of argument, is a correct assumption as a matter of fact and that Peckat achieved invention. Defendant asserts, however, that the claims are so broad as to cover the prior art and, therefore, cannot be valid as claims for a secondary invention, as distinguished from the prior art.

Claims 1, 2, 6 and 7 are in suit.^* They are preceded by explicit description of and specifications for the device and each refers to this specific description and incorporates it. Thereby we think the claims are limited to the specific device described, even though their language, without reference to the specifications, might import a wider field. Thus, in Jones v. Evans, 7 Cir., 215 F. 586, 589, this court said: "The claim in suit does not name all the various means shown in the specifications and drawings for connection of the means or elements named therein to make them operative in the combination; but we believe the claim is nevertheless sufficient for enforcement, on reference to the specifications. It is to be interpreted to include such connections and relations of the several means of the combination which are named, as implied therewith to make them operative, in conformity with the specifications." We added: "We held in case No. 1995, Horton Mfg. Co. v. White Lilly Mfg. Co., 7 Cir., 213 F. 471, * * * that while claims do not in terms call for certain features of the invention — `those features may, for the purpose of restricting the claim so that it shall meet the requirements of the inventive idea, be gathered from the specification' — citing Klein v. Russell, 19 Wall. 433-466, 22 L.Ed. 116; Burke v. Partridge, 58 N.H. 349, 351; Jones v. Barker, C.C., 11 F. 597, 600; Walker on Patents, § 185."

In Standard Oil Co. v. Globe Oil & Refining Co., 7 Cir., 82 F.2d 488, at page 496, this court said: "It is required by Rev.St. § 4888, 35 U.S.C.A. § 33, that the application shall contain `a written description of the device, and of the manner and process of making, constructing, compounding, and using it in such full, clear, concise, and exact terms as to enable any person, skilled in the art or science to which it appertains or with which it is most nearly connected, to make, construct, compound, and use the same.' The object of this is to apprise the public of what the patentee claims as his own, the courts of what they are called upon to construe, and competing manufacturers and dealers of exactly what they are bound to avoid. Grant v. Raymond, 6 Pet. 218, 247, 8 L.Ed. 376. If the description be so vague and uncertain that no one can tell, except by independent experiments, how to construct the patented device, the patent is void." We added: "In the interpretation of the limits of patent claims it is proper to consider the specifications, for at times vague and general language in the claims may be interpreted and sufficiently limited by the specification, but vague and general language in the specification is limited by the claims. The limitations, however, must always be fixed somewhere within the degree of definiteness hereinbefore mentioned."

In Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, at page 510, 37 S.Ct. 416, at page 418, 61 L.Ed. 871, L.R.A.1917E, 1187, Ann.Cas.1918A, 959, the court said: "The scope of every patent is limited to the invention described in the claims contained in it, read in the light of the specification. These so mark where the progress claimed by the patent begins and where it ends that they have been aptly likened to the description in a deed, which sets the bounds to the grant which it contains."

In Westinghouse v. Boyden Power-Brake Co., 170 U.S. 537, at page 558, 18 S.Ct. 707, at page 717, 42 L.Ed. 1136, the court said: "* * * the claim is for a triple-valve device, etc., for admitting air from the main air pipe to the brake cylinder, `substantially as set forth.' These words have been uniformly held by us to import into the claim the particulars of the specification, or, as was said in Seymour v. Osborne, 11 Wall. 516, 547, 78 U.S. 516, 547 (20 L.Ed. 33, 40): `Where the claim immediately follows the description of the invention, it...