Cridlebaugh v. Rudolph

• Decision Date: 20 November 1942
• Docket Number: No. 7904.,7904.
• Parties: CRIDLEBAUGH v. RUDOLPH.
• Court: U.S. Court of Appeals — Third Circuit

131 F.2d 795 (1942)

CRIDLEBAUGH v. RUDOLPH.

No. 7904.

Circuit Court of Appeals, Third Circuit.

Argued May 6, 1942.

Decided November 20, 1942.

William S. Hodges, of Washington, D. C. (A. Millard Taylor, of Camden, N. J., on the brief), for appellant.

Richard J. Cook, of Seattle, Wash. (Boyle & Archer, and Frederick P. Greiner, all of Camden, N. J., on the brief), for appellee.

Before BIGGS, JONES and GOODRICH, Circuit Judges.

JONES, Circuit Judge.

The plaintiff sued to restrain the defendant's alleged infringement of certain patents and, further, to redress other injury said to have been inflicted by the defendant. To the extent that the case is one arising under the patent laws of the United States, the District Court's jurisdiction is invoked upon that basis.

The additional causes of action averred by the complaint are for the defendant's alleged infringement of a common law trade-mark of the plaintiff and for the defendant's alleged unfair competition. Jurisdiction of each of these causes is expressly predicated upon the diversity of the citizenship of the parties.

The defendant's answer, in addition to traversing the complaint in respect of the causes of action therein set forth, pleads a counterclaim for damages for an alleged libel of the defendant by the plaintiff. Here, also, the court's jurisdiction is laid upon diversity of citizenship.

Upon a trial of the issues, the District Court held the patents in suit valid and infringed by the defendant in the particulars charged; that the defendant had also infringed the plaintiff's common law trade-mark; and that the manner of the defendant's advertising and marketing of his product constituted unfair competition. The trial court accordingly entered the decree now appealed from, which includes a dismissal of the defendant's counterclaim.

The patent infringements averred in the complaint and found by the court below involve only three of the eleven claims of Patent No. 19,562, being a reissue to one Jacob Jones on May 7, 1935, and whereof the plaintiff is the owner, and one of the six claims of the Cridlebaugh Patent No. 2,079,107 issued to the plaintiff on May 4, 1937, for an improvement in Jones' alleged invention. The devices covered by the patents relate to masks or blinders to be secured upon the beaks of fowls for the purpose of preventing them, by obstructing their forward vision, from picking the feathers or flesh of other fowls, — a destructive practice prevalent under certain conditions and known as "cannibalism". However, in the view we take of the patents it becomes unnecessary to deal with specific claims. For reasons which will hereinafter appear, it is our opinion that both patents are invalid and, therefore, incapable of supporting a charge of infringement with respect to any of their claims.

The Jones device consists of two metal plate members which, in flat extension to each other, are pivoted together by an eye rivet at their upper and inside portions. The lower inside portions of the plates are cut away so as to straddle the beak of a fowl when the plates are placed on the beak in an upright position. Extending rearwardly from the cut-out portions of the plates are lugs designed to lie along and against the beak on either side. Each lug is pierced with a hole, the two holes being in alignment. A pin to secure the device to the beak of a fowl is inserted in the hole of one lug, then passed through the breather openings in the beak, and finally through the hole of the opposite lug. Above the lugs an elastic member is attached transversely from one plate to the other to induce the plates toward each other at the lugs and thus, by the pressure of the lugs against the beak, to maintain the mask in an upright position on the beak. The protruding end of the pin is bent over to hold the pin in place.

Jones first manufactured and marketed a mask or blinder device and then made his original application for a patent. Cridlebaugh, after learning of the Jones device and after having examined it, acquired a 49% interest in it prior to the grant of the original patent to Jones. Subsequently, Cridlebaugh became and now is the sole owner of the Jones patent. In the course of Cridlebaugh's investigation prior to the grant of the original Jones patent, he became convinced that broader claims should be applied for and so informed Jones. Nothing however was done in that regard until a month after the grant of the original patent when application for the reissue was made at Cridlebaugh's suggestion. What the reissue application served to inject was the matter whose omission from the original application had been the subject of discussion and consideration between Cridlebaugh and Jones prior to the grant of the original patent. In view of the facts just recited, which appear from the plaintiff's own testimony (Appellee's Brief, p. 10; Appendix, pp. 68a, 69a), it is indeed difficult to see how Jones was in position to make the requisite oath to a reissue application, viz., that the matter omitted from the original application was omitted therefrom through "inadvertence, accident, or mistake", etc. We recently had occasion to appraise the fatal inefficacy of an oath to a reissue application where, by reason of the admitted or undisputed circumstances, it could not justifiably be asserted that the alleged omission from the original patent application was the result of inadvertence, accident, or mistake. See General Radio Co. v. Allen B. DuMont Laboratories, Inc., 3 Cir., 129 F.2d 608, 611.

But, beyond that, the reissue application in this case specifies merely a functional operation for the pin or securing member which the original application not only did not contemplate but in reality negatived. The intent and effect of the added paragraph of specification¹ in the reissue application was to import to the pin or securing member a pivotal function in the rotation of the pin from the tipping of the top of the mask forwards or backwards due to the movement of the fowl's head, thereby causing removal of the dust and dirt which would otherwise collect on the pin where it enters and leaves the breather openings in the beak. Of the new claims of the reissue patent here involved (Nos. 5, 7 and 8),² each defines such pivotal function for the pin or securing member; and it is that function upon which the plaintiff relies especially for invention and as support for his charge of infringement. But, even if the claims could be considered as being for something other than a function, the original Jones application, quite understandably, neither specified nor claimed rotary action for the securing member.

Concededly, the specifications and claims of Jones' original application did refer to a pivot, but it was not the pivot furnished by the pin or securing member. The pivot originally referred to was the hinge effect of the eye rivet which fastened the two plates together. The purpose, as well as the function, of that pivot was to allow the plates to be expanded at the bottom for placing the mask upon the beak of a fowl and then to allow them to be drawn together by the tension of the elastic member, thus causing the lugs to press firmly on either side of the beak in actual opposition or resistance to any pivotal action of the pin or securing member. The present is not a case of including in the reissue application something inherent or incidental to the device originally disclosed. It is precisely the opposite and is an attempt to include an idea antagonistic to the disclosure of the original application. Manifestly, therefore, the reissue seeks to cover with patent protection a claim which was no intended part of the original specifications. And that, the statute does not permit.

The reissue of patents is authorized by R.S. § 4916, 35 U.S.C.A. § 64, which, as amended, provides in part as follows: "Whenever any patent is wholly or partly inoperative or invalid, by reason of a defective or insufficient specification, * * * if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, the commissioner shall, on the surrender of such patent * * * cause a patent for the same invention, * * * to be reissued * * *; but no new matter shall be introduced into the specification, * * *."

Patent Office decisions relevant to the existence of grounds for a reissue, when based on disputed questions of fact, are of course conclusive. But where it is apparent from the face of the records that no ground for reissue existed, the courts may so rule as a matter of law. Yale Lock Manufacturing Company v. Berkshire National Bank, 135 U.S. 342, 378, 379, 10 S. Ct. 884, 34 L.Ed. 168; Smith v. Goodyear Dental Vulcanite Company, 93 U.S. 486, 499, 23 L.Ed. 952; Seymour v. Osborne, 11 Wall. 516, 78 U.S. 516, 543, 544, 20 L.Ed. 33; Burr v. Duryee, 1 Wall. 531, 68 U.S. 531, 571, 17 L.Ed. 650. See, also, general discussion 2 Walker on Patents (Deller's Ed.) § 326. Whether the original patent was "wholly or partly inoperative or invalid" and whether the reissue is for the "same invention" are matters for the court to determine upon examination of the original and the reissue patents. In James v. Campbell, 104 U.S. 356, 370, 26 L.Ed. 786, 791, the Supreme Court said that "When a patent fully and clearly, without ambiguity or obscurity, describes and claims a specific invention, complete in itself, so that it cannot be said to be inoperative or invalid by reason of a defective or insufficient specification, a reissue cannot be had for the purpose of expanding and generalizing the claim so as to make it embrace an invention not described and specified in the original." See, also, Corbin Cabinet Lock Company v. Eagle Lock Company, 150 U.S. 38, 42, 43, 14 S.Ct. 28, 37 L.Ed. 989; Russell v. Dodge, 93 U.S. 460, 463, 464, 23 L.Ed. 973. The exaction of the requirement that an original patent and a reissue must cover one and the same invention...