Delaney Patents Corporation v. Johns-Manville

• Citation: 29 F. Supp. 431
• Decision Date: 28 September 1939
• Docket Number: No. 1328—Y.,1328—Y.
• Court: U.S. District Court — Southern District of California
• Parties: DELANEY PATENTS CORPORATION v. JOHNS-MANVILLE et al.

29 F. Supp. 431

DELANEY PATENTS CORPORATION v. JOHNS-MANVILLE et al.

No. 1328—Y.

District Court, S. D. California, Central Division.

September 28, 1939.

Hill, Morgan & Bledsoe and Kenneth K. Wright, all of Los Angeles, Cal., and Oscar A. Mellin, of Oakland, Cal., for plaintiff.

Clair W. Fairbank and Virgil Kline, both of New York City, and Lyon & Lyon, of Los Angeles, Cal., for defendants.

YANKWICH, District Judge.

Plaintiff, as the owner of Letters Patent No. 1660745 by Delaney, issued on September 28, 1928, claims that the product known as "Sanacoustic" tile, manufactured by the defendant Johns-Manville Sales Corporation, infringes claim 1 of the patent which reads: "(1) An acoustic block comprising a shell having a perforated facing and a filling of sound-absorbing substance."

The patent in suit is in the field of acoustic building materials in which progress has been rather slow and in which the prior art is very extensive.

The combination of a perforated facing enclosing a sound-absorbing material to allow penetration of sound to the sound-absorbing material to be there absorbed is old in the art. Mazer in Letters Patent No. 1172379, issued February 22, 1916, provided an open box-like frame enclosing sound-absorbing material. Dillon, in Letters Patent No. 1385741, issued July 26, 1921, combined an exposed perforated fabric membrane covering a sound-absorbing material. Guastavino, in Letters Patent 1440073, issued December 26, 1922, achieves the same combination by using a facing of a porous natural stone having intercommunicating pores opening through the exposed face thereof to a sound-absorbing material. Mazer, in Letters Patent No. 1483365, issued on February 12, 1924, provided a non-refractory block containing regular openings reaching from the surface to sound-absorbing material enclosed in it. Trader, in Letters Patent No. 1554179, and 1554180, issued on September 15, 1925, provided a sound-absorbing material such as cellotex, the face of which was partially perforated allowing the sounds to reach the solid absorbing material back of the perforations.

It is the claim of the plaintiff that Delaney first taught the combination of a self-sustaining sound deflecting shell having a perforated facing and a filling of sound-absorbing substance.

This broad interpretation would make the claims of this patent, especially claim 2, which is worded: "An acoustic block comprising a porous shell and a sound absorbing filling", read on both Guastavino and Mazer No. 1483365. For Guastavino relies on the natural porosity of a stone to obtain his perforated surface, as does Delaney in claim 2. And Mazer No. 1483365 relies on regular perforations obtained artificially to achieve the same end.

If the claim of Delaney is read in conjunction with the disclosure in the specifications, it is evident that what he had in mind is what the claims call an "acoustic block". And to illustrate what he means by "block", he says in the specifications: "the object of this invention is to provide in the construction of such auditoriums or rooms an interior surface in the form of blocks or slabs, which may be laid in similar manner to a brick wall, and which will perform every function of the felt or velour hangings before mentioned and at the same time will insulate such rooms from exterior sounds." (Emphasis added)

The materials which he prefers for the manufacture of the blocks are plaster, cement, fibrous material, wood, terra cotta, "or in some instances, metal". It is evident from this that what he had in mind was shells or blocks in the nature of tile which would be laid on top of one another like bricks. A block is defined in Webster's New International Dictionary (1937): "A piece of wood, stone, or the like, more or less bulky, usually solid, and usually with one or more plane or approximately plane faces, as a block on which a butcher chops his meat; a block by which to mount a horse; children's building blocks, paving blocks".

A shell is defined as: "Any flat, hollow structure, frame work or exterior structure that is frail in construction or that has had its interior removed or destroyed or is regarded as not complete or filled in, as the shell of a house or ship."

Delaney clearly contemplated a hollow structure completely enclosed, in which the sound-absorbing material was sealed. This is the claim which his attorney pressed before the Patent Office, as appears from the file wrapper. Under date of April 19, 1927, he wrote: "The constructions illustrated and described in the patents are manifestly not the equivalents of applicant's block, as the latter comprises a shell having sealed therewithin a sound absorbing filler and one of the walls being perforated. One of the advantages of such construction, is that the blocks are acoustic units and individually have sound absorbing properties and when assembled, may be used to construct enclosures of different sizes. No citation shows or suggests a shell having a perforated face, the perforations opening into the interior, so that the sounds impinge against a sound deadening substance contained in the shell.

"Shaw, Mazer, and Guastavino disclose the broad idea of sound absorbing structures in the form of slabs and wall coverings, but the same are not in any manner the equivalent of applicant's acoustic block construction." (Emphases in text)

When an invention is close to the prior art, the only way to save it from invalidity is to limit it within the narrow scope of what the claims describe. Boyd v. Janesville Hay-Tool Co., 1895, 158 U. S. 260, 267, 15 S.Ct. 837, 39 L.Ed. 973; H. Brinton Co. v. Mishcon, 1937, 2 Cir., 93 F.2d 445. Claims, of course, are to be read in the light of the entire disclosure of the patent. And the proceedings in the patent office, while not always amounting to estoppel, acquire a special significance when a broader claim than is warranted by the language is made later. They evidence the contemporaneous intention of the inventor. See Computing Scale Co. v. Automatic Scale Co., 1907, 204 U.S. 609, 27 S.Ct. 307, 51 L.Ed. 645; Hauser v. Simplex Window Co., 1926, 9 Cir., 10 F.2d 457. This is especially true when we are dealing, as we do here, with what may be called a "paper" patent, — i. e., a patent which never went into practical use. Deering v. Winona Harvester Works, 1894, 155 U.S. 286, 15 S.Ct. 118, 39 L.Ed. 153; Henry v. City of Los Angeles, 1919, 9 Cir., 255 F. 769, 780; Wire Tie Machine Co. v. Pacific Box Corp., 1939, 9 Cir., 102 F.2d 543; Dillon Co. v. Continental Supply Co., 1938, 10 Cir., 98 F.2d 581, 587. The evidence is undisputed that no structure under Claim 1 of the patent, — the patent in suit, — was ever made. No specimen either of a commercial or experimental character has been produced in court or testified to. The only two installations testified to were made in 1929. They were made under claim 2 of the patent.

Under the circumstances, the facts call clearly for a narrow construction, especially when we are confronted with an assertion of infringement made many years after the successful development by the defendant of a structure of its own, while the Delaney application was pending and before the letters patent issued, and which was announced to the trade in a publication dated December 15, 1927, in the very form in which it is made now and which it is claimed infringes Delaney.

The accused construction is produced by the defendant Johns-Manville Sales Corporation as a licensee under the patent of Norris, issued on August 27, 1929.

The two patents were co-pending. The defendants are, therefore, entitled to the presumption that there was no conflict between the two. Boyd v. Janesville Hay-Tool Co., 1895, 158 U.S. 260, 261, 15 S. Ct. 837, 39 L.Ed. 973; Majestic Electric Appliances Co., Inc. v. Hicks, 1928, 9 Cir., 24 F.2d 165; Hoppenstand v. Mack-International Motor Truck Corp., 1937, 3 Cir., 89 F.2d 360. There was no interference. And the attorneys for Norris, during the proceedings, voluntarily called the attention of the Commissioner to Delaney. Norris' claim of invention is stated in claim 4, recently upheld by my colleague, Judge Wm. P. James, in C. F. Burgess Laboratories v. Coast Insulating Corp., 1939, D. C., 27 F.Supp. 956, 958. (See also discussion of the prior art by Judge John C. Knox in Guaranty Trust Co. of New York v. Johns-Manville Corp., 1935, D.C., 14 F. Supp. 792.) It reads: "4. In the combination of sound-absorbing material of high efficiency and...