Dix-Seal Corporation v. New Haven Trap Rock Company
Citation | 236 F. Supp. 914 |
Decision Date | 12 December 1964 |
Docket Number | Civ. A. No. 8505. |
Court | U.S. District Court — District of Connecticut |
Parties | The DIX-SEAL CORPORATION v. The NEW HAVEN TRAP ROCK COMPANY et al. |
David Goldstein, Jacob D. Zeldes, Goldstein & Peck, Bridgeport, Conn., I. Jordan Kunik, Hartford, Conn., for plaintiff.
Harold M. Mulvey, Atty. Gen., Frederick Neusner, Asst. Atty. Gen., Hartford, Conn., for State of Connecticut.
William D. Templeton, Hartford, Conn., H. Meade Alcorn, Jr., R. Graeme Smith, Alcorn, Bakewell & Smith, Hartford, Conn., for defendant Material Service.
John W. Barclay, Thompson, Weir & Barclay, New Haven, Conn., Charles C. Winchester, W. R. Hulbert, Fish, Richardson & Neave, Boston, Mass., for defendant New Haven Trap Rock.
This is a suit for infringement of a patent for a "HOT BITUMINOUS SURFACE TREATMENT AND PROCESS." The patent, United States Letters Patent No. 2,884,841, was issued to its inventor, Howard E. Dickinson, on May 5, 1959, on an application filed by him on August 21, 1957. The patent was then assigned to the plaintiff pursuant to an agreement executed on October 21, 1958, and recorded in the Patent Office on July 17, 1959. The original defendants are two Connecticut corporations who have admittedly used the patented process for many years. A third defendant, the State of Connecticut, was brought into the action after its inception.
The case arises under the Patent Laws of 35 U.S.C. § 281, and jurisdiction for the court is founded on 28 U.S.C. § 1338. The defendants have counterclaimed under 28 U.S.C. §§ 2201, 2202, seeking a declaratory judgment or decree holding said patent invalid or, if valid, not infringed by defendants.
The defendants have set forth in their answer a series of defenses to the infringement claim. They have challenged the validity of the patent on the ground that plaintiff's invention was "known or used by others in this country, * * * or described in a printed publication * * * before the invention thereof by the applicant for patent, * * *" under 35 U.S.C. § 102(a).1 They have also raised the defense of shop rights in the State of Connecticut which would allow for continued use of the process by the State or its agents. A third defense raised is that the patent is invalid because the process disclosed therein was described in a printed publication and/or was in public use for more than one year prior to the filing of the patent application. It is this double-barreled third defense that the court considers first.2
The relevant statutory section is 35 U.S.C. § 102(b) which provides:
The plaintiff has argued that the section is not applicable here for two reasons:
(1) That for a public use or a printed publication to defeat the validity of his patent it must be identical with the patented process, and that such identity has not been established; and
(2) that as to the uses, they were primarily for the purpose of experimentation.
All United States patent laws are founded upon article 1, section 8 of the Constitution. Congress has been granted the power "to promote the Progress of Science and useful Arts, by securing for limited Times, to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." The first patent act, the Patent Act of 1790, 1 Stat. 109, followed closely its English counterpart and contained the requirement that the invention must not have been "before known or used." Only three years later, however, the clause was enlarged to "not known or used before the application." Patent Act of 1793, 1 Stat. 318. It was this part of the act which was the forerunner of the present § 102(b) and the introduction of that specific time period points up a distinction in the patent act which has often been overlooked. Section 102(b) is concerned with the actions of the inventor once he makes an invention that is novel and patentable. It imposes a condition that the inventor act with deliberate speed in filing his patent application or his rights to a legal monopoly will be barred.
The rationale for this requirement was set forth by Mr. Justice Story in Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 19, 7 L.Ed. 327 (1829):
The dual purposes of preventing exploitation and giving the public the fruits of the discovery as soon as possible were reiterated by the Second Circuit 127 years later in Metallizing Eng'r Co. v. Kenyon Bearing & Auto Parts Co., 153 F.2d 516 (2d Cir.), cert. denied, 328 U.S. 840, 66 S.Ct. 1016, 90 L.Ed. 1615 (1946). To make the objectives of the law unmistakably clear, Judge Learned Hand separated them into two doctrines at p. 520 of 153 F.2d:
Similar discussions may be found in Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871 (1917); Kendall v. Winsor, 62 U.S. 322, 16 L.Ed. 80 (1858); Macbeth-Evans Glass Co. v. General Elec. Co., 246 Fed. 695 (6th Cir. 1917), cert. denied, 246 U.S. 659, 38 S.Ct. 316, 62 L.Ed. 926 (1918); National Cash Register Co. v. American Cash Register Co., 178 Fed. 79 (2d Cir. 1910); Hautau v. Kearney & Trecker Corp., 191 F.Supp. 430 (E.D. Mich.1961).
DEGREE OF IDENTITY REQUIRED BY SECTION 102(b)
The plaintiff's first contention is that there was a lack of identity between the prior uses of the mix and the patented process. The plaintiff not only maintains that § 102(b) requires a greater degree of identity than that required for infringement purposes, but claims that defendants must prove that the public uses were exactly identical. This raises an interesting question concerning the interpretation of the statutory section.
As authority for his contention of law, the plaintiff relies on Draper v. Wattles, 7 Fed.Cas. 1061 (No. 4,073) (C.C.D. Mass.1878). There the court stated at p. 1063:
But in Draper, the court itself noted that there was a substantial and "patentable" difference between...
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