Dollac Corporation v. Margon Corporation

• Decision Date: 11 July 1958
• Docket Number: Civ. No. 603-56.
• Citation: 164 F. Supp. 41
• Parties: DOLLAC CORPORATION, Plaintiff, v. MARGON CORPORATION, Defendant.
• Court: U.S. District Court — District of New Jersey

164 F. Supp. 41

DOLLAC CORPORATION, Plaintiff, v. MARGON CORPORATION, Defendant.

Civ. No. 603-56.

United States District Court Third District New Jersey.

July 11, 1958.

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Kirschstein, Kirschstein & Ottinger, New York City, Harry B. Rook, Newark, N. J., Gugenheimer, Untermeyer & Marshall, New York City, of counsel, for plaintiff.

James & Franklin, New York City, Paul, Weiss, Rifkind, Wharton & Garrison, New York City, Steelman, Rafferty & Rowe, Newark, N. J., of counsel, for defendant.

WILLIAM F. SMITH, District Judge.

This is primarily and essentially a civil action under the patent laws, particularly Sections 281, 283 and 284, of Title 35 U.S.C.A., and the issues are those usual in litigation of this character. The plaintiff filed a complaint in which it charged the defendant with the infringement of Patent No. 2,753,660, of which the plaintiff, as the assignee of one Harry Brudney, is admittedly the owner. The defendant filed an answer and counterclaim; in the former it denied infringement and challenged the validity of the patent, and in the latter it introduced two new causes of action. The defendant, in the first count of the counterclaim, charged the plaintiff with the infringement of Patent No. 2,657,500, of which the defendant, as the assignee of one Hans W. Samolewitz, is admittedly the owner. The plaintiff filed a reply and counterclaim; in the former it denied infringement and challenged the validity of the patent, and in the latter it introduced two new causes of action. We shall first direct our attention to the causes of action which are predicated on the patent laws; the other causes of action will be considered separately.

When the plaintiff opened its case it frankly admitted that claims 1, 2 and 3 of its patent, No. 2,753,660, supra, were invalid, and consented to an appropriate adjudication on the issue raised by the defense of invalidity. Such an adjudication will be embodied in the final judgment. There remained for determination the issues raised by the charge of infringement made against the plaintiff by the defendant and the defenses thereto interposed by the plaintiff. These issues were narrowed by the defendant, which predicated its charge of infringement on claims 1 to 4, inclusive, and claim 20 of the patent in suit. These issues were tried by the Court.

Patent In Suit

The patent in suit, No. 2,657,500, supra, covers an artificial eye, which may be mounted in the head of a doll. The invention is defined broadly in claims 3 and 4, which are typical. The former defines the invention as follows: "A finished doll eye intended for use in a lightproof enclosed doll head, said eye having pupil, iris, and eyeball portions all made out of a single body of transparent material, said eyeball portion being coated white outside the iris portion, said pupil and iris portions both being devoid of extraneous colorina material and being unobstructed by any part of the eye in a direction axially of the pupil and iris portions, said pupil portion having a smooth, flat, relatively non-reflective back surface which appears black, and said iris portion having a roughened or serrated back surface which reflects light of a color similar to the color of the transparent material." (Emphasis by the Court.) It will be observed that this definition, insofar as it relates to the iris portion, is sufficiently broad to cover any iris component, the rear surface of which is serrated or grooved.

The invention as defined in claim 4 is identical except for one element, to wit, the iris component. The language of claim 4, between line 63 of column 8 and line 3 of column 9, is identical with the language of claim 3. The iris component of claim 4 is further defined as follows: "said iris portion having a frustro-conical back surface, and the serrations on the back surface of the iris portion being more closely spaced near the center or pupil portion than at the periphery of the iris portion in order to provide a graduated tinting of the iris, with the iris darker near its periphery and lighter near the pupil." (Emphasis by the Court.) It will be observed that the invention of claim 4 is narrow in that it embodies, in addition to the other elements, a frustro-conical iris component of the type described; it must be interpreted as so limited.

We see no reason to quote at length claims 1 and 2 of the patent in suit. Claim 1 is the counterpart of claim 3, except that it is limited to the lens component as defined in claim 3, to wit, the iris and pupil portions. Claim 2 is a counterpart of claim 4, except that it is likewise limited to the lens component as defined in claim 4. We should note at this time that there was clearly no invention in the utilization, either as a separate unit or as an integrally molded unit, of the "eyeball portion" described in claims 3 and 4; it will be hereinafter seen that this element was admittedly old in the art. The introduction of the acetate plastics as a substitute for metal led to their use in the industry and the adoption of the integrally molded artificial eye. We see no reason to quote claim 20; it defines the same invention as claim 3.

The specification of the patent in suit, lines 27 to 42, inclusive, of claim 1, states: "A more particular object" of the invention "is to simplify the provision of the desired black pupil portion. I have discovered that a deep black pupil portion may be obtained without using black coloring at all. Instead the pupil portion of the lens is made transparent, and the eye is employed with a doll head which is otherwise light-proof so that it has a dark interior. The back of the pupil portion is made non-reflective to incident light. What is wanted is total absorption of light. In simple form the pupil portion is made smooth and flat, and exposes the black interior of the head. The elimination of the manual operation of applying black coloring to the pupil area is a significant factor in reducing the cost of manufacture of the eye." (Emphasis by the Court.) When the claims in suit are read in the light of the specification it is apparent that an essential element of the invention is a pupil component, the rear surface of which is smooth and flat, and, as a consequence, relatively non-reflective.

The specification of the patent in suit, line 43 of column 1 to line 9 of column 2, inclusive, states: "A further object is to simplify the coloring of the iris portion of the eye. I have found that a brown eye may be obtained by tinting the transparent material with brown; a blue eye by tinting it with blue; and a gray eye by letting the material remain clear or untinted. The back of the iris portion, unlike the back of the pupil portion, is roughened or serrated to provide it with facets which reflect incident light. The resulting reflection of light makes the brown or blue tint visible despite the black interior of the doll head, and without requiring the use of extraneous coloring material on either the front or the back sides of the iris portion. I have further found the presence of a slight brown or blue tint in no way marks the deep black appearance of the pupil." (Emphasis by the Court.) When the claims in suit are read in the light of this specification it is clear that an essential element of the invention is a suitably tinted iris component the rear surface of which is serrated or grooved; this is true whether the rear surface is either conical, as disclosed by the prior art, or frustro-conical, as described in claims 2 and 4, and as disclosed by the prior art.

The specification of the patent in suit, line 30 to line 43 of column 2, inclusive, states: "Another object of the present invention is to provide the desired gradation of color between the pupil and the periphery of the iris without necessitating the use of printed color disks or other extraneous means. This is done by increasing the number of light reflecting facets per unit of area near the pupil compared to the periphery. Assuming serrations are employed, the spacing between the serrations is made much greater near the periphery than it is near the pupil. Inasmuch as the color of the iris depends upon the reflection of incident light, and the reflection is greater at the center, the color is lighter at the center and darker near the rim." (Emphasis by the Court.)

The descriptive language quoted in the foregoing paragraph is particularly significant when read together with and in the light of the explanation contained in the specification, line 71 of column 4 to line 5 of column 5, inclusive. It is therein stated: "Moreover, from inspection of Fig. 7, it will be seen that because of the generally radial nature of the serrations they are more closely spaced near the pupil than near the periphery. There is accordingly a greater intensity to light reflection near the pupil than near the periphery. In consequence the color of the iris portion is darker near the periphery, and this is desirable because it is a characteristic of the natural eye." (Emphasis by the Court.)

This we construe as a frank admission by the inventor that where radial serrations are employed they are "more closely spaced near the center or pupil portion than at the periphery" of the iris portion, a feature of the invention as defined in claims 2 and 4. We might add that it couldn't be otherwise. A pertinent example is found not only in Fig. 7 but also in Fig. 18 of the specification, described therein in lines 40 to 55, inclusive, of column 6. It is therein stated: "the straight line radial serrations shown in Fig. 18 may be employed on a frustro-conical iris portion as well as on a flat iris portion." It follows that "a greater intensity to light reflection near the pupil" results from either the radial serrations or the semi-helical serrations. This is admitted in the foregoing quoted explanation. (See also the testimony of the inventor, at pages 327 et...