Dooley Improvements v. CENTRAL HANOVER BANK & T. CO.

• Citation: 28 F. Supp. 531
• Decision Date: 23 May 1939
• Docket Number: No. 55261.,55261.
• Parties: DOOLEY IMPROVEMENTS, Inc., v. CENTRAL HANOVER BANK & TRUST CO., OF NEW YORK et al.
• Court: U.S. District Court — District of Columbia

28 F. Supp. 531

DOOLEY IMPROVEMENTS, Inc., v. CENTRAL HANOVER BANK & TRUST CO., OF NEW YORK et al.

No. 55261.

District Court of the United States for the District of Columbia.

May 23, 1939.

Drury W. Cooper, of New York City, Harold W. Norman, of Chicago, Ill., and A. K. Shipe, of Washington, D. C., for plaintiff.

William H. Davis, Theodore S. Kenyon, Frederick Bachman, and George E. Faithfull, all of New York City, and Lee B. Kemon, of Washington, D. C., for defendants.

GORDON, Justice.

This is a suit in equity under the provisions of Sec. 4918, R.S. (T. 35, Sec. 66, U. S.C., 35 U.S.C.A. § 66), by Dooley Improvements, Inc, an Illinois corporation, against Central Hanover Bank & Trust Company of New York, a New York corporation, Motor Improvements, Inc., a Delaware corporation, and Ernest J. Sweetland, a citizen and resident of California, jurisdiction of this court being invoked under the Act of March 3, 1927 (44 Stat. 1394, T. 35, Sec. 72a, U.S.C., 35 U.S.C.A. § 72a).

The purpose of this suit is to obtain relief on the part of Dooley Improvements, Inc., the owner and assignee of United States patent No. 1,847,817, issued to Don Cole on March 1, 1932 (and hereinafter referred to as the Cole patent), against the defendants Ernest J. Sweetland, Motor Improvements, Inc., and the Hanover Bank, they being, respectively, the patentee, the exclusive licensee, and trustee under a certain indenture executed by Motor Improvements, Inc., to secure a bond issue by that corporation, of United States patents Nos. 1,594,334 and 1,594,335, issued to Sweetland on July 27, 1926 (and hereinafter referred to as the Sweetland patents). It is alleged that the Cole patent and the two Sweetland patents are interfering patents. The bill prays for a decree adjudging that the Cole patent and the Sweetland patents are interfering patents, that Cole is the first and original inventor of the invention covered by the Sweetland patents, that the Cole patent is good and valid, and that the two Sweetland patents are void.

The answer of the defendants denies that the Cole and Sweetland patents are interfering patents, and avers that the Cole patent is void.

The Cole and Sweetland patents have been involved in litigation in the Sixth Circuit and in the Third Circuit.

Motor Improvements, Inc., sued General Motors Corporation and the A. C. Spark Plug Company, a wholly owned subsidiary of General Motors Corporation, in the United States District Court for the Eastern District of Michigan, charging infringement of five patents, including the two Sweetland patents here involved. Neither Cole nor Dooley Improvements, Inc., was a party to that suit. Judge Tuttle dismissed the suits (which had been consolidated for trial), holding orally that all the patents sued upon were invalid because of anticipation and prior use, but stating that, if valid, all the claims in suit would have been infringed by the devices of the defendants in those suits. The Circuit Court of Appeals for the Sixth Circuit reversed as to the two Sweetland patents here involved, holding, on April 29, 1931, in a lengthy opinion by Circuit Judge Mack, that the Sweetland patents here involved were valid and infringed. Motor Improvements v. General Motors Corporation et al., 49 F.2d 543, certiorari was denied, 284 U.S. 663, 52 S.Ct. 43, 76 L.Ed. 561.

In 1932 Dooley Improvements, Inc., plaintiff herein, brought suit in equity in the United States District Court for the District of Delaware for relief under Sec. 4918, R.S., against Motor Improvements, Inc., a Delaware corporation, and Ernest J. Sweetland, alleging an interference between the same Cole patent and Sweetland patents which are involved herein, and also charging infringement of the Cole patent. Motor Improvements, Inc., was served with process, but no service was had upon Sweetland. Sweetland appeared specially and moved to dismiss because the court had not obtained jurisdiction of his person, he being a resident of California. Motor Improvements, Inc., moved to dismiss the bill, insofar as relief was asked under Sec. 4918, R.S. (interference), on the ground that that section requires that suit be brought "against the owners of the interfering patent" and Sweetland, one of the owners of the allegedly interfering patents, was not before the court. District Judge Nields granted the motions to dismiss the bill, insofar as it was founded upon Sec. 4918, and further granted the motion of Sweetland to dismiss the bill insofar as it charged him with infringement. Dooley Improvements, Inc. v. Motor Improvements, Inc. et al., D.C., 1 F. Supp. 641. This left the suit pending only against Motor Improvements, Inc., and only insofar as a cause of action was set out against it for infringement. Dooley Improvements, Inc., appealed from Judge Nields' order of dismissal, and on July 6, 1933 the Circuit Court of Appeals for the Third Circuit affirmed, Dooley Improvements, Inc. v. Motor Improvements, Inc. et al., 66 F.2d 553, certiorari was denied, 290 U.S. 689, 54 S.Ct. 127, 78 L.Ed. 594.

Thereafter, in March, 1934, Judge Nields denied a motion of Dooley Improvements, Inc., to dismiss its bill without prejudice. 6 F.Supp. 161. On April 14, 1934 Dooley Improvements, Inc., filed a petition for mandamus in the Circuit Court of Appeals for the Third Circuit, praying that the District Court for the District of Delaware be commanded to enter an order dismissing petitioner's bill in that court. On August 15, 1934 the Circuit Court of Appeals denied the writ and dismissed the petition, Dooley Improvements, Inc. v. Nields, District Judge, 3 Cir., 72 F. 2d 638.

On January 27, 1937, in an exhaustive opinion, Judge Nields held the Cole patent to be invalid and dismissed the bill of complaint. Dooley Improvements v. Motor Improvements, Inc., D.C., 18 F.Supp. 340. I am informed by counsel, in oral argument and in the briefs, that the appeal of Dooley Improvements, Inc., from Judge Nields' decision was dismissed by the Third Circuit Court of Appeals, 104 F.2d 1013, because it was not taken within the time prescribed.

The instant suit was filed on January 18, 1933, while the Delaware suit was pending, and on motion of the defendants herein this court, on March 30, 1933, ordered the present suit stayed until final determination of the Delaware suit. On January 9, 1934 the order of March 30, 1933 was vacated and the defendants were directed to answer, which they did on February 8, 1934.

It may be noted at this point that the same counsel who represented General Motors Corporation in the infringement litigation in the Sixth Circuit, above referred to, and later in unfair competition litigation in the same Circuit, concerning the same subject matter (Motor Improvements, Inc. v. A. C. Spark Plug Co., 6 Cir., 80 F.2d 385, reversing D.C., 5 F.Supp. 712), also represented Dooley Improvements, Inc., assignee of Cole, in the Delaware suit, about referred to, and now represent Dooley Improvements, Inc., plaintiff in the instant suit. It further appears that plaintiff's expert Hammer, who testified in the present suit, was being paid by General Motors Corporation (R. 181), and that the witnesses Willard, Prophet and Morrison, whose depositions are in evidence in this case as plaintiff's exhibits, were connected with or employed by General Motors Corporation when they gave their depositions.

Sec. 4918, R.S., upon which the present suit is based, provides as follows: "Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either or both of the patents void in whole or in part, upon any ground, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment."

The first question for determination is whether the Cole patent, on the one hand, and the Sweetland patents on the other, are in fact interfering patents. In order for the plaintiff herein to prevail, it must first show the fact of interference, for upon that fact the right to relief under this statute is based. Westinghouse Electric & Mfg. Co. v. De Forest Radio T. & T. Co., 3 Cir., 21 F.2d 918, 923; Simplex Railway Appliance Co. v. Wands, 8 Cir., 115 F. 517, 520.

It is well settled that for patents to be "interfering" within the meaning of this statute, there must be substantial identity between the claims, interpreting them in the light of the text, specifications, drawings and the prior art. International Signal Co. v. Vreeland Apparatus Co., 2 Cir., 278 F. 468, 470. Otherwise stated, two patents interfere, within the meaning of this statute, only when they claim in whole or in part the same invention. Gold & Silver Ore Separating Co. v. United States Disintegrating Ore Co., 10 Fed.Cas. p. 539, No. 5,508.

Moreover, there is a recognized prima facie presumption that patents are not interfering, that is, that they do not claim the same invention. Lowry v. Cowles Electric Smelting & Aluminum Co., C.C., 56 F. 488, 493, Taft, Cir.Judge. Or, as stated by the Circuit Court of Appeals for the Ninth Circuit, in Norton v. Jensen, 90 F. 415, 421, there is a presumption "in favor of their diversity."

The patents here involved must be considered and compared in the light of the above principles.

The state of the art, the difficulties sought to be overcome, and the solutions advanced by inventors working in this field are concisely set forth in the opinion of...