Dubilier Condenser Corporation v. New York Coil Co.
| Decision Date | 19 July 1927 |
| Docket Number | No. 371.,371. |
| Citation | 20 F.2d 723 |
| Parties | DUBILIER CONDENSER CORPORATION v. NEW YORK COIL CO. |
| Court | U.S. Court of Appeals — Second Circuit |
William F. Nickel, of New York City, for appellant.
Emery, Booth, Janney & Varney, of New York City (Joshua R. H. Potts and George B. Parkinson, both of Chicago, Ill., and Herman Seid, of Philadelphia, Pa., of counsel), for appellee.
Before MANTON, L. HAND, and SWAN, Circuit Judges.
We pass the question whether, when suit is brought upon two patents in one bill, the earlier may be taken as an anticipation of the later. For the sake of argument we shall assume that this is permissible. Nevertheless we think that the issue of invalidity is not so clear in the case at bar as to deprive the plaintiff of any opportunity to try its case.
The structure of the two condensers is concededly in some respects different. The terminals of Van Deventer are the tubular rivet and the lug in contact with the outer casing. Those of Dubilier are the two tubular rivets themselves. The question is whether these acknowledged differences in structure would upon any evidence make Van Deventer's disclosure a patentable improvement over Dubilier's. Verbally his claims in suit, 5 and 6, cannot be made to read on the earlier disclosure. We must therefore say, if we are to affirm the decree, that the changes are such as must inevitably be within the ingenuity of the ordinary artisan. However tempting it may be so to conclude by mere inspection of the two condensers, it seems to us too hazardous.
Van Deventer's condenser may, if one choose, be regarded as no more than a more compact form of Dubilier's. He left out one of the rivets and used the casing as a terminal of opposite polarity. Nevertheless this required an internal rearrangement of the condenser itself, and, while his notion and its execution may seem obvious, we cannot say that it was inevitably within the powers of the ordinary journeyman. Suppose the proof should be that Dubilier's condenser was at once superseded by Van Deventer's, because the art especially needed a condenser of as small size as possible. Must we say that the man who eliminated one rivet and used the casing in its place made no invention? In all inventions the safest test is the condition of the art before and after the putative invention appears. At least that is an immeasurably safer test, when available, than any a priori conclusions as to what is or is not an obvious step. To the...
To continue reading
Request your trial
-
Gatch Wire Goods Co. v. WA Laidlaw Wire Co.
...317; Coca-Cola Co. v. Whistle Co., D.C., 20 F.2d 261; Coffield v. Sunny Line Appliance, 6 Cir., 297 F. 609; Dubilier Condenser Corp. v. New York Coil Co., 2 Cir., 20 F.2d 723; Stromberg Motor Devices Co. v. Holley Bros. Co., D.C., 260 F. 220; Scott & Williams v. Aristo Hosiery Co., D.C., 26......
-
GH Packwood Mfg. Co. v. St. Louis Janitor Supply Co.
...to the state of the art, before and after an alleged invention which is tested in actual practice. Dubilier Condenser Corp. v. New York Coil Co. (C.C.A.) 20 F.2d 723, 725; Minerals Separation v. Hyde, 242 U.S. 261, 270, 37 S.Ct. 82, 61 L.Ed. "An invention is a real thing; a patent is the de......
-
Jacquard Knitting Mach. Co. v. Ordnance Gauge Co.
...the question of the alleged identity of the inventions in this case should properly be reserved for hearing. Dubilier Condenser Corp. v. New York Coil Co., 2 Cir., 1927, 20 F.2d 723. It does appear that the plaintiff's counsel have in the past taken the position that the method of the third......
-
White v. Leanore Frocks, Inc.
...Inc. v. Bronston Bros. & Co., Inc., 2 Cir., 40 F.2d 434) just as we have in the case of mechanical patents. Dubilier Condenser Corp. v. New York Coil Co., 2 Cir., 20 F.2d 723; Frank v. Western Electric Co., 2 Cir., 24 F.2d 642. The validity of a design patent depends upon the same factors a......