EJ Brooks Co. v. Stoffel Seals Corporation

• Decision Date: 31 March 1958
• Citation: 160 F. Supp. 581
• Parties: E. J. BROOKS CO., Plaintiff, v. STOFFEL SEALS CORPORATION, Defendant,
• Court: U.S. District Court — Southern District of New York

160 F. Supp. 581

E. J. BROOKS CO., Plaintiff, v. STOFFEL SEALS CORPORATION, Defendant,

United States District Court S. D. New York.

March 31, 1958.

COPYRIGHT MATERIAL OMITTED

Robert Henderson, Francis J. Sullivan, New York City, for plaintiff.

A. Yates Dowell and A. Yates Dowell, Jr., Washington, D. C., Baer, Marks, Friedman, Berliner & Klein, New York City, George H. Klein, New York City, of counsel, for defendant.

DAWSON, District Judge.

This action is for patent infringement. It relates to small metal tags or seals which are attached to poultry for grading, identification, inspection or trademark purposes. The patents involved are:

Ashton Patent No. 2,611,198, owned by defendant; Stelzer Patent No. 2,611,199, owned by defendant; Moberg Patent No. 2,686,379, owned by plaintiff.

The issues essentially are:

(1) Are these patents valid, and

(2) Have these patents been infringed?

Plaintiff presents still another issue:

(3) Does a justiciable controversy exist as to defendant's Stelzer Patent No. 2,611,199?

The parties are corporate manufacturers of poultry seals which are seals adapted to being clipped on to dressed poultry so that the purchaser may, by observing them, ascertain the brand names and, in some cases, inspection or grading information.

The Pleadings

Plaintiff and defendant are competitors and appear, from the testimony, to be the only manufacturers of poultry seals. Plaintiff's original complaint alleged that a controversy existed with respect to defendant's Stelzer patent No. 2,611,199 and asserted that the patent was invalid. Defendant's answer denied that any controversy existed with respect to the Stelzer patent and denied that the Court had jurisdiction. In its amended answer defendant, in its first counterclaim, claimed ownership of the Ashton patent and alleged infringement by the plaintiff. Plaintiff replied with allegations of invalidity of the Ashton patent and denied infringement, and also asserted an estoppel against the defendant because of the lapse of time between the date of the patent and the date of the answer. In a supplemental complaint plaintiff alleged the issuance to it of Moberg Patent No. 2,686,379 and alleged infringement by the defendant. In answer to this supplemental complaint the defendant denied validity of the patent and denied infringement. In defendant's second amended answer a second counterclaim alleged activities of unfair competition by the plaintiff. However, at the trial, it was agreed that the issues relating to unfair competition would not be pressed and that the case would be tried solely on the issues of validity and infringement of the respective patent. However, plaintiff claims that the defendant elected the Stelzer application over the Ashton application (both of which had been assigned to it) during proceedings in the Patent Office and that, therefore, defendant is now estopped from asserting that the Ashton patent had priority over the Stelzer patent.

Parties and Jurisdiction

1. Plaintiff, a New Jersey corporation, has been engaged for approximately 75 years in marketing and selling various types of metal seals, and for a number of years made and sold such seals for use on poultry. Defendant, a New York corporation, has been making and selling such metal seals, including seals for use on poultry, some ten years.

2. This Court has jurisdiction of this action under 28 U.S.C. §§ 1338, 2201. Jurisdiction might also be founded on diversity of citizenship since the amount in controversy exceeds $3,000.

Discussion Is the Ashton Patent Valid?

This patent was issued September 23, 1952. The inventor is Ernest Ward Ashton of Ottawa, Canada, who assigned the invention to the defendant Stoffel Seals Corporation.

The inventor said in the patent specifications that in the past wing tags for attaching to poultry had been popular; that they were usually so made that they could be secured to the wing of the bird but were unsuitable for clipping to the breast and that

"Recently, however, there has been a demand for a breast tag, that is to say, a tag that may be secured to the breast of the fowl carcass rather than the wing. Wing tags are not satisfactory for that purpose for the reason that when secured to the breast they stand more or less erect whereas a satisfactory breast tag should lie flat on the breast."

The essential nature of the Ashton patent is set forth in Claims 6, 7, 8 and 9, of which claims Claim No. 6 is representative. This claim reads as follows:

"6. A tag structure comprising a main portion having an aperture, a locking tongue having a tip, said tongue extending normally at an angle with respect to said main portion and being integral therewith, said tongue comprising two sections joined to each other by a bendable knee, whereby said two sections form a toggle, which when moved against said main portion flattens out and lengthens to thereby bring about engagement of said tip of said tongue with said aperture."

Plaintiff urges that the patent is invalid (1) because it was anticipated in the prior art, (2) because it is indefinite, (3) because defendant elected Stelzer as the first inventor, (4) because of lack of invention and (5) because the claims were presented to the Patent Office with deceptive intent.

Defendant claims that the "invention" was that of Ashton who was the "first to conceive of embodying a toggle into a poultry tag thereby producing a seal which not only met long standing needs but which was substantially cheaper to produce."; or that "the invention was the embodiment in the seal of a toggle which, when operated, clamps the material into the seal."

The evidence would indicate that the old type poultry seals, prior to Ashton, were made of a piece of metal which was bent over and had a point which extended inward when the seal was pinched together, which point went through the skin of the fowl and then frequently into or through an aperture where it was bent over and thereby locked. What Ashton did was to include the mechanical elements which comprise a toggle. Webster's New Collegiate Dictionary defines a "toggle joint" as

"A device consisting of two bars jointed together end to end but not in line, so that when a force is applied to the knee tending to straighten the arrangement, the parts abutting or jointed to the ends of the bars will experience an endwise pressure."

Thus, instead of a tag where one portion is bent over on part of another with a point transfixed to the substance which is tagged, the Ashton patent as the upper part of the tag has a piece which is bent at the middle (thereby forming a knee) so that when pressure is applied to this knee joint it pushes the end out so as to engage with the rim or an indentation of the lower part and this engages with the substance to be tagged. It is claimed that pressure on the knee forces the end out and creates the toggle action.

It was the addition of the toggle action which resulted in the patent being allowed by the Patent Office as an advance over the previous art, as appears from a letter of the Patent Examiner, dated July 28, 1952, in Plaintiff's Exhibit 4.¹

This might seem like a small difference in the construction of the tag, but the evidence is sufficient to convince the Court that never before the Ashton invention had the toggle principle been used in poultry tags or similar tags. The prior art mentioned in the action will be discussed later in this opinion.

If we assume that the change made by Ashton displayed originality, the next question to consider is whether it displayed invention in the sense of meeting a need in the industry in which it was to be applied. Prior to the Ashton patent numerous patents had been taken out on various types of metal seals. Plaintiff company itself had taken out several hundred patents.

The officers and employees of both plaintiff and defendant had admittedly been working for many years prior to 1952 to produce an improved seal for use on poultry. They were seeking a seal, inexpensive to produce, which could be applied to the chicken by the use of one hand and which could be removed easily by a housewife. Substantially all the seals used up to that time had been clip type seals which had two sides bent together to hold between them the object which was to be sealed. The Ashton patent was not merely a clip since it embodied mechanical elements which comprised a toggle, which presupposes a knee joint comprising two struts so connected that they may be brought into a straight line when force is applied at the joint, thus producing great endwise pressure which clamps the skin or breast of the chicken against the edge of the clip. Thus, instead of the tag piercing the skin of the fowl it pinches it against the rim of the cup-shaped portion. The application of this seal to the fowl is described in column 2, lines 24-45, of the Ashton patent.²

The Court finds that the Ashton seal had certain advantages for which the industry had been looking and had not found in earlier seals where the pin turned inwardly and where there was no toggle action. Since the introduction of this Ashton seal the sales of the new type have increased tremendously. The testimony of Mr. Stoffel, although an interested party, is nevertheless clear and convincing. He pointed out that the industry had been searching for a seal which could be attached rapidly and easily and which could be manufactured at a low cost; and that up to the time of the Ashton seal all seal manufacturers apparently thought that it was necessary to have a prong which would pierce the skin and be received in a lock on the opposite side of the skin. He also pointed out that the Ashton seal, which employed a toggle pinching action rather than a piercing action, could be easily attached to any part of the fowl, and this by the use of one hand, thus saving labor and time;³ and that in the toggle seal the area of the toggle back is less than that of the front of the...