Ely Norris Safe Co. v. Mosler Safe Co., 81.
| Decision Date | 09 January 1933 |
| Docket Number | No. 81.,81. |
| Citation | 62 F.2d 524 |
| Parties | ELY NORRIS SAFE CO. v. MOSLER SAFE CO. |
| Court | U.S. Court of Appeals — Second Circuit |
Warfield & Brown, of New York City (F. P. Warfield and Donald L. Brown, both of New York City, and George S. Schmidt, of York, Pa., of counsel), for plaintiff-appellant.
Henry Van Arsdale, of New York City (Drury W. Cooper, Alexander Pfeiffer, and Allan C. Bakewell, all of New York City, of counsel), for defendant-appellant.
Before MANTON, L. HAND, and CHASE, Circuit Judges.
The defendant appeals from a decree which holds United States patents No. 827,351, and No. 909,568, relating to safes, valid and infringed, and the plaintiff appeals from that part of the decree which dismissed the complaint for unfair competition resulting in loss of sales of safes. The issues of patent infringement are the usual ones of validity and infringement with the plea of laches for failure to prosecute diligently. The unfair competition allegations of the complaint are unusual for they are based upon the claim of misrepresentation of defendant's product in competition; the plaintiff claiming the sole right to sell a type of safe claimed to be protected by its patents. Patent No. 827,351 expired July 31, 1923, and patent No. 909,568 on January 12, 1926.
The bill of complaint was filed March 20, 1919. The patents relate to a construction for safe doors whereby greater difficulty and danger is presented to one attempting to open or break through the door by means of an explosive such as nitroglycerine. The doors are provided with hollow or empty spaces or chambers, called explosion chambers. They divide the door into inner and outer portions, and the outer portion is thinner than the inner portion. The specifications of the first patent state that "my invention obviously includes the use of any desired number of door portions separated in any desired manner and graded as may be deemed best to resist operations likely to be conducted against it." The function is stated as follows:
In the first patent, the explosion chamber is "preferably partially or wholly open adjacent to the circumference of said door," but if closed, it should be by a wall of such nature that any explosive introduced between the door and the safe body will act first in the chamber and against the side walls thereof, rather than between the safe body and the periphery of the door. The second patent was applied for nearly two years after the first issued. It is for a nonpreferential covering strip about the explosion chamber. The novelty is said to be a "readily destructible wall" closing the periphery of the chamber in the door.
The first patent states the safe body may be of any shape or material, and consequently the door may be of any shape, round or oblong. That patent also states that the recesses in the door have another function of "heat-resisting or insulating means to protect the contents of the safe." Claims 1, 2, and 6 of the first patent show, as their essential feature, a chamber open at its periphery, and the chamber is described functionally as an explosion chamber. The thin metallic strip or readily destructible wall to close the periphery chamber, referred to in the second patent (claims 1 to 5) is disclosed but not referred to or claimed in the first patent. The court below pointed out, with good reason, that explosion chamber doors, if advantageous, as far as burglary-proof characteristics are concerned, became less important when the acetylene torch came into use.
Tests of the usefulness of these explosion chambers were made in 1909 on a manganese steel safe. For a period of two hours charges were inserted around the door and detonated, and it resulted in the nitroglycerine blowing off a section of the outer portion, and the inner portion of the door remained intact, being forced violently into the tapering door jamb. Another test was made in 1911 with somewhat the same results. In each test it took a heavy charge to blow off the outer door.
The first patent is for a preferred construction. The patent says:
"These chambers or recesses, while preferably partially or wholly open adjacent to the circumference of said door, (see Fig. 5,) should, if closed, at least be by a wall of such nature that any explosive introduced between the door and the safe-body will act naturally or first in the chambers or recesses and against the side walls thereof rather than between the safe-body and the periphery of the door."
The second is for a destructible wall closing the periphery of the open space. The first was issued July 31, 1906, and on March 28, 1908, the patentee filed the application for a second patent, and the only difference is in the respect stated now to be "the preferred embodiment of my invention. * * *" The second patent is for the same invention, and is an alternative and inferior form. It is the one with a destructible wall closing the periphery of the open space. The first patent disclosed this inferior or alternative construction, but did not claim it. That which is described and not claimed in a patent is abandoned to the public unless the inventor before the grant of the first patent has on file an application asserting the same invention. Underwood v. Gerber, 149 U. S. 224, 231, 13 S. Ct. 854, 37 L. Ed. 710; Miller v. Brass Co., 104 U. S. 350, 26 L. Ed. 783. The plaintiff's inventor cannot now assert a monopoly in that which he abandoned to the public. Therefore the second patent is invalid.
There are four types of safes asserted to have infringed the patents. They are referred to by the names of the banks which purchased them. The first considered was the Cowles safe, which was held below to infringe claims 1, 2, and 6 of the first patent. The claims are:
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