Etten v. Lovell Mfg. Co.

• Decision Date: 28 February 1949
• Docket Number: Civil Action No. 55.
• Citation: 83 F. Supp. 178
• Parties: ETTEN v. LOVELL MFG. CO. et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

83 F. Supp. 178

ETTEN v. LOVELL MFG. CO. et al.

Civil Action No. 55.

United States District Court W. D. Pennsylvania.

February 28, 1949.

Charles F. Meroni, Carlton Hill, and George E. Frost (of firm of Charles W. Hills), all of Chicago, Ill., and Isaac J. Silin (of firm of Brooks, Curtze & Silin), of Erie, Pa., for plaintiff.

H. C. Lord and Ralph Hammar, both of Erie, Pa., for defendants.

FOLLMER, District Judge.

This action was predicated upon a complaint to authorize issuance of patent and for declaratory judgment for injunction and damages and was brought by Nicholas L. Etten, a resident of the State of Iowa, against Lovell Manufacturing Company, a Pennsylvania corporation, and Walter L. Kauffman, II, a resident of the State of Pennsylvania.

The complaint was brought under Section 4915 of the Revised Statutes, 35 U.S. C.A. § 63, and alleged, inter alia, that Nicholas L. Etten, hereinafter called "Etten," on December 23, 1932, filed in the United States Patent Office an application for Letters Patent on his invention of certain improvements in wringers, Serial No. 648,620, on which application Letters Patent No. 2,054,970 was duly granted on September 22, 1936. That Etten filed an application for reissue of the said patent on October 7, 1937, Serial No. 167,775.

That on September 3, 1935, Etten filed in the United States Patent Office an application for Letters Patent on his invention of certain improvements in wringer release mechanism, Serial No. 38,932.

That on October 25, 1934, Gustave H. Jantz, since deceased, alleging to be the inventor of certain improvements in wringers, filed an application for Letters Patent of the United States, Serial No. 749,977, the legal title to which application was assigned to Lovell Manufacturing Company, hereinafter called "Lovell," this assignment being subsequently recorded in the United States Patent Office.

That on February 15, 1938, the Commissioner of Patents declared an interference, No. 75,433, between the Etten application, Serial No. 38,932, filed September 3, 1935, and the Jantz application, Serial No. 749,977, filed October 25, 1934, the issue of which interference comprised the following count:

"In a wringer, a frame, rolls mounted in the frame, a removable top bar on the frame, pressure means between the top bar and the rolls, means for detachably securing one end of the bar to the frame, securing means between the other end of the bar and the frame comprising a toggle with one link pivoted to the frame, the other link pivoted to the bar and to said first link, and having an extension forming a handle for manipulating said toggle, the construction being such that the pivots of said links may be brought close to but short of a straight line position, whereby pressure between the bar and the frame will bias said toggle into a released position, and latching connections between said frame and said extension to secure said toggle in a pressure retaining position."

That thereafter, on April 25, 1939, the Commissioner of Patents declared an interference, No. 76,987, between the Etten reissue application, Serial No. 167,775 and the Jantz application, Serial No. 749,977, the issue of which interference comprised the following counts:

"In a wringer, a frame, rolls mounted in the frame, a removable top bar on the frame, pressure means between the top bar and the rolls, means for detachably securing one end of the bar to the frame, securing means between the other end of the bar and the frame comprising a toggle with one link pivoted to the frame, the other link pivoted to the bar and to said first link, the construction being such that the pivots of said links may be brought close to but short of a straight line position, whereby pressure between the bar and the frame will bias said toggle into a released position, and latching means to secure said toggle in a pressure retaining position."

"In a wringer structure in combination a frame having upright portions, wringer rolls supported by the upright portions of said frame, a separable cross head member supported by said upright portions, adjustable spring means carried by said cross head member for normally holding said wringer rolls in pressure contact, toggle link mechanism having inseparable members for retaining said cross head member in normal working position and joining the cross head to at least one of the upright portions, a movable latch member for holding the toggle mechanism in operable relation when retained in holding position and so that the pressure load is divided between the toggle mechanism and latch, said spring means being operable to move the toggle mechanism when the latch is not retained in holding position whereby the pressure between the rolls is released."

"In a wringer mechanism, in combination, wringer rolls, an adjustable pressure sustaining means therefor which is retained at one end partly by toggled links and partly by a removable hook, which hook is adapted to be removed from its pressure supporting position by the operation of one or more hand rails disposed adjacent the wringer rolls."

That after hearing on said Interferences No. 75,433 and No. 76,987, the Examiner of Interferences of the Patent Office awarded priority therein to Jantz. That on appeal the decision of the said Examiner was affirmed by the Board of Appeals of the United States Patent Office. That no appeal has been taken by the plaintiff on either of said Interferences, No. 75,433 or No. 76,987, to the United States Court of Customs and Patent Appeals to review the decision of the Board of Appeals. That in the said interferences the defendants, Walter L. Kauffman, II, hereinafter called "Kauffman," Lovell, and their assignor, Jantz, conspired in the concealment of material evidence, put in evidence false and untrue testimony as to material facts, knowing the same to be false and untrue and with the intention that they be relied upon by the United States Commissioner of Patents, the Examiner of Interferences, and the Board of Appeals of the United States Patent Office; that the said officials did rely upon said false and untrue testimony, resulting in the awarding of priority of invention of the subject matter of said interferences to the said Gustave H. Jantz.

The answer denies that plaintiff has a right to maintain an action under Section 4915 of the Revised Statutes, 35 U.S.C.A. § 63, and further asserts that "Defendants can find no complaint for declaratory judgment." Defendant further contends that plaintiff by taking an appeal to the United States Court of Customs and Patent Appeals under Section 4911 of the Revised Statutes, 35 U.S.C.A. § 59a, in Interferences Nos. 77,671 and 77,672, having the same record as Interferences Nos. 75,433 and 76,987, has waived his right to proceed under Section 4915 and that the plaintiff is estopped here because of the adjudication of the Court of Customs and Patent Appeals.

On October 21, 1947, in view of the fact that subsequent to the filing of the original action under Section 4915 the "Jantz" patent had been issued, the plaintiff moved to include an action under Section 4918, 35 U.S.C.A. § 66. Accordingly, the plaintiff was permitted to amend his Bill of Complaint on his motion setting forth that on September 3, 1946, Jantz's application, Serial No. 749,977, filed October 25, 1934, issued to defendant, Lovell Manufacturing Company, as Letters Patent No. 2,406,951; that said patent is in direct conflict with plaintiff's Letters Patent No. 2,054,970, hereinabove referred to.

Defendant then filed a supplemental answer (paragraphs 26 to 29 inclusive) and counterclaim for patent infringement (paragraphs 30 to 34 inclusive).

Paragraph 26 averred that Jantz was the first inventor of the invention defined in his Patent No. 2,406,951 issued September 3, 1946, on application Serial No. 749,977, filed October 25, 1934.

Paragraph 27 averred the unpatentability of claims 5 and 6 of Etten Patent No. 2,054,970.

Paragraph 29 averred plaintiff could not assert claims 2, 5, and 13 of his Patent No. 2,054,970 under Revised Statutes 4918, or, in the alternative, plaintiff must dismiss his cause under Revised Statutes 4915 before asserting his cause under Revised Statutes 4918.

Plaintiff moved to strike paragraphs 27, 28, and 29 of the supplemental answer aforesaid.

On December 8, 1947, plaintiff filed motion to dismiss under Federal Rules of Civil Procedure, Rule 12(b), 28 U.S.C.A., defendants' counterclaim for patent infringement.

After argument had and with the agreement of counsel, the Court, on December 9, 1947, ordered:

1. That motion is denied as to paragraphs 28 and 29 upon express understanding of defendants' counsel that as to the subject matter of these paragraphs no further testimony, evidence or argument would be adduced, but as to the defenses raised therein defendants would rest solely on their case previously presented.

2. That motion is granted as to paragraph 27 with the understanding defendants are not to be prejudiced thereby from raising the same defense of unpatentability as to claims 5 and 6 of Etten Patent No. 2,054,970, or any reissue in any suit that may hereafter be brought by the parties for patent infringement.

3. The order, carrying the signed approval of counsel for plaintiff and defendants, further stated, "It is further understood that both parties hereto have concluded their respective cases as to the original and amended complaint and that no further evidence or testimony will be adduced herein in connection with the causes of action of said original and amended complaints."

At the hearing it was agreed that in the event plaintiff's motion to dismiss the counterclaim for patent infringement (paragraphs 30 to 34 of defendants' supplemental answer) were refused, the proper procedure would be to direct a separate trial which would necessitate the taking of additional testimony, and with that understanding, the case, exclusive of...