Federal Electric Co. v. Flexlume Corporation

• Decision Date: 18 July 1929
• Docket Number: 4121.,No. 4120,4120
• Citation: 33 F.2d 412
• Parties: FEDERAL ELECTRIC CO., Inc., v. FLEXLUME CORPORATION. CHICAGO MINIATURE LAMP WORKS et al. v. SAME.
• Court: U.S. Court of Appeals — Seventh Circuit

33 F.2d 412 (1929)

FEDERAL ELECTRIC CO., Inc., v. FLEXLUME CORPORATION.

CHICAGO MINIATURE LAMP WORKS et al. v. SAME.

Nos. 4120, 4121.

Circuit Court of Appeals, Seventh Circuit.

June 18, 1929.

Rehearing Denied July 18, 1929.

Drury W. Cooper, of New York City, and Clarence E. Mehlhope, of Chicago, Ill., for appellants.

Wallace R. Lane and Clarence J. Loftus, both of Chicago, Ill., for appellee.

Before ALSCHULER, EVANS, and PAGE, Circuit Judges.

ALSCHULER, Circuit Judge.

In No. 4120 the bill charged, and the decree found, infringement by appellant (herein called Federal) of claims 1 to 7, inclusive, and 11, of U. S. patent No. 1,224,253, May 1, 1917, to Wiley et al., for an "Illuminated Sign," and found Federal guilty of unfair competition toward appellee (herein called Flexlume). Injunction and accounting were ordered.

In No. 4121 appellants Universal Sign Company and Herman Resler & Co. were charged by Flexlume with infringement of the same patent, and with unfair competition; and the decree adjudged infringement against all the appellants, and unfair competition against the Chicago Miniature Lamp Works. The cases were tried together in the District Court, and the appeals were heard together.

The same claims of this patent were in issue and adjudicated by this court, and the claims held valid in Flexlume Sign Co., Inc., v. Opalite Sign Co. (C. C. A.) 292 F. 98. The complainants in that case and the present one are the same, but the defendants are different.

In Freeman-Sweet Co. v. Luminous Unit Co. (C. C. A.) 264 F. 107, we said:

"This former decision, to which these appellants were not parties, is, of course, not res adjudicata as to them. But it is more than persuasive; the validity of a patent, once sustained on appeal by this court, is not subject to complete re-examination at the instance of each subsequent alleged infringer. Unless clearly shown to be erroneous, the determination by this court of the validity of a patent on full hearing in a contested suit, will not be reconsidered. New matter, not theretofore introduced in evidence, and not merely cumulative in character, will be given full consideration; even the conclusions reached on the former evidence may be challenged as clearly erroneous. But the fact that alleged anticipating patents, or the file wrapper and contents, though in the record, are not specifically discussed in the earlier opinion, is, of course, far from a demonstration, or even a suggestion, that they were not duly weighed or that the conclusions reached on the former record are clearly wrong."

The brief for Federal recognizes this as the rule of the Circuit, and the scope of its undertaking to invalidate the claims is indicated by these quotations from its brief:

"But there is evidence of a `strikingly different character' presented in these cases by reason of which we confidently expect this court to come to a different conclusion from that reached in its former decision, against other parties, and to declare the patent invalid." * * * "We shall not refer to any art in the prior case; the strikingly new and different art set up in these cases is ample to invalidate the patent." (Italics theirs.)

Thereupon there is discussed the following prior art and uses appearing in the record of these cases:

1. United States patent No. 328,135, to McLewee, October 13, 1885, for "Improvement in Illuminated Signs."

2. Roth's Roumanian patent, No. 1,979, November 11, 1910.

3. Anderson sign prior use.

4. Paris Millinery sign prior use.

5. Bell Telephone prior use.

The first shows a double-faced sign, in which the characters are cut through the opaque faces, and the inner side of each face backed by plates of flat translucent opal glass, the lighting means being placed between the two sides. Around the edges of each face are openings therein, in which protuberant ornamental glass may be inserted as a border for the sign.

The second, the Roumanian patent, is to all intents and purposes the same as McLewee. It shows additionally that the glass may be in smaller pieces, to facilitate removal of part in case of breakage. Both show means for holding the glass in close contact with the sides.

The third, the Anderson use, shows a raised letter of opalescent glass, formed on one side of a glass globe of dark color, each globe being a separate unit adapted to receive therein a light, and the sign being formed by an appropriate succession of such...