Foster D. Snell, Inc. v. Potters

• Decision Date: 08 March 1937
• Docket Number: No. 268.,268.
• Citation: Foster D. Snell, Inc. v. Potters, 88 F.2d 611 (2nd Cir. 1937)
• Parties: FOSTER D. SNELL, Inc., v. POTTERS et al.
• Court: U.S. Court of Appeals — Second Circuit

88 F.2d 611 (1937)

FOSTER D. SNELL, Inc., v. POTTERS et al.

No. 268.

Circuit Court of Appeals, Second Circuit.

March 8, 1937.

Hammond & Littell, of New York City (Nelson Littell, of New York City, of counsel), for appellant.

Leonard Day, of New York City, for appellees.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

SWAN, Circuit Judge.

The patent in suit was granted to the plaintiff's assignor on February 11, 1936, for "Method of Producing Mirrors." Fifteen days later the plaintiff filed its bill of complaint charging that the firm of Potters Bros. were infringing its patent by manufacturing mirrored glass flakes. Such flakes simulate artificial snow and are used for Christmas tree decoration and the like. The bill also alleged that prior to the issuance of the patent Potters Bros. had been licensed to use the invention described in the patent application, and that they had continued to use the process after surrendering their license. The prayer was for an injunction against use of the patented process, and for an accounting of profits resulting from infringement of the patent and an accounting of royalties owing by reason of the defendants' use of the process prior to the issuance of the patent. The defendants' answer pleaded invalidity of the patent and noninfringement. The decree held that there was no infringement and that all four of the patent claims were invalid for lack of invention over the prior art; it dismissed the bill upon the merits, with costs to the defendants.

In so far as the suit was based on the patent, the appeal may be disposed of upon the single ground of noninfringement. There are two complete answers to the charge of infringement. In the first place, the evidence is uncontradicted that there was none between the granting of the patent on February 11, 1936, and the filing of the bill. Rudolph H. Potters testified, and his testimony was uncontradicted, that throughout the month of February and down to the time of trial in June the defendants manufactured no glass flakes whatever. It is true that the plaintiff's agents purchased glass flakes at the defendants' plant in February and in June, but there is no proof as to when or by what process these were made. The defendants' answers to the plaintiff's interrogatories cannot be taken as contradicting the positive testimony that no glass flakes were produced after the patent issued. A mere sale of the product of the process does not constitute an infringement of a process patent. Welsbach Light Co. v. Union Incandescent Light Co., 101 F. 131 (C.C.A.2); In re Amtorg Trading Corporation, 75 F.(2d) 826, 832 (Cust. & Pat. App.), and cases therein cited.

Secondly, the process used by the defendants omits one of the steps described and claimed in the patent. The first three claims expressly require a chemical cleaning of the glass flakes. Admittedly the defendants use no nitric acid or other chemical for cleaning; and these claims are no longer relied upon by the appellant. The fourth claim reads as follows: "4. The method of producing clear silvered glass flakes, which comprises cleaning the glass flakes, washing the cleaned glass flakes, treating the glass flakes with a freshly prepared dilute stannous chloride solution, washing the glass flakes with water, plating the glass flakes with a solution of silver nitrate and dextrose, washing the plated glass flakes and drying the same."

This plainly contemplates two steps, (1) cleaning and (2) washing the cleaned glass flakes, before...