G. Leblanc Corporation v. H. & A. SELMER, INC.

• Decision Date: 17 December 1962
• Docket Number: No. 13232 and 13233.,13232 and 13233.
• Citation: 310 F.2d 449
• Parties: G. LEBLANC CORPORATION, Plaintiff-Appellant, v. H. & A. SELMER, INC., Defendant-Appellee. G. LEBLANC CORPORATION, Plaintiff-Appellee, v. H. & A. SELMER, INC., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

310 F.2d 449 (1962)

G. LEBLANC CORPORATION, Plaintiff-Appellant, v. H. & A. SELMER, INC., Defendant-Appellee.

G. LEBLANC CORPORATION, Plaintiff-Appellee, v. H. & A. SELMER, INC., Defendant-Appellant.

Nos. 13232 and 13233.

United States Court of Appeals Seventh Circuit.

November 21, 1962.

Rehearing Denied December 17, 1962.

Edward A. Haight, Roy H. Olson, Chicago, Ill., for G. Leblanc Corporation.

Robert M. Wolters, Chicago, Ill., for plaintiff-appellant.

Benjamin H. Sherman, M. R. Chambers, Chicago, Ill., for H. & A. Selmer, Inc.

Hill, Sherman, Meroni, Gross & Simpson, Chicago, Ill., for defendant-appellee-appellant.

Before HASTINGS, Chief Judge, and DUFFY and SCHNACKENBERG, Circuit Judges.

HASTINGS, Chief Judge.

Plaintiff, G. Leblanc Corporation, brought this action charging defendant, H. & A. Selmer, Inc., with infringement of its patent based upon United States Letters Patent No. 2,627,677, issued to Leon Leblanc on February 10, 1953, on an application filed August 19, 1950, for a "Key Mechanism for Alto and Bass Clarinets," and upon the reissue thereof, Re. 23,725, issued October 20, 1953, on an application filed July 9, 1953.

Plaintiff is a Wisconsin corporation and defendant is an Indiana corporation. Defendant was given written notice of infringement prior to commencement of suit.

Plaintiff is the owner of the original and reissue patents involved in this action.

Plaintiff charged that defendant infringed claims 1, 2 and 4 of patent No. 2,627,677 and claims 1, 2, 4, 5 and 6 of Re. 23,725, but withdrew its charge as to claims 1 and 2 of both the original and reissue patents. Claim 4 of the original patent and claims 4, 5 and 6 of the reissue patent were the subject of the litigation on trial.

Defendant answered denying infringement and alleging invalidity of the patent and reissue patent in suit. Defendant counterclaimed charging plaintiff with infringement of its trademark "Resonite" and the registration therefor, Registration No. 603,005, on clarinets, issued on March 8, 1955, on an application filed May 11, 1954.

Defendant is the owner of its trademark "Resonite" and Registration No. 603,005 and has used such trademark on its clarinets since March 14, 1948.

Defendant charged that plaintiff infringed its trademark "Resonite" by the use of the trademark "Resotone"¹ on clarinets. Plaintiff was given written notice of such infringement. Plaintiff had used its trademark "Resotone" on clarinets since September, 1953.

Defendant's counterclaim further charged plaintiff with false marking and unfair competition.

Plaintiff replied to defendant's counterclaim denying trademark infringement, false marking and unfair competition and counterclaimed alleging invalidity of defendant's trademark "Resonite."

After a full trial on all these issues, the district court found that plaintiff's patent No. 2,627,677 was invalid as to claim 4; that plaintiff's reissue patent Re. 23,725 was invalid as to claims 4, 5 and 6 and was not infringed by defendant in making and selling its clarinet exemplified by plaintiff's Exhibit No. 1; and that plaintiff take nothing by its complaint against defendant.

The district court further found that defendant's trademark "Resonite," Registration No. 603,005, was valid and not infringed by plaintiff's use of its trademark "Resotone"; that plaintiff was not guilty of false marking under the provisions of Title 35 U.S.C.A. § 292(a); that plaintiff had not committed any act of unfair competition with defendant; and that defendant take nothing by way of its counterclaim against plaintiff.

The district court further found that plaintiff take nothing by its counterclaim against defendant.

A decree was entered accordingly and no costs were awarded to either party.

In No. 13,232, plaintiff appeals from that part of the final decree finding its patent No. 2,627,677 invalid as to claim 4; finding its reissue patent Re. 23,725 invalid and not infringed as to claims 4, 5 and 6; and finding that plaintiff take nothing by its complaint.

In No. 13,233, defendant appeals from that part of the final decree finding its trademark "Resonite" and Registration No. 603,005 thereof not infringed by plaintiff's use of its trademark "Resotone"; finding plaintiff not guilty of false marking and unfair competition; and finding that defendant take nothing by its counterclaim.

No. 13,232

The original and reissue patents in suit relate to a register mechanism on alto and bass clarinets for playing the upper or clarion register thereof.

Leon Leblanc, of Paris, France, the original grantee of the patents in suit was issued United States Letters Patent No. 1,926,489 on September 12, 1933, on an application filed June 1, 1932. This patent recites that the "invention is directed to a wood wind instrument of the clarinet type, with particular regard to key mechanism for particular control of the octave hole and the B flat hole when such holes are segregated." It states that the "primary object of the present invention is the segregation of the octave hole and B flat hole in the provision of a key for selectively controlling either hole * * *." It further discloses the provision of a separate B flat hole and the removal of the register hole from the neck of the instrument to the body of the clarinet, as well as the elimination of long keys to the lower part of the instrument body. It is referred to throughout this proceeding as the expired Leblanc Patent.

Lucien Albert, of Brussels, Belgium, was issued United States Letters Patent No. 1,529,567 on March 10, 1925, on an application filed November 10, 1923. This patent recites that the invention is directed to certain new and useful improvements in wood-wind instruments. It specifies that the object of the invention is to provide a mechanism applicable to clarinets of all kinds for the proper actuation of the key pads covering the register and B flat tone holes. A single twelfth or register hole was provided in the body of the clarinet. This is referred to herein as the Albert patent.

Plaintiff contends that the invention as claimed in the two patents in suit consists of removing the twelfth (register) hole from the neck of a bass clarinet and placing it in the body of the instrument and rearranging the key mechanism for controlling the twelfth hole when in such removed position. Plaintiff claims this invention comprises two steps: first, removal of the register hole from the neck of the instrument and providing a single register hole in the body thereof, thus eliminating a second thumb key or a linkage to the lower joint; and second, providing a specific mechanism to effectuate the first step. It is claimed that this mechanism is easier to play, more reliable, simpler and more economical than prior bass clarinet mechanisms.

Both the Albert and expired Leblanc patents were cited by the Patent Office against the applications for the original and reissue patents in suit.

The district court held the claims in suit to be invalid for lack of invention over the Albert and expired Leblanc patents. It further found that "the Patent Office erred in not finding that the differences between the subject matter defined by the claims here in issue and the prior Albert and Leblanc patents are such that the subject matter as a whole would have been obvious, at the time the instant Leblanc invention was made, to a person having ordinary skill in the clarinet art."

The district court summarized its findings relating to the claimed invention over the prior art in its Finding of Fact No. 9, as follows:

"9. Plaintiff, long prior to the invention of the patents in suit, manufactured and sold clarinets like defendant\'s Exhibit 18,² which, Mr. Pascucci³ admitted, embodied the structure and mechanism of the expired Leblanc patent. The broader aspects of invention claimed by plaintiff for the invention of the patents in suit are present in said defendant\'s Exhibit 18. All that was necessary to provide the structure of the patents in suit was to change the control of the B flat key cup from the A key to the thumb key, or F sharp key. To do so required only ordinary mechanical skill and not invention, and not only the structure to accomplish this, but the operation of the keys and the results obtained were fully explained in the Albert patent."

It is statutory that a patent shall be presumed valid and that the burden of establishing invalidity shall rest on the party asserting it. 35 U.S.C.A. § 282. This presumption of validity applies to a reissue patent in the same manner as the original patent. 35 U.S.C.A. § 252; England v. Deere & Company, 7 Cir., 284 F.2d 460, 463, (1961), cert. denied, 365 U.S. 870, 81 S.Ct. 904, 5 L.Ed.2d 860.

The statutory presumption of validity is strengthened when the prior art relied upon to invalidate the patent was considered and rejected by the Patent Office. Ekstrom-Carlson & Co. v. Onsrud Machine Works, Inc., 7 Cir., 298 F.2d 765, 768 (1962), cert. denied, 369 U.S. 886, 82 S.Ct. 1160, 8 L.Ed.2d 287, and cases therein cited.

However, strong as such presumption is held to be, and recognizing that it should not be lightly disregarded, it is not a conclusive presumption. It is rebuttable. Murdock v. Vaughan Novelty Mfg. Co., 7 Cir., 131 F.2d 258, 259 (1942).

In its Finding of Fact No. 7 in the instant case, the district court found that the Patent Office erred in not finding the obvious in considering the subject matter defined by the claims in suit and the cited prior art. Other courts have noted that such errors have resulted in a large "category of patented unpatentables," with the resulting detriment to the parties flowing therefrom. Packwood v. Briggs & Stratton Corp., 3 Cir., 195 F.2d 971, 974 (1952), cert. denied, 344 U.S. 844, 73 S.Ct. 61, 97 L.Ed. 657, and the cited reference to Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 156-158, 71 S.Ct. 127, 95 L.Ed. 162 (1950).

At the trial, the district...