Gagnier Fibre Products Co. v. Fourslides, Inc.

• Decision Date: 10 June 1953
• Docket Number: No. 10876.,10876.
• Citation: 112 F. Supp. 926
• Parties: GAGNIER FIBRE PRODUCTS CO. v. FOURSLIDES, Inc.
• Court: U.S. District Court — Western District of Michigan

112 F. Supp. 926

GAGNIER FIBRE PRODUCTS CO. v. FOURSLIDES, Inc.

No. 10876.

United States District Court E. D. Michigan, S. D.

June 10, 1953.

Connolly, Moynihan & Connolly, Detroit, Mich., and Strauch, Nolan & Diggins, Washington, D. C., for plaintiff.

Dahlberg, Simon, Jayne, Woolfenden & Gawne and Elmer Jamison Gray, Detroit, Mich., for defendant.

PICARD, District Judge.

This action involves two patents, 2,057,587 and 2,057,588, hereinafter referred to as "587" and "588." They relate primarily to hook fasteners used in connection with the attaching of fiber boards to the interior of an all metal automobile body to which boards the interior cloth is or has been attached.

Plaintiff alleges infringement of claims 4, 7 and 8 of 587 and claim 5 of 588. Both are combination patents. Defendant admits infringement of two claims of 587 and the court found infringement on the third as a matter of fact. Defendant alleges, however, that both patents, 587 and 588, are void for want of invention, unpatentable combination and anticipation by the prior art. As to 588, a combination patent directed to the position of holes in both board and structure and the affixing of said board to the structure by hook fasteners, defendant adds to its defense by denial that it ever at any time was guilty of contributory infringement.

Statement of Facts

About the beginning of the industry in 1907 when bodies were of wood and steel, buckram was usually the material used in the interior of automobiles over which some strong cloth was attached. But in 1917, at the insistance of plaintiff which had been active in the development of this phase of the interior finish, the industry switched from buckram to fiber doing away with the costly leather laminations.

All steel bodies used first in 1921, proving a more complex problem, necessitated experimentation with various fasteners to attach the fiber board to the metal body as a base for the interior finish. None of them was satisfactory however until 1928 one, Place, employed by plaintiff, invented the Place fastener, 1,679,266, which became an instant success used by many manufacturers of automobiles. However, after about two years of experience, it was found that many fiber boards which had been previously delivered to automobile manufacturers very often became warped while in storage and when it came time to attach these boards to the steel body of the car's interior, it was learned that the holes of the fiber board were out of line with the receiving holes of the steel structure, with the result that many troubles developed for which a remedy was sought. Among these were the rattles where the alignment had been off which increased with the use of the car, expensive repairs and the sometimes total discarding of the prepared panels.

In 1930 plaintiff's Place made his improvement — 587 — the main feature of which is the change in the head of 266 so that it is U shaped and when attached to the fiber board may be made to adapt itself to any shrinkage in the fiber board that might have caused the holes to get out of line from their opposite affinities. The new feature was adopted by the trade (except General Motors), Ford coming to it in 1936.

From here on the facts are in dispute.

According to plaintiff, defendant in 1947 appealed to it for some work to help defendant keep its new company going, suggesting that it might make some of plaintiff's hook fasteners. Plaintiff gave defendant an order and furnished the necessary blueprints. From 1947 to 1950 defendant made approximately sixty million fasteners for plaintiff who sold them to the automobile companies. But defendant, becoming dissatisfied, started making infringing fasteners on its own and has now taken a great deal of plaintiff's business.

On the other hand, defendant pictures plaintiff as approaching it, a new company, and driving a hard bargain by securing defendant to make plaintiff's fasteners at less price than it was paying to its other supplier, L. A. Young Spring & Wire Company, and obliging defendant to incur expense that it would never be able to meet out of the small profits.

The equities appear to favor plaintiff but whether this is true or not is immaterial in determining the issues in this case.

The main question is whether 587 or 588 or both present a patentable invention within the meaning of the statute law and decisions of our courts. Patent 587, like 266, is a small single wire fastener with a prong or shank formed by its opposite two ends converging at the bottom and diverging at the top as a socket for engaging purposes. The shank is about ¾ of an inch long, the rest of the wire being shaped into a hook fastener. The diverging part of the wire is about ½ an inch wide and the head is U shaped adding a little over 1/8 inch to the length of the fastener. The U shaped head is about ¼ inch wide and ½ inch in length. The head is inserted into the aperture in the trim panel, and the shank, which is now in a position perpendicular to the panel and structure, is snapped into the aperture in the steel structure. While plaintiff claims that the fastener works automatically with mutual coaction between the prong and the head, the fact is that the fastener must be manipulated by hand into making the connection between the fiber board hole and the hole in the structure and where there is not the proper alignment between the two, as intended, from shrinkage or any other defect, then the fastener may be "adapted", the "adapting" feature being chiefly the reason why 587 was necessary. The only difference between 266 and 587 is admittedly in the head.

Conclusions of Law

We will attempt to determine the questions in order and the first is whether the new statute passed by Congress in 1952 and effective January 1, 1953, Public Law 593, 82nd Congress, 2nd Session, Chapter 950, 66 Stat. 792, 35 U.S.C.A. § 1 et seq., governs the issues in this case and if so, to what effect?

While we believe that it was not the intent of Congress to make this act entirely retroactive, not favored in the eyes of the law, U. S. Fidelity & Guaranty Co. v. U. S. for Use and Benefit of Struthers Wells Co., 209 U.S. 306, 28 S.Ct. 537, 52 L.Ed. 804; Winfree v. Northern Pacific Ry. Co., 227 U.S. 296, 33 S.Ct. 273, 57 L.Ed. 518, there is a recent decision, specifically holding that the new act is not to be so considered. General Motors Corporation v. Estate Stove Company, 6 Cir., 203 F.2d 912, decided April 17, 1953. The instant case was heard before the 1952 act went into effect and decision was delayed only because of the filing of briefs.

But it is our further opinion that even though the act were retroactive, as plaintiff seems to believe, relying on Section 4(a) thereof, 35 U.S.C.A. note preceding section 1, the changes in that act do not affect the questions herein.

For example let us examine those changes referred to by plaintiff.

Section 103 of the new act provides among other things that

"A patent may not be obtained * * * if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

That has been case law in the United States for years. Ranco, Inc., v. Gwynn, 6 Cir., 128 F.2d 437; Standard Brands v. National Grain Yeast Corp., 308 U.S. 34, 60 S.Ct. 27, 84 L.Ed. 17; In re Zabel, 186 F.2d 735, 38 C.C.P.A., Patents, 832; Application of Lifton, 189 F.2d 261, 38 C.C.P.A., Patents, 1119.

In fact this section, 103, of the new act merely stabilized or gave statutory effect to what had been well recognized case law.

Attention is also directed to this clause in Section 103:

"Patentability shall not be negatived by the manner in which the invention was made."

This, we must admit is new, because in a Senate report that clause is clarified and it does change some phases of case law. As stated in the report this particular wording was used to provide the Patent Examiners and the Courts with a yardstick that in considering the patentability of any article from January 1, 1953 on, it would be immaterial whether the invention

"resulted from long toil and experimentation or from a flash of genius."

This wording officially not only rejects the "flash of genius" test of Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58, which this court necessarily followed in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, but it goes farther. Today one may have a patent if he just "stumbled" upon his invention or it might even have been the result of an accident. But the "flash of genius" is not claimed in this case.

Then the new patent law provides in Section 282:

"A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it."

Here again we find that this was the case law long before the new act was written and merely put into statutory form what the courts had long been holding. Radio Corp. v. Radio Engineering Laboratories, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163; Pattinson v. Marzall, D.C., 100 F.Supp. 787; Cover v. Chicago Eye Shield Co., 7 Cir., 111 F.2d 854.

Validity of Patents

Having determined that it is immaterial whether the old law or the new law is followed but having also held that if it does become important the new law does not apply, we pass to the second question, namely, defendant's claim that both patents are invalid for want of invention, unpatentable combination and anticipation in the prior art.

As To 587

Admittedly the improvement of 587 over 266 lies in the head because the spring shank or prong portion thereof is identical with 266. But in 266 a planar head is centered on the shank necessitating the holes of the structure and the panel to be in perfect alignment, while...