GENERAL BRONZE CORPORATION v. Ward Products Corp.

• Decision Date: 07 November 1966
• Docket Number: Civ. No. 8048.
• Citation: 262 F. Supp. 936
• Parties: GENERAL BRONZE CORPORATION and Quick Mount Manufacturing Co. Inc., Plaintiffs, v. WARD PRODUCTS CORPORATION and Joseph B. Cejka, Defendants.
• Court: U.S. District Court — Northern District of New York

262 F. Supp. 936

GENERAL BRONZE CORPORATION and Quick Mount Manufacturing Co. Inc., Plaintiffs, v. WARD PRODUCTS CORPORATION and Joseph B. Cejka, Defendants.

Civ. No. 8048.

United States District Court N. D. New York.

November 7, 1966.

Curtis, Morris & Safford, New York City, for plaintiffs. Whalen, McNamee, Creble & Nichols, David S. Williams, Albany, N. Y., Daniel L. Morris, John A. Mitchell, New York City, of counsel.

Davis, Hoxie, Faithfull & Hapgood, New York City, for defendants. DeGraff, Foy, Conway & Holt-Harris, Albany, N. Y., William E. Dampier, George E. Faithfull, New York City, of counsel.

JAMES T. FOLEY, Chief Judge.

Opinion, Findings of Fact & Conclusions of Law

This action involves automobile antennas familiar outwardly as the slim, bright metal rod mounted on automobiles in different places so the radio in the car can be tuned in for the enlightenment and entertainment of the occupants. To the majority of automobile owners that have such optional extra I would venture not many would have any more knowledge of this mechanical and electrical device than this Court had before beginning the trial of this litigation and the trying experience to fit the facts of extensive and minutely controverted proof together to arrive at fairly intelligible expression of decision. Together with the usual complexity of patent validity and infringement dispute, we have the added feature of unfair competition charge based upon strongly worded statements in trial record and briefing for plaintiffs of deliberate piracy and purloining of a trade secret by a highly placed former employee. The cloak and dagger overtones in this respect joined with the technological aspects might require training and experience in detective work as well as the scientific field for good evaluation.

Justice Frankfurter wrote in Marconi Wireless Telegraph Co. of America v. United States, 320 U.S. 1, 60, 63 S.Ct. 1393, 87 L.Ed. 1731, that it is an old observation that the training of Anglo-American judges ill fits them to discharge the duties cast upon them by patent legislation. Although not a complete novice in patent litigation, the prolonged deliberation I found necessary in this instance—interfered with often by the pressures of the routine court work, the nature of much of this in this federal district being undeferrable—brought home the truth of this old observation and the senselessness by federal judges untrained in the patent art to pretend otherwise. (See "Special Judges For Patent Cases?", by Emanuel R. Posnack, Vol. 50, Am. Bar Assoc. Jour., May 1964; Nyyssonen v. Bendix Corp., 137 U.S.P.Q. 853, 860; Telechron, Inc. and General Electric Co. v. Parissi, D.C., 120 F.Supp. 235, aff'd 2 Cir., 229 F.2d 440; Vermont Structural Slate Co. v. Tatko Bros. Slate Co., Inc., D.C., 134 F.Supp. 4, aff'd 2 Cir., 233 F.2d 9, cert. den. 352 U.S. 917, 77 S.Ct. 216, 1 L.Ed.2d 123).

The presentation at the week-long trial and submission of delayed but substantial briefing have been superbly done by specialized practitioners in the patent field. There is no cause for complaint regarding their painstaking effort to simplify and clarify the issues for the Court. At the trial approximately 35 physical exhibits were introduced in evidence that include models of development, actual automobile antennas sold over a period of years, and several specimens of well-known metal objects assembled at the trial scene before me for demonstrative purposes, 56 plaintiffs' documentary exhibits and 32 defense exhibits of that type. The result was a trial record— and it is a good one—of about 774 pages, and depositions of various witnesses numbering 765 pages that were introduced and marked in evidence without much reference to them at the trial. An array of different personalities, many of them skillful mechanics, experts, artisans, developers and producers in this precise art by their testimony crossed the scene to testify about their knowledge of events during the long period of time from which the pertinent facts arose.

There are corporate changes and predecessor companies, subsidiary companies and divisions of companies over the years involved that make necessary their exact identification in order to keep straight the part each plays in relation to the claims and the defenses in depth asserted. The arguments and counter-arguments concerning the facts and inferences to be drawn therefrom seem, in my opinion, to touch upon every possible facet of breach of trust and unfair competition, and patent law. At times the factors to be weighed in relation to alleged trade secret violation and the two separate patents in issue do seem to merge and mesh into each other to the extent confusion may result. I shall try to clarify and departmentalize the evidence as I view it in relation to claims that must be kept separate. There is dispute on the facts and law that astute and experienced patent lawyers on the patent aspects, as expected, argue down to microscopic differences at times concerning these relatively small and compact mechanical and electrical devices used without much thought of complexity by the ordinary motorist for reception of radio signals in automobiles.

I The Parties and Issues

General Bronze Corporation and Quick Mount Manufacturing Co. Inc. are New York ones. General Bronze had a wholly owned automobile antenna subsidiary, Brach Manufacturing Company of Newark, New Jersey. It was for this subsidiary corporation of General Bronze that defendant Joseph B. Cejka, an important figure in the litigation, was a Vice President and General Manager active and in charge of design, development and sale of products by Brach. Defendant Cejka had this responsibility for approximately ten years before he left General Bronze in November, 1957. Previous to that he had discharged about the same duties together with those of consultant for several years with L. S. Brach Company, predecessor of General Bronze, being a company likewise engaged in the design, manufacture and sale of automobile antennas.

When Cejka left General Bronze in 1957 he became General Manager of the Ward Products Division of the Gabriel Company, an Ohio company with its principal office in Cleveland, Ohio. The defendant Ward Products Corporation was chartered in New York in April, 1959, and on May 1, 1959 acquired all the assets and business of the Ward Products Division of Gabriel in Ohio. The principal office and place of business of defendant Ward Products Corporation was moved to and is now at Amsterdam, New York, and it is undisputed defendant Cejka is in control of the new corporation. It is against Cejka and the company he controls the unfair competition and breach of confidence charge of the original complaint filed April 4, 1960, is laid in behalf of both plaintiffs. Substantial money damages, injunction and attorneys' fees are sought in this unfair competition claim.

In the patent count, an amended complaint reduced the number of patents in issue to two. Both were applied for and issued to Joseph Grashow of Brooklyn, New York. The first is Patent No. 2,509,563, application for filed March 3, 1948, issued May 30, 1950, subject: Automobile Antenna. The second is Patent No. 2,917,743, filed for February 21, 1957, issued December 15, 1959, subject: Automobile Antenna Apparatus (Pl. Ex. 3). Plaintiff Quick Mount Manufacturing Co. (Quick Mount) is the owner of the patents by assignment. In April, 1960, when the original complaint was first filed—and thereafter it should be noted pretrial activity in various phases extended over a period of more than four years—Plaintiff General Bronze by agreement with Quick Mount was an exclusive licensee under the patents but is now a non-exclusive licensee. These plaintiffs have their own private quarrel about payment of royalties on several antennas concerning their adaptability for top mounting, but that disagreement is of little concern here. The defendants have counterclaimed for a declaratory judgment that the named patents are invalid and not infringed. The particular defenses to Patent 2,509,563 are: (1) lack of invention; (2) non-infringement in regard to defendants' free-floating slidable rocker; in the alternative lack of novelty if such device is held as infringement; and (3) laches and estoppel. To Patent 2,917,743 the defenses are lack of invention and novelty. The defense in the unfair competition claim is that the specified small parts assembly developed and added to the so-called top mount disappearing antenna of Brach in 1957 were not secret at all, and also were known to the public independently for similar and obvious uses and purposes they served on the antenna.

II The Unfair Competition Claim

The evidence in respect to this serious and unpleasant charge, the second cause of action in the amended complaint, must be separated from that to be weighed in relation to the patent issues. This task is not too easy because there is an overlapping and spilling over in the proof and the legal arguments addressed to such from one phase of this claim into the other patent one. The lawyers agree by cautioning in their briefing several times the ease with which confusion can be created. The plaintiffs' counsel mince no words in strong statement that attempt I think at times to wrap together for consideration on the varied claims the alleged derelictions of the defendants. It is that defendants, Cejka and Ward, after Cejka left the employ of Brach in November 1957, not only pirated the unpatented cap-cork-pad electrical combination claimed to have been developed by employees of Brach in confidence and secret in 1956-1957, but also that Cejka and Ward when they manufactured and sold their "top mount disappearing" antennas in 1958 deliberately also used the patent combination of the "top mount disappearing" antenna as claimed in the Grashow second patent 2,917,743, (Pl. Ex. 3), and additionally used the "top mount cowl" antenna features...