Guide v. Desperak

• Citation: 144 F. Supp. 182
• Parties: Anthony GUIDE, Plaintiff, v. Sam DESPERAK and Joseph Roschko, individually and as co-partners doing business under the firm name and style of Advance Sewing Machine Company, Defendants. Anthony GUIDE, Plaintiff, v. ADVANCE SPIRAL MACHINE COMPANY, Inc., Defendant.
• Decision Date: 30 August 1956
• Court: U.S. District Court — Southern District of New York

144 F. Supp. 182

Anthony GUIDE, Plaintiff, v. Sam DESPERAK and Joseph Roschko, individually and as co-partners doing business under the firm name and style of Advance Sewing Machine Company, Defendants.

Anthony GUIDE, Plaintiff, v. ADVANCE SPIRAL MACHINE COMPANY, Inc., Defendant.

United States District Court S. D. New York.

August 30, 1956.

Harry W. F. Glemser, Bacon & Thomas, Washington, D. C., for plaintiff. Harvey W. Mortimer, New York City, of counsel.

Samuel J. Stoll, Jamaica, N. Y., for defendants.

DAWSON, District Judge.

Nature of the actions

These are two actions alleging patent infringment and unfair competition which have been consolidated for trial. Both actions are based upon patent No. 2,674,963 issued to the plaintiff on April 13, 1954 entitled "Spiral Seam Producing Mechanism for Sewing Machines". The defendants in both actions have pleaded that plaintiff's patent is invalid, and the individual defendants have counterclaimed for a judgment that the patent in suit be declared invalid. The individual defendant Roschko also filed a counterclaim in which he asked that the plaintiff be fined for marking the word "patented" upon his sewing machines or using the word in connection with advertising of the spiral sewing attachment prior to April 13, 1954, the date upon which the patent was issued.

The patent in suit

The patent has sixteen claims. However, counsel for the plaintiff agreed to limit his assertion of infringement to claims 1, 2, 3, 6, 7, 12 and 14.

The patent relates to a mechanism to be used with a sewing machine by which spiral seams may be sewn on hemispherically constructed forms of work, such as brassiere cups. It is admitted that brassiere cups reinforced with spiral seams are not new. Nor is novelty claimed for combining a sewing machine with an attachment stitching fabric forms, such as brassiere cups, with a continuous spiral seam.

The patent issued to W. T. Gensheimer, on May 1, 1951, No. 2,551,261, for a "spiral stitching machine" covers a sewing machine attachment by which precut circular material in flat form is sewn together by spiral stitching; thereafter, a sector is cut from the circular element so as to permit it to be given a cone shaped form for use as a brassiere cup. There are many other prior patents which involve spiral stitching attachments for sewing machines.¹

Plaintiff contends, however, that the unique feature of his patent is that it will sew a spiral seam in a "hemispherical cup" or "somewhat spherically shaped work". His expert witness stated that in the Gensheimer patent, the work was placed flat and under a bar and that if a preformed brassiere cup were used in the Gensheimer attachment, it would gather and wrinkle. He stated that in the Guide patent, the work is held in place by a pin piercing the center of the work and that coming over the pin is a U-shaped member, so that the cup is free to revolve about the pin; and that the U-shaped member is sufficiently high to allow the sides of the spherical cup to revolve without coming in contact with it.

The expert witness for the plaintiff stated that this method of holding the cup so that it was free to rotate was the only "invention" in the patent.²

Discussion

Whether the U-shaped member is an "invention" within the meaning of § 103 of the Patent Act, 35 U.S.C.A. § 103, or is merely an innovation "obvious to a person having ordinary skill in the art" may well be open to question.³

However, it is not necessary to decide that question for the patent itself fails to comply with § 112 of the Patent Code, 35 U.S.C.A. § 112, which provides, in part:

"The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."

Failure to comply with this provision of the Code is a defense to an action for infringement if it is pleaded.⁴ It was pleaded in the present case.

The transcript in the present case shows a constant effort to ascertain from the plaintiff a statement of what he considered his invention to be. Finally, the "invention" came down to the U-shaped member; all other elements of the combination were admittedly old in the art. Instead of a flat work holder as provided in the Gensheimer patent, the invention in the patent was only the U-shaped holder about which a hemispherical work piece could rotate.

But the patent in suit did not distinctly claim this element as the invention. Of the sixteen claims in the patent, only two claims (Nos. 14 and 15) even refer to this element, and not even these claims designate this element as the invention.⁵

As far back as 1822, Mr. Justice Story, in the leading case of Evans v. Eaton, 7 Wheat. 356, at pages 430, 431, 20 U.S. 356, at pages 430, 431, 5 L.Ed. 472, said:

"From this enumeration of the provisions of the act, it is clear that the party cannot entitle himself to a patent for more than his own invention; and if his patent includes things before known, or before in use, as his invention, he is not entitled to recover, for his patent is broader than his invention. If, therefore, the patent be for the whole of a machine, the party can maintain a title to it only by establishing that it is substantially new in its structure and mode of operation. If the same combinations existed before in machines of the same nature, up to a certain point, and the party's invention consists in adding some new machinery, or some improved mode of operation, to the old, the patent should be limited to such improvement, for if it includes the whole machinery, it includes more than his invention, and therefore cannot be supported."

Through the years, this principle has been applied by the courts. Thus, if a patent for a combination claimed more than the applicant invented, the patent was held void. Lincoln Engineering Co., of Illinois v. Stewart-Warner Corp., 1938, 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008. In declaring a product patent relating to carbon black invalid in 1942, the United States Supreme Court said:

"The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field. Moreover, the claims must be reasonably clear-cut to enable courts to determine whether novelty and invention are genuine." United Carbon Co. v. Binney Co., 1942, 317 U.S. 228, at page 236, 63 S.Ct. 165, at page 170, 87 L.Ed. 232.

See also General Electric Co. v. Wabash Corp., 1938, 304 U.S. 364, 58 S.Ct. 899, 82 L.Ed. 1402.

A patent purports to be a grant by the government. When issued, it has a presumption of validity. 35 U.S.C. § 282. But this presumption is based upon the premise that the Patent Office makes certain that the provisions of the law are complied with, that the prior art has been searched to see that the patent in fact is limited to the new "invention", and that the claim distinctly points out the subject matter which the applicant regards as his invention. What do we find in this case?

A study of the file wrapper — the proceedings in the Patent Office — shows a failure on the part of the Patent Office to require compliance with the law or to make an adequate search of the prior art. The Gensheimer patent is not even referred to in the Patent Office proceedings. There was no insistence by the Patent Office that the applicant comply with the provisions of § 112 by stating in the claims the "subject matter which the applicant regards as his invention." Instead, claims were allowed in language of such generality that the patent, because of its very breadth, could become a weapon to deter other persons, on threat of infringement actions, from building or using machines which in no way involved the slight improvement which the applicant now, at long last, concedes was his only "invention". The purpose of § 112 is to require that the "invention", as distinguished from prior art, shall be stated distinctly and precisely so that the limits of the patent may be apparent to all and so the patent may not be used as a cloak to cover matter which is not the invention.⁶ This precise provision of the Code was ignored by the Patent Office in granting this patent.

The claims of the patent in suit include claims for matters which were obviously covered in the prior art and matters which were even covered by previous patents, and in no way attempt to limit the boundaries of the patent to the invention which the inventor now asserts. It is patents of this type that create needless litigation with useless expense, clog the court calendars, and impede the true progress of the arts.

Why patent claims in their present form were allowed by the Patent Office must remain a cause for wonderment. Mr. Justice Douglas, in referring to a patent then before the Supreme Court, referred to it as one of the "incredible patents which the Patent Office has spawned", and pointed out:

"The Patent Office, like most administrative agencies, has looked with favor on the opportunity which the exercise of discretion affords to expand its own jurisdiction. And so it has placed a host of gadgets under the armour of patents — gadgets that obviously have had no place in the constitutional scheme of advancing scientific knowledge." Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 156, 71 S.Ct. 127, 132, 95 L.Ed. 162.

It may be that it is because of this looseness in applying the standards of the Patent Code that the cynic now all too frequently can say: "A patent is merely a license to bring a lawsuit." This is a negation of the very principles of our Patent Law which presuppose that a patent is a solemn grant allowed by the...