Hansen v. Colliver

• Decision Date: 25 March 1959
• Docket Number: Civ. No. 7399.
• Citation: Hansen v. Colliver, 171 F.Supp. 803 (N.D. Cal. 1959)
• Parties: Charles F. HANSEN, Plaintiff, v. Ottis M. COLLIVER and Floyd E. Fuller, Defendants.
• Court: U.S. District Court — Northern District of California

171 F. Supp. 803

Charles F. HANSEN, Plaintiff, v. Ottis M. COLLIVER and Floyd E. Fuller, Defendants.

Civ. No. 7399.

United States District Court N. D. California, N. D.

March 25, 1959.

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Townsend & Townsend, San Francisco, Cal., for plaintiff.

William H. Atkinson, San Francisco, Cal., for defendants.

HALBERT, District Judge.

This action has been brought by Charles F. Hansen, (hereinafter referred to as plaintiff) as owner of United States Letters Patent Number 2,552,673, issued May 15, 1951, against Colliver and Fuller (hereinafter referred to as defendants), jurisdiction being founded upon Title 28 U.S.C.A. § 1338(a). It is alleged in the complaint that a device, constructed and used commercially by defendants, infringes the Hansen patent, and plaintiff, having waived an accounting for damages, prays solely for injunctive relief. Defendants, by their answer, deny any infringement and contend that, in any event, the Hansen patent has been anticipated, and so is void. In addition, the defendants counterclaimed for damages alleged to have resulted from notices sent by plaintiff to defendants' customers alleging infringement of the Hansen patent by the customers, which resulted in defendants being unable to find purchasers for the product of their device.

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The Hansen patent involves a machine which enables short lengths of preformed wire cable to be economically recored. It appears that the prior art in the field involved expensive and cumbersome machines which required considerable setup time. Such a mechanism required considerable set-up time and so was impracticable, in an economic sense, for recoring short lengths of cable. The machine evolved by Hansen (See: Exhibit "A"), is simplicity itself. It consists of a fixed pin, which is passed through an opening created in one end of a short length of cable, the opening being created by twisting the cable against the lay of its strands. The pin prevents the pre-formed cable from closing and resuming its original shape. Stress is then applied by means of a swivel, pulling the cable past the pin, the helical lay of its strands forcing it to revolve about the pin. As the cable rotates in this fashion, the old core is forced out as it meets the pin, emerging through the gap in the strands at that point. Through a hole in the pin a new core is inserted. As the cable beyond the pin resumes its original shape, it closes around and draws the new core with it.

It appears that Hansen utilized his machine to re-core, with a steel core, used cable, manufactured with a hemp core, and sold the resultant product to a segment of the logging industry. While so engaged, Hansen employed defendants to operate the machine. During their employment defendants conceived their device, which they suggested to Hansen as an improvement, but which Hansen refused to consider. After leaving Hansen, the defendants constructed their device and commenced re-coring cable, which construction and operation is in issue here.

Initially this Court is impelled, in view of the essential simplicity of the Hansen patent in concept and construction, to consider the possibility that the patent lacks "invention". While there is a prima facie presumption, arising from the issuance of letters patent, that all requisite elements of patentability exist, including invention (Palmer v. Village of Corning, 156 U.S. 342, 15 S.Ct. 381, 39 L.Ed. 445, and Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121), this presumption is not in any sense conclusive (Gardner v. Herz, 118 U.S. 180, 6 S.Ct. 1027, 30 L.Ed. 158). Defendants were entitled, but did not, allege and put in issue the non-statutory defense of lack of invention (Powers-Kennedy Contracting Corporation v. Concrete Mixing & Conveying Co., 282 U.S. 175, 51 S.Ct. 95, 75 L.Ed. 278, and Richards v. Chase Elevator Co., 158 U.S. 299, 15 S.Ct. 831, 39 L.Ed. 991). No admissible evidence by either party was offered in this regard. Invention, however, cannot be established by the failure of the parties to raise and consider the issue (cf. Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959, and Daniels v. Permutit Co., D.C., 44 F.Supp. 74, reversed on other grounds 3 Cir., 137 F.2d 823).

Invention is, perhaps, the most essential element of patentability. It is the quality which carries a device beyond that level which might be obtained through the exercise of no more than mechanical skill and raises it to the legal stature of patentability (United States v. Dubilier Condenser Corp., 289 U.S. 178, 53 S.Ct. 554, 77 L.Ed. 1114). It follows then that an absence of invention would defeat an action for infringement at its inception, and it is, therefore, proper for this Court to raise and consider the issue sua sponte (Slawson v. Grand Street, P. P. & F. R. Co., 107 U.S. 649, 2 S.Ct. 663, 27 L.Ed. 576).

The test in this regard has received extended discussion in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, although there the Supreme Court was specifically concerned with a combination patent. The concept embodied in the Hansen patent has been long and carefully considered in the light of that discussion. Such study has convinced the Court that, obvious as it appears at this stage of the proceeding, the development of the Hansen patent did in fact require the exercise of inventive ness, rather than mechanical skill only, and so properly forms a valid basis for a subsisting patent.

Raised by defendants in their answer was the defense of anticipation. Substantially identical testimony was elicited in that regard from two witnesses, one Drew and one Enzensperger. They both testified that during the World War II they were employed at the same shipyard where they served as members of a Labor-Management Committee whose purpose was to consider for merit awards employee suggestions aimed at increasing and furthering production. Drew, a patent agent, had the further responsibility of determining the patentability of such suggestions, and of obtaining a patent where that was indicated.

Both witnesses testified that during the early years of the War (They were unable to set the time more precisely.) they had observed a mechanism in one of the yard's rigging lofts which was used to re-core short lengths of wire cable. The mechanism was described as a vertical timber with a spike driven into its flat top. On opposite sides of the spike were fastened inverted U bolts. Cable, placed over the spike, was lead through the U bolts and then drawn past the spike by means of a swivel, enabling the old core to be removed and a new core inserted in much the same fashion as the Hansen patent.

Both Drew and Enzensperger had viewed this mechanism independently, but neither was certain whether or not it had been submitted to their Committee or, if so, whether it had received an award. A check could not be made through the Committee records, as the records had been destroyed several years before the trial.

It has been stated that prior use must be proven beyond a reasonable doubt (Hotel Security Checking Co. v. Lorraine Co., 2 Cir., 160 F. 467, 24 L.R. A.,N.S., 665). While the facts of the cited case do not support such an extreme statement relative to the required burden of proof, it does appear that, to overcome the presumption of priority of invention raised by the issuance of letters patent, considerably more than a bare preponderance of the evidence is required (Radio Corporation of America v. Radio Engineering Laboratories Inc., 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163).

The problem raised by oral testimony in this area has been the subject of much discussion.

"In view of the unsatisfactory character of such testimony, arising from the forgetfulness of witnesses, their liability to mistakes, their proneness to recollect things as the party calling them would have them recollect them, aside from the temptation to actual perjury, courts have not only imposed upon defendants the burden of proving such devices, but have required that the proof shall be clear, satisfactory, and beyond a reasonable doubt. Witnesses whose memories are prodded by the eagerness of interested parties to elicit testimony favorable to themselves are not usually to be depended upon for accurate information. The very fact, which courts as well as the public have not failed to recognize, that almost every important patent * * * has been attacked by the testimony of witnesses who imagined they had made similar discoveries long before the patentee had claimed to have invented his device, has tended to throw a certain amount of discredit upon all that class of evidence, and to demand that it be subjected to the closest scrutiny." The Barbed Wire Patent (Washburn & Moen Mfg. Co. v. Beat 'Em All Barbed-Wire Co.,) 143 U.S. 275, at pages 284 and 285, 12 S.Ct. 443, 447, 36 L.Ed. 154.

Conscious of these considerations, courts have held that while the testimony of a single witness may, in connection with other circumstances, be sufficient to prove anticipation (Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358, 48 S.Ct. 380, 72 L.Ed. 610), some supporting physical evidence is generally required (Food Machinery Corp. v. Pacific Can Co., D.C., 66 F.Supp. 109). Even then corroborating physical evidence must be examined carefully, in conjunction with all aspects of the testimony and conduct of the witness, to insure that the testimony and the conduct are consistent with all physical evidence (American Bell Tel. Co. v. American Cushman Tel Co., 7 Cir., 35 F. 734, 1 L.R.A. 60; Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523; and Webster Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177). This consistency is of even more importance where the testimony is elicited from a witness with an interest, financial or otherwise, in the case (Deering...