Harman v. Scott

• Citation: 90 F. Supp. 486
• Decision Date: 01 May 1950
• Docket Number: Civ. No. 930.
• Parties: HARMAN v. SCOTT.
• Court: U.S. District Court — Southern District of Ohio

90 F. Supp. 486

HARMAN v. SCOTT.

Civ. No. 930.

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

May 1, 1950.

Warren H. F. Schmieding and Carl Tangeman, Columbus, Ohio, for plaintiff.

Jack A. Schley and Joseph H. Schley, Dallas, Tex., for defendant.

NEVIN, Chief Judge.

This is a suit for alleged infringement of letters patent No. 2,142,896 issued January 3, 1939, to plaintiff herein, Hal W. Harman. In his complaint as originally filed, plaintiff alleged infringement of two additional patents. These two patents (Nos. 2,011,484 (Ex. 1) and 2,198,167, (Ex. 3), both to Harman and both "Method" patents) were later withdrawn from the case.

Plaintiff prays for an "injunction against further infringement"; "an accounting for profits and damages" and for his costs.

Defendant challenges the validity of the patent and denies infringement. He prays that he "be hence dismissed" with his "costs and reasonable attorney's fees".

The patent in suit (Ex. 2) and the only one here under consideration (and which it was agreed in the record should be referred to as the "896" patent) is for a "Fastening". It is directed to an improvement in fasteners, or what is known in the trade as Locks. It is asserted that the alleged invention of the patent is particularly useful in the repairing of broken castings.

The patent contains six claims. Of these, however, only Claims 1 and 2 are here in issue. Title to the 896 patent, it is stipulated by the parties, is in plaintiff.

I. VALIDITY

Defendant, in his answer, asserts invalidity upon several grounds, among others (1) that the alleged invention described in Claims 1 and 2 of the patent does not constitute patentable subject matter, "but is nothing more than the ordinary skill * * * of persons skilled in the art"; (2) that the claims are ambiguous, indefinite and uncertain and that the patentee "failed to comply with Section 4888, R.S. 35 U.S.C.A. § 33" and (3) that "so far as can be ascertained from the relationship of the disclosure and Claims 1 and 2 of Letters Patent No. 2,142,896 to the construction of defendant's device, said letters patent is invalid and void for the reason that it is anticipated or specifically restricted by" certain prior patents which are thereupon listed by name, number and date.

Among the "prior patents" so listed are:

                            Name                       Number                   Date
                           --------                 ------------              ---------
                            Meldrum       (Ex. P1)     1,742,044       December 31, 1929
                            Buckner       (Ex. P2)       154,580       September 1, 1874
                            Pierce        (Ex. P3)     1,802,829       April 28, 1931
                            Richardson    (Ex. P4)       793,958       July 4, 1905
                            Williams      (Ex. P5)     1,201,008       October 10, 1916
                            Harman        (Ex.  1)     2,011,484       August 13, 1935
                

The foregoing "prior patents" were particularly relied upon by defendant. As to this, the record (pp. 392 and 410) shows:

"The Court: * * * Are counsel able to stipulate as to any one or more of these patents which you think is the one that is most like or comes closest to the Harman patent?

"Mr. Jack Schley (of counsel for defendant): Well, your Honor, they show different phases of the invention and that will be clearly brought out in the brief, if there is a brief.

"The Court: Is it your position that there is no one of them is particularly — you could point out particularly as being more like — nearest to an anticipation of the Harman patent?

"Mr. Jack Schley: Well, yes. I think I could point out, I could select some of them as probably being more pertinent than others.

"The Court: Which would they be? * * *

"Mr. Jack Schley: Your Honor, we were asked to specify certain patents out of the number and we will designate as most important Exhibit P-5, Williams, 1,201,008, and P-1, Meldrum, 1,742,044, and P-2, Buckner, 154,580, and P-3, Pierce, 1,802,829, and P-4, Richardson, 793,958, and Harman patent 2,011,484, which is Exhibit 1".

In their brief and in oral argument, counsel for defendant call attention also to patent to Roberts No. 1,446,274, February 20, 1923, (Ex. P-12) and patent to Cordes, No. 1,165,155, December 21, 1915. (Ex. L)

In their oral argument and brief counsel for defendant now argue concerning the Cordes patent (No. 1,165,155) to some extent at least, as if it were to be here considered as an Anticipation. In their brief (p. 13) they set forth a "Summary of the Cordes Patent" and on p. 15 say "Aside from the Cordes patent a number of prior patents * * * are relied upon."

The fact is, however, that this Cordes patent (Ex. L) was not among those listed by defendant in his answer as an anticipation. It was introduced in evidence merely for the purpose of showing the state of the art. As to this, the record (p. 363) shows: "Mr. Jack Schley: And I will offer this (Cordes) patent, (Ex. L) in evidence as illustrating the state of the art.

"The Court: It isn't one of the patents named in the answer.

"Mr. Jack Schley: No, sir.

"The Court: It is offered merely for the purpose of showing the state of the art, not as an anticipation, as I understand it.

"Mr. Jack Schley: No, not as an anticipation".

Some of the alleged "prior patents" which defendant relies on, namely Harman, (Ex. 1) Meldrum, (Ex. P1), Pierce (Ex. P3) and Roberts (Ex. P12) were before the Patent Office when Harman secured Claims 1 and 2 here in issue. (File Wrapper Ex. C). It has been many times held that an alleged prior art patent is weakened as an anticipation when it is overcome by the patentee in the Patent Office when he secured the alleged infringed claims. In McKay Co. v. Schott Mfg. Co., D.C., 25 F.Supp. 716, at page 719 this Court stated that "It (the File Wrapper) further shows that after various revisions of the claims and arguments to the Patent Office, the McGowen patent (with the four claims in suit) was granted notwithstanding the existence of these prior art patents. The presumption of invention which attaches to a patent was thus in this instance increased and the grounds for invalidating the patent must be correspondingly greater. Gray v. Eastman Kodak Co. et al., 3 Cir., 67 F.2d 190, 195; Hartford-Empire Co. v. Obear-Nester Glass Co., 8 Cir., 71 F.2d 539, 560."

In Forestek Plating and Mfg. Co. v. Knapp-Monarch Co., 106 F.2d 554, the Court of Appeals of this (6th) Circuit at page 558, say: "The patent office considered Barnes in connection with appellee's application and rejected it as anticipatory, which weakens it as a prior art reference here. Gulf Smokeless Coal Co. v. Sutton, Steele & Steele Co., 4 Cir., 35 F.2d 433".

Further reference in more detail to the "prior art patents" referred to and relied upon by defendant is made by the Court in its findings of fact, which, together with its conclusions of law are set out herein as an integral part of this decision. It is sufficient here to state that the Court is of the opinion and so finds that plaintiff's patent is not "anticipated or specifically restricted" by the alleged "prior art patents".

The two claims here in issue read as follows: "1. An improved locking fastener comprising a body of substantially thin metal composed of bulged and connected restricted portions, said bulged portions being expansible by pressure, in combination with two separated parts of stock across which is drilled an opening substantially conforming in size and shape to said fastener, and into which opening said fastener is inserted and compressed. 2. An improved locking fastener comprising a body of substantially thin metal composed of bulged and connected restricted portions, said bulged portions being expansible by pressure and adapted to be flattened out to increase the overall dimensions of the bulged and restricted portions, in combination with two separate parts of stock across which is drilled an opening slightly larger than the fastener and into which the fastener is inserted and expanded".

It is recited in the patent that "The present invention relates to improvements in fastenings * * * and has for an object to provide an improved fastening for joining two pieces of metal, or for joining the two separated parts of a piece of metal across a crack, including the steps * * * by which an effective locking of the two parts of the metal is secured without the use of heat".

That castings are subject to cracking is shown by the proof in the case and is, as well, a matter of common knowledge. Before Harman, there were several processes of repair used. One common process was by welding. Another was a "shrink link". In either process heat was used and sometimes it became necessary to build an oven around the casting where a large casting was involved, in order to heat the casting slowly. If there was an uneven expansion, the casting was liable to crack some place else. It was necessary, when so heated, to let the casting then cool slowly. This was sometimes very expensive and not always practicable or even possible, if, for example, the machinery of which the casting was a part, was located out in an oil field or some other remote place.

The record shows that there was a great need, therefore, for something that would eliminate the tearing down of machinery, which often resulted in incapacitating it for considerable periods of time.

That plaintiff's invention met this need is illustrated by the testimony of the witness Stembridge (among others). Mr. Stembridge was foreman of the shop in the El Paso Electric Company, which operated the city buses. He testified (Ex. 53, P4) as follows: "A. Well we had several blocks there, motors, and different parts of motors where there would a crack come in it, and ordinarily we had been taking the motor completely out of the car, stripping it down, having to pre-heat the block and hold it at that heat while the weld was being done, and that made it necessary to tie up the car for several days,...