Helms Products v. Lake Shore Manufacturing Co., 11407.

• Decision Date: 01 December 1955
• Docket Number: No. 11407.,11407.
• Citation: 227 F.2d 677
• Parties: HELMS PRODUCTS, Inc., Plaintiff-Appellee, v. LAKE SHORE MANUFACTURING COMPANY, Inc., Defendant-Appellant.
• Court: U.S. Court of Appeals — Seventh Circuit

227 F.2d 677 (1955)

HELMS PRODUCTS, Inc., Plaintiff-Appellee, v. LAKE SHORE MANUFACTURING COMPANY, Inc., Defendant-Appellant.

No. 11407.

United States Court of Appeals Seventh Circuit.

December 1, 1955.

I. Irving Silverman, Myron C. Cass, Chicago, Ill., for defendant-appellant.

Frank E. Liverance, Jr., Grand Rapids, Mich., Edward J. Wendrow, Winston, Strawn, Black & Towner, Chicago, Ill., for plaintiff-appellee.

Before LINDLEY, SWAIM and SCHNACKENBERG, Circuit Judges.

SWAIM, Circuit Judge.

This action for infringement of its United States Letters Patent No. 2,637,132 was brought by the plaintiff, Helms Products, Inc., against the defendant, Lake Shore Manufacturing Company, Inc. The plaintiff charged infringement only of Claim 1 of the patent. The defendant contended that the patent was invalid and that defendant's product did not infringe.

The issues raised by the complaint and answer were referred generally to Special Master in Chancery Manuel E. Cowen for hearing, with directions that he report his findings of fact and conclusions of law thereon to the District Court. At the conclusion of the hearing the master found facts from which he concluded that Claim 1 of the plaintiff's patent for a transparency viewer, sometimes referred to as an "illuminated picture frame," was valid and had been infringed by the defendant. The District Court approved the findings and conclusions of the special master and accordingly entered judgment for the plaintiff.

The defendant first contends that Claim 1 of the plaintiff's patent is invalid because new matter was added to the original application while it was pending in the Patent Office. The defendant insists that after the original application was denied by the Patent Office the application was changed by describing the elongated fixtures which held the picture in place as being "detachably connected" instead of "permanently connected" as they were described in the original application.

As to this contention the plaintiff points out that the original Claim 6 recited "* * * means at the front open side of the frame for releasably securing a pictorial transparency across said frame front * * *." This description necessarily called for fixtures which were "detachably connected" rather than "permanently secured." The plaintiff also directs our attention to the fact that drawings of its patent which were submitted with the original application indicate that the fixtures were removable; that if this were not true the drawings would indicate that the fixtures had been spot welded or riveted to the frame.

The defendant also accuses the plaintiff of inserting new matter in the application by amending the application by the insertion of a more detailed description of the manner in which the picture is mounted in the frame.

The plaintiff admits that the insertion of new matter is contrary to a strict rule of the Patent Office which states that any changes made after the application is filed must correspond to either the drawings or the specifications as filed. The purpose of the rule is to enforce the requirements of 35 U.S.C.A. § 132 which provides that: "* * * No amendment shall introduce new matter into the disclosure of the invention." The plaintiff insists, however, as shown above, that the changes made in the application for its patent not only correspond to the drawings but also correspond to a feature of the invention as defined in Claim 6 of the original application.

The fact that the Patent Office granted the patent in suit necessarily means that it did not consider the amendments to the application as "new matter" within the meaning of its rules or of the Act. Since the Patent Office is constantly determining and defining what is or what is not new matter, its ruling on such questions is entitled to special weight. General Electric Co. v. Cooper Hewitt Electric Co., 6 Cir., 249 F. 61. Amendments to specifications for the purpose of clarity and definiteness are permissible. H. H. Robertson v. Klauer Mfg. Co., 8 Cir., 98 F.2d 150, 152-153. We think the amendments made in the instant case were of that type. We certainly cannot say that the action of the District Court approving the determination of the Patent Office was clearly erroneous.

The defendant also attacks the validity of Claim 1 of plaintiff's patent as not constituting invention over the prior art. Claim 1 of the patent in suit reads as follows:

"1. An open frame having sides and ends, a flexible transparency extending across the opening of said frame and overlapping the sides and ends thereof, elongated fixtures detachably connected to the frame, one at each of the sides and ends of said opening and slidably embracing the edges of the transparency, and yielding resisting tension members connected to said transparency at corners thereof and also bearing against the end portions of adjacent fixtures at said corners, said tension members being under strain deformation and having inherent force therefrom acting to pull said transparency outwardly at each corner and to press said fixtures inwardly."

Prior to this patent illuminated pictures were framed by making a sandwich of two plates of glass with a transparent pictorial sheet between them, and then mounting the plates of glass thus combined with the transparent pictorial sheet into a frame. Such pictures were unsatisfactory because the glass was brittle and easily broken and because the transparent pictorial sheet under changing temperatures and atmospheric conditions expanded and contracted and thereby became wrinkled and unsightly.

The method for overcoming the disadvantages of framing these illuminated pictures was in part described in the specifications of plaintiff's patent as being:

"* * * A transparency carrying pictorial and other representations on thin material, stretched taut and supported in front of properly located lighting means, has the pictorial and other representations presented to best advantage. With our invention, a framed picture is provided, illuminated at the back with the light passing, either directly or by reflection, through the transparency, presenting the picture far better than the ordinary picture or the like is presented when merely framed and viewed from the front with only exterior lighting directed against it."

In its brief the plaintiff further explains the advantages of its invention as follows:

"* * * Under differing conditions of temperature, vapor or lack of it in the air, etc., the transparency sheet shrinks or expands. The springs pulling on the transparency yield so that the pictorial or other transparency may shrink to smaller size, yet be held unharmed, smooth and taut. Reversely, when it expands, the springs, tending to return to their normal condition, hooked onto the corners of the transparency, continue to pull thereon with their inherent forces and maintain the transparency smooth and taut. The edge portions of the transparency covered and embraced by the elongated fixtures (third element of the claim) shrink and expand, there being sufficient freedom of movement of them under the fixtures to permit shrinking or expansion. The transparency, accordingly, does not bulge, or `belly out\', under expansion and does not rupture on contraction, as would happen if the edge portions of the transparency were so positively clamped against the sides and ends of the frame that no movement could take place."

On the issue of Claim 1 of plaintiff's patent over the prior art we must start with the presumption of validity which arises from the grant of the patent — a presumption which must be overcome by one who asserts invalidity. "Even for the purpose of a controversy with strangers, there is a presumption of validity, a presumption not to be overthrown except by clear and cogent evidence." Radio Corporation of America v. Radio Engineering Laboratories, 293 U.S. 1, 2, 55 S.Ct. 928, 929, 79 L.Ed. 163; Artmoore Company v. Dayless Mfg. Company, 7 Cir., 208 F.2d 1, 3.

The defendant here insists that by reason of the manner in which this patent was presented to the Patent Office, the attention of that office was directed away from pertinent prior art patents and, therefore, there is no presumption that such prior patents were considered by the Patent Office and were found not to constitute prior art to the patent in suit. It is true that the three patents on which the defendant principally relies were not cited by the Patent Office, but as this court said in Artmoore Company v. Dayless Mfg. Company, 7 Cir., 208 F 2d 1, 4, "* * * it is as reasonable to conclude that a prior art patent not cited was considered and cast aside because not pertinent, as to conclude that it was inadvertently overlooked. Citing cases."

In the District Court the defendant insisted that plaintiff's structure did not disclose invention but amounted to merely putting together certain old patents known to the public and in public use more than one year prior to the date of plaintiff's application for its patent. In support of this contention the...