Holzhauer Products Corporation v. Zaiger

• Decision Date: 27 July 1936
• Docket Number: 4251.,No. 4088,4088
• Citation: Holzhauer Products Corporation v. Zaiger, 15 F.Supp. 1006, 30 USPQ 258 (D. Mass. 1936)
• Parties: HOLZHAUER PRODUCTS CORPORATION v. ZAIGER. SAME v. SIGNAL MFG. CO.
• Court: U.S. District Court — District of Massachusetts

15 F. Supp. 1006

30 USPQ 258

HOLZHAUER PRODUCTS CORPORATION v.ZAIGER.

SAME v.SIGNAL MFG. CO.

Nos. 4088, 4251.

District Court, D. Massachusetts.

July 27, 1936.

James A. Brickett, of Boston, Mass., Ralph W. Brown, of Milwaukee, Wis., and John K. Carter and Bradley L. Hill, both of Boston, Mass., for plaintiff.

Frederick A. Tennant and Nathan Heard, both of Boston, Mass., for defendants.

BREWSTER, District Judge.

These two infringement suits involve the same patents and were tried together.In each case the defenses were anticipation, noninvention, and noninfringement.The patents involved are Murphy, No. 1,378,604; reissue patent to Steinman, No. 17,821;andHolzhauer, No. 1,721,663.

Statement of Facts.

I. Murphy, No. 1,378,604.

1.On his application filed June 17, 1920, letters patent of the United StatesNo. 1,378,604 issued to John W. Murphy on May 17, 1921.This patent related to an improvement in condensation-preventing devices.The object of the invention was to provide an electrically heated device, to be attached to the inner side of automobile windshield or windowpane, the heating coil obtaining its power from the battery of the car or other suitable source of electricity, thus heating the member upon which it is attached to such an extent as to prevent rain and snow from depositing on the outer surface of the glass or frost forming on the inner surface of the glass.

2.The device consisted of a circular frame carrying a pane of glass.Within the frame is a concentric ring, or clamping member, between which and the frame is disposed a strip of packing material which, extending beyond the frame, is adapted to contact the windshield.The inner ring carried means for supporting in position a heating coil which extended around the periphery of the device.The ring and frame with the packing between were held together by ordinary bolts and nuts.Murphy discloses no specific means for attaching the device to the windshield, but says it may be mounted by means of suitable clamps.Only the first and second claims of the patent are involved in this controversy.The second claim is sufficiently illustrative:

"2.A device of the class described comprising a frame including a rim, a piece of glass carried by said frame, a strip of packing material fitted against said rim and extending beyond the edge of the same, being designed to bear against a plate of glass, a clamping member associated with the frame and retaining the packing against said rim, said member being provided with inwardly extending ears which serve to support and retain a heating coil in place."

3.It is shown by the file wrapper that Murphy's claims were several times rejected as involving no invention over prior references, and during the course of the proceedings in the Patent Office Murphy emphasized, as the novel feature entitling him to a patent, the means for retaining the packing material in position, including means for supporting and retaining the heating coil in position.All the elements of his simple device were old in the art.He could not have rightly claimed that he was the first inventor of transparent windshield defrosters or heaters, or that he first discovered the advantages of a dead air space in contact with a windshield.His elastic sealing strip was old, and the use of electric heating means and the means which he used were both old in the art.It is quite apparent that Murphy made no claim to any of these features.That he could not have successfully claimed them as novelty is seen from a consideration of prior patents, cited by the defendant, namely, Walter, No. 973,089(1910);Camm, No. 1,117,128(1914);Bidwell, No. 1,143,491(1913);Haws, No. 1,304,479(1919).

4.Walter's patent shows a heater applied to the outside of windows of electric cars or the like.Its purpose was to prevent accumulation of sleet and ice on the windows by covering a portion of the window and presenting its own heated surface to the action of the elements.The device had a circular metal frame, a strip of packing material carried by the frame and extending therefrom and being adapted to fit against the plate of glass, a clamping member for retaining the packing materials in position and for supporting the heating wires.One or more sheets of mica inside of a pane of glass were carried by the frame, the sheets being held by rivets at equal intervals about the frame, which rivets afforded a means of support for the heating wires which ran across the heater instead of around it, as in Murphy's patent.The specifications in Walter's patent deal at length with a device for attaching and adjusting the heating apparatus, with which we are not now concerned.Comparing the heating element with that of Murphy, the only difference relates to details of construction, except that Walter's was designed for application to the outside of the windshield, whereas Murphy's was intended to be attached on the inside.There is a possible difference in function, since in Murphy's device the heat was applied to the inside of the glass in order to melt the snow and ice on the outside, while in Walter's invention the heat was applied to the outside of the windshield.

5.The basic idea of Murphy's alleged invention is found also in Camm.Camm described the following claim:

"The combination with a window framework, of a pair of transparent glass panes mounted therein side by side with an intervening confined space, a resistance wire interposed between said panes for the purpose of heating said panes, an insulating distance piece for separating said panes and supporting the convolutions of said resistance wire, and means for supplying current to said resistance wire."

Camm's invention involved a complete window, but he states in his specification that, "of course, it will be readily apparent that the entire window need not be thus heated so long as a sufficient portion of the window is provided with means to keep it clear."

One of the express objects of this invention was to provide a clarifying transparent media to be used in the windshields of automobiles, the use of which would prevent the deposit thereon of snow and sleet.

6.Bidwell, No. 1,143,491(1915), is another patent disclosing a double window similar to Camm's, except that the heating element is incorporated at the bottom of the window, allowing the heated air to pass up through an air space between the panes, thereby preventing the accumulation of moisture on the windshield.

7.I find that in 1917 the Wetmore-Savage Company, a dealer in automobile accessories, advertised and sold a device for defrosting windshields of automobiles which, in appearance, resembled somewhat Murphy's device and embodied all the essential elements of it and in the same combination.

II.Steinman, ReissueNo. 17,821.

1.On February 15, 1926, one Harry H. Steinman filed an application for letters patent of the United States, upon which a patent (No. 1,681,443) was issued August 21, 1928.

In a petition dated September 15, 1929, Steinman asked to be allowed to surrender these letters patent, which had been assigned to the No Frost Clear Vision Shield Company, and to receive a reissue patent for the same invention upon annexed specifications.Due to some irregularity, this petition was given a filing date of November 29, 1929.The patent was reissued October 7, 1930.

On the original application only two claims were allowed, and in the reissue patent three claims were allowed; the first claim being the same as in the original.The second and third claims, the only ones involved in this suit, were added in the reissue patent.

2.While the device is called an anti-frost device and was designed for windshields of automobiles, it contains no heating element, nor was there any suggestion anywhere that a heating unit was to be used in connection with it.In the original specification, the device is described as "a separable frame having a flexible sealing member gripped intermediate the edges of said frame to contact with a surface against which the frame is positioned, and having vacuum cups removably connected to the device for fastening it to a smooth surface, the frame being demountable to permit interchanging a thin transparent sheet position therein and inserting other sheets of substantially equal thickness in lieu thereof."

In the specifications in the reissue patent it is stated that "an object of the invention is to secure a metal supporting frame for a transparent sheet and a sealing strip in contact with the window, with vacuum cups so connected with the frame as to permit an unbroken contact of an endless sealing strip carried by the frame with the window."(Italics supplied.)

Again, in his specifications accompanying his petition for reissue, Steinman states: "Of essential importance in achieving the function of my invention is the supporting of vacuum cups by a frame in such a manner as to permit an endless sealing strip being carried by the frame, with the cups spaced from this sealing strip so as not to interfere with the continuity of the strip, and this I secure by a projecting bracket portion upon each end of the supporting frame, in which bracket portion a vacuum cup is removably mounted."

3.There is nothing in the specifications accompanying the original patent indicating any necessity for an arrangement of the vacuum cups, so as to permit an unbroken contact of an endless sealing strip.It was to cover this arrangement that the two additional claims were added in the reissue.The claim adequately illustrating the device is as follows:

"An anti-frost shield, comprising an outer frame consisting of a narrow strip of metal formed with a downturned surrounding flange, a transparent closing sheet fitted inside the flange of said frame, a sealing strip surrounding the edge of said transparent sheet inside said flange and projecting beyond said flange, means for detachably securing said sealing...