Interstate Rubber Prod. Corp. v. Radiator Specialty Co.

• Decision Date: 26 July 1954
• Docket Number: No. 6783.,6783.
• Citation: 214 F.2d 546
• Parties: INTERSTATE RUBBER PRODUCTS CORP. et al. v. RADIATOR SPECIALTY CO., Inc. et al.
• Court: U.S. Court of Appeals — Fourth Circuit

214 F.2d 546 (1954)

INTERSTATE RUBBER PRODUCTS CORP. et al. v. RADIATOR SPECIALTY CO., Inc. et al.

No. 6783.

United States Court of Appeals, Fourth Circuit.

Argued June 4, 1954.

Decided July 26, 1954.

Walter P. Huntley, Los Angeles, Cal. (Edward B. Beale and George R. Jones, Washington, D. C., on the brief), for appellants.

A. Yates Dowell and A. Yates Dowell, Jr., Washington, D. C. (Maurice A. Weinstein, Charlotte, N. C., on the brief), for appellees.

Before PARKER, Chief Judge, and SOPER and DOBIE, Circuit Judges.

SOPER, Circuit Judge.

This case of patent infringement relates to United States Patent No. 2,333,273 issued to Charles D. Scanlon on November 2, 1943 upon an application filed February 17, 1941. The patent pertains to a safety marker which comprises a hollow conical body, particularly the kind of marker used on highways to indicate wet paint, repairs, &c. Claim 1 of the patent describes the product in these words:

"A marker of the character described, consisting of a tapering hollow body of substantially uniform thickness formed of resilient sheet material, and a relatively heavy base secured to the lower marginal edge of said body and projecting laterally therefrom to provide an extended support to stabilize said marker in upright condition, said body being open at its lower end and unobstructed to admit of the markers being nested."

In appearance the marker in place resembles a megaphone about two feet in length, set on end. In practice it is made of rubberized sheet material, and the specifications suggest that for reasons of economy, strips of rubberized fabric, cut from old automobile tires, may be used in the manufacture, although new material may be employed. The inventor's purpose was to replace the wooden tripods or barriers, theretofore customarily used to indicate dangerous spots or newly painted lines on the highway, which were not easily seen, were readily broken or worn out, and presented some hazard to passing automobiles. The advantages of the patented article are manifest; it is readily visible, causes no damages to an automobile which strikes it, returns to its original position when struck a glancing blow, is easily nested or stacked so as to require a minimum storage space, and may be placed in position or removed by an operator seated in a moving vehicle, and it will stand considerable abuse.

The patented marker has also been found useful for shifting the "center line" of much used highways in the City of Los Angeles during peak traffic hours so as to provide an additional lane in the direction of the heavy flow of traffic which runs in one direction during the morning rush and in the opposite direction in the afternoon. For this purpose the easily handled rubber marker has been found much more desirable than the heavy iron pedestals formerly employed.

As the result of these several advantages the patented marker has had considerable commercial success since production began in 1947, and has been used throughout the United States, as well as in some foreign countries. These merits were quickly recognized by I. D. Blumenthal, the president of the Radiator Specialty Company, Inc., and an appellee herein, who sought unsuccessfully to secure a license under the patent, and then, being advised that the patent did not involve invention, placed a competing device on the market which is so similar to the plaintiffs' as to remove all doubt of infringement, if validity is shown. Hence we need consider only the latter question.

We are in accord with the conclusion of the District Judge, 114 F. Supp. 120, that the disclosures of the patent did not involve invention since they comprised nothing beyond the competence of a person having ordinary skill in the art to which the subject matter pertains. The history of the patent throws light upon the inquiry. In 1936 Scanlon was employed as a painter in the Street Painting Department of the City of Los Angeles and observed the inadequacy of the markers then in use. In 1940 the idea of the patented marker occurred to him and in collaboration with a tire shop operator he decided to put it into practice by making a marker of fabric and rubber from old tires; and a few of the markers were made. Not long afterwards production was discontinued because of the inability to obtain the materials due to war conditions. The patent was applied for in 1941 and granted in 1943; and later when production was resumed it was found desirable to use collapsible sheet material, as described in the claims of the patent, and to mold it under heat and pressure in the form in which it is now used in actual practice. The product has met with the success above described.

The hollow conical shape has of course long been employed in numberless objects in common use, for example, megaphones, flower pots, dunce caps, &c. which may be nested one within the other; and the prior art suggested the use of other desirable features of the product for like or kindred purposes; for example, the O'Toole patent, No. 1,337,947 disclosed a collapsible signal post of rubber, which would not injure a passing vehicle when struck and would return to its normal position; the Warren and Hornby patent No. 1,824,643 showed markers to be used at the side of a football field which were hollow and wider at the bottom than at the top and were made of rubber so as not to injure a player who might collide with them. This fund of common knowledge was available to all persons interested in the problem, so that the solution, although a beneficial and successful improvement, did not in our judgment involve the exercise of the inventive faculty.

It is quite impossible to define patentability except in the most general terms. It cannot be denied merely on the ground of the simplicity of a discovery, as appears in the classic example of the Eibel patent, Eibel Process Co. v. Minnesota Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523; see also Goodyear Tire & Rubber Co. v....