Irving v. KERLOW STEEL FLOORING CO.

• Decision Date: 29 December 1938
• Citation: 25 F. Supp. 901
• Parties: IRVING et al. v. KERLOW STEEL FLOORING CO.
• Court: U.S. District Court — District of New Jersey

25 F. Supp. 901

IRVING et al. v. KERLOW STEEL FLOORING CO.

District Court, D. New Jersey.

December 29, 1938.

Bartlett, Eyre, Scott & Keel, of New York City (Thomas G. Haight, of Jersey City, N. J., and Richard Eyre and A. Parker-Smith, both of New York City, of counsel), for plaintiffs.

Milton, McNulty & Augelli, of Jersey City, N. J. (John C. Kerr and George F. Des Marais, both of New York City, of counsel), for defendant.

CLARK, District Judge.

The usual search for that needle in the haystack of patent jurisprudence, the spark of genius in the improvement. The plaintiff company describes itself as the oldest and largest manufacturer of open metallic flooring. This modest assertion finds confirmation in the file of alleged anticipating patents. All but one of these patents is owned by the corporate plaintiff and of these two are the brain children of this corporation's president, Mr. Irving. The defendant is a company also engaged in the steel flooring business. So far, at least, it appears to operate without benefit of patents and by its defence here insists upon its right to do so without interference from those or rather that of the plaintiff.

The plaintiff's patent (Irving, No. 1,991,154 application May 10, 1933 — granted February 12, 1935) purports the solution of a problem in highway bridge flooring. That problem is described in two articles or excerpts therefrom introduced in evidence as Exhibit P. 14 and Exhibit P. 33 and entitled, respectively, Economics of Decks and Floor Systems from Economics of Bridgework (Waddell, 1921) and Development Tests on a Light Floor for Bridges (Engineering News-Record, Moisseiff, 1930). Even without these articles we might have guessed the objective. It is, of course, the reconciliation of the lightness essential in bridges (particularly long span or bascule) with the "requirements of modern vehicular traffic", principal among the latter being strength, permanence and friction. Whether we could have guessed it or not, Mr. Irving, an expert in the act of decking, knew it and set himself and his company to its unravelment. His final step, the patent in suit, and its successful construction and use are enthusiastically portrayed in an article by one of his customers, J. A. Dunford, Exhibit P. 31, Irving Decking Lightweight Bridge Floor Formed by Open-mesh Flooring. The latter's enthusiasm was durable enough to bring him from Seattle to Newark to testify at some length, Record pp. 162-209.

It is common ground, as our English brethern say, that reticulated or egg crate (who but a patent solicitor would have employed the Latin rather than the Anglo-Saxon derivative) gratings for floors, streets and sidewalks and for the reinforcing of concrete on roadways and bridges are both protected by numerous patents and have been in extensive use. So the defendant's prior art patent, Exhibit D. 4 shows two patents for floor, street or sidewalk gratings (Keller, No. 1,045,795 and Price, No. 1,609,126) and four patents for gratings as reinforcement on concrete roadway bridges (Irving, No. 1,526,069 and No. 1,733,966, Van Hoffen, No. 1,629,134 and Voskamp, No. 1,666,157 and No. 1,733,923). So also defendant offers publication Exhibit D. 5 describing gratings for floors, streets and sidewalks manufactured both by the plaintiff and the defendant and by the Mitchell-Tappen Company. The patents and advertisements for flooring expatiate upon the qualities of lightness, cleanliness, and slip-proofness which are put forward as the merits of the patent in the case at bar.

The exact significance of, first, the 134th Street, New York City viaduct prior use, and second, the prior foreign patent to Schultz (a German with an English patent under the International Convention, No. 2046, 1912), is not common ground. As to the viaduct the point is made that the indicated gratings are only rather large inserts in an otherwise solid roadway and that their mesh is too small to permit of tire gripping. The Schultz patent is said to describe and therefore to be limited to light bridges suitable for foot passengers. We pass over the patriotic but certainly illogical view taken by some courts of foreign patents. Economy Appliance Co. et al. v. Fitzgerald Mfg. Co., D.C., 35 F.2d 756; Art Metal Works, Inc. v. Abraham Straus, Inc., D.C., 52 F.2d 951; Art Metal Works, Inc. v. Abraham & Straus, Inc., 2 Cir., 61 F.2d 122, certiorari denied 287 U.S. 657, 53 S.Ct. 119, 77 L.Ed. 567; Nordberg Mfg. Co. v. Woolery Machine Co., 7 Cir., 79 F.2d 685. Perhaps also the use in line 25 of the Schultz patent of the phrase "the caulks of horse shoes" may refer to the passage of the owners of the shoes over street gratings; although that too seems...