JR Clark Co. v. Murray Metal Products Co.
| Decision Date | 23 July 1953 |
| Docket Number | Civ. A. No. 5683. |
| Citation | 114 F. Supp. 224 |
| Parties | J. R. CLARK CO. v. MURRAY METAL PRODUCTS CO., Inc. |
| Court | U.S. District Court — Southern District of Texas |
Andrew E. Carlsen and Douglas L. Carlsen, of Minneapolis, Minn., and James F. Weiler, and Fulbright, Crooker, Freeman & Bates, of Houston, Tex., for plaintiff.
Vinson, Elkins & Weems, Joe E. Edwards, J. V. Martin and B. R. Pravel, of Houston, Tex., for defendant.
This is a civil action for alleged infringement of Claim 1 of the patent to John, No. 2,276,981, and an action for unfair competition based upon the use of flat expanded metal in an ironing table top. Plaintiff seeks to restrain the defendant from the alleged patent infringement and unfair competition and asks for an accounting by defendant for damages occasioned by such alleged patent infringement and such unfair competition.
Defendant admits the ownership of the patent in plaintiff and the jurisdiction of this court, but denies the charge of infringement and the charge of unfair competition, and asserts that the patent is invalid and that the unfair competition allegation has no basis in fact.
The issues thus presented for determination are as follows:
(1) Validity of Claim 1 of the patent in suit.
(2) Infringement of Claim 1 of the patent in suit.
(3) The unfair competition charge.
Findings of Fact
Plaintiff, The J. R. Clark Company, was incorporated in 1889 as a Minnesota corporation and now has its principal place of business at Spring Park, Minnesota (Pl. Ex. 5).
Defendant, Murray Metal Products Company, Inc., is a Texas corporation with its principal place of business at Houston, Texas (Def. Answer, Par. 2).
The amount in controversy exceeds the sum of $3,000, exclusive of interest and costs.
Plaintiff is the lawful owner of United States Letters Patent No. 2,276,981, in suit, issued March 17, 1942, on an application of Edward T. John, for Ventilating Metal Ironing Table Top, which patent issued to plaintiff as assignee from said John (Pl. Ex. 1 and Stipulation filed at trial).
Defendant had knowledge of the John patent No. 2,276,981, in suit, prior to the commencement of this suit (Answer, Par. 8), and plaintiff has at all times marked its tables with patent notice as required by law (Pl. Ex. 11, and Olander testimony, Tr. pp. 151-152).
The ironing table top defined by Claim 1 of the patent in suit was not disclosed in the earlier filed copending application of John (Serial No. 366,537) which matured into John patent No. 2,320,607, since such earlier filed patent illustrated only a fragmentary section of flat expanded metal (which has been disclosed for use since as early as 1918) without any disclosure concerning the frame structure or the manner of attachment of the top to the frame as disclosed in the patent in suit. During the prosecution of the patent in suit before the Patent Office, the Patent Office ruled that the patent in suit was not a "continuation-in-part" of said earlier filed application and John, during said prosecution, acquiesced in such ruling by changing the designation of the patent in suit to an "improvement" on the earlier filed John patent No. 2,320,607.
I therefore find that the patent in suit is, in fact, an improvement and comprises a separate invention from that of the John patent No. 2,320,607 and therefore must stand on its own filing date of March 8, 1941 (Pl. Ex. 1, 14 and 16).
The Patent Office, in issuing the patent in suit, failed to consider the most pertinent prior art, as follows:
Prior to the filing of the John patent in suit, ventilating ironing table tops which allowed for the passage of steam were old and well known in the prior art showed numerous instances of ventilated ironing table tops (Trans. p. 46), as evidenced by the following patents (Def. Exs. 3 and 4):
Prior to the filing of the John patent in suit, ventilated tops for pressing bucks for ironing machines which function as an ironing surface in the same manner as an ironing table (Trans. p. 292) and which allowed for the passage of steam, thereby preventing condensation, were old and well known, as evidenced by the following patents (Def. Ex. 3):
Prior to the filing of the John patent in suit, the materials disclosed for use for the ventilated ironing table tops were perforated metal, woven wire or mesh material, metallic open work elements and expanded metal lath, as evidenced by the following patents (Def. Exs. 3 and 4):
Prior to the filing of the John patent in suit, flat expanded metal for use as a table top or top surface, as well as the combination of a flat expanded metal top surface with a framework, were old and well known, as evidenced by the following patents and publications (Def. Exs. 3 and 5):
U. S. patent No. 2,152,168 — Anderson — March 28, 1939
"Shelf-X — Flat Surfaced Expanded Steel Sheets", published by U. S. Gypsum Company, November 22, 1935
"Shelf-X — Effects Economies and Important Product Improvements", published by U. S. Gypsum Company, November 22, 1935
"The Red Top Econo Mesh Book", published by U. S. Gypsum Company, January 8, 1936
"Red Top Econo Mesh Products", published by U. S. Gypsum Company, November 2, 1936
I therefore find that tables having a flat expanded metal top on a framework are an old combination and that at most the patent in suit merely discloses a new use of such old combination.
Prior to the filing of the John patent in suit, flat expanded metal and its inherent qualities and characteristics were well known and were widely advertised by the manufacturers of flat expanded metal, as evidenced by the following publications (Def. Ex. 5):
"Shelf-X — Flat Surfaced Expanded Steel Sheets", published by the U. S. Gypsum Company, November 22, 1935
"Shelf-X — Effects Economies and Important Product Improvements", published by U. S. Gypsum Company, November 22, 1935
"Red Top Econo Mesh Products", published by U. S. Gypsum Company, November 2, 1936
"Flat Expanded Metal", dated October 12, 1939, published by the Consolidated Expanded Metal Companies, Wheeling, West Virginia
"Expanded Metal Shelves", published by the Consolidated Expanded Metal Companies, Wheeling, West Virginia, May 6, 1936.
The disclosures in the prior patents and prior publications make it evident that woven wire, expanded metal lath and flat expanded metal are fully equivalent materials and will all provide ventilation in an ironing table top, and this fact is verified by the admission made by the patentee in his earlier filed patent No. 2,320,607 (Pl. Exs. 14 and 16).
The prior publications included in Defendant's Exhibit 5 clearly suggested the substitution of flat expanded metal for perforated metal or woven wire in any item where a ventilated or an open mesh-work material had been previously used or was desired (Def. Ex. 5) in view of said prior publications, the substitution by the patentee of the patent in suit of flat expanded metal for prior known analogous ventilated materials in an ironing board would be a logical extension of the same idea by a skilled man assigned to the task of designing a ventilated top ironing table (Tr. pp. 116, 346).
Woven wire, when used in an ironing table top, provides adequate ventilation and has the capacity for absorbing localized applications of heat without buckling or otherwise distorting the flat and level surface condition thereof, and the only difference between woven wire and flat expanded metal is that the woven wire has a slightly uneven surface but since a pad overlies the top during ironing, this slightly uneven surface will be immaterial to the ironing operation (Tr. p. 116; John patent No. 2,320,607, p. 2, col. 1, lines 29-30).
The only improved function which the patentee (John) of the patent in suit alleged for the use of flat expanded metal when it is substituted for woven wire material was "faster ironing", but this was admitted by the patentee to be a function resulting from the inherent property of flat expanded metal (Tr. pp. 125-127); furthermore, it was recognized long before the filing date of the patent in suit that ironing table tops which are ventilated produce "faster ironing", as evidenced by the British patent to von Nawrocki, No. 4,690, and U. S. patent to Wardwell, No. 2,110,008 (Def. Ex. 3).
The substitution of flat expanded metal for perforated metal, woven wire or expanded metal lath produces no new element, and no new function in an ironing table top resulted, and it provides no startling, unexpected, or radical change over the prior art other than the inherent advantages of the flat expanded metal (Tr. pp....
To continue reading
Request your trial
-
LODGE & SHIPLEY COMPANY v. Holstein and Kappert
...275 F.Supp. 903, 907 (D.C. Ill.1967); Dollac Corp. v. Margon Corp., 164 F.Supp. 41, 54 (D.C.N.J.1958); J. R. Clark Co. v. Murray Metal Products Co., 114 F.Supp. 224 (D.C.S.D.Tex. 1953). In construing claim 12, the "means" for performing the function of "suspending each article-engaging memb......
-
JR Clark Company v. Murray Metal Products Company
...that its product had become so identified with appellant as to acquire secondary significance in the trade. The district court found, 114 F.Supp. 224, that no patentable novelty or invention existed in appellant's mere use of flat expanded metal for an ironing table top; that such metal and......
-
Smith Industries International v. Hughes Tool Company
...1924, 298 F. 579, 585-586. 10 Citing, Smith v. Florence-Mayo Nuway Co., 4th Cir. 1950, 182 F.2d 507; J. R. Clark Co. v. Murray Metal Products Co., S.D.Tex.1953, 114 F.Supp. 224, 229, modified, 5th Cir. 1955, 219 F.2d ...
-
Barnard v. FRUEHAUF TRAILER COMPANY
...by the Patent Office. Rosaire v. Baroid Sales Div., National Lead Co., C.A.5, 218 F.2d 72; The J. R. Clark Co. v. Murray Metal Products Co., Inc., D.C. S.D.Texas, 114 F.Supp. 224 (affirmed as to patent invalidity C.A.5, 219 F.2d 313). 8. The subject matter of claims 1 and 2 of the patent in......