Kardulas v. Florida Machine Products Company

• Decision Date: 25 March 1971
• Docket Number: No. 29514.,29514.
• Parties: Rena KARDULAS, Plaintiff-Appellee, v. FLORIDA MACHINE PRODUCTS COMPANY, R. C. Products, Inc., and John M. Dudinsky, Defendants-Appellants.
• Court: U.S. Court of Appeals — Fifth Circuit

438 F.2d 1118 (1971)

Rena KARDULAS, Plaintiff-Appellee, v. FLORIDA MACHINE PRODUCTS COMPANY, R. C. Products, Inc., and John M. Dudinsky, Defendants-Appellants.

No. 29514.

United States Court of Appeals, Fifth Circuit.

February 9, 1971.

Rehearing Denied March 25, 1971.

T. Paine Kelly, Jr., Tampa, Fla., for defendants-appellants.

Owen Rice, Jr., Tampa, Fla., for plaintiff-appellee.

Before TUTTLE, DYER and SIMPSON, Circuit Judges.

DYER, Circuit Judge:

Defendant, Florida Machine Products Company, made and sold hair roller holders which admittedly infringed United States Patent No. 3,128,882, entitled "Hair Roller Holder," invented and owned by plaintiff, Rena Kardulas.¹ The District Court found the patent valid and infringed. Defendant appeals only from the judgment of validity. We reverse because of the exclusion of relevant evidence concerning prior public use.

The Kardulas invention

A beautician needs rollers of many different sizes to set a coiffure. These rollers must be kept clean and easily accessible. Hair rollers tend to become entangled when placed in a pile; to untangle them requires considerable effort and time. This problem is compounded because beauticians usually have only one hand free. They need a means for keeping hair rollers of differing lengths and diameters in a small space within easy reach so that they are readily identifiable, can be picked up with one hand, and can be replaced without disturbing or displacing other rollers.

The invention claimed in the Kardulas patent relates to an improved holder for hair rollers which includes a base with at least two cylindrical carriers spaced apart, each carrier comprising at least three cylindrical surfaces. The junction of cylindrical surfaces with the base of an adjacent cylindrical surface provides at least two shoulder surfaces, each wide enough to support a hair roller. The holder allows one to visually and readily determine the location of a hair roller of a particular size. During use, the holder maintains the rollers in place, each carrier accommodating coaxially mounted rollers of different sizes. While one hand is preoccupied, a beautician can easily locate and identify hair rollers of varying dimensions and can pick up or replace any particular roller with one hand without displacing other rollers.

Since defendant's infringement is undisputed, the sole issue on appeal is the validity of the Kardulas patent.

Kardulas applied for her patent on July 11, 1963, and it was issued on April 14, 1964. T. R. Snow applied for patent No. 3,221,891 (which completely discloses the Kardulas invention) on June 19, 1963, and it was issued on December 7, 1965. Obviously the Snow application was filed three weeks before the Kardulas application was filed.

Defendant attacks the District Court's finding of the validity of the Kardulas patent on three grounds: First, plaintiff failed to introduce sufficient evidence to carry her invention back beyond the date of her application, and the trial court was therefore required to consider that date, July 11, 1963, as the date of her invention. Consequently the prior application of T. R. Snow on June 19, 1963, was equivalent to a publication describing Kardulas' device before its invention. Second, there was a prior public use of the patented device by Snow. Third, the Kardulas patent is invalid for lack of invention.

The Snow application and Kardulas' invention date

It is clear that plaintiff invented her device no later than the filing date of her application, since filing constitutes a constructive reduction to practice. James B. Clow & Sons, Inc. v. United States Pipe & Foundry Co., 5 Cir. 1963, 313 F.2d 46, 48 n. 1. But unless Kardulas proved an invention date antedating Snow's filing date, Snow's application would constitute a prior publication under 35 U.S.C.A. § 102(e)² fully anticipating plaintiff's invention. Sperry Rand Corp. v. Knapp-Monarch Co., 3 Cir. 1962, 307 F.2d 344, 346; Van Der Horst Corp. v. Chromium Corp., 2 Cir. 1952, 197 F.2d 791, 794; see Alexander Milburn Co. v. Davis-Bournonville, 1926, 270 U.S. 390, 401-402, 46 S.Ct. 324, 70 L.Ed. 651. Also, it would constitute prior art under 35 U.S.C.A. § 103.³ Hazeltine Research, Inc. v. Brenner, 1965, 382 U.S. 252, 256, 86 S.Ct. 335, 14 L.Ed.2d 304. Thus, the Kardulas patent would be invalid because Kardulas would not be the first inventor. Alexander Milburn Co. v. Davis-Bournonville, supra at 400-402, 46 S.Ct. 324; Helene Curtis Industries, Inc. v. Sales Affiliates, Inc., 2 Cir. 1956, 233 F.2d 148, 158, cert. denied, 352 U.S. 879, 77 S.Ct. 101, 1 L.Ed. 2d 80. Kardulas was shouldered with the burden of carrying her invention date back beyond Snow's application date. Rooted Hair, Inc. v. Ideal Toy Corp., 2 Cir. 1964, 329 F.2d 761, 767, cert. denied, 379 U.S. 831, 85 S.Ct. 63, 13 L.Ed.2d 40; Syracuse v. H. Daust Manufacturing Co., 8 Cir. 1960, 280 F.2d 377, 379; Pleatmaster, Inc. v. J. L. Golding Manufacturing Co., 7 Cir. 1957, 240 F. 2d 894, 898; Oliver Machinery Co. v. Gellman, 6 Cir. 1939, 104 F.2d 11, 13, cert. denied, 308 U.S. 567, 60 S.Ct. 80, 84 L.Ed. 476. See generally 1 A. Deller, Deller's Walker on Patents §§ 46, 50 (2d ed. 1964).⁴

The date of invention cannot be carried back to that of the earliest mental conception. There must be a disclosure sufficient to enable one with ordinary skill in the art to reduce the invention to practice. Casco Products Corp. v. Zaiger, D.Mass.1936, 15 F.Supp. 1014, 1016, aff'd, 1 Cir. 1937, 93 F.2d 210. Kardulas testified that she conceived the invention in September 1960 and commissioned Tanguay, a furniture maker, to construct the parts comprising the carriers for the hair roller holder. Before December 1960, Kardulas had affixed these parts to the tray to form the carriers. Finally, between December 1 and December 15, 1960, she showed a model to her attorney, Nedvad, who corroborated her testimony.⁵ The model was properly identified and received in evidence without objection as the model shown to Nedvad.

While it is well settled that the uncorroborated and undocumented testimony of the patentee is insufficient to prove invention date, Rooted Hair, Inc. v. Ideal Toy Corp., supra, 329 F.2d at 767; Pleatmaster, Inc. v. J. L. Golding Manufacturing Co., supra, 240 F.2d at 898; Thomson Industries, Inc. v. Nippon Thompson Co., E.D.N.Y.1968, 298 F.Supp. 466, 472, we find that the testimony of Kardulas was in this instance sufficiently corroborated to prove invention date, and the model coupled with Nedvad's identification satisfied the documentation requirement. Furthermore, the model, crude as it may be, clearly provided a sufficient disclosure of the invention to enable one with ordinary skill in the art to reduce it to practice. In fact, the invention embodied in Kardulas' model was fully reduced to practice in December 1960. The only refinement remaining was to perfect the hair roller holder into a commercially marketable form, and this Kardulas was not required to do. Hildreth v. Mastoras, 1921, 257 U.S. 27, 34, 42 S.Ct. 20, 66 L.Ed. 112; Radio Corp. of America v. International Standard Electric Corp., 3 Cir. 1956, 232 F.2d 726, 730; Boucher Inventions, Ltd. v. Sola Electric Co., 1942, 76 U.S.App.D.C. 160, 131 F.2d 225, 226, cert. denied, 1943, 318 U.S. 770, 63 S.Ct. 762, 87 L.Ed. 1140.

We therefore agree with the trial court that Kardulas met her heavy burden of proving that she conceived her invention and reduced it to practice no later than December 1960, which was prior to Snow's invention date in March or April 1962. In these circumstances the Snow application was not a proper reference and does not constitute a bar to validity under section 102(e), nor does it constitute prior art under section 103.

Section 282 notice

The trial court excluded the depositions of Joyce Snow and Daniel Blatz, which were proffered by defendant to show a prior public use under 35 U.S.C. A. § 102(b).⁶ Plaintiff's objection to the proffer was that defendant had failed to give the required thirty-day written notice under 35 U.S.C.A. § 282.⁷

Defendant argues that the requirements of section 282 were substantially complied with, or alternatively, that the trial judge abused his discretion in excluding the depositions since plaintiff's counsel could not possibly have been surprised or prejudiced by their use.

Defendant, in a "Notice of Special Matters of Defense," filed June 24, 1969, specified as one of its defenses the "prior public use of one T. R. Snow in his business as a beauty shop operator at 125 South Seventh Street, Olean, New York, and others at his procurement, the names and addresses of whom are presently unknown to defendants but will be disclosed by Snow during the taking of his disposition on June 24, 1968" (emphasis added). During Snow's deposition taken on the stated date, he testified that he and Joyce Snow had commercially used the "finished product" in their shop beginning July 2, 1962, and that a beautician salesman, Daniel Blatz, had witnessed the use in the beauty shop in July. The proffered depositions of Joyce Snow and Blatz corroborated T. R. Snow's testimony.⁸ Plaintiff's counsel attended the taking of all depositions and cross-examined all of defendant's deponents. All depositions were on file with the District Court by December 23, 1968. Therefore, plaintiff's counsel had written notice of the names and addresses of these witnesses and the purpose of their testimony long before the section 282 deadline.⁹ In fact, plaintiff had the actual testimony of each witness. The trial court's reliance on Thermo King Corp. v. White's Trucking Service, Inc., 5 Cir.1961, 292 F.2d 668, to sustain his ruling is misplaced. In Thermo King no written notice of any kind that the defendant planned to use twenty-four patents to prove invalidity was given before trial. The proffered evidence in Thermo King was clearly inadmissible under section 282.

Plaintiff correctly maintains that section 282...