Kay Jewelry Co. v. Gruen National Watch Case Co.

• Decision Date: 13 May 1930
• Docket Number: No. 5452.,5452.
• Parties: KAY JEWELRY CO. v. GRUEN NATIONAL WATCH CASE CO.
• Court: U.S. Court of Appeals — Sixth Circuit

40 F.2d 600 (1930)

KAY JEWELRY CO. v. GRUEN NATIONAL WATCH CASE CO.

No. 5452.

Circuit Court of Appeals, Sixth Circuit.

May 13, 1930.

George F. Scull, of New York City (Schanfarber & Schanfarber, of Columbus, Ohio, and Charles W. Mortimer, of New York City, on the brief), for appellant.

H. A. Toulmin, Jr., of Dayton, Ohio (H. A. Toulmin and Francis W. Gruen, both of Dayton, Ohio, on the brief), for appellee.

Before DENISON, MACK, and HICKS, Circuit Judges.

MACK, Circuit Judge.

Appeal from a decree permanently enjoining defendant, a retail jeweler, from making, using, or selling watches containing cases manufactured according to United States patent No. 1,573,134, for improvements in "Watchcase and Process for Making Same," granted to plaintiff on February 16, 1926, on the application of Carl W. Bieser. The decree further ordered an accounting of profits and damages. Both claims of the Bieser patent were held valid and infringed; the court further found specially that the suit was defended by the Bulova Watch Case Company of New York City. As infringement is admitted, we need consider only the question of the validity of the claims.

When wrist watches first came into vogue, the cases were designed in a variety of ways to provide means for attaching the wrist strap which, at that time, was usually made in one piece. A common form consisted of parallel slots cut through the flange of the case so that the continuous ribbon or strap passed between the back of the case and the wrist of the wearer. In another form, wire loops were soldered to the case and bent downward to receive the strap or ribbon. Later it became the style to have the strap or ribbon discontinuous at the watch. To provide a suitable connection for the ends of this two-piece strap or ribbon similar wire loops were used with their ends soldered to the respective sides of the case. This form, however, though still in use, was objectionable because the fixed nature of the strap bar made it difficult to remove a worn ribbon or strap and to attach a new one.

To remedy this difficulty, some watchmaker, before the application for the patent in suit, devised a form of removable strap bar. In this, the strap bar was provided at either end with a movable pin, kept in place by a spring. The pins extended into sockets drilled into lugs rigidly attached to the case. By pressing these movable pins inward, the entire strap bar could be removed from its lugs and slipped out of the loop in the end of the worn strap and into the loop of a new strap, which could then be snapped into place between the watchcase lugs. The new arrangement, however, necessitated reasonably large and substantial lugs on the watchcase so that holes might be drilled into them to receive the movable pins on the ends of the wrist strap bar. The general practice was to make these lugs as separate pieces and to solder them to the watchcase. This required the stamping of separate lugs which had to be drilled before attachment; frequently it was necessary to use small rivets which were fitted into holes in the bezel (i. e., case front in which the crystal is inserted) or back, and were swaged therein. Moreover, if filled metals were used, it was necessary to make the lugs of solid metal, thereby increasing the cost; even then, solder seams were sometimes visible.

The application for the patent in suit, filed April 10, 1923, was predicated upon this previous, unpatented device of removable lugs, and stated that its objects were "to provide a watch bezel and back wherein the soldering heretofore necessary for securing lugs thereon for mounting of wrist straps and the like, is eliminated"; "to provide a watch bezel having lugs for receiving strap bars, the lugs being formed integral with the back or bezel"; and "to provide a simple, expeditious, and efficient process for forming lugs and watch cases in a single integral structure." The method claims were immediately rejected by the Patent Office, and, after repeated revisions and rejections, were canceled by Bieser, the patentee. The product claims were prosecuted and revised to meet successive rejections, and were finally allowed as follows:

"1. As a new article of manufacture a sheet metal watch case stamping comprising a base and peripheral flanges extending from the base and integral lugs formed at the periphery, connecting the flanges and lying wholly outwardly beyond one pair of opposing flanges.

"2. As a new article of manufacture a sheet metal wrist watch case stamping comprising a base and peripheral flanges extending perpendicular from the base, and lugs connecting adjacent flanges and having opposed parallel faces, one of said parallel faces of each lug being aligned with one face of an adjacent peripheral flange, the lugs being disposed in pairs at opposite ends of the case and each pair adapted to receive a mounting for wrist straps."

The bezel or back described in these claims is made by stamping a single piece of metal into the desired shape by means of dies having recesses and projections so arranged that the lugs and case are formed at the same time and by the same operation. Where filled metal is used for the case, solid metal is no longer required for the lugs, soldering becomes unnecessary, and, it is alleged, a saving of $1.32 per case, or 24 per cent., is effected. A set of dies, however, is very expensive; that used by plaintiff cost $2,500. Consequently the manufacture of the lugs integral with the case is economically practicable only if a large run of one style is assured.

The validity of the patent was assailed on the grounds of lack of invention and prior use. As to the former, which is the only defense we need consider, defendant asserts that no invention was shown in making integral parts which were formerly made in two pieces and mechanically attached; that watchcases with integral projections were known to the prior watchcase art; and that, in the sheet metal art, alleged to be analogous, the use of integral lugs or projections, stamped in the initial operation, was likewise well known. Plaintiff contends that the alleged invention did not consist merely in making integral what was formerly made separately and attached, but that the Bieser patent disclosed a watchcase embodying a new construction which possessed marked structural advantages and at the same time permitted a great saving of precious metals.

1. The patent in suit presents the typical case, difficult in its simplicity, in which a court must determine whether the specifications and claims set forth a distinct advance over the prior art or merely formulate a mechanical adaptation which might have been made by any one skilled in the particular field. But, before considering this question, it is necessary for us to ascertain just what were the precise disclosures of the Bieser patent.

Plaintiff insists that Bieser's basic problem was to provide a construction that would be strong enough, if solid lugs were eliminated, to support the watch and straps. It is argued that his task was not only to make the lugs integral with the case, but to arrange the parts so as to increase the strength, retain a suitable appearance, and secure resistance to strains when hollow, thin metal shells were substituted for solid lugs. The contention is that these objects were secured by a system of bracing whereby the side walls of the case were made in alignment with the walls of the lugs, and the inside walls of the latter were formed parallel to the outside walls and at right angles to the vertical end walls of the casing. These end walls were located between the inside...