Knaust Bros. v. Goldschlag

• Decision Date: 17 August 1939
• Parties: KNAUST BROS., Inc., v. GOLDSCHLAG et al.
• Court: U.S. District Court — Southern District of New York

28 F. Supp. 188

KNAUST BROS., Inc., v. GOLDSCHLAG et al.

District Court, S. D. New York.

June 30, 1939.

As Modified on Denial of Rehearing August 17, 1939.

Kenyon & Kenyon, of New York City (W. Houston Kenyon, of New York City, of counsel), for plaintiff.

Charles Sonnenreich, of New York City (N. Joseph Friedman, of Catskill, N. Y., of counsel), for defendants.

WOOLSEY, District Judge.

I dismiss the complaint herein on the ground that Claims Nos. 1, 2, 3, 4, 7 and 8 of United States Patent No. 2,034,678 are invalid for want of invention.

I grant the prayer of the defendants' counterclaim asking a declaration that all the eight claims of United States Patent No. 2,034,678 and the four claims of United States Patent No. 2,097,766 are invalid for want of invention.

I grant to the defendants taxable costs and all disbursements and allowances of every kind which are taxable.

I. My subject matter jurisdiction in this cause is based on the patent law in respect of the plaintiff's case, and in respect of the defendants' counterclaim, also on the Declaratory Judgement Act, 28 United States Code, Section 400, 28 U.S. C.A. § 400.

There is not any question of venue herein, or of jurisdiction over the persons of the defendants.

II. The original suit is for the infringement of United States Letters Patent No. 2,034,678 for a "Method of Producing Mushrooms" granted March 17, 1936 to Herman Knaust and Henry Knaust, of West Camp, New York, as assignors of Knaust Brothers, Inc., a New York corporation, of Coxsackie, New York.

The application for this patent was a continuation in part of their co-pending application, having Serial No. 738,118, which had been filed August 2, 1934, for a patent for an "Improvement in Producing Mushrooms."

This application of August 2, 1934, is marked on its file wrapper as "forfeited and abandoned". But it was divided in the Patent Office, and two applications were subsequently filed as offshoots thereof.

The first of these applications was dated January 8, 1936, had Serial No. 581,110, and was the application which eventuated in the above mentioned patent No. 2,034,678.

The second of these applications was filed March 12, 1936, had a Serial No. 68,450, and was the application which eventuated in patent No. 2,097,766 for a "Means of Producing Mushrooms" which was granted to Herman Knaust and Henry Knaust on November 2, 1937, and which has since been assigned to the Knaust Brothers, Inc., the plaintiff corporation referred to above. This second patent is not relied on by the plaintiff and is now only involved in the counter-claim praying that its four claims be declared invalid under the circumstances hereinafter noticed.

III. Under the original bill infringement is herein claimed by the plaintiff of Claims Nos. 1, 2, 3, 4, 7 and 8 of United States Patent No. 2,034,678.

There was a supplementary bill filed to cover infringements of said claims alleged to have occurred after the filing of the original bill.

The defendants' counsel admits that, if the patent were valid, there was infringement subsequent to the filing of the original bill, and I find as a fact that if the patent were valid there was infringement of the claims mentioned before the original bill was filed.

The only question involved on that patent is, therefore, the validity of the claims relied on herein as above stated.

IV. The original bill and the supplemental bill had both been founded at first on an infringement of the claims above mentioned of Patent No. 2,034,678, and of the four claims of Patent No. 2,097,766.

On April 6, 1939, the plaintiff, in a bill of particulars stated that it would not rely on Patent No. 2,097,766 but would rely only on claims 1, 2, 3, 4, 7 and 8 of Patent No. 2,034,678 and omitted claims Nos. 5 and 6. This was approximately three weeks prior to the commencement of the trial of this suit.

At the argument, after the trial thereof, on June 2, 1939, the plaintiff's counsel stated in open Court that he would consent to a decree under the counter-claim holding that there had not been any infringement of Patent No. 2,097,766. But this, of course, does not cover the ambit of the relief desired by the defendants.

It seems to me that in the evidence there is not any dissent from the fact that the concept shown in the specifications and claims of Patent No. 2,097,766 for a "Means of Producing Mushrooms" was old in the art, namely, that if trays of mycelium are kept dry in a place where the temperature and humidity is low, the growth of the mycelium after casing can be almost indefinitely suspended and started again when it is dampened properly and put in a temperature — circa 55 degrees Fahrenheit — high enough to be hospitable to the growth of mushrooms.

I do not think that in the case of a patent, which is a claim of monopoly hanging over a trade, the plaintiff can suddenly, at the last moment, withdraw his claim of infringement and then claim, as the plaintiff's counsel now seeks to do, that the question of the validity has become moot. Lewis Invisible Stitch Machine Co. v. Columbia Blindstitch Machine Mfg. Corp., D.C., 22 F.Supp. 705, 708, 709, and cf. Basevi v. Edward O'Toole Co., D.C., 26 F. Supp. 41, 44, applying the same principle to copyrights.

I think the plaintiff itself created a controversy by asserting the validity of the four claims of that patent and an infringement thereof. Meiniecke v. Eagle Druggist Supply Co., Inc., D.C., 19 F.Supp. 523, 525. Inasmuch as a controversy was thus created by itself, the plaintiff cannot now, having once blown hot, be allowed to blow cold and claim that there was not any controversy.

As above observed, there is not any suggestion, I think, in the evidence that Patent No. 2,097,766 disclosed anything which amounted to an invention, and as I hold the claims of Patent No. 2,034,678 relied on by the plaintiff are invalid for lack of invention and as claims Nos. 5 and 6 thereof are in pari materia with the other claims thereof, I hold that the relief asked by the defendants in their counterclaim of a declaratory judgment that all the claims of both patents are invalid is, for the reasons stated, the proper result of the proceedings herein had.

So to hold, in my opinion, conduces to economy of judicial effort, as Judge Patterson pointed out in a somewhat analogous situation in Leach v. Ross Heater & Manufacturing Company, 2 Cir., 104 F.2d 88, decided April 24, 1939, and — though it does not seem to fall precisely within Rule 41(a) (2) of the Rules of Civil Procedure, 28 U.S.C.A. following section 723c — is, I believe, not inconsistent therewith.

V. Turning now to the patent for a "Method of Producing Mushrooms", Patent No. 2,034,678, the state of the art existing at the time when the application was made for that patent is clearly shown by the first two pages of the specifications down to line 40 on the second page.

In that description of the prior art is incorporated by reference Circular No. 251 of the United States Department of Agriculture, published December 1932, entitled "Mushroom Growing in the United States."

VI. The growth of mushrooms and some of the difficulties with which it is fraught may be thus briefly summarized:

A. Mycelium—the matrix of mushrooms —is a low order of natural fungus which must be grown in a compost made of ripened horse manure.

The objective of the mushroom grower is to create a medium and surroundings as hospitable as may be to the growth of that fungus.

B. To create such a medium and such surroundings precautions must be taken to prevent—

(a) Pests, such as the sciarid fly, mites and springtails; and

(b) The various diseases of mushroom of which mycogone or the bubble disease is the most prevalent.

C. The insect pests are prevented or decreased by —

(a) So cleaning the beds or trays in which the mushrooms are to be grown as substantially to sterilize them;

(b) By pasteurizing the compost in which the mycelium is grown by raising it by appropriate use of its own bacterial fermentation, or artificially, up to a temperature of 130 to 140 degrees Fahrenheit which is lethal (1) to the larvae of the sciarid fly, (2) to mites, and (3) to springtails. But the temperature must not be allowed to get much above 140 degrees for that not only badly affects the compost, but encourages a competitive fungus growth called olive mold.

(c) By "dusting", usually with pyrethrum powder—which will kill the insects named—the compost when it is at peak heat in order to reach any insects which may come to the surface of the compost to avoid the heat therein.

(d) After the compost has been pasteurized its temperature is allowed to drop to circa 70 degrees Fahrenheit, which is, as I understand, the optimum temperature for the running of mycelium.

D. When the compost has thus been dropped to circa 70 degrees Fahrenheit mycelium spawn, as it is called, which merely means bits of a mycelium grown under laboratory conditions in a bottle or jar, are sown or pressed into the compost, and then in the course of about three weeks the mycelium will, if the temperature of 70 degrees Fahrenheit is maintained, have permeated the compost and the compost will be ready for casing with loam as a preparation for the growth of mushrooms.

In proportion as the temperature is lower than 70 degrees Fahrenheit, it will take a proportionally longer time for the mycelium to run entirely through the compost.

E. After the mycelium has spread through the bed or the tray, in order to grow mushrooms the compost has to be cased with loam—preferably pasteurized to avoid the development of mushroom diseases, or, at least, secured from a place known to be uncontaminated thereby.

After the mycelium is cased with loam and the growth of the mushrooms is to begin, the loam is dampened and the temperature has to be brought down to circa 55 degrees Fahrenheit for the optimum results so far as speed of growth is concerned. A slightly higher temperature will...