Kryptok Co. v. Stead Lens Co.

• Decision Date: 17 July 1913
• Docket Number: 3,489.
• Citation: 207 F. 85
• Parties: KRYPTOK CO. v. STEAD LENS CO.
• Court: U.S. District Court — Western District of Missouri

207 F. 85

KRYPTOK CO. v. STEAD LENS CO.

No. 3,489.

United States District Court, W.D. Missouri, Western Division.

July 17, 1913

William M. Stockbridge, of New York City, and John H. Atwood, of Kansas City, Mo., for complainant.

Theoph. D. Carns and Washington Adams, both of Kansas City, Mo., for defendant.

VAN VALKENBURGH, District Judge.

Complainant a New York corporation, is the owner of letters patent No 637,444, issued November 21, 1899, to John L. Borsch, and of letters patent No. 876,933, issued January 21, 1908, to John L. Borsch, Jr.; both for new and useful improvements in bifocal lenses. It alleges that the inventions and improvements set forth in said letters patent, respectively are capable of conjoint use in one and the same bifocal lens and that complainant and its licensees make, use, and sell bifocal lenses embodying the conjoint use of said inventions and improvements. It charges infringement on the part of defendant, and prays injunction, accounting, and damages.

To the bill the defendant, a Missouri corporation located at Kansas City, Mo., interposes the following defenses: (1) That both patents in suit are void for want of patentable novelty. (2) That both patents in suit are void for want of patentable invention. (3) That defendant has not infringed either patent. (4) That the patents in suit are not capable of conjoint use, and the defendant has not infringed said patents conjointly. (5) That complainant is not a bona fide corporation and was not incorporated in good faith and for a lawful purpose; that its organizers are engaged in unlawful combination in restraint of trade; and that it does not come into court with clean hands. Incidentally to these defenses it is claimed that the alleged inventions and discoveries of the patents in suit were all anticipated in the prior art by patent and publication; and a prior use fatal to the second patent in suit is likewise asserted. The first patent contains but a single claim. In the second patent claims 1, 2, 3, 7, and 8 are the only ones in issue, and of these claim 3 has been selected as typical of the group of claims in said patent.

At the outset it may be said that, if the patents are valid and susceptible of conjoint use, it cannot be doubted that defendant's device constitutes an infringement, because, for the purposes of this case, the two lenses are practically identical. The defense of unlawful combination in restraint of trade may likewise be disregarded. There is no substantial showing of any tendency toward monopoly, except such as inheres in the very nature and theory of the patent law; nor was this defense, if it be one, given prominence or emphasis at the hearing.

The defense of prior use may be dismissed with brief mention. It rests mainly upon the testimony of one Hoffman, an optician, of Minneapolis, Minn., who states that within a somewhat indefinite period, approximating the date of the Borsch, Jr., experiments, he made a very few pair of fused bifocal lenses, which he sold to customers. His testimony is uncertain and indefinite as to time and essential detail. In itself, as well as in its attempted corroboration, it is unsatisfactory and unconvincing. The record persuades me that Borsch, Jr., was the first to conceive this specific improvement, and that he prosecuted his experiments to final completeness and patent with reasonable diligence.

Such oral testimony of a prior use is always open to suspicion, and it cannot prevail over the legal presumption of validity which accompanied the patent, unless it is sufficient to establish such a use beyond a reasonable doubt. This feature of the case falls within the principles announced in many decisions. National Hollow Brake-Beam Co. et al. v. Interchangeable Brake-Beam Co. (C.C.A.) 106 F. 693, 694, 703, 45 C.C.A. 544; Parker v. Stebler et al. (C.C.A.) 177 F. 210, 101 C.C.A. 380; Albright v. Langfeld (C.C.) 131 F. 473; Continental Rubber Works v. Single Tube Automobile & Bicycle Tire Co. (C.C.A.) 178 F. 452, 101 C.C.A. 436; Laas v. Scott (C.C.) 161 F. 122-126. I shall address myself, therefore, to a consideration of the defenses of anticipation and lack of patentability.

The first patent in suit, No. 637,444, recited that:

'Heretofore bifocal lenses have been frequently formed by matching and uniting edge to edge two pieces of lens glass, each constituting but part of a complete lens, and respectively suitably ground, the one for distant and the other for near vision, and various forms have by different constructors been given to the respective elements or sections of the lens; the only fixed requirement as to such sections being that they should when united present as to their combined outer edges the usual oval outline of a lens.'

'In whatever forms the respective independent sections or elements of a bifocal lens of this character have been made, however, they have been united by bringing the respective edges of said sections or elements into contact and cementing the abutting edges by any suitable balsam or uniting medium or maintaining them in their assembled position by an inclosing lens frame.'

The aim of the proposed patent is thus stated:

'This construction has been objectionable, however, by reason of the fact that, however carefully the sections are assembled and cemented, a minute cement-filled space exists between the abutting edges, and the cement which is present of course on both surfaces of the lens in time becomes slightly worn away under the action of heat and the attrition to which it is subjected in the cleaning of the lens, with the result that the permanence of the union between the elements or sections is impaired; furthermore the line of connection between the two sections of a bifocal lens as heretofore constructed as described is always visible and not only detracts from the appearance of the lens but is an annoyance to the wearer.'

'Broadly stated, it is the object of my invention to produce a bifocal lens of an attractive efficient, and durable character, in which the objections hereinbefore stated to the existing forms of such lenses shall be obviated.' As described in the patent, this is done by taking a lens of crown glass suitable for far vision purposes, producing in one face thereof a recess of such form as to be adapted to receive and accommodate a smaller near vision lens of flint glass, having an index of refraction different from that of the larger lens, and securing this smaller lens within the recess of the larger by means of balsam or other suitable material, the result being a compound bifocal lens uniform in curvature and integral in structure from edge to edge, the minor lens not being visible to others than the wearer except on very close inspection; a crevice or joint between the elements, with its accompanying disadvantages, being entirely absent.

The claim declared was as follows:

'A bifocal lens formed of two pieces of glass of dissimilar index and size placed and secured face to face, the smaller of said lenses being mounted in a recess in the larger of said lenses, and exposed upon one face of the latter, substantially as set forth.'

The essential novelty and invention claimed for this patent is that it for the first time discloses the use of glass of different indices of refraction in such combination as to permit a completed integral bifocal structure of the same thickness and uniformity of surface as a lens composed of but one kind of glass and having a single focal point. In this way the unsightliness, instability, and other infirmities pointed out as existing in former structures were either entirely removed or reduced to a more desirable minimum. If this device presents novelty and invention, its utility and desirability can hardly be disputed; but defendant contends that it presents neither the one nor the other.

In support of the defense of anticipation, something like 27 patents are cited as references. A number of these exhibit the development of the bifocal eyeglass or spectacle from its crude origin up to the application of the first patent in suit; others have to do with globes, lamp chimneys, photographic camera lenses, reflectors, and other articles of remote analogy. Others deal with achromatic lenses intended for the elimination of chromatic aberration caused by the dispersion of rays of light into their component colors. We are, however, relieved of any extended consideration of the greater number of these cited references, because it was conceded at the hearing that the defendant relied for substantial anticipation of the first patent in suit upon the British patent issued to Henry Edward Newton in 1866 for improvements in optical instruments; that to Nathan Lazarus in 1881 for improvements in the manufacture of achromatic lenses; and letters patent No. 392,053 issued to August Morck, Jr., in 1888 for improvements in spectacles or eyeglasses. With respect to the first two, it is sufficient to state that they concededly recognize the use of two kinds of glass, crown and flint, in the manufacture of lenses; as their titles indicate, they concern eyeglasses either incidentally or remotely and bifocals not at all. It is upon the Morck patent that defendant mainly relies for its defense of anticipation of the first patent in suit; and, if the claimed invention of the latter is not disclosed by the Morck patent, then it is not anticipated by any of the other references cited.

The Morck patent No. 392,053 dealt specifically with eyeglasses employed for combined near and far range purposes. Its invention--

'consists in securing upon the lower surface of the selected far-vision lens a spherically-ground lens of about one-fourth to one-third of the surface of the larger lens, and which is...