Lemelson v. DeLUXE READING CORPORATION

• Decision Date: 14 January 1971
• Docket Number: No. 63 Civ. 3663.,63 Civ. 3663.
• Citation: 321 F. Supp. 1281
• Parties: Jerome H. LEMELSON, Plaintiff, v. DeLUXE READING CORPORATION and the Great Atlantic and Pacific Tea Co., Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

321 F. Supp. 1281

Jerome H. LEMELSON, Plaintiff, v. DeLUXE READING CORPORATION and the Great Atlantic and Pacific Tea Co., Inc., Defendants.

No. 63 Civ. 3663.

United States District Court, S. D. New York.

January 14, 1971.

Joseph D. Lazar and Arthur T. Fattibene, New York City, for plaintiff.

David H. T. Kane, New York City (Gerald Levy, Siegrun D. Kane and Kane, Dalsimer, Kane, Sullivan & Kurucz, New York City, on the brief), for defendants.

CANNELLA, District Judge.

Action for infringement of a patent on a toy gun, brought under the Patent Act of 1952, 35 U.S.C. § 1 et seq., is dismissed.

The court finds that on December 6, 1960 the plaintiff was issued a patent on a toy gun containing a ricochet noise mechanism, United States Letters Patent No. 2,962,837. This mechanism simulates the sound of a ricocheting bullet through use of a reed-like noisemaker which is activated by the sudden expansion of a spring-loaded bellows.¹ Following issuance of the patent, the defendant DeLuxe Reading Corporation hereinafter "DeLuxe" manufactured and marketed within this District toy guns called the "Jungle Jack" and the "Johnny Eagle Red River" which allegedly infringe plaintiff's patent. The co-defendant The Great Atlantic and Pacific Tea Company hereinafter "A & P" sold the "Jungle Jack" within this District.²

The court has jurisdiction pursuant to 28 U.S.C. §§ 1338, 1400.

The defendants contend that the patent is neither valid nor infringed by their guns. In attempting to overcome the statutory presumption in favor of a patent's validity,³ they argue that plaintiff's patent is invalid for lack of novelty under 35 U.S.C. § 102, for obviousness under 35 U.S.C. § 103, and for failure to make an adequate disclosure under 35 U. S.C. § 112.

VALIDITY

The court finds that while plaintiff's patent does contain a combination of elements known in the prior art—e. g. a bellows, a spring, a reed-like noisemaker, a trigger mechanism—nowhere in the prior art is the patent "identically disclosed." See Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp., 372 F.2d 263, 267 (2d Cir. 1967). The plaintiff's patent is therefore not invalid for lack of novelty. The "fact that each element of a creation * * * is found in the prior art does not negate novelty if the old elements are combined in such a way that as a result of the combining an improved, useful, and more advantageous innovation is obtained." Shaw v. E. B. & A. C. Whiting Co., 417 F.2d 1097, 1101 (2d Cir. 1969).

Section 103 of Title 35, U.S.C. provides that a patent may not be obtained "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Therefore, the court is obliged to determine the scope and content of the prior art, differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

The prior art primarily relied upon by the defendants⁴ consists of the following patents:

                PATENTEE             PATENT NO.          DATE FILED
                Briggs                 387,761          Aug. 14, 1888
                Pickl                1,188,315          June 20, 1916
                Willett              1,205,498          Nov. 21, 1916
                Parsons              1,582,778         April 27, 1926
                Bocchino             1,769,251          July  1, 1930
                Mueller              1,880,354           Oct. 4, 1932
                Crisler              2,418,399          April 1, 1947
                Wolf                 2,459,300          Jan. 18, 1949
                Hjelm                2,527,254          Oct. 24, 1950
                Singer               2,534,996          Dec. 19, 1950
                Everett              2,561,849          July 24, 1951
                Christopher          2,734,310          Feb. 14, 1956
                

The Briggs patent is a toy gun adapted both for spinning a top and shooting a ball. The barrel of this gun contains a rod which causes a top on the upper portion of the gun to spin when the rod is released by a detent, trigger and spring. The Pickl patent is a toy gun with a barrel that contains a leaf spring which is actuated by trigger, thus allowing the free end of the spring to strike a drum and produce the simulated sharp report of a pistol. The Willett patent is a toy gun with a steel sounding plate which emits a single sharp report or similar successive or ricochet sounds when it is hit by a hammer actuated by a trigger and cam.

The next three patents on the above list are not toy guns. The Parsons patent is a toy doll containing a spring-enclosed bellows which makes a crying sound when actuated by a bell crank lever and a suction cup. The Bocchino patent is simply a toy bellows containing a wind-operated reed. The Mueller patent shows a fluid gun (not a toy) in which liquid is ejected from a bellows by means of a construction plunger, which is placed in motion through release of a compressed spring by a trigger.

The six remaining patents cited by the defendants are toy guns. The Crisler patent uses a trigger mechanism in a rifle to release a hammer spring, allowing a striker to hit a sounding anvil to produce a simulated sharp report. The Wolf patent provides two suction cups which are pulled apart by a lever connected to the trigger, thus causing a report. The Hjelm patent involves a spring which is released by the trigger to discharge a projectile. The Singer patent has a deflatable rubber handle which is squeezed to produce whistle sounds. The Everett "toy smoking gun" contains a bellows, one end of which is linked to the hammer by a rigid member. Cocking the hammer expands the bellows and snapping the hammer collapses it, allowing a small amount of powder to escape, thereby creating the illusion of a smoking weapon. The Christopher patent simulates the sound of a ricocheting bullet either by a sound-amplifier mounted near a recording disc and needle or by a lug on a revolving disc which strikes a sound-making comb and then a tuning fork.

In addition to this prior art, two patents were cited by the Patent Office as best exemplifying the prior art. A Rotfeld patent, No. 2,648,159, filed Feb. 7, 1952, is a toy siren and chromatic gun. It consists of a spring actuated piston attached to one end of a rod located in the gun's barrel which is pulled back manually using a knob attached to the other end of the rod. After the rod has compressed the spring, a locking flange adjacent to the piston engages part of the trigger mechanism to hold the spring compressed. When the trigger is pulled, the rod is released and the compressed air that results escapes through a siren located at the muzzle end of the barrel, causing a wailing noise. A Lawson patent, No. 2,598,807, filed Oct. 29, 1948, is a jack-in-the-box containing a spring actuated bellows with a reed which produces a sound upon expansion of the bellows when the top of the box is released.

After carefully considering all of the above patents, this court is not persuaded that plaintiff's patent would have been obvious at the time of the invention to a person having ordinary skill in the art.⁵ While the ordinary skill in the art at that time clearly was quite high, it is important to note that no one in the art had invented a gun that simulated the sound of a ricocheting bullet by the sudden expansion of a spring-loaded bellows prior to the time of plaintiff's invention. In this regard, it is imperative that courts not fall into the trap of combining elements from a wide range of prior art to conclude, by the use of infallible hindsight, that a patent is obvious where persons skilled in the art have failed to combine these elements to produce such a result. See Dempster Bros. v. Buffalo Metal Container Corp., 352 F.2d 420, 422 (2d Cir. 1965), cert. denied, 384 U.S. 940, 86 S.Ct. 1458, 16 L.Ed.2d 539 (1966); Reiner v. I. Leon Co., 285 F.2d 501, 503-504 (2d Cir. 1960), cert. denied, 366 U.S. 929, 81 S. Ct. 1649, 6 L.Ed.2d 388 (1961). A patent is obvious when the old elements as they are combined perform no new, different, or additional function or operation than they theretofore had performed. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969); Great A & P Tea Co. v. Supermarket Corp., 340 U. S. 147, 151-152, 71 S.Ct. 127, 95 L.Ed. 162 (1950). Judge Hand has pointed out that "all machines are made up of the same elements, * * *. But the elements are capable of an infinity of permutations, and the selection of that group which proves serviceable to a given need may require a high degree of originality. It is that act of selection which is the invention." B. G. Corp. v. Walter Kidde & Co., 79 F.2d 20, 22 (2d Cir. 1935). The plaintiff's patent demonstrates such originality by using the old elements in a particular combination previously unknown to the prior art.⁶ The invention combines for the first time a spring actuated bellows, a reed-like noisemaker, a compressing system, and a trigger mechanism. Moreover, its method of operation is unique.⁷ An actuator compresses a spring-loaded bellows until a projection on the actuator engages a projection on the trigger element. The bellows expands after these projections are disengaged by a pulling of the trigger.⁸ This patent is also unique in the specific result it achieves.⁹ The rapidly expanding bellows simulates the sound of a ricocheting bullet. In the relevant art prior to plaintiff's patent, the only elements used for simulating a ricochet sound were a tuning fork, a disc recording, and a sounding plate. The court finds that these devices contain disadvantages which would naturally tend to discourage the search for new mechanisms to produce the same effect¹⁰ and that plaintiff's patent is not invalid for obviousness.¹¹

The defendants also urge that plaintiff's patent is invalid on the grounds of failure to...