Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg. Co.

• Decision Date: 06 January 1914
• Citation: 212 F. 192
• Parties: LOVELL-McCONNELL MFG. CO. v. AUTOMOBILE SUPPLY MFG. CO. et al.
• Court: U.S. District Court — Eastern District of New York

212 F. 192

LOVELL-McCONNELL MFG. CO. v. AUTOMOBILE SUPPLY MFG. CO. et al.

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

January 6, 1914

George C. Dean, of New York City (Drury W. Cooper, of New York City of counsel), for complainant.

Ralph L. Scott, of New York City (Frederick P. Fish, of Boston Mass., and C. A. L. Massie, of New York City, of counsel) for defendants.

CHATFIELD District Judge.

The complainant in the present action alleges infringement by the defendants of three patents issued to Miller Reese Hutchison, numbered 923,048, 923,049, and 923,122, all under date of May 25, 1909.

The answer presents the issue of noninfringement, invalidity of generic claims, both as to the devices of the patentee (when viewed as a complete structure, and also as to many separate features embodied in respectively separate claims), nonpatentability by reason of alleged anticipations, and nonpatentability from alleged lack of originality over the prior art, or of invention in the applications and devices set forth in the specifications and drawings and described in the claims. The defendants insist that the broad claims must be limited to what they assume might be patentable invention as improvements or definite combinations, but that they cannot be interpreted by the comprehensive meaning of the language alone, and, if the claims are so limited, the defendants' devices are alleged not to infringe.

The early difficulties of the case and various issues presented upon the application for a preliminary injunction (which was denied, without considering the merits of the patent in any way, in 193 F. 658) have been eliminated, either by intermediate orders of the court, by agreement of the parties, or by the testimony presented upon final hearing, which has rendered these matters of minor importance.

The complainant company held the patents by assignment. The complainant Hutchison, as patentee, appeared to be nevertheless entitled to join in the equity action; but the division of damages, if recovered, or of benefits under an injunction, if obtained, would have been reserved for decree and accounting. This is now immaterial.

The individual defendant appears by the record to have been properly joined as participant in the acts alleged to be infringements, and his objection to being included as an individual defendant, for the purpose of meeting the expenses of the action and satisfying an award of damages, will not be determined as a part of the questions of validity and infringement, but will also be left for final decree. His connection with the acts charged is such that there would seem to be no reason for separating him from the defendant company, in considering the merits of the charge of infringement.

A question of unfair competition, through the similarity of the devices put upon the market by the complainant and defendants, in their general appearance, size, contour of case and horn, general adaptability to be applied in the same way for exactly the same purpose, and the striking similarities of labeling and external appearance, indicate merely that the two articles are put forward by two different manufacturers, to supply exactly the same demand, to be substantially interchangeable in purpose or use, and render competition possible only by advertising any differences in price. The tone emitted by the complainant's device and that of the defendants cannot be told one from the other, unless the horns be sounded in a way to furnish almost simultaneous comparison, or when tested by an experienced ear.

The complainant's device was first upon the market, and the defendants' device is plainly, in the general ways described, a copy. Certain patterns of the defendants' device appear to have been sold before certain modifications of the complainant's, and as to these the defendants insist that the complainant has copied their commercial article.

If the complainant is entitled to the patents as alleged, then the placing upon the market of an article resembling the patented article in appearance merely simplifies the question of infringement, and throws some light upon the allegations of practicability, commercial advantage, and use. But the very evidence showing that the defendants have sold their device at a cheaper rate, to do the work of the complainant's device and in competition with it, makes the question of unfair competition merely an element of evidence in the patent action. If the defendants have not the right to use the various elements comprised in their device, in the form and relation in which the device is put upon the market, then its general resemblance to the complainant' device would involve the question of unfair competition inextricably with the question of infringement. If, on the other hand, the defendants do not infringe, or if the complainant has not the right to control the manufacture of the device in question, the methods of advertising and the rivalry shown by the testimony, together with the old or obvious right to use similar materials, such as brass casings or horns and enameled labels, are of so little importance that at final hearing the issues have been confined strictly to the questions involved in the actions upon the patents.

Numerous other difficulties as to the order and taking of proof, conduct of the parties before and during the trial, and objection as to matters of advertising, which were brought to the court's attention and disposed of, or which came up from time to time and have disposed of themselves by later developments, need nor now be restated. The strong feeling manifested, however, between the parties to the action, must be taken into account in weighing the testimony, and brings us to the collateral matters of public use in advance of discussion of the patents themselves.

The complainant, as shown by the record, has, by great effort and evident business ability, taken advantage of the sudden increase in the use of the automobile and the great market furnished for automobile parts within the last few years. It is true, as urged by the defendants, that no large market could have existed if automobiles had not been largely used; but, assuming that the complainant was fortunate in having a device to put on the market at the right time, nevertheless, the extended use of the complainant's and defendants' horns, and the large proportion of use in comparison with other kinds of signal alarms or horns for automobiles, make it certain that the device which Hutchison tried to patent, as worked out in commercial form, has a large sale, and its value has been speedily and apparently generally recognized by the public.

No serious contention is made that the complainant has put upon the market a different device than that patented by Hutchison. On the other hand, the defendants have argued in the opposite direction, viz., that Hutchison's patents set forth a device, and his claims generally cover a signal alarm, which has been capable of the commercial success given it by the complainant, but which was much broader in many ways than any invention or claim to which the defendants admit Hutchison was entitled, if he had anything patentable in his mind at the time of filing his application.

It appears, further, that after filing his first application Hutchison continued to develop at least the expression of whatever patentable novelty he had. His counsel progressed in their dealings with the Patent Office, both in the way of volume and discrimination or differentiation of the separate matters which ultimately were embodied in separate claims. When placed upon the market, a number of the ideas and claims of the Hutchison applications were never carried beyond the paper patent stage, and by methods of elimination from the extensive statement of equivalents or of possible uses defined in the Hutchison applications, the complainant, for the commercial device, gradually worked out one form or type, which is the only form now treated as having such large commercial value, and which is also shown in the device of the defendants.

It further appears that the complainant, by ordinary business methods, contracted for and now uses, as a part of its signal, a one-way electric motor, of a type available to any one, but having the necessary capacity and qualifications for the use which the complainant wished. In practice, this motor can be run upon six dry cells and with a current of about six volts, for the ordinary use of the complainant's larger signal; the defendants' signal and a later and smaller horn of complainant are generally so constituted and adjusted as to run normally with the use of four volts. These devices are planned for attachment to an automobile, so that the current can be supplied from the secondary starting battery of the automobile, and the smaller current requirements of the smaller devices are like matters of cost; they introduce the element of saving both in cost and maintenance, as a matter of commercial competition.

In the course of business, the defendants procured from a manufacturer who sold to the market generally a number of electric motors, which had been manufactured to meet the supposed future wants of the complainant, and while the defendants thereby did not infringe any specific claim of the patent, nevertheless they have by the use of those motors, and similar motors of the same sort, increased the physical resemblance and the structural similarity of their signals to those of the complainant, and thus simplified the question of infringement.

The testimony shows, what would accord with the experience of the ordinary observer, that a signal alarm has two primary purposes: (1) The presence of the signaling moving object is to be brought to the...