Magnus Harmonica Corp. v. LAPIN PRODUCTS
| Decision Date | 23 June 1953 |
| Citation | 114 F. Supp. 942 |
| Parties | MAGNUS HARMONICA CORP. v. LAPIN PRODUCTS, Inc. |
| Court | U.S. District Court — Southern District of New York |
Burgess, Ryan & Hicks, New York City, Newton A. Burgess, and H. H. Hamilton, New York City, of counsel, for plaintiff.
Harry Price, New York City, for defendant.
This is a suit for infringement of three patents issued to Finn H. Magnus which were assigned to the plaintiff corporation.
The defendant denies infringement, asserts the invalidity of the patents and counterclaims for unfair competition and for a declaratory judgment of invalidity.
The Letters Patent involved are as follows:
No. 2,373,129, issued April 10, 1945, of which the plaintiff relies upon Claims 1, 2, 3, 5, and 7.
No. 2,407.312, issued September 10, 1946, of which the plaintiff relies upon Claims 4 and 5 No. 2,416,451, issued February 25, 1947, of which the plaintiff relies upon Claim 2.
I shall hereafter refer to these patents by their last three numbers respectively.
Two of the patents in suit, namely '129 and '312 concern harmonica reed plates molded of plastic with integral reeds.
Patent '451 concerns the mold to be used in making a reed plate of the kind described in the '129 patent.
The defendant has, since 1947, manufactured plastic toy harmonicas embodying a plastic reed plate with intergral reeds upon which it has a patent (No. 2,572,818) issued October 23, 1951 to David Rosenheim, one of its officers.
The claims relied upon under the '129 patent read as follows:
It is apparent upon examination that the reed plate with integral reeds used in the defendant's Toymonica is substantially identical with the reed plate and reeds described in the '129 patent.
Richardson, the plaintiff's expert, testified that claim 1 of the '129 patent accurately described the reed plate and reeds of defendant's Toymonica. He said that claim 7 which differs from claim 1 only in the substitution of "polystyrene" for "a plastic composition" also describes it since the accused device is made of polystyrene.
Claim 5 appears to resemble more accurately claim 2 of the '129 patent, although the plaintiff relates claim 5 to claims 1, 3 and 7 and distinguishes claim 2 from all of these.
Claim 2 describes the reed heel end as "integrally connected to one side of said reed plate from a point at one end of said slot and intermediate the sides of said plate to a point beyond said slot end" which results in a rounded connection.
This feature is not present in the reed plate and reeds of the Toymonica offered in evidence.
However, an inspection of one of defendant's molds reveals that the projections have been chamfered on the corner so as to form the fillet connection of the reeds with the reed plates. It would seem, therefore, that reed plates made from this mold embody this feature of claim 2. Richardson so stated.
The claims relied on under the '312 patent read as follows:
Richardson testified that these claims describe defendant's reed plates.
Actually, these claims embrace only a so-called reed stick which must be assembled with a reed plate. Upon assembly, this device approximates the defendant's reed plate with integral reeds. Richardson illustrated this by cutting the plaintiff's reed plate along a line passing through the end of the slot at which the reed is anchored.
The claim relied on under the '451 patent reads as follows:
Richardson said that he had inspected one of defendant's molds and he explained how claim 2 of patent '451 describes the construction of defendant's mold. He made a sketch of the mold and broke down claim 2 in relation to it.
Defendant's case on noninfringement is meager. It did not challenge Richardson nor did its counsel adduce from its own expert, Mantell, any testimony tending to distinguish the devices.
A distinction was sought to be made between the accused devices and patents '312 and '451 by other means which will appear hereafter.
My judgment, therefore, is that defendant's device is a clear infringement of claims 1, 2, 3, 5 and 7 of plaintiff's patent '129. I find that the reed plate of defendant's harmonica is practically a replica of the reed plate contemplated by the claims 1 and 7 of plaintiff's patent and as to the remainder of the claims there is such identity as to constitute infringement.
Defendant contends that its harmonica is a toy and a tune may not be played on it. It asserts this defense particularly as against claims 4 and 5 of '312 wherein the reeds are described as "molded in tune."
This defense, if good, would be applicable to both patents '129 and '312. However, I do not regard this as a defense to either patent. It may very well be that defendant's device is a "toy" but that is rather a general term and covers a large field. In defendant's patent the device is described as "* * * an improvement in children's toy musical instruments," (italics mine) and in several claims of said patent it is called a "three-piece toy harmonica." (Italics mine.) If infringement is present, calling defendant's harmonica a toy will not excuse it.
I believe it to be correct that defendant's harmonica is not in tune and cannot play a tune while plaintiff's harmonica is in tune and may be played.
However, defendant's harmonica does make a sound; one might say a musical sound. It certainly was intended for use by a child who might very well get as much satisfaction out of defendant's harmonica as an older person would out of plaintiff's harmonica. Without a sound coming from it, it would be of no value even to a child.
It is not necessary that an article to infringe must be an exact copy of the other article. Sufficient to say there must be sufficient similarity so that it may be said that it infringes.
While my decision hereafter as to the validity of '312 does away with the necessity of determining the infringement of it1 I feel I should at least state my views on this question. Were patent '312 valid I feel that defendant's device would be an infringement of it. The same may be stated in connection with '451 the infringement of which I now discuss even though unnecessary. See footnote below.
The defendant argues that it does not infringe patent '451 because the mold described therein is not used by the plaintiff nor defendant. He drew from Magnus, Richardson and Hugg that a certain feature of the mold depicted in the patent application is not used to make the plaintiff's reeds. This feature involved a fixture whose function is to press the reeds down into position after such reeds have been molded above the reed plate. It is true, apparently, that the plaintiff does not use this feature, nor does the defendant. Nevertheless, I fail to see the merit in defendant's argument. Claim 2, which is relied on, makes no point of this feature. Claim 1, which is not relied on, does describe it. But the defendant makes no argument that claim 2 is limited by claim 1.
According to Richardson, claim 2 describes defendant's mold, and the mold described in that claim is the only basis here for accusing defendant's mold. The...
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Magnus Harmonica Corporation v. Lapin Products, 351
...and a declaratory judgment of invalidity. Judge Conger heard the case in October and November of 1951. In a decision filed on December 18, 1952, 114 F.Supp. 942, patent 451 was found invalid for lack of invention; patent 312 was held invalid because anticipated by 129; and 129 was found val......