Malta Manufacturing Company v. Osten

• Decision Date: 09 March 1963
• Docket Number: Civ. A. No. 21913.
• Citation: 215 F. Supp. 114
• Parties: MALTA MANUFACTURING COMPANY, Plaintiff, v. Fred C. OSTEN, Sr., and A. R. B. Window Sales Company, Defendants.
• Court: U.S. District Court — Western District of Michigan

215 F. Supp. 114

MALTA MANUFACTURING COMPANY, Plaintiff, v. Fred C. OSTEN, Sr., and A. R. B. Window Sales Company, Defendants.

Civ. A. No. 21913.

United States District Court E. D. Michigan, S. D.

March 9, 1963.

Strauch, Nolan & Neale by William A. Strauch and John D. Nies, Washington, D. C., and Robert E. Childs, Detroit, Mich., of counsel, for plaintiff.

Barthel & Bugbee, by Willis Bugbee, Detroit, Mich., for defendants.

McCREE, District Judge.

This is an action for declaratory judgment brought by Malta Manufacturing Company to declare invalid all claims of defendants' Patent No. 2,903,736 and to declare all claims of defendants' Patent No. 2,903,736 not infringed by plaintiff. Plaintiff also seeks relief from asserted violation of the antitrust laws by defendants, acts of unfair competition and patent misuse by defendants.

Defendants have counterclaimed, seeking a determination that Patent No. 2,903,736 is valid, is infringed by plaintiff and is enforceable against plaintiff. Defendants also seek appropriate relief by way of injunction and an award of treble damages, attorneys fees and costs.

Defendants' patent, issued September 15, 1959, is for an automatically locking sash balance for removable sash windows. Defendant Osten is the owner of the patent and defendant A.R.B. Window Sales Company holds an exclusive license to make and a non-exclusive license to use and sell the device disclosed in the patent.

Plaintiff's accused device bears Patent No. 3,012,292 issued December 12, 1961, for a removable window with a sash counterbalance locking device. The patent was granted to F. C. Brengman who assigned it to plaintiff.

Vertically sliding sash windows, which have two removable panes or sashes, each of which may be raised or lowered manually, have been in use for many years. For many years prior to the date of the patent in suit, sliding sash windows have been constructed so that they can be removed from the guides in which they slide or so that they can be swung inwardly from their normal vertical position and plane for the purpose of washing, painting, replacement or repair. For many years prior to the patent in suit, sliding sash windows have been counterbalanced by weighted sash balance cords or by springs. Where a sash counterbalance cord or spring is used, the counterbalance cord or spring must be readily disengageable from the sash when the sash is removed from the frame. When the sash is removed from the frame, substantial inconvenience results if the counterbalance cord or spring is permitted to retract to an inaccessible position adjacent the top of the window, as it will do unless some locking means is provided to prevent this when the cord or spring is disengaged from the sash. When the sash is reinserted in the frame some means must be provided to re-engage the sash with the cord or spring and to unlock the cord or spring in order to permit the tension of the balancing spring or weighted sash cord to reapply to the window sash.

Plaintiff's and defendant's devices both have the object of providing a sash spring balance which will automatically lock in its tensioned position upon removal of the sash, regardless of the location at which the sash is removed, and will automatically unlock when the sash is replaced in the window frame, thus enabling the sash to be removed and replaced at any position.

In defendant's Patent No. 2,903,736, the object is achieved by a locking plate which is connected to the balancing spring and is actuated by the balancing spring. The locking plate is rockably mounted on a pivot seated in a lock carrier. The lock carrier slides up and down with the balancing spring within the hollow casing which holds the balancing spring. The locking member is connected to the balancing spring at a location spaced away from the pivot. When the sash is removed from the window frame, the trigger portion of the locking plate is disengaged from the sash catch causing the balancing spring to jerk or rock the locking plate around the pivot causing a sharp edge of the locking plate to dig into the wall of the hollow casing thereby locking the spring sash balance in its tensioned position. When the sash is replaced in the window frame the trigger portion of the locking plate re-engages the sash catch. The weight of the sash causes the locking plate to rock around the pivot so as to withdraw the sharp edge of the locking plate from its locking engagement with the wall of the hollow casing, thus balancing the sash upon the balancing spring.

In plaintiff's Patent No. 3,012,292, the object is achieved by a slide block which is connected to the balancing spring and is actuated by the balancing spring. The side block slides up and down with the balancing spring within the hollow casing which holds the balancing spring. The slide block is eccentrically connected to the balancing spring at a location spaced away from the longitudinal axis of the slide block. When the sash is removed from the window frame, the slide block is disengaged from the sash plunger causing the balancing spring to jerk or rock the slide block about its fulcrum edge causing a sharp brake portion of the slide block to dig into the wall of the hollow casing thus locking the spring sash balance in its tensioned position. When the sash is replaced in the window frame the slide block is reengaged with the sash plunger. The weight of the sash causes the slide block to rock back to a vertical position disengaging the brake portion of the slide block from the wall of the hollow casing, thus balancing the sash upon the balancing spring.

The major issues before the court are:

1. Is Patent No. 2,903,736 valid?

2. Does plaintiff's device infringe Patent No. 2,903,736?

3. Have defendants violated Sections 1 or 2 of the Sherman Act or committed acts of unfair competition and if so, has plaintiff established the fact of injury?

4. Is defendant Osten guilty of misuse of Patent No. 2,903,736?

1. Invalidity of defendants' patent.

35 U.S.C.A. § 282, provides that "A patent shall be presumed valid. The burden of establishing invalidity of a patent shall rest on a party asserting it."

35 U.S.C.A. § 103 provides:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, 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. * *"

Both parties have properly characterized the patent in issue as a combination patent. A strict construction is required of combination claims and a high standard of invention is exacted to sustain them. Bobertz v. General Motors Corporation, 228 F.2d 94 (6th Cir., 1955), cert. den. 352 U.S. 824, 77 S.Ct. 32, 1 L.Ed.2d 47 (1956). In Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 151, 71 S.Ct. 127, 129, 95 L.Ed. 162 (1950) the court (quoting from Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 82 L.Ed. 1008 1938) stated:

"The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention."

The evidence establishes and the court finds that:

1. Each element in the patent-in-suit is anticipated in prior art references.

2. The aggregation of the old elements in the patent-in-suit does not produce a new, unobvious and unexpected result nor does the aggregation perform a new and different function or operation.

3. The differences between the subject matter of the patent and the prior art are such that the subject matter would have been obvious at the time the invention was made to a person having ordinary skill in the art.

The patent-in-suit discloses a combination of the following elements:

1. An elongated hollow casing having an elongated aperture therein.

2. A resilient sash balancing member anchored to said casing and disposed therein.

3. A lock carrier reciprocably mounted in the casing.

4. A pivot element attached to the lock carrier.

5. A locking member rockably mounted on the pivot element and connected to the resilient member at a location spaced away from the pivot element, containing a trigger portion and a locking portion.

6. A rocking lever arm on the locking member.

Each of these elements is anticipated in prior art references.

The elongated hollow casing appears in British Patent No. 4,006 issued in 1908, in U.S. Patent No. 2,383,852 issued in 1945 and in U.S. Patent No. 2,837,781 issued in 1958.

The resilient sash balancing member appears in U.S. Patent No. 1,777,997 issued in 1930, in U.S. Patent No. 2,791,795 issued in 1957 and in U.S. Patent No. 2,837,781 issued in 1958.

The lock carrier and pivot element appear in U.S. Patent No. 2,383,852 issued in 1945; and a lock carrier appears in U.S. Patent No. 2,747,219 issued in 1956 and in U.S. Patent No. 2,791,795 issued in 1957.

The locking member appears in British Patent No. 4,006 issued in 1908, in U.S. Patent No. 2,791,795 issued in 1957 and in U.S. Patent No. 2,837,781 issued in 1958.

The rocking lever arm appears in U.S. Patent No. 2,791,795 issued in 1957.

Of these prior art references only U.S. Patents No. 2,791,795 and No. 2,747,219 were cited in the file of the patent in issue. The statutory presumption of validity is weakened if there is applicable prior art not considered by the patent office. Aluminum Company of America v. Sperry Products, Inc., 285 F.2d 911 (6th Cir., 1960), cert. den., 368 U.S. 890, 82 S.Ct. 142, 7 L.Ed.2d 87 (1961); Barrott v. Drake Casket Co., 187 F.Supp. 284 (W.D.Mich.1960), affirmed, 6 Cir., 297 F.2d 934 (1962). All elements of the prior art have a bearing on the question of...