McKay Co. v. Shott Mfg. Co.

• Decision Date: 01 March 1937
• Docket Number: No. 919.,919.
• Citation: 25 F. Supp. 716
• Parties: McKAY CO. v. SHOTT MFG. CO.
• Court: U.S. District Court — Southern District of Ohio

25 F. Supp. 716

McKAY CO. v. SHOTT MFG. CO.

No. 919.

District Court, S. D. Ohio, W. D.

March 1, 1937.

Wood & Wood, of Cincinnati, Ohio, for plaintiff.

Murray & Zugelter, of Cincinnati, Ohio, for defendant.

NEVIN, District Judge.

This is an action for patent infringement. Plaintiff, The McKay Company, a Pennsylvania Corporation, is the owner by assignment of U. S. Letters Patent No. 1,959,032, issued May 15, 1934, to William R. McGowen, and also by assignment of Design Patent No. 91,997, issued April 17, 1934, to Percival Goodman. The McGowen patent is for a "Swing" and "relates to swings and more particularly to those of the glider type." The Goodman patent is for a "Design for a Glider". The ownership of the patents by plaintiff and the manufacture by defendant of the particular glider alleged to infringe each of the patents in suit are admitted.

On April 20, 1935, plaintiff filed its bill of complaint herein, charging defendant, The Shott Manufacturing Company, with infringing both patents. It prays for relief by way of injunction, accounting and damages. The defenses against both patents in suit are the same, to-wit, invalidity and non-infringement. In each instance, however, the defenses principally relied upon, are alleged anticipation and prior uses by other parties.

McGowen Patent No. 1,959,032.

As to the McGowen patent the prior public use particularly relied upon is that of St. Charles Net & Hammock Company, of St. Charles, Illinois. It is, however, further contended by defendant that the McGowen patent in suit shows and claims nothing other than the use of flat metal strips or straps having spring steel characteristics in lieu of the flexible chains and other means for suspending the seat member from the stand member of the prior art or old type glider or swing, such as is shown in such old patents as Atkinson No. 1,650,178 (Exhibit M — 1); Ericson patent No. 1,953,752 (Exhibit M—7); Mintz patent No. D65593 (Exhibit M—13); Sisbower patent No. 1,566,044 (Exhibit M — 15), and Lillibridge patent No. 1,798,546 (Exhibit 6); that while the McGowen patent claims the obvious and expected rigid attachment of the flat metal strips or straps at their upper ends to the stand member and at their lower ends to the seat member, and certain of the claims carry other limitations or qualifications, none of such other qualifications distinguish from the patented prior art. Nor does the limitation of "rigidly connected" spring strap suspension means distinguish from the St. Charles prior use.

At the beginning of the trial, counsel for defendant stated (Rec. p. 15), "Now, in addition to that which I have said, we of course have some prior art patents that we shall submit but which we do not rely on particularly because we are satisfied that the defenses established by the device made up in St. Charles, Illinois, as early as 1930 is an anticipation of the McGowen patent in suit".

In addition to the prior art patents just referred to, defendant introduced, among others, patent to Morse, No. 824,133, June 26, 1906 (Exhibit M — 14); patent to Brewer, No. 430,616, June 24, 1890 (Exhibit M — 3); patent to Sisbower, No. 1,401,286, December 27, 1921 (Exhibit N — 4); patent to Birch, No. 9779 (British), April 26, 1906 (Exhibit N—2); patent to Kline, No. 347,428, August 17, 1886 (Exhibit N — 3); patent to Eaton, No. 1,173,654, February 29, 1916 (Exhibit N — 5); patent to Couch, No. 1,862,953, June 14, 1932 (Exhibit N — 7).

Reference is here made to these particular patents (just above enumerated) because they are specifically set forth and discussed in an opinion (later to be referred to) by Judge Hamilton, in the District Court, Western District of Kentucky, in the case of McKay Company (plaintiff herein) v. Logan Company, 15 F.Supp. 644.

In addition to the patents referred to by Judge Hamilton, defendant in the instant case calls specific attention to a patent to Delany, No. 871,571, November 19, 1907 (Exhibit M—6), and patent to Bean, No. 284,940, September 11, 1883 (Exhibit M — 2), which latter patent defendant submits teaches everything that can be learned from McGowen — that Bean sought exactly the same swing action or motion as did McGowen. Bean patent No. 284,940 relates to a hobby horse and does not clearly recite that spring steel straps are contemplated. Rather, it states, "The hangers can be made of elastic material, strips of leather answering well, which may be rigidly secured at each end." As pointed out by the witness Briner (Rec. p. 144), if Bean contemplates using straps of flat spring steel they could not roll on the smooth pegs as shown in the patent drawing. Delany patent No. 871,571 relates to a grain sieve which is mounted on the upper ends of springs and vibrated rapidly through short amplitude of movement. Again, as stated by the witness Briner (Rec. p. 142), the difficulties of embodying such a structure in a glider are obvious and even if such an adaptation were made, it would not function satisfactorily as a glider because with the seat supported on the upper ends of Delany's vertical springs, there would be gravitational resistance to return movement of the seat from a deflected position, with long hold periods at the ends of the path of swing.

It is well settled that prior art patents are not a part of the prior art, except as to what is disclosed on their face; they cannot be reconstructed in the light of the invention in suit and then used as an anticipation or to repel novelty. Buck-eye Incubator Co. v. Blum, D.C., 17 F.2d 456, affirmed, 6 Cir., 27 F.2d 333. Nor does the fact that various elements of the patented combination may be found in the prior art render the patent invalid. Frey v. Marvel Auto Supply Co., 6 Cir., 236 Fed. 916, 919.

As conceded by plaintiff, the Brewer (No. 430,616) and Morse (No. 824,133) patents are obviously the closest references. They were both cited by the Patent Examiner against the application for the McGowen patent in suit.

The file wrapper (Exhibit N) discloses that plaintiff's assignor's claim was first rejected by the Patent Office because of the state of the prior art as illustrated in Morse or Brewer and in some of the other prior art patents hereinbefore referred to. It further shows that after various revisions of the claims and arguments to the Patent Office, the McGowen patent (with the four claims in suit) was granted notwithstanding the existence of these prior art patents. The presumption of invention which attaches to a patent was thus in this instance increased and the grounds for invalidating the patent must be correspondingly greater. Gray v. Eastman Kodak Co. et al., 3 Cir., 67 F.2d 190, 195; Hartford-Empire Co. v. Obear-Nester Glass Co., 8 Cir., 71 F.2d 539, 560.

The court deems it unnecessary to discuss further the questions relating to these prior art patents, however, for the following reason — the trial of the instant case was held and the testimony taken before this court on March 12th, 13th and 14th, 1936. At that time there was pending before the District Court, at Louisville, Kentucky, (Rec. p. 5-6) the case (above referred to) of McKay Company v. Logan Company. Subsequent to the introduction of any evidence in the instant case (except Exhibits 26 and 26-a, which were admitted by agreement of counsel on November 23, 1936 — the date of oral argument), to-wit, on July 16, 1936, the Logan Case was decided by Judge Hamilton, who, after discussing the prior art patents therein (and insofar as they are the same, herein), held the McGowen patent in suit here (and there) to be valid.

The McGowen patent in suit contains four claims. These (together with the objects of the invention) are set forth verbatim in Judge Hamilton's decision. They are all in issue here and were all in issue in the Logan Case.

On all questions bearing upon validity (not including the St. Charles use which it appears was not fully presented, or at least not pressed in the Logan Case) (Rec. p. 6), the court is in full accord with the views as expressed by Judge Hamilton in the Logan Case and adopts his conclusion and his reasons therefor in all respects as set forth in his opinion, the same as if repeated here. Obviously, having reached the same conclusion, it is unnecessary for this court to repeat what has already been so well stated by Judge Hamilton.

This leaves, therefore, in this connection, but one question for this court to determine which was not urged in or determined by the Kentucky District Court, though it appears that some evidence bearing on the subject must have been there presented; this is the claim of defendant that devices similar to those covered by the McGowen patent were made and sold by St. Charles Net & Hammock Company, of St. Charles, Illinois, at a time prior to the application for the McGowen patent. The reference made to this in the opinion by Judge Hamilton (15 F.Supp. p. 647) is as follows: "The St. Charles Net & Hammock Company catalogued and sold gliders before the patent in suit was issued, having many features of McGowen's glider."

Defendant introduced testimony by way of a number of depositions in support of its claim that devices similar to those of the McGowen patent were made and sold by the St. Charles Net & Hammock Company, of St. Charles, Illinois, prior to May, 1932, which is the earliest date established for McGowen's alleged conception of the invention. (Rec. p. 18). The first device (defendant claims) was made at the St. Charles Company one Saturday afternoon during July or August, 1930, by three men, named Hough, Durstock and Duane Lillibridge. These men are brothers-in-law. It is claimed that this device had the flat spring steel straps or hangers secured at their opposite ends to the stationary stand or frame and to the swinging seat parts by means of nuts and bolts, and that after the first device was made, it was shown to C. F. Benneke, a salesman for The John A. Roebling Sons Company, and that Mr....