Messing v. Quiltmaster Corporation, Civ. A. 177-57.

• Decision Date: 21 February 1958
• Docket Number: Civ. A. 177-57.
• Citation: 159 F. Supp. 181
• Court: U.S. District Court — District of New Jersey
• Parties: Benjamin MESSING, Harry Jacobs and The Jason Corporation, Plaintiffs, v. QUILTMASTER CORPORATION, Defendant.

159 F. Supp. 181

Benjamin MESSING, Harry Jacobs and The Jason Corporation, Plaintiffs, v. QUILTMASTER CORPORATION, Defendant.

Civ. A. 177-57.

United States District Court D. New Jersey.

February 21, 1958.

COPYRIGHT MATERIAL OMITTED

William A. Kaufmann, Hoboken, N. J., and Fish, Richardson & Neave, New York City, by Henry R. Ashton, Harry R. Pugh, Jr., and Ronald F. Ball, New York City, for plaintiffs.

Norman N. Popper, Newark, N. J., for defendant.

WORTENDYKE, District Judge.

The court's jurisdiction rests upon 28 U.S.C. § 1338(a). The action is for an injunction against further alleged infringement of patents nos. 2,621,138 (138) and 2,621,139 (139) issued to plaintiff Benjamin Messing on December 9, 1952 upon applications filed February 21, 1950. Plaintiffs Messing and Jacobs claim ownership of the patents and The Jason Corporation is alleged to be a licensee thereunder. In addition to injunctive relief, plaintiffs seek an accounting and judgment for profits, etc.

We are immediately concerned only with patent 138, with respect to which defendant has moved for summary judgment of invalidity under Fed.Rules Civ. Proc. Rule 56(b), 28 U.S.C. The claimed invalidity is rested upon the contention that the patentee was not entitled to the patent in suit because the claimed invention was described in a patent granted on an application for patent by another, filed in the United States, before the invention thereof by the applicant for the patent in suit. In short, defendant charges that the patent in suit fails to meet the condition for patent ability prescribed in 35 U.S.C. § 102(e). Specifically, defendant contends upon its present motion that the patent in suit is invalid because the invention therein described was anticipated by patent no. 2,525,355, issued to Hoyler on October 10, 1950 on an application filed February 27, 1943, not referred to in the patent in suit, and which defendant claims was overlooked by the Patent Office. Defendant presently asks the court, without any extrinsic evidence, and upon the basis of a mere comparison of the patent in suit with that of Hoyler, to determine that the patent in suit is invalid for lack of invention. Defendant cites Slagboom v. Van Vlaanderen Machine Co., D.C.N.J. 1956, 139 F.Supp. 785, and Glatt v. Sisco, D.C.N.J.1956, 136 F.Supp. 936, decisions respectively of Judge Meaney and of the late Judge Modarelli of this court, as precedents for the action which movant would have this court take upon this motion.

Patents were declared invalid on motions for summary judgment in Montmarquet v. Johnson & Johnson, D.C.N.J. 1949, 82 F.Supp. 469, affirmed per curiam 3 Cir., 1949, 179 F.2d 240, certiorari denied 1950, 339 U.S. 979, 70 S.Ct. 1025, 94 L.Ed. 1384, and in W. E. Plechaty Co. v. Heckett Engineering Inc., D.C. Ohio 1956, 145 F.Supp. 805. In Montmarquet, 82 F.Supp. at pages 474-475, Chief Judge Forman relied upon the rule recognized in United States v. Esnault-Pelterie, 1938, 303 U.S. 26, 58 S.Ct. 412, 82 L.Ed. 625:

"`* * * that where, with all of the evidence before the court, it appears that no substantial dispute of fact is presented, and that the case may be determined by a mere comparison of structures and extrinsic evidence is not needed for purposes of explanation, or evaluation of prior art, or to resolve questions of the application of descriptions to subject-matter, the question of invention and infringement may be determined as questions of law.'"

The court then states, 82 F.Supp. at page 475:

"It must be conceded that all the physical evidence which is material to a decision in this case is before the court. * * * No further opinion testimony is necessary in the light of the clear and uncontroverted factual basis that is available and ready for a legal conclusion to be applied to it."

The validity of the patent in suit is presumed. This presumption is not an idle factor, * * * but is a positive factor which must be overcome by one who asserts invalidity. Artmoore Co. v. Dayless Mfg. Co., Inc., 7 Cir., 1953, 208 F.2d 1, 3, certiorari denied 1954, 347 U.S. 920, 74 S.Ct. 518, 98 L.Ed. 1075, (citing, Radio Corp. of America v. Radio Engineering Laboratories, 1934, 293 U.S. 1, 55 S.Ct. 928, 79 L.Ed. 163 and Mumm v. Jacob E. Decker & Sons, 1936, 301 U.S. 168, 57 S.Ct. 675, 81 L.Ed. 983). The court is not asked to look further than the Hoyler and Messing patents for the basis upon which to determine the issue of validity raised by the pleadings. However, in order to determine patent validity upon this motion, "* * * the court must be certain that it does not need any expert testimony or other extrinsic evidence to explain or evaluate the prior art, or to explain the application of complicated patent descriptions to the subject matter of the patent so that by a mere comparison of the patent in suit with the prior art patents the court can comprehend the similarities or differences in the patents, invalidity for lack of invention being so clearly apparent on the face of the patent that no testimony could change that conclusion." Glatt v. Sisco, supra, 136 F.Supp. at page 937, (citing, Montmarquet v. Johnson & Johnson, supra, Baker v. Webb, D.C.Or. 1953, 112 F.Supp. 394 and Chiplets, Inc., v. June Dairy Products Co., D.C.N.J. 1950, 89 F.Supp. 814). In Mas v. Owens-Illinois Glass Co., D.C.N.J.1954, 122 F.Supp. 582, Judge Meaney of this Court granted a motion for summary judgment in a case involving a patent covering the design of bottles, but the issue raised by the motion was that of infringement, and, moreover, the court decided the motion upon exhibits illustrating the prior art, the patent references, and the file wrappers, as well as upon pleadings and affidavits of the parties.

It is not my function on this motion to decide disputed issues of fact, but only to determine whether there is an issue of fact to be tried, and all doubts as to whether a genuine issue of fact exists must be resolved against the moving party. Toebelman v. Missouri-Kansas Pipe Line Co., 3 Cir., 1942, 130 F.2d 1016, American Optical Co. v. New Jersey Optical Co., D.C.Mass.1944, 58 F. Supp. 601 (citing, E. W. Bliss Co. v. Cold Metal Process Co., D.C.Ohio 1942, 47 F.Supp. 897 and Weil v. N. J. Richman Co., D.C.S.D.N.Y.1940, 34 F.Supp. 401). In American Optical, supra, the action was for the recovery of unpaid royalties under certain patent license agreements in which the defendant alleged invalidity of the patents. Defendant's motion for summary judgment was based upon the claims that the illegality of the license agreement sued upon was apparent on the face of the complaint. In denying the motion, the court construed the license agreements as legal, saying 58 F.Supp. at page 605:

"In the usual infringement case where the validity or scope of the patents is in issue the question cannot be decided without the aid of expert testimony and reference to file wrappers and prior art. Such an issue is not rightly disposed of by summary judgment (citing cases). However, the question before this Court relates not to the scope but to the construction or interpretation of the patent claims, i. e., whether a given element is or is not included within the claim. Determination of the meaning of the patent claims can be made from the face of the instrument, as in a written contract. This involves questions of law for the Court, not of fact for a jury."

Keeping in mind the now statutory principle (35 U.S.C. § 282) that a patent shall be presumed valid and that the burden of establishing its invalidity rests upon the party asserting it, we proceed to examine the Hoyler patent, upon which defendant relies, for the purpose of determining whether or not it so clearly anticipates the Messing patent as to leave no issue of fact which could overcome the presumption of Messing's validity. In order to constitute anticipation, the disclosure of Messing by Hoyler must be clear. Allied Wheel Products, Inc. v. Rude, 6 Cir., 1953, 206 F.2d 752.

In determining whether Hoyler anticipates Messing, the specifications and drawings as well as the claims of the former may be considered in comparison with the claims of the latter. Suczek v. General Motors Corp., 6 Cir., 1942, 132 F.2d 371. It is, of course, unnecessary to the invalidation of a patent for want of invention that a complete anticipation thereof be disclosed in a single prior patent. Westinghouse Electric Corp. v. Bulldog Electric Products Co., D.C.W.Va. 1952, 106 F.Supp. 819, affirmed 4 Cir., 1953, 206 F.2d 574, certiorari denied 1953, 346 U.S. 909, 74 S.Ct. 240, 98 L.Ed. 406. However, defendant on its present motion has elected to stand or fall upon Hoyler as a prior description of Messing's patent.

Plaintiff concedes that the present motion poses the single question whether the alleged invention defined in the claims of the patent in suit is "described in the copending patents to other inventors cited by defendant." In considering this question we are reminded by plaintiff that "* * * a patent speaks as an anticipation from the date of its issue and not from the date of the application." East Rutherford Syringes, Inc., v. Omega Precision Medical Instrument Co., D.C.N.J.1957, 152 F.Supp. 497, 501, and that "* * * in order for the prior applicant to be the first inventor, his patent application must actually disclose the thing patented to a later applicant" (Baltimore Paper Co. v. Oles Envelope Co., D.C.Md.1936, 13 F.Supp. 951, 955, affirmed 4 Cir., 1937, 89 F.2d 279).

The issuance of the Hoyler patent on October 10, 1950 antedated that of Messing on December 9, 1952. Hoyler's application was filed February 27, 1943, while that of Messing was filed February 21, 1950.

Plaintiff cites the following respects in which he would distinguish claim 2 of the patent in suit from the disclosures of the Hoyler patent:

(1) Messing teaches a method of forming laminated quilted material, while Hoyler does not mention quilting.

(2) Messing provides for the...