Meurer Steel Barrel Co., Inc. v. Draper Mfg. Co.

• Decision Date: 14 August 1919
• Docket Number: 437.
• Citation: 260 F. 410
• Parties: MEURER STEEL BARREL CO., Inc., v. DRAPER MFG. CO.
• Court: U.S. District Court — Northern District of Ohio

260 F. 410

MEURER STEEL BARREL CO., Inc., v. DRAPER MFG. CO.

No. 437.

United States District Court, N.D. Ohio, Eastern Division.

August 14, 1919

Emery Booth, Janney & Varney, of New York City, for plaintiff.

Albert Lynn Lawrence, of Cleveland, Ohio, for defendant.

WESTENHAVER District Judge.

Complainant's bill charges infringement by defendant of United States letters patent No. 891,895, issued June 30, 1908, to Frank E Young, on an application dated April 27, 1907. This patent was assigned by Young to the Brooklyn Range Boiler Company, a New York corporation, and later, in 1913, the complainant corporation was organized, and succeeded to the title and interest therein of the Brooklyn Range Boiler Company. Complainant's title or its corporate existence is not in dispute. The defenses are that complainant's patent, in view of the prior art, is invalid for lack of novelty and lack of invention, and that, if the claims of complainant's patent are properly limited and construed defendant's construction does not infringe.

This patent relates to metal or steel barrels, or similar receptacles, in which the heads, formed separately from the body, are secured to the latter in such a manner that a fluid-tight receptacle is provided, and this result, it is contended, is accomplished in an improved manner in complainant's patent by means of a malleable iron clamping ring.

This patent was under consideration in the District Court, Eastern Division of New York, and on April 12, 1917, District Judge Chatfield by whom the case was heard, rendered a decision (Meurer Steel Barrel Co. v. National Enameling & Stamping Co., 242 F. 273), in which he held complainant's patent valid and infringed. An examination thereof shows that the prior art relied on to show lack of novelty or invention, and to limit the scope of the claims of the patent, was that which is now before me relied upon, with the following exceptions: The Cope (British) patent, No. 2,429, issued in 1860; Brown patent, No. 636,752, issued in 1899; McSherry patent, No. 690,312, issued in 1901; Stollberg patent, No. 880,834, issued in 1908, and the second Reynolds patent, No. 881,951 issued in 1908. The Hardie patent, No. 814,375, issued March 6, 1906, cited in the Patent Office against Young's application, was said by Judge Chatfield not to have been shown in the record before him. The issues, therefore, of lack of novelty and lack of invention, differ in the instant case in no substantial respects. The prior art, in my opinion, adds nothing of material value to the prior art then under consideration; indeed, the most pertinent prior art patents are those cited in the Patent Office against the Young application, and if complainant's patent is not invalidated thereby a different conclusion is not called for by the additional prior art introduced in the former case or in the instant case. For instance, the McSherry patent is similar to Booth, No. 516,073, and Reynolds, No. 621,540, both of which were cited in the Patent Office and considered in the former case. The Cope and Stollberg patents are even less pertinent than either Booth or Reynolds.

In view of this situation, complainant invokes the doctrine of comity between courts of equal dignity in different jurisdictions, and, while this court is not asked to abdicate its own judgment, it is urged that in the interest of uniformity of ruling, and in order to avoid confusion, prior carefully considered decisions should be adhered to until some higher court reaches a different conclusion.

The force of this rule is well stated by Mr. Justice Brown in Mast, Foos & Co. v. Stover Manufacturing Co., 177 U.S. 485, 488, 20 Sup.Ct. 708, 44 L.Ed. 856. It is said in substance, that comity is not a rule of law, but one of practice, convenience, and expediency, and has substantial value in securing uniformity of decision and discouraging repeated litigation of the same question. Its obligation is not imperative; if it were, the indiscreet action of one court might become a precedent, increasing in weight with each successive adjudication, until the whole country was tied down to an unsound principle. Comity recognizes the fact that the primary duty of every court is to dispose of cases according to the law and facts: in other words, decide them right, and in so doing the judge is bound to determine them according to his own convictions. If his convictions be clear, he should follow them; but where, in his own mind, there may be a doubt as to the soundness of his views, comity comes into play, and suggests a uniformity of ruling to avoid confusion until a higher court has settled the law. The strength of this rule increases in proportion to the number of courts which have passed upon the question, and when it appears that the prior judgment follows a final hearing upon pleadings and proofs, and after a protracted litigation, and is the result of careful and painstaking consideration, greater weight should be given it. See, also, Macbeth v. Gillinder (C.C.) 54 F. 169; Beach v. Hobbs (C.C.) 82 F. 916; Penfield v. Potts (C.C.A. 6) 126 F. 475, 61 C.C.A. 371; Doelger v. German-American Filter Co., 204 F. 274, 122 C.C.A. 472; Cincinnati Butchers' Supply Co. v. Walker, 230 F. 453, 144 C.C.A. 595.

The situation now before me is one justifying, if not requiring the application of these principles of comity, unless my conviction is clear that Judge Chatfield's decision was wrong. It was made on a final hearing, upon pleadings and proofs, and after protracted litigation, in which the defendant was represented by able counsel. The record was in all essential respects the same before him as it is before me, and his opinion contains internal evidence that he gave to his judgment the most careful and painstaking consideration. In addition thereto it now appears that after his decision the defendant withdrew its appeal, agreeing to pay substantial damages for past infringement, and entered into a substantial royalty agreement; that later another suit was brought against the Whitaker-Glessner Company, in which, under advice of counsel, the defendant refrained from making a defense, paid substantial damages for past infringement, and entered into a substantial royalty agreement; and that still later the S.F.K. Company, also without waiting to be sued, paid substantial damages for past infringement, and entered into a substantial royalty agreement.

In my opinion, while the references cited in the prior art are close, and the differences between them and complainant's patent are not great, there is still sufficient difference and advance over the art there shown to sustain its validity against the defense of lack of novelty and lack of invention. This prior art has been so ably and fully reviewed by Judge Chatfield that I do not deem it necessary to review it. I concur in his summing up of it as expressed in the following paragraphs:

'Young created the shoulder, which he recognized was necessary, by rolling up the side of the barrel and folding around this the flange of the head, so as to make the beaded rim and the interlocking seam shown in the tin receptacles of the prior art. He thus produced a seam which, when made of malleable sheet iron, would of itself be strong enough to resist ordinary strains, and might be water-tight. In other words, he then had the seam of the Byrnes anti-rust vessel and that of the Scaife coal oil barrel, but with a slightly different form of fold in the beading. No novelty was presented by the mere form of the fold. But in his claims he describes different thicknesses of metal forming this fold, as different embodiments of his way of creating the shoulder which, as has been said, he recognized must be present if the chime ring was either to be locked on or to furnish any clamping effect with respect to the seam itself. He secured this clamping effect, and locked the chime ring on, by carrying over the outstanding flange, and forcing it around the beaded seam, and then bending it sharply in against the side of the barrel. He then had the old idea of the beaded rim, which was capable of being compressed, when made out of malleable metal, into a water-tight joint. He used the old idea of a shoulder, which, by the interposition of a ring of larger circumference, would prevent the straightening out of the metal flange or seam after it had been drawn into the smaller diameter. He reinforced the resistance to the stripping off of the metal which formed the smaller ring, and absolutely prevented the pulling out or opening of the folds (which constituted the seam as well as the shoulder), by locking them up inside the chime ring, which was the adaptation of another old idea, but which was applied to new uses.

'Young thus secured, also, the protecting or armor feature of the Booth, Trust, Barrath, and Reynolds patents, as a part of the mechanical or physical conditions resulting from forming a water-tight seam under the application of that force which was used to bend around and into the clamping position the projecting flange of the chime ring. He pointed out in his specifications and in his discussion with the Patent Office the differences between his application and the Reynolds patent. In so doing he assumed the lack of patentability in the old ideas of the prior art. He distinguished his patent from Reynolds, in that the presence of a shoulder, upon which to clamp down his ring and the flanges of the side and head of the barrel, was not required within the chime ring itself. He pointed out the desirability of being able to roll up the beaded seam, and form the shoulder for the clamping purpose, outside of the chime ring. He shows the economic advantage of rolling up this beaded seam as the chime ring is folded around. T

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