Mueller v. Wolfinger

• Decision Date: 07 June 1950
• Docket Number: Civ. No. 544.
• Citation: 91 F. Supp. 971
• Parties: MUELLER et al. v. WOLFINGER et al.
• Court: U.S. District Court — Southern District of Ohio

91 F. Supp. 971

MUELLER et al. v. WOLFINGER et al.

Civ. No. 544.

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

June 7, 1950.

F. O. Richey, H. F. McNenny, Cleveland, Ohio, Joseph D. Chamberlain, Dayton, Ohio, Richey & Watts, Cleveland, Ohio, of counsel, for plaintiffs.

Warren H. F. Schmieding, Jerome R. Cox, Columbus, Ohio, Schmieding, Hittson & Gerber, Columbus, Ohio, of counsel, for defendants.

NEVIN, Chief Judge.

This is a suit for alleged infringement of letters patent No. 2,300,157, issued to George R. Hunt on October 27, 1942, pursuant to an application filed November 16, 1939. The patent is for "Feather-Picking Apparatus for Fowls and the Like". Plaintiffs filed their complaint on October 9, 1945. At the time of the filing of the suit, patentee George R. Hunt then residing at Akron, Ohio, was the owner of the legal title of the patent in suit and plaintiff, Conrad B. Mueller, was the owner of the equitable title of the patent by virtue of an exclusive license agreement dated February 14, 1940.

In August, 1948, patentee Hunt died, being at that time still the legal owner of the patent in suit. Subsequent to his death, his wife, Anna May Hunt, was appointed administratrix of his estate and thereafter, on January 5, 1949, by agreement of the parties, she was, as Administratrix of the Estate of George R. Hunt, Deceased, substituted as plaintiff herein for George R. Hunt. As such Administratrix, she is the owner of the legal title of the patent in suit.

Plaintiff Greenbrier Company, an Ohio corporation of Cleveland, Ohio, is the assignee of the entire right, title and interest of plaintiff, Conrad B. Mueller, in and to the exclusive license agreement above referred to, and in and to the equitable title of the patent in suit. By a Consent Order entered March 4, 1948, Greenbrier Company was added as a party plaintiff and counter-defendant herein, it being further provided that "this cause shall proceed in the name of Conrad B. Mueller, George R. Hunt and the Greenbrier Company, plaintiffs and counter-defendants, v. Robert F. Wolfinger, doing business as Superior Manufacturing Company and Ray H. Peak, doing business as Superior Manufacturing Company, defendants and counter-claimants".

Plaintiffs pray for an injunction "against further infringement; * * * an accounting for profits and damages; an increase of such damages as provided by law" and for costs.

Defendant Robert F. Wolfinger, a resident of Delaware, Ohio, has, at least during part of the time since October 9, 1945, been engaged in business there as the Superior Manufacturing Company, manufacturing and selling poultry-picking machines.

On November 28, 1945, Ray H. Peak filed a petition herein "for leave to intervene as joint defendant". The parties having stipulated that his petition should, with the consent of the Court, be granted, on December 5, 1945, it was granted and he was made a joint defendant herein. Defendant Ray H. Peak is a resident of Ashley, Ohio. For at least part of the time since October 9, 1945, he too has been doing business in the City of Delaware, Ohio, as the Superior Manufacturing Company, manufacturing poultry-picking machines, and selling them to defendant Robert F. Wolfinger and others.

On December 4, 1945, defendants filed an answer and counterclaim. In their answer defendants challenge the validity of the patent in suit and deny infringement.

In their counterclaim defendants allege that plaintiffs "have entered into a contract, combination or conspiracy with other persons in violation of the U.S.Code, Title 15, Sec. 1 15 U.S.C.A. § 1; and have attempted to monopolize * * * the trade and commerce among the several States in chicken-pickers, in violation of United States Code, Title 15, Sec. 2 15 U.S.C.A. § 2" and that because of this alleged illegal conspiracy and attempt to monopolize "Letters Patent No. 2,300,157 is invalid".

Defendants pray that the Bill of Complaint be dismissed; for an accounting and treble damages and for costs.

On January 25, 1946, plaintiffs filed their reply to defendants' counterclaim denying the allegations thereof and praying for its dismissal.

Simultaneously, with the filing of their complaint, plaintiffs moved for a Preliminary Injunction. Subsequently the cause came on for hearing on that motion. On May 1, 1946, this Court filed its Decision. Mueller v. Wolfinger, D.C., 68 F.Supp. 485. Thereafter, other motions were filed by the respective parties and certain orders entered.

On July 19, 1946, this Court entered an order granting plaintiffs a Preliminary Injunction upon certain conditions by them to be performed.

On July 31, 1946, defendants filed a motion for modification of the foregoing order and on September 3, 1946, this Court filed a "Memorandum" regarding it.

On September 27, 1946, defendants appealed to the United States Circuit Court of Appeals for the Sixth Circuit. The Court of Appeals dismissed the appeal on February 2, 1948, for "Lack of Jurisdiction". Wolfinger v. Mueller, 6 Cir., 165 F. 2d 844, 848.

Subsequent proceedings herein resulting ultimately in the trial upon the record on which this Decision is based are in a sense, at least, but a continuation in this action which was commenced when plaintiffs filed their complaint on October 9, 1945.

I. Validity

The patent in suit contains 19 claims. Of these, Claims 2, 3, 7, 10, 12, 14, 17 and 19 only are here in issue¹. These claims are divided as follows: Claims 2, 3, 7, 10 and 17 are Machine Claims, and Claims 12, 14, and 19 are Finger Claims.

Defendants in their answer assert Invalidity upon several grounds, among others, (1) That "the interpretation which plaintiffs herein are attempting to place on the claims of said patent and on each of said claims, make said claims indefinite and ambiguous" and that therefore, they do not "meet the requirements of Revised Statute 4888 35 U.S.C.A. § 33". (2) That "the apparatus and method described and claimed in said patent involve only the exercise of the ordinary skill of a person familiar with the art" and (3) because of certain prior art patents, publications and public use more than two years before the filing of the application by patentee Hunt.

Defendants assert also that "Claims 2, 3, 7, 10 and 17 here in issue, are invalid because they are drawn to an aggregation of elements that are old in the art of chicken pickers", and that "the patent in suit is invalid because of misuse thereof by the plaintiffs for any one of the following reasons: (a) The charge of infringement of a machine embodying elements other than those defined by the patented claims. (b) The charge of infringement of a machine which uses what is taught in the prior art particularly when the charge includes infringement of a machine wherein the only new element in the patent was purchased from a licensee of plaintiffs. (c) The failure to withdraw a disclaimed claim (here Claim 16 of the patent in suit) from a suit within a reasonable time after disclaimer. (d) The charge of infringement of claims which the plaintiffs, through their attorneys, know were limited by file wrapper estoppel and knew the same were not infringed". Defendants urge, too, that plaintiffs come into this Court with "unclean hands". (Rec. p. 30.)

In addition to the earlier proceeding, already referred to, in the instant case, the patent in suit, and the claims thereof here in issue have been the subject of protracted litigation both in this and other Federal courts. Each and all of the claims here in issue were held valid by this Court in Mueller v. Campbell, D.C., 68 F.Supp. 464 (June 23, 1945). That holding was affirmed by the Court of Appeals for the Sixth Circuit, 159 F.2d 803 (Feb. 3, 1947).

Each and all of the claims here in issue were (September 5, 1947) held valid by the District Court for the Northern District of Iowa. Mueller v. Pickwick Corporation, 74 U.S.P.Q. 290.

They were each and all again held valid (March 14, 1950) by the District Court for the Northern District of Illinois, Eastern Division, in Hunt v. Armour & Co., D.C., 90 F.Supp. 767.

Irrespective of the rulings already made by this and other courts, including the Court of Appeals of this Circuit, holding valid the claims here in issue, defendants again challenge their validity in this action. As to this, the record (p. 6 et seq.) shows:

"The Court: You are also claiming, as I understand it, on behalf of the defendants that these claims are all invalid, irrespective of the previous holding?

"Mr. Schmieding: (of Counsel for Defendants) That is right. * * *

"The Court: When is the validity of a patent ever settled, or is it ever settled? * * * When does it ever end?

"Mr. Schmieding: I don't think it ever ends, your Honor, that is, particularly if you have a new ground for the invalidity of the patent.

"Mr. Cox: (of Counsel for Defendants) If your Honor, please, first, as to those grounds or rulings this Court has made on validity, we do not expect to make any attack. As to new grounds and new evidence showing the invalidity we do hope to convince your Honor. * * *

"Mr. Schmieding: We have another point on that, your Honor. We do want to have our record sufficiently complete to have a ruling in this present hearing as to equivalency and the doctrine of file wrapper estoppel.

"The Court: All right".

Nothing new has been developed or added in the latest hearing resulting in the present record to warrant or justify the Court in changing its views as heretofore expressed, and as affirmed by the Court of Appeals.

A number of alleged prior art patents are listed by defendants in their answer and in an amendment thereto, filed July 20, 1946. Of those so listed, twelve were offered in evidence in the form of a "Book of Prior Art Patents". The "book" is Exhibit H and the individual patents, Exhibits H-1 to H-12, inclusive. Further reference to these prior art patents will be made by the Court in its Findings of Fact and Conclusions of Law...