Murdock v. Vaughan Novelty Mfg. Co., 7939

• Decision Date: 12 November 1942
• Docket Number: No. 7939,7940.,7939
• Citation: 131 F.2d 258
• Parties: MURDOCK et al. v. VAUGHAN NOVELTY MFG. CO.
• Court: U.S. Court of Appeals — Seventh Circuit

131 F.2d 258 (1942)

MURDOCK et al. v. VAUGHAN NOVELTY MFG. CO.

Nos. 7939, 7940.

Circuit Court of Appeals, Seventh Circuit.

November 12, 1942.

Edward A. Haight and Casper W. Ooms, both of Chicago, Ill., for appellants.

Warren C. Horton and Leon F. Shackell, both of Chicago, Ill., for appellee.

Before SPARKS, MAJOR, and KERNER, Circuit Judges.

SPARKS, Circuit Judge.

Plaintiffs are husband and wife, doing business as partners under the name of M. & M. Manufacturing Company. Their original complaint herein, filed on November 13, 1940, charged the Vaughan Novelty Manufacturing Company and Harry L. Vaughan, its president, with infringement of United States design patent No. 119,867, to James A. Murdock. The patent was issued April 9, 1940, upon an application filed February 12, 1940. On May 1, 1941, they amended their complaint by also charging the defendants with infringement of United States patent No. 2,240,410, to James A. Murdock, which patent was issued on April 29, 1941, upon an application filed June 18, 1938.

The defendant, Harry L. Vaughan, was never served with process. He and his wife owned more than ninety-five per cent of the capital stock of the defendant company. The company by its answer raised the usual patent defenses, and by counterclaim asked that plaintiffs be restrained from suing and threatening to sue defendant's customers, and also asserted ownership of the patents in suit because of James A. Murdock's former employment by the defendant company. It further prayed that the defendant company be adjudicated the owner, not only of the patents in suit, but of every other patent and patent application conceived or invented by Murdock during the term of his employment by it. It further asked an accounting and for the appointment of a receiver of the plaintiff partnership.

To the counterclaim, plaintiffs pleaded a general release agreement by the company. To this the defendant company rejoined that such release was invalid because executed by Harry L. Vaughan without its authority, and because of concealment of material facts by Murdock from the defendant.

Upon these issues and the evidence adduced, the court held that the design patent was invalid for lack of invention, and from that ruling there has been no appeal. The court further held that the structure patent lacked invention over the prior art, and denied relief upon the counterclaim. Findings of fact and conclusions of law were entered by the court, and upon these there was a judgment of dismissal of both the complaint and the counterclaim, and from these rulings both parties appeal.

The validity of the structure patent, No. 2,240,410, is the sole question presented by plaintiffs' appeal. The court held that this patent lacked invention over the prior art patents to Jordan, No. 343,522; DeVault, No. 2,106,796; and Brock, No. 193,220. The patent relates to paring knives having blades adapted to locate themselves on the articles to be pared so as to limit the thickness of the paring and to automatically follow the contour of the articles as the blades are moved in contact with it. The object of the patent is to provide a simple, effective and inexpensive paring knife of this type in which the blade is located completely beyond its supporting handle so that the handle in no way interferes with the function of the blade.

The knife comprises a handle which may suitably consist of a strap of metal bent into the form of an elongated hollow frame. The ends of the strap may be bent into overlapping relation to form the haft of the handle. These ends are secured together by spot-welding, or in any suitable manner, and the handle may comprise a relatively small portion at its outer end. The blade member comprises the cutting blade and a pilot bar, which is rigidly secured to the blade in advance of the cutting edge. The blade head may suitably be formed from a cradle shaped piece of steel in which is formed a longitudinal slot which separates the blade from the pilot bar. The blade is ground on the outer side of the cradle formation to provide a flat face, the projection of which is in slightly spaced relation to the pilot bar. Thus, if the blade head is moved over the surface of the article to be pared, the blade tends to move into the article to a certain extent and to pare off a peeling of limited thickness.

The blade and the pilot bar are located in substantially parallel relation and are connected by a prow-shaped portion and the socket portion. The prow is preferably sharpened so that it may be used for coring purposes. The socket portion receives a spindle and is rigidly secured thereto by spot-welding or in other suitable manner. This socket extends in rotatable relation through an opening in the haft of the handle. The stem extends through the handle and projects freely through an opening in the flat portion of the handle. The blade assembly is secured in the handle so as to enable the blade to rotate freely about the axis of the stem. Thus the extremity...