National Brass Co. v. Michigan Hardware Co.

• Decision Date: 09 June 1947
• Docket Number: Civil Action No. 791.
• Citation: 71 F. Supp. 980
• Parties: NATIONAL BRASS CO. v. MICHIGAN HARDWARE CO.
• Court: U.S. District Court — Western District of Michigan

71 F. Supp. 980

NATIONAL BRASS CO. v. MICHIGAN HARDWARE CO.

Civil Action No. 791.

District Court, W. D. Michigan, S. D.

June 9, 1947.

Frank E. Liverance, Jr., of Grand Rapids, Mich., for plaintiff.

Edmond M. Bartholow, of New Haven, Conn., and Wm. Cyrus Rice, of Grand Rapids, Mich., for defendant.

STARR, District Judge.

Plaintiff corporation is assignee of patent No. 1,871,633 issued August 16, 1932, to Herman Ter Meer for a spring-bolt type of door latch. On November 13, 1945, plaintiff filed complaint, alleging that defendant had infringed said patent and asking for an injunction against further infringement and an accounting for profits and damages. Defendant answered, claiming that the patent was invalid and denying infringement. In support of its claim of invalidity on the ground of prior art anticipation, defendant cited the following patents: McGrath et al. No. 373,993, November 29, 1887; Taylor No. 467,564, January 26, 1892; Markey No. 705,942, July 29, 1902; Blount, Jr., No. 885,576, April 21, 1908; Dunn No. 1,058,043, April 8, 1913; Weaver No. 1,106,760, August 11, 1914; Hurd reissue No. 14,147, June 6, 1916; Dexter No. 1,502,022, July 22, 1924; Dexter No. 1,697,950, January 8, 1929; Wilson No. 1,719,282, July 2, 1929; Dexter No. 1,779,410, October 28, 1930; Shaw and Company No. 289,258, April 26, 1928 (British patent); Hopkins No. 338,715, November 27, 1930 (British patent). It was stipulated that prior to the beginning of this suit, defendant had sold within this judicial district, door latches of the structure which plaintiff claimed infringed its patent. Plaintiff later gave notice that it claimed infringement only of patent claims numbered 4 and 6.

The only questions presented for decision in this case are: (1) Is plaintiff's patent No. 1,871,633 valid, and (2) if valid, has defendant infringed claims 4 and 6 thereof?

The specifications of the patent in suit state that the object is the production of "a very practical, economically constructed and serviceable latch in which the immediately engaging portion of the latch bolt is movable with respect to another part thereof and is normally spring operated so as to project a distance beyond its housing for engagement with a retaining keeper plate on a door frame, whereby the main spring of the latch construction is not compressed on closing a door but only on the manual operation of the latch to open the door, thereby decreasing resistance imparted by the latch in closing the door, and cutting in half the number of compressions to which the main spring of the latch construction is subjected." Claims 2, 4, and 6 of the patent in suit provide:

"2. In a latch construction, a housing closed at one end and open at the other, a coiled spring in said housing seated at one end against the closed end thereof, a latch bolt member having an inner end bearing against the other end of the coiled spring and two spaced apart arms extending therefrom for a distance and then turned toward each other, a second latch bolt member comprising a body longitudinally slotted at its inner end portion, a disc across the inner end of said second bolt member in front of which the inturned ends of said arms are positioned, and a coiled spring of less strength than the first mentioned spring interposed between the second latch bolt member and the first part thereof tending to extend said parts of the bolt longitudinally."

"4. In a construction of the class described, a housing closed at one end and open at the other, a coiled spring having one end bearing against the closed end of the housing, a bolt member formed of sheet metal including a disc bearing against the opposite end of the spring and having spaced apart arms extending from opposite edges of the disc longitudinally of the housing for a distance and then turned inwardly toward each other at their free ends, a second bolt member having a longitudinal slot cut therein from its inner end a distance toward its outer end, a member secured at the inner end of the second bolt member across said slot back of the inturned ends of said arms, and a coiled spring mounted in said second bolt member engaged at one end there against and at the other end against the inturned ends of said arms."

"6. A latch bolt comprising, an inner member of sheet metal and including a disc at its inner end, diametrically opposed arms extending from said disc in parallel relation to each other and having free end portions inturned at right angles from the arms toward each other, a second bolt member having the inner portion thereof slotted across its axis and axially bored from its inner end outward for a distance, the inturned end portions of said arms extending into said slots, a member extending across the inner end of said second bolt member back of said inturned ends of the arms, and a coiled spring of light strength located in the opening bored in said second bolt member bearing at its outer end against the second bolt member and at its inner end against the inturned ends of said arms."

It should be noted that plaintiff admits that it has not at any time manufactured door latches under patent No. 1,871,633 in suit, but has only made models of the latch described in such patent in order to illustrate the physical embodiments of the structure. It also admits that the door latches, which it manufactured in quantity and for which it claims the benefit of commercial success in establishing the validity of the patent in suit, were in fact manufactured under a later patent No. 1,883,099 issued October 18, 1932. Plaintiff contends that the latch device which it has manufactured under patent No. 1,883,099 combines all of the elements of the patent in suit. However, examination of said latch device clearly indicates that it is substantially different structurally from the latch device described in the patent in suit. That is, the latch being manufactured by plaintiff under patent No. 1,883,099 does not contain "a disc bearing against the opposite end of the (strong) spring and having spaced apart arms extending from opposite edges of the disc longitudinally of the housing for a distance and then turned inwardly toward each other at their free ends," as a means of connection between the retractor and bolt as described in the patent in suit. Nor does the latch device being manufactured by plaintiff contain "a second bolt member having a longitudinal slot cut therein from its inner end a distance toward its outer end," as described in the patent in suit. Nor does the latch device being manufactured embody "a member secured at the inner end of the second bolt member across said slot back of the inturned ends of said arms." These and other differences clearly demonstrate that the latch being manufactured by plaintiff for the trade under patent No. 1,883,099 is structurally different from and does not embody all the elements described in patent No. 1,871,633 in suit. Therefore, plaintiff may not assert the commercial success of its door-latch device manufactured under patent No. 1,883,099 as tending to establish the validity of patent No. 1,871,633 in suit. In National Malleable Castings Co. v. Buckeye Malleable Iron & Coupler Co., 6 Cir., 171 F. 847, 852, 853, the court said:

"The complainants own the patent, and they make couplers; but they do not make the device of the Deitz patent. * * *

"The use we make of the fact that the device has never gone into actual service is in the construction or interpretation of the patent. We are justified, in view of the facts of this case, in exercising much caution in attributing to this patent anything more than is plainly shown and distinctly claimed. Bradford v. Belknap Motor Company C.C., 105 F. 63; Crown Cork & Seal Co. v. Aluminum Co., 4 Cir. 108 F. 845, 48 C.C.A. 72. This inference from nonuse, under the circumstances, is the converse of the inference drawn in respect of a doubtful patent when a showing is made that it has gone into large use and has displaced other devices. It is an inference against utility from the fact of long non-use, unexplained by want of means or opportunity."

In Landry Mfg. Co. v. C. P. Rockwell, Inc., 1 Cir., 45 F.2d 89, the court said:

"This lack of commercial success goes far to discredit the value of the invention, if not the validity of the patent."

The patent in suit is admittedly not a pioneer patent, and as no commercial use has been made of it during the 15 years or thereabouts since it was issued, no claim of commercial success may be accredited to it and it should be strictly construed. In Westinghouse Electric & Mfg. Co. v. Toledo, P. C. & L. Ry. Co., 6 Cir., 172 F. 371, 372, it is stated:

"It is what is called a `paper patent,' in that it has never been used by the appellant, and that though it is in the business of selling electrical controllers. * * * In view thereof the patent should not be given a broad or liberal construction."

In Roberts v. General Electric Co., 3 Cir., 85 F.2d 964, 965, the court said:

"This is not a pioneer patent. It is now over nine years old and is still a mere paper patent. It is accordingly entitled only to a strict construction, confining its scope to the particular device it disclosed."

As the Congress has not established any tests as a basis for determining invention, it is necessary to look to judicial decisions for guidance in determining whether or not a device constitutes invention. Courts cannot ignore the fact that decisions of the Supreme Court of the United States in recent years indicate a trend toward a higher standard of invention and a return to the policies of that court as represented by its early decisions on questions of patentability.

In Foxboro Co. v. Taylor Instrument Companies, 2 Cir., 157 F.2d 226, 234, the court said:

"Finally, when all else is said, we cannot ignore the change in recent years in the standard of invention adopted by the Supreme Court. It is as idle to pretend that there has been...