Oxford Filing Supply Co. v. Globe-Wernicke Co.

• Decision Date: 25 February 1957
• Citation: 150 F. Supp. 35
• Parties: OXFORD FILING SUPPLY CO., Inc., v. The GLOBE-WERNICKE CO.
• Court: U.S. District Court — Southern District of New York

150 F. Supp. 35

OXFORD FILING SUPPLY CO., Inc., v. The GLOBE-WERNICKE CO.

United States District Court S. D. New York.

February 25, 1957.

Darby & Darby, New York City, Louis D. Fletcher, New York City, of counsel, for plaintiff.

Keith, Bolger, Isner & Byrnes, New York City, John W. Melville, Cincinnati, Ohio, Thomas J. Byrne, Jr., New York City, of counsel, for defendant.

HERLANDS, District Judge.

This is an action for patent infringement. Jurisdiction of this court arises under the United States patent laws, 28 U.S.C.A. § 1338.

Plaintiff, who is engaged in the manufacture and sale of office supplies and equipment, charges the defendant, a competitor, with having infringed plaintiff's Patent No. 2,278,403 for a "file support". In addition to denying infringement, the defendant claims that the patent in suit (sometimes referred to in this opinion as the Jonas patent) is an invalid combination patent because it was anticipated and because it lacked invention.

Plaintiff, Oxford Filing Supply Company, Inc., is a corporation of the State of New Jersey, having a regular and established place of business at Clinton Road, Garden City, County of Nassau, State of New York.

The patent in suit is United States Patent No. 2,278,403, issued March 31, 1942, on an application filed January 25, 1941. The patent was issued to Frank D. Jonas, as patentee.

Oxford Filing Supply Company, Inc., is the assignee of the entire right, title and interest in and to the Jonas patent and the invention claimed therein, it being the owner thereof by an assignment dated April 2, 1946. Oxford Filing Supply Company, Inc., has owned the Jonas patent continuously for more than six years preceding July 27, 1955, the date on which the complaint in this action was filed; and it is presently the owner of the Jonas patent.

The Globe-Wernicke Company, the original defendant herein, on August 30, 1955, changed its name to Carthage Corporation. On the same date, a new Ohio corporation was formed, called The Globe-Wernicke Company. Carthage Corporation sold all of its assets to this new company, which undertook the business liability in connection with this litigation.

Plaintiff manufactures hanging files and also manufactures frames on which such files may be suspended.

Plaintiff puts in issue claims 1 to 4, inclusive, of the Jonas patent.

The Jonas patent is concerned with a support in the form of an adjustable framework to be used in filing cabinets or similar receptacles; and it is adapted to be fitted to filing cabinets or drawers of various sizes. It is intended particularly to provide a support for the filing folders of a suspension filing system.

The four claims in issue read as follows (Plaintiff's Exhibit 1, Defendant's Exhibit A, Tab A):

"1. In a suspension file support, a combination comprising a pair of end frames, a pair of continuous longitudinal rails each attached at one end to one of said frames, and means on the other of said frames for engaging said rails at desired points longitudinally thereof for securing them to said other frame whereby the spacing between said end frames may be varied.

"2. In a suspension file support, a combination comprising a pair of end frames, a pair of continuous longitudinal rails each attached at one end to one of said frames, means on the other of said frames for engaging the other ends of said rails at desired points longitudinally thereof for securing them to said other frame whereby the longitudinal distance between said end frames may be varied, and indexing devices attached to said end frames for varying the overall width of the support.

"3. A suspension file support consisting of a pair of open end frames, a pair of continuous longitudinal rails engaging the respective ends of said end frames at the top and means for connecting the rails to said end frames including clamps on one frame for securing it at adjusted positions along said rails, said rails having smooth continuous top edges.

"4. In a suspension file support, the combination comprising a front end frame having a top transverse bar shaped to form seats at its ends, a rear end frame having a transverse bar, clamps mounted on said last mentioned bar, the end of said bar being formed to cooperate with said clamps to form receiving seats, and a pair of longitudinal rails each mounted at one end in one of the seats of the front end frame and secured thereto, and each adjustably held by the clamps of the rear end frame whereby the spacing between said end frames may be varied."

For a number of years prior to 1941, suspension file supports were commonly made in fixed sizes. The fixed sized file support could be installed properly only in a filing drawer of correspondingly specific dimensions. Unless such a fixed suspension file support properly fit the file drawer into which it was placed, the drawer's maximum storage capacity could not be realized.

However, as will be more particularly pointed out below, there were — prior to the patent in suit — filing devices and attachments covered by other patents in the same general field (such as Barri, French Patent No. 765,510 of March 26, 1934; Sprague, U.S.Patent No. 1,553,565 of September 15, 1925; and Charlton, U. S.Patent No. 1,743,756 of January 14, 1930) that fairly disclosed the subject matter of an adjustable file support.

Manufacturers of fixed suspension file supports, prior to the patent in suit, could not, as a practical matter, stock or prefabricate fixed file supports in large quantities because there was a wide range of sizes of storage spaces (filing drawers) in use (Plaintiff's Exhibit 10). This, of necessity, required that each order for a fixed file support had to be accompanied with the accurate dimensions of the storage space in which the fixed support was to be used.

Because of this dimensional restriction, each order that required a custom or specialized manufacturing job interposed delays in supplying the ultimate user with the ordered product. This increased the cost to the user and often resulted in rejection because the dimensions submitted were inaccurate. Once made, such fixed suspension file supports were incapable of being installed in any file drawer other than the one for which they were made.

Jonas encountered this problem of the fixed filing support frame prior to July 25, 1941, the date of the Jonas patent application. As a partner in the Oxford Filing Supply Company he kept records (Exhibit 10) of the dimensional variations encountered in supplying the customers of that company with fixed suspension file supports in his effort to determine whether there was sufficient repetitive occurrence of particular storage space dimensions to justify advance manufacture and stocking of fixed size frames for those various dimensions. He came to the conclusion that these dimensional variations were so numerous and non-repetitive as to make this commercially unfeasible.

Broadly stated, the mechanical combination disclosed by the patent in suit consists of a pair of end frames, a pair of rails having smooth continuous upper edges, and means for clamping the end frames to the rails at longitudinally spaced points therealong, so as to permit the structure to be installed in a file cabinet of any length within the range of customary lengths of file cabinet drawers. The patentee, Mr. Jonas, and defendant's expert, Mr. Hughes, agree that the foregoing correctly describes the basic structure of the Jonas patent (Trial record, pp. 646-648).

However, the essence of the suspension file support of the Jonas patent was not a new mechanical combination of elements which was non-existent prior to Jonas' patent. The concept and structure of suspended files were old. The concept and structure of a frame to support suspended files were old. All that Jonas did was to make the supporting frame adjustable.

The Jonas mechanical combination, in a more refined form, includes means generally designated in the Jonas patent as "indexing devices", by means of which the frame can be laterally positioned within the drawer, that is, centered transversely of its width. This, however, was a conventional and well known device and a common expedient. (See, for example, Matson, United States Patent No. 1,463,710, issued July 31, 1933; Exhibit A, Tab 5, and Exhibit G; Trial record, pp. 512, 529-531.)

Substantially the same combination and structure having substantially the same characteristics, including adjustability and performing the same functions as the patent and structure in suit, are found in three references, namely, Barri, Sprague and Charlton, which are in the same general art or field. Barri, Sprague and Charlton fairly disclosed and anticipated the teachings of the Jonas patent except in two non-critical respects: the three cited patents do not disclose the "indexing devices" of Jonas' claim "2" and they do not disclose a transverse bar to form a receiving seat at the top of the end frames as recited in Jonas' claim "4". (See, for example, Trial record, pp. 707-708.)

United States Patent No. 1,553,565 to Sprague shows a frame structure intended for the same purpose as plaintiff's. The longitudinal rails have telescoping engagement with the end frame members. The fact that adjustability of the structure as to its length was contemplated by Sprague is clearly evident from Sprague's specification, page 2, column 1, lines 26 to 34 inclusive. The Sprague patent was for a filing device which was a suspension filing support whose dimensions were not fixed lengthwise but were fixed laterally. (Exhibit A, Tab 3; Exhibit B. See especially Sprague patent page 1, column 2, line 106 et seq. and page 2, column 1, lines 26-34.) As indicated, the Sprague structure was adjustable lengthwise but not laterally. (Trial record, pp. 658, 698.) Sprague faced and solved the same problem in basically the same way that Jonas did. (Trial record, pages 448, 495, 604, 607, 609, 633, 655, 657-658, 660,...