Penmac Corporation v. Esterbrook Steel Pen Mfg. Co.

• Decision Date: 31 March 1939
• Citation: 27 F. Supp. 86
• Parties: PENMAC CORPORATION v. ESTERBROOK STEEL PEN MFG. CO.
• Court: U.S. District Court — Southern District of New York

27 F. Supp. 86

PENMAC CORPORATION v. ESTERBROOK STEEL PEN MFG. CO.

District Court, S. D. New York.

March 31, 1939.

Frederic P. Warfield, of New York City, for plaintiff.

Howson & Howson, of New York City (Charles H. Howson, of Philadelphia, Pa., of counsel), for defendant.

WOOLSEY, District Judge.

My judgment in this cause is:

1. That Claims Nos. 1, 2, 24, 25, 26, 28, 29, 30, 36 and 37 of United States Patent No. 1,866,072, and Claims Nos. 6, 7, 10, 12 and 13 of United States Patent No. 1,928,042 are valid and were infringed by the defendant herein.

2. That Claims Nos. 4, 15, 16 and 21 of United States Patent No. 1,700,255, Claim No. 33 of United States Patent No. 1,700,246, and Claim No. 7 of United States Patent No. 1,700,257 are invalid for lack of invention over the prior art.

3. That, accordingly, there should be an interlocutory judgment for the plaintiff providing for the usual injunction, carrying costs, and referring the cause to a master to report to this Court on the damages suffered by the plaintiff by reason of the matters alleged in this cause, and the profits made by the defendant from January 25, 1935, the date of notice to it of the infringement herein found.

4. That the costs allowed to the plaintiff shall include all taxable disbursements and allowances.

I. My subject matter jurisdiction is based on the Patent Law, Title 28 United States Code, Section 41(7), 28 U.S.C.A. § 41(7).

There is not any question of venue.

There is not any question involved as to the plaintiff's locus standi to maintain this suit for it owns all the five patents involved.

II. In view of the decision of the United States Supreme Court rendered April 25, 1938, on Equity Rule 70½, 28 U.S.C.A. following section 723, in Interstate Circuit, Inc. v. United States, 304 U. S. 55, 56, 57, 58 S.Ct. 768, 82 L.Ed. 1146, and under Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, it is now a work of supererogation to write a considered and detailed opinion on the facts in what used to be an equity cause and is now called a non-jury cause, for the place of the opinion must now be taken by formal findings of fact and conclusions of law, separately stated and numbered. Title 28 United States Code, Section 723, 28 U.S.C.A. § 723.

I shall, therefore, content myself with dealing herein merely with certain general aspects of the facts, and with the conclusions of law which I draw therefrom, and leave it to the attorney for the plaintiff to submit, in accordance with my instructions at the end of this opinion, such findings of fact and conclusions of law, separately stated and numbered, as he may be advised.

III. This suit is founded on claims — contained in five patents — for a combination constituting a magazine pencil which will feed its lead step by step.

The claims involved in this cause are as follows:

A. In the patent — referred to throughout the trial as Woelm No. 1 — applied for on September 16, 1922, and granted on July 5, 1932, as United States Patent No. 1,866,072:

"1. In a lead pencil, the combination of a cylindrical holder with conical mouth piece, a compartment for containing strips of lead in said holder, a guide-tube for leading said lead strips to said mouth piece, a gripping device reciprocal in said holder and adapted to grip and feed forward a lead when moved downward, and to release its grip thereon when moved upward, and a spring normally forcing said device to grip a lead in said guide tube.

"2. In a magazine pencil, the combination of a cylindrical holder with conical mouth piece, a compartment in said holder for containing strips of lead, a guide tube for leading said lead strips to said mouth piece, a gripping device reciprocable in said holder and adapted to grip and feed forward a lead when moved downward, and to release its grip thereon when moved upward, and a spring normally causing said device to hold a lead in said guide tube.

* * * * * *

"24. In a magazine lead pencil including a casing, the combination of means providing a magazine chamber in the upper portion of the pencil, means for guiding a lead from said chamber to the lower end of the pencil, longitudinally movable lead-propelling mechanism including a lead-gripping jaw and a camming member positioned beneath said magazine, a spring acting on said camming member to force said mechanism in one direction, and means operable from the outside of the casing for moving said mechanism in opposition to said spring.

"25. A magazine lead pencil, comprising a casing and lead-propelling mechanism including releasable lead-gripping means, a longitudinally movable gripper-operating element, a spring bearing against said gripper-operating element and tending to oppose movement of said operating element in one direction, and means including an exteriorly accessible element to move said gripper-operating element in opposition to said spring.

"26. In a magazine lead pencil including a casing, a lead guide-tube, releasable lead-gripping means, and operating mechanism including a longitudinally movable gripper-operating element slidable on said guide-tube, a spring tending to oppose the movement of said gripper-operating element in one direction, and means including an exteriorly accessible element for moving said operating element in opposition to said spring.

* * * * * *

"28. In a magazine pencil including a casing, the combination of means providing a lead magazine in the upper end of the pencil, a slotted lead guide-tube for conducting leads downwardly from said magazine, releasable lead-gripping means extending through the slotted portion of said guide-tube, longitudinally movable gripper-operating mechanism including a longitudinally movable element slidable on said guide-tube, a spring acting against said longitudinally movable element for causing the same to move said gripper into gripping engagement with a lead, and means including an exteriorly accessible element for moving said longitudinally movable element in opposition to said spring to permit the release of said gripping means.

"29. In a magazine pencil including a casing, the combination of means including a lead magazine in the upper end of the pencil, a slotted lead guide-tube for conducting leads downwardly from said magazine, lead-propelling means including longitudinally movable releasable lead-gripping means extending through the slotted portions of said guide tube, and operating mechanism including a spring tending to oppose movement of said gripping means in one direction, and means including an exteriorly accessible element for moving said gripping means in opposition to said spring.

"30. In a magazine pencil including a casing, the combination of means including a lead magazine in the upper end of the pencil, a slotted lead guide-tube for conducting leads downwardly from said magazine, lead-propelling means including longitudinally movable releasable lead-gripping means extending through the slotted portion of said guide tube, and operating mechanism including a longitudinally movable camming element and a spring tending to hold said camming element in camming position, and means including an exteriorly accessible element for moving said camming element in opposition to said spring.

* * * * * *

"36. In a magazine lead pencil including a casing, the combination of releasable lead-gripping means, a camming element adapted to be moved to a position wherein it holds the lead-gripping means in engagement with the lead, a spring bearing directly upon said camming element and tending to move said camming element to such position, and means for moving said camming element in opposition to said spring to permit a release of said grippers.

"37. In a magazine pencil including a casing, the combination of means including a lead magazine in the upper end of the pencil, a slotted lead guide-tube for conducting leads downwardly from said magazine, lead-propelling means including longitudinally movable releasable lead-gripping means extending through the slotted portion of said guide-tube, a camming element adapted to be moved to a position wherein it holds the lead-gripping means in engagement with the lead, a spring tending to move said camming element to such position, and means for moving said camming element in opposition to said spring to permit a release of said grippers."

B. In the patent — referred to throughout the trial as Woelm No. 2 — applied for on September 16, 1922, and split in the Patent Office from the previous patent by a division of the application therefor, and granted on September 26, 1933, as United States Patent No. 1,928,042:

"6. In a step-by-step lead pencil, a plurality of longitudinally movable lead grippers, resilient means tending to spread said grippers, a longitudinally movable gripper-operating member arranged to normally maintain said grippers in engagement with a lead in the pencil and when reciprocated to impart movement to said grippers and to press said grippers against a lead during the major part of their downward movement, and resilient means adapted normally to press said longitudinally movable member against said grippers.

"7. In a step-by-step lead pencil, a longitudinally movable member, a plurality of longitudinally movable lead-gripping jaws, a spring-pressed member acting normally to cause said lead-gripping jaws to grip a lead therebetween for writing purposes, and means to reciprocate said jaws in response to the movement of said longitudinally movable member.

* * * * * *

"10. In a step-by-step pencil including a casing, a longitudinally movable lead-gripping unit including a plurality of outwardly spring-pressed jaws, a longitudinally-movable spring-pressed operating member tending to thrust said jaws toward each other and against a lead in the pencil in opposition to their springs, and exteriorly accessible means for moving said operating member in opposition to its spring.

...