Remington Rand, Inc. v. Acme Card System Co.

• Decision Date: 11 October 1939
• Docket Number: No. 928.,928.
• Citation: 34 USPQ 325,29 F. Supp. 192
• Parties: REMINGTON RAND, Inc. v. ACME CARD SYSTEM CO.
• Court: U.S. District Court — Southern District of Ohio

29 F. Supp. 192

34 USPQ 325

REMINGTON RAND, Inc. v. ACME CARD SYSTEM CO.

No. 928.

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

August 4, 1937.

Appeal Dismissed October 11, 1939.

Edwin T. Bean and Richard W. Treverton (of Bean, Brooks, Buckley & Bean) of Buffalo, N. Y., Theodore Greve (of Allen & Allen) of Cincinnati, Ohio, for plaintiff.

William F. Hall, of Washington, D. C., Lee J. Gary, of Chicago, Ill., and Edmund P. Wood and Truman A. Herron (of Wood & Wood) of Cincinnati, Ohio, for defendants.

Appeal Dismissed October 11, 1939. See 106 F.2d 1014.

NEVIN, District Judge.

This is a patent suit brought in the usual form in which plaintiff, Remington Rand, Inc., a Delaware Corporation, claims that the defendants have infringed two United States Letters Patent owned by plaintiff. The Letters Patent in question are No. 1,407,948, issued February 28, 1922 (application filed February 13, 1920) to Benjamin G. Rand, and No. 1,429,628, issued September 19, 1922 (application filed August 9, 1920 — Amendment inserting certain specifications and Claim 20, filed March 31, 1922) to James H. Rand, Jr. Plaintiff prays for an injunction and an accounting.

Defendants are the Acme Card System Company, an Illinois Corporation, and Le Roy A. Franklin, of Cincinnati, Ohio. Mr. Franklin is the agent of the Acme Company in Cincinnati, where he has sold Acme cabinets of the kind charged to infringe both patents in suit.

Jurisdiction of the court over the subject matter and over both defendants is admitted. Plaintiff's title to the patents in suit also is admitted by stipulation. The claims of the patent on which plaintiff relies are claims 1 and 11 of the Benjamin G. Rand patent No. 1,407,948 and claim 20 of James H. Rand, Jr., patent No. 1,429,628.

Plaintiff filed its bill on July 3, 1935. On December 19, 1935, defendants filed their answer. In their answer defendants deny infringement of either patent, and aver that Letters Patent No. 1,407,948 are invalid because the subject matter thereof is shown and described in certain United States and foreign patents, which are set forth in the answer, and that patent No. 1,429,628 likewise is invalid because the subject matter thereof is shown and described in certain United States and foreign patents, which are set forth in the answer.

Defendants further allege that the disclosure shown and claimed in patent No. 1,407,948, is not the sole invention of Benjamin G. Rand and that the disclosure shown and claimed in the patent to James H. Rand, Jr., No. 1,429,628, is not the sole invention of James H. Rand, Jr. Defendants also allege "that plaintiff and its predecessors in business have been guilty of laches from the date of issue of each of the patents in suit down to the filing of the bill of complaint, and are not entitled to an injunction and accounting; that plaintiff, by misleading defendant, Acme Card System Company, to the latter's disadvantage by silence and inaction is now estopped to maintain this action."

These same two patents were before this court for consideration in Remington Rand, Inc., v. International Visible Systems Corporation, No. 725 Equity (Cincinnati). In that suit plaintiff claimed that defendant there also infringed these patents. In that action defendant, International Visible Systems Corporation, denied infringement and challenged the validity of the patents on substantially the same grounds as are relied upon here. The same claims in the respective patents that are in issue in the instant case were also (together with some others) in issue in case No. 725 — the International Visible Systems Corporation case.

On June 21, 1933, this court rendered a decision in cause No. 725, in which it held that claims 1 and 11 (being the claims now in issue) of Benjamin G. Rand, No. 1,407,948, are valid. It also held that claim 20 (in issue here) of the James H. Rand, Jr., patent No. 1,429,628, is valid. It further held in the International Visible Systems case that the defendant in that case infringed these claims (and others) of these two patents, respectively. The International Visible Systems case was taken on appeal to the United States Circuit Court of Appeals of this (Sixth) Circuit. On June 6, 1935, the Court of Appeals affirmed the decree of this court. 6 Cir., 78 F.2d 606.

In its decision in the International Visible Systems case this court, referring to the subject matter of the patents, stated — and the same is true here: "Both patents are directed to the construction of cabinets or casings into which drawers or panels are slidably fitted and the means for supporting the drawers or panels relatively to the cabinet or casing. In Patent No. 1,407,948, Benjamin G. Rand states that: `This invention relates to an index file or cabinet for signature cards, account cards and other index matter', and says that the objects of the invention, among other things, are to provide a cabinet which enables the drawers or panels containing the cards to be withdrawn from the cabinet and supported in an inclined position for convenient inspection or posting; to provide improved means for enabling each drawer or panel to be entirely detached or removed from the cabinet to permit the same to be carried about if desired; to provide a cabinet which affords maximum protection against fire and which can be produced at a moderate cost; and to provide the panels with simple means for facilitating the elevation of the free edges of those cards located adjacent to the front walls of the panels. In Patent No. 1,429,628, James H. Rand, Jr. states that: `This invention relates to cabinets and more particularly to card index or record cabinets', and he says that some of the objects of his invention are to provide a card cabinet and slides or drawers of relatively light weight and sturdy construction; to improve the construction of cabinet and slides so that the slides may be readily removed when desired; and to provide means whereby the slides are guided to positions within the cabinet without endangering or injuring or marring the cabinet by unskillful handling; and to improve the construction of the label or designation card holders."

The claims in issue in the case at bar are printed in full in foot-notes to the decision just referred to of the Court of Appeals. Claims 1 and 11 of the Benjamin G. Rand Patent No. 1,407,948 appear in 78 F.2d on page 607, and claim 20 of the James H. Rand, Jr., patent No. 1,429,628 appears in 78 F.2d on page 608. It is unnecessary, therefore, to repeat them here.

Defendant herein, Acme Card System Company, avers in its answer "that the construction of its cabinets is substantially different from that disclosed and claimed in the patents in suit; that `the patents in suit are improvements and secondary'; that this construction of the patents was adopted by the Sixth Circuit Court of Appeals in the case of International Visible Systems Corporation v. Remington Rand, Inc., 78 F.2d 606; that thus construed the cabinets sold by defendant, Acme Card System Company, do not infringe said patents or either of them."

Defendants further allege that each of the patents in suit is invalid because of certain prior United States patents which are set forth in their answer, but which they claim were not before either this court or the Circuit Court of Appeals in the International Visible Systems case.

Plaintiff submits that defendants' cabinet is a substantial duplicate of the structure shown in the Benjamin G. Rand Patent No. 1,407,948, and that it clearly infringes claims 1 and 11, and that defendants' cabinet embodies the invention of and infringes claim 20, of the James H. Rand, Jr., Patent No. 1,429,628; that the asserted anticipations are no more pertinent to the claims in suit than those in the previous litigation and that the alleged prior invention by one Frank D. Powell, now residing in Freeport, Illinois, an allegation as to which is set out in the answer, is wholly insufficient to establish a defense as it was, as plaintiff claims, merely an experiment of unproven date which was finally abandoned, and that because in the International Visible Systems case both patents have heretofore been held valid, plaintiff is entitled to the relief prayed for.

Defendants insist that both this court and the Court of Appeals were led to believe that "a feature of great commercial value in cabinets marketed by the plaintiff, ostensibly under the patents in suit, is that they are so contrived that adjacent drawers, or panels, can be moved laterally in opposite directions for facilitating the examination and other uses of the cards", and that it was because of the stressing of this feature that the patents were sustained by this court and the Court of Appeals in the International Visible Systems case, whereas, defendants claim "the fact is that the feature is of no value, as is shown by the fact that it is not referred to in any of plaintiff's extensive advertising literature, textbooks, or the like, is not referred to at all in the Benjamin G. Rand patent in suit, is not referred to at all in the application as filed for the James H. Rand, Jr., patent in suit, is the very antithesis of the teachings of its specification as filed, and is impossible of attainment with the structure shown in the drawing of the patent, and no purchaser of plaintiff's equipment (or the accused cabinet) testified that he ever used the feature, or even heard of it, either prior, or subsequent, to his purchase of the equipment."

Defendants further assert "that this alleged paramount feature of plaintiff's cabinet is claimed only in claim 20 of the James H. Rand, Jr., patent, and such subject matter was not claimed in the application for that patent until practically three years subsequent to the date The Rand Company, with which Benjamin G. Rand was associated, had in wide commercial use its `Traco' cabinets, in which, admittedly, the drawers are laterally shiftable. But the feature has no...