Reynolds v. Emaus

• Decision Date: 08 December 1949
• Docket Number: Civ. A. No. 1163.
• Citation: 87 F. Supp. 451
• Parties: REYNOLDS v. EMAUS et al.
• Court: U.S. District Court — Western District of Michigan

87 F. Supp. 451

REYNOLDS v. EMAUS et al.

Civ. A. No. 1163.

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

December 8, 1949.

Frank E. Liverance, Jr., Grand Rapids, Michigan, attorney for plaintiff.

Morse & Kleiner and Glenn B. Morse, of Grand Rapids, Michigan, attorneys for defendants.

STARR, District Judge.

This is a patent-infringement suit involving letters patent No. 2,165,069 issued July 4, 1939, to plaintiff Reynolds for a "fan" to be used as a blower or exhaust in connection with air conditioning.

In his complaint plaintiff alleged infringement of patent and unfair business competition and asked for an injunction against further infringement and unfair competition, an accounting for profits, triple damages, costs of suit, and attorneys' fees. Defendants answered, alleging invalidity of patent and denying infringement and unfair business competition. In support of their claim of lack of invention defendants put in evidence the following prior-art patents: Davidson, 662,395; Davidson, 801,303; Rateau & Sautter, 814, 804; Denton, 1,333,294; Johnson, 1,584,944; Ness, 1,637,652; Williams, 1,870,157; Williamson, 1,888,523; C. Reynolds et al., 2,075,135; Levy et al., 2,115,367; Freed, 2,155,264; Sullivan, 2,157,441. Although no notice thereof was given, 35 U.S.C.A. § 69, defendants in their brief cite the additional prior-art patents listed in footnote below.¹

The fan structure described in plaintiff's patent, and as explained in the specifications, comprises a housing with openings in its opposite sides and an opening in its front side below the hood or canopy. The fan within this housing comprises two wheels formed of built-up veneers or plywood secured at their hubs in spaced parallel and vertical relation to a shaft, the hub members being bolted to the spokes of their respective wheels. The opposite ends of the shaft are each supported within a bearing mounted on a vertical support secured to opposite sides of the housing. The specifications explain that a variable-speed friction drive wheel at one end of the shaft is connected by a belt with an electric motor. The rims of both wheels are provided with a plurality of circularly arranged kerfs or slots in their oppositely disposed inner-side surfaces, and a plurality of integrally formed blades are disposed between the rims, the ends of each blade being tensionally retained within oppositely disposed pairs of kerfs. The blades are arc-shaped in cross-section for the major portion of their length, and the short, flat end portions are provided with spacedapart flanged lips offset from the end section. The arc-shaped middle portion of the blade is connected with the flat end portion by a so-called web, the flat end portions being substantially in the plane of the longitudinal edges of the blade. The rim of each wheel is reinforced by a band of strap metal secured to the periphery thereof. The specifications further describe the fan as substantially noiseless in operation, and state that it may be used either as a blower or as an exhaust.

The defendants' accused fan structure is practically identical with the structure described in the patent in suit, except as to the shape of the middle and end portions of the blades and their attachment in the kerfs of the wheel rims. The blades of defendants' structure are similarly arcshaped in cross-section for the major portion of their length, but the flat end portions are provided with projecting tangs extending at an angle to the plane of the end portions. The so-called web portion between the middle and end portions of the plaintiff's blades is not present in the blades of the accused structure. The flat ends of the blades are substantially in the plane of the deepest line of concavity of the arc-shaped portions of the blade. In both devices the flat ends of the blades are driven into the open ends of the kerfs in the wheel rim, the flanged lips of the plaintiff's blades indenting into the material of the rims, and the tangs of the defendants' blades likewise indenting into the rims.

The questions presented are: (1) Is the patent in suit valid; (2) if valid, have defendants infringed; and (3) are defendants guilty of unfair business competition?

Plaintiff's patent is presumed to be valid, and the burden is upon the defendants to establish their claim of invalidity by clear and satisfactory proof. Crosley Corporation v. Westinghouse Electric & Mfg. Co., 3 Cir., 152 F.2d 895; Babson Bros. Co. v. Perfection Manufacturing Corp., D. C., 86 F.Supp. 754; Mueller v. Campbell, D. C., 68 F.Supp. 464, affirmed 6 Cir., 159 F.2d 803. See 2 Walker on Patents, Deller's Ed., pp. 1272, 1273, § 276. However, this presumption of validity is rebuttable and not conclusive. Dennis v. Great Northern Ry. Co., D. C., 51 F.2d 796. It may be noted that in the present case the defendants put in evidence certain prior-art patents pertinent to the issue involved, which had apparently not been considered by the examiner. There can be no presumption of validity over this prior art which the examiner did not consider. Nordell v. International Filter Co., 7 Cir., 119 F.2d 948.

The Congress has not established any tests as a basis for determining invention, and it is, therefore, necessary to look to judicial decisions for guidance in determining whether or not a device constitutes invention. However, the court cannot disregard the fact that the decisions of the Supreme Court of the United States in recent years indicate a trend toward a higher standard of invention. 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 no change (In re Shortell, 142 F.2d 292, 31 C.C.P.A., Patents, 1062), as it would be to protest against it; and it is as much the duty of a lower court to give effect to it, as it is its duty to give effect to any other of the decisions of that court. We are to dispose of the question of invention, so far as we can divine, as we think the Supreme Court would dispose of it." See also Trabon Engineering Corp. v. Dirkes, 6 Cir., 136 F.2d 24; Perkins v. Endicott Johnson Corp., 2 Cir., 128 F.2d 208.

In his brief plaintiff claims that his invention is to a fan "structure" and not to a process or method of manufacture. Under the statute, 35 U.S.C.A. § 31, a device to be patentable must be more than new and useful; it must satisfy the requirements of invention or discovery and must represent more ingenuity than the work of a mechanic skilled in the art. Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588; Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S.Ct. 37, 86 L.Ed. 58; American Laundry Mach. Co. v. Strike, 10 Cir., 103 F.2d 453. An extended application of prior-art teachings, a change only in size, form, strength, proportions, degree, or the substitution of equivalents doing substantially the same thing in the same way by substantially the same means, does not amount to patentable invention. Allen-Bradley Co. v. Square D. Co., 7 Cir., 168 F.2d 334, certiorari denied 335 U.S. 845, 69 S.Ct. 68, 93 L.Ed. ___; Crosley Corporation v. Westinghouse Electric & Mfg. Co., supra, 152 F.2d 895; Schreyer v. Chicago Motocoil Corporation, 7 Cir., 118 F.2d 852; Mueller v. Campbell, supra, 68 F.Supp. at page 467. In Sinclair & Carroll Co., Inc., v. Interchemical Corporation, 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644, the court said:

"A long line of cases has held it to be an essential requirement for the validity of a patent that the subject-matter display `invention', `more ingenuity * * * than the work of a mechanic skilled in the art.' * * * This test is often difficult to apply; but its purpose is clear. Under this test, some substantial innovation is necessary, an innovation for which society is truly indebted to the efforts of the patentee."

Plaintiff's patent in suit is for an improvement on a fan device, and the question of fact as to whether or not it represents discovery or invention must be determined from examination of the one claim allowed, the specifications, the prior art, and the claims of the application and amendments which were rejected by the patent office. The file wrapper history shows that the five claims of the original application filed January 27, 1937, and amended claims 6 and 7 were all rejected because of lack of invention or prior-art anticipation² and that only one claim, an amendment reading as follows, was allowed:

"A fan comprising: a plurality of integrally formed blades each having a cross-sectionally arcuate middle portion, comparatively flat opposite end portions and web portions between the middle portion and the end portions respectively for rigidly connecting the same and stiffening the arcuate middle portion; and a pair of spaced wheels having a connecting shaft and at their inner sides a plurality of circularly arranged kerfs corresponding with the end portions of the blades and holdingly receiving the same in the assembled position of the fan's said parts."

It has long been established that patent claims allowed should be read and interpreted with reference to claims that have been canceled or rejected by the examiner, and that the claims allowed may not, by construction, be read to cover claims that have been eliminated by rejection. In Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220, 221, 61 S.Ct. 235, 239, 85 L.Ed. 132, the court said:

"It is a rule of patent construction consistently observed that a claim in a patent as allowed must be read and interpreted with reference to claims that have been cancelled or rejected and the claims allowed cannot by construction be read to cover what was thus eliminated from the patent." (Authorities cited.)

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