Rival Manufacturing Company v. Dazey Products Company

• Decision Date: 14 February 1973
• Docket Number: Civ. A. No. 18440-3.
• Citation: 177 USPQ 432,358 F. Supp. 91
• Parties: RIVAL MANUFACTURING COMPANY, Plaintiff, v. DAZEY PRODUCTS COMPANY, Defendant.
• Court: U.S. District Court — Western District of Missouri

358 F. Supp. 91

177 USPQ 432

RIVAL MANUFACTURING COMPANY, Plaintiff, v. DAZEY PRODUCTS COMPANY, Defendant.

Civ. A. No. 18440-3.

United States District Court, W. D. Missouri, W. D.

February 14, 1973.

COPYRIGHT MATERIAL OMITTED

Carter H. Kokjer, Claude W. Lowe, William B. Kircher, Scofield, Kokjer, Scofield & Lowe, Kansas City, Mo., for plaintiff.

Donald E. Johnson, Robert D. Hovey, Schmidt, Johnson, Hovey & Williams, Kansas City, Mo., for defendant.

FINAL JUDGMENT ON COUNT I AND ORDER DENYING PLAINTIFF'S APPLICATION FOR ORDER TO COMMISSIONER UNDER 35 U.S. CODE 256

WILLIAM H. BECKER, Chief Judge.

This is an action in two counts for alleged infringement of a patent No. 3,423,825 issued to Frost and Maguire, for trademark infringement and unfair competition. The action is now before the Court for a ruling upon an Application (motion) for Order under Section 256, Title 35, filed by plaintiff. In the application plaintiff asserts the existence of a defect in the patent-in-suit, arising from failure to name all of the alleged joint inventors in the patent as issued. Plaintiff moves for an order of this Court directing the Commissioner of Patents now to issue a certificate adding two additional persons to the patent as being joint inventors with the two patentees originally named therein.

A Notice of Hearing and Order to Show Cause in support or opposition to the Application was entered and sent to the two original patentees, the corporate assignee of the original patentees through which plaintiff claims title to the patent under a subsequent assignment, the two alleged additional joint inventors, and the employer of the latter at the time of the acts of alleged joint invention in question, and also to plaintiff and defendant in this action. Pursuant to such notice and order, affidavits of the original patentees and the alleged additional joint inventors were filed. An affidavit of plaintiff's attorney and a Memorandum of Authorities were filed by plaintiff, an affidavit of defendant's attorney and an Opposition containing memoranda of facts and authorities were filed by defendant, and a hearing was held. During the hearing, at which the only appearances were by plaintiff and defendant, the affidavits and extensive evidence, including the deposition testimony of the original patentees, the alleged additional joint inventors, the patent attorney who handled the application for and securing of the patent, certain officers and employees of the assignee of the original patentees, and certain officers of plaintiff, and various related physical and documentary exhibits, were admitted for consideration in connection with the Application. Oral arguments of counsel for plaintiff and defendant, respectively supporting and opposing the Application, were heard.

Upon such hearing, and after due consideration of the affidavits, evidence, arguments and authorities presented, the Court enters the following findings of fact and conclusions of law:

FINDINGS OF FACT

1. Plaintiff Rival Manufacturing Company and defendant Dazey Products Company are both Missouri corporations having their principal places of business in Kansas City, Missouri, and are competitors in the manufacture and sale of can openers and other household appliances.

2. The patent involved in this action is U. S. Patent No. 3,423,825, entitled "Can Opener," which was issued on January 28, 1969, to Richard H. Frost and John Maguire as joint inventors and patentees, from an application filed January 30, 1967, in the names of Frost and Maguire as joint inventors.

3. Only Claim 2 of the patent is charged by plaintiff to have been infringed by defendant. Therefore Claim 2 is the only claim of the patent directly involved in the controversy before the Court in this action. Claim 2 reads as follows (the bracketed letters being inserted for convenience of later reference):

"2. A can opener having means for supporting:

a a drive roller mounted for rotation about a generally horizontal axis and adapted to engage the underside of the rim of a can placed against said drive roller;

b means for rotating said drive roller;

c an arm mounted for movement between a first position adjacent said drive roller and a second position above said drive roller;

d knife means mounted on said arm for piercing the top of said can and for severing said can top as said can is rotated by said drive roller;

e means for connecting said arm to said support means for said movement between said first position adjacent said drive roller and said second position above said drive roller and for additional movement in a direction away from said first position to a third position spaced from said second position; and

f means carried by said support means for cooperation with said connecting means for maintaining said arm adjacent said support means during such movement between said first, second and third positions but permitting said arm to be removed from said support means and to be replaced in said support means solely by manual movement of said arm when in said third position."

4. Assuming for purposes of the Application now before the Court, but not deciding, that the subject matter of Claim 2 is entitled to the protection of a patent, the feature essential to existence of novelty or invention in the combination of elements claimed is clearly confined to the concept of providing for convenient removability of the knife-carrying arm to facilitate cleaning thereof, which is found in clause f of the claim, i. e. "means . . . permitting said arm to be removed from said support means and to be replaced in said support means solely by manual movement of said arm when in said third position". The remainder of the claimed combination found in clauses a through e of Claim 2 are conventional, as expressly confirmed by the testimony of patentee Frost and plaintiff's Vice President of Engineering Scott and tacitly further confirmed by the presence of the elements and relationships of clauses a through e of the claim in an earlier model can opener of defendant having a non-removable arm, before the Court as Defendant's Exhibit 9, which plaintiff does not charge to infringe.

5. Claims 3 through 6 are also directed to combinations of elements including the removable arm feature, but define such feature more narrowly and with more detailed reference to the particular structure disclosed for such purpose in the patent, namely, the use of a pivotal mounting shaft on the arm having a key-like lateral projection near the end of the shaft remote from the arm, in conjunction with a key-hole shaped opening in the body shell of the can opener for receiving and normally holding the shaft but adapted to permit removal of the shaft from the opening whenever the arm is swung to a position aligning the key-like lateral projection on the shaft with the lateral slot portion of the key-hole shaped opening.

6. Claims 1 and 7 of the patent make no reference at all to the removable arm feature. These claims are directed to combinations of elements characterized by inclusion therein of a guide structure feature including a guide plate and guide roller.

7. The can opener development upon which the patent is based was initiated by Samsonite Corporation ("Samsonite" hereinafter), formerly called Schwayder Bros., Incorporated, a Denver based company, best known for the luggage it sells under the name "Samsonite." During 1965, Samsonite became dissatisfied with can openers it had been obtaining from a third-party appliance manufacturer for resale, and decided to develop its own can opener. In November of 1965, Samsonite assigned to its wholly-owned subsidiary, Design West, Incorporated ("Design West" hereinafter), located in Irvine, California, the project of designing the aesthetic and general functional attributes of an electric can opener that Samsonite could manufacture for itself. In turn the project was assigned by Design West to Milton J. Halsted, then employed by Design West.

8. In January of 1966, Samsonite retained Frost Engineering Development Corporation ("Frost Engineering" hereinafter), an independent engineering organization located in Englewood, Colorado. The patentee Frost was President of Frost Engineering and patentee Maguire was its Manager of Commercial Projects. Frost Engineering undertook a project to study and find ways to correct the deficiencies of the can openers Samsonite had been obtaining from a third-party manufacturer. This project was carried forward by study and testing of the can openers Samsonite had been purchasing for resale and other competitive can openers then on the market.

9. During January or early February of 1966, Design West employee Halsted conceived at Design West and discussed with Mr. Fujioka, its president, the idea and desirability of making the cutter-carrying arm of the proposed can openers removable without the use of tools, but Halsted did not know how to accomplish such result.

10. At some time prior to February 8, 1966, Halsted went over to the neighboring desk of his fellow employee Tim M. Uyeda at Design West and asked the latter's help on the problem of mechanical design of a mounting of a cutter-carrying arm on a can opener, removable without tools. During this conference at Design West, lasting no more than an hour, Uyeda proposed to Halsted the use of a shaft on an arm having a key-like lateral projection in conjunction with a key-hole shaped opening in the can opener body as a suitable mechanical means of making a mounted cutter-carrying arm on a can opener, removable without tools.

11. On February 8, 1966, at Design West, Halsted made and shortly thereafter sent to Samsonite a drawing of Design West's can opener design, which is before the Court as Deposition Exhibit 8 to Plaintiff's Exhibit 8. This drawing included disclosure of a cutter-carrying arm, as proposed by Halsted, mounted on the body of the can opener by means of a shaft and key-hole structure,...