Rosenberg v. Groov-Pin Corporation

• Decision Date: 13 January 1936
• Docket Number: No. 148.,148.
• Citation: 81 F.2d 46
• Parties: ROSENBERG et al. v. GROOV-PIN CORPORATION.
• Court: U.S. Court of Appeals — Second Circuit

81 F.2d 46 (1936)

ROSENBERG et al. v. GROOV-PIN CORPORATION.

No. 148.

Circuit Court of Appeals, Second Circuit.

January 13, 1936.

Drury W. Cooper and Clarence M. Crews, both of New York City, for plaintiffs.

Morris Hirsch and Dean, Fairbank, Hirsch & Foster, all of New York City, for defendant.

Before MANTON, L. HAND, and CHASE, Circuit Judges.

L. HAND, Circuit Judge.

The plaintiff is the owner of two patents for metal pins, Nos. 1,482,151, and 1,978,145. We had the earlier of these before us in Rosenberg et al. v. Hassall, 73 F.(2d) 58, and held that the claims now in suit, Nos. 5, 6, 8 and 9, were valid and infringed. The plaintiff asserts that one of the defendant's pins, Exhibit A., infringes these claims, which the defendant denies, coupling with that denial an attack upon their validity by a new reference not before us on the other appeal, British Patent No. 994 of 1865 issued to one, Brown. The judge held that Exhibit A. did not infringe and denied a motion for an injunction pendente lite. To an understanding of the issues involved it is necessary to recall some of the details of the disclosure. The invention is for a pin to hold together two pieces of metal; it is made of a round main shank, carrying spiral case-hardened cutting ribs from a top or head down to a short blunt pilot end. In the upper of the two pieces to be fastened together, a hole is bored large enough to accommodate the ribs without touching; in the lower piece is a smaller hole, a little larger in diameter than the shank, but smaller than the distance between opposed edges of the cutting ribs. As the pin is driven home, the metal of the lower piece is displaced by the cutting edges of the ribs and flows into the valleys between them, making a firm hold and preventing dislodgment. The claims in suit are all for pins with spiral ribs, and contain the phrase "hardened threads," which is to be interpreted by the following language of the specifications, page 1, lines 102-107: "the reference to the hardened condition of the threads in the appended claims is to be taken in each instance to signify that degree of hardness enabling the threads to enter or cut metal, such as soft iron and soft steel, substantially without injury to the threads." The hardness is thus made a function of the metal of the lower of the two pieces to be fastened; against that metal the ribs must stand up.

Exhibit A. is a pin having spiral cutting ribs, case-hardened, which run up from a pointed pilot end for about half the length of the shank, stopping far enough from the top or head to accommodate the thickness of the two sheets to be held together, the lower of which must be of metal; for the remainder of its length the shank is bare like that of an ordinary iron nail. In practice the pin is driven through the lower sheet, cutting grooves as it goes, like the patented pin. When driven home, the upper ends of the ribs have passed below the lower surface of the lower metal sheet, so that only the bare shank is in the holes. The pin may then be rotated until the ribs are out of register with the grooves they have made, so preventing its withdrawal. Plainly this pin does not operate in the way intended by the disclosure, which is to hold together the pieces by imbedding itself in the metal of the lower piece. Nevertheless, the claims are for a pin of specified form, and say nothing about the length of the ribs, and Exhibit A. would operate like the patented pin, if used with a thick enough lower sheet. Thus, it infringes, if the ribs are the "hardened threads" of the claims, which in turn depends upon whether they have "that degree of hardness * * * to enter or cut * * * soft iron and soft steel, substantially without injury to the threads." Whether the cutting ribs of Exhibit A. will be mutilated if imbedded in soft steel, is in dispute, and the issue is not one to be settled by affidavits; it must await trial, where it will however be the only relevant issue. We hold that the British patent is not a good anticipation of patent 1,482,151; we adhere to our former decision as to validity. It is not necessary to labor the obvious fact that neither Exhibit B. nor Exhibit 3 can infringe this patent.

The other patent is more general, though applied for only a few days before the earlier one issued. The claims were refused by the examiner, the examiners in chief, and the Commissioner, but they have been allowed by a justice of the Supreme Court of the District in a suit brought under section 63 of title 35, U.S.Code (35 U.S.C.A. § 63) to which only the Commissioner was defendant. Whether that was an adjudication which justifies a preliminary injunction, is a question which appears to be res nova. The doctrine that in the absence of long acquiescence or adjudication an injunction will not go, is at first blush anomalous in the light of the presumption of validity which courts generally grant to a patent once issued. It may rest upon two different theories, and the difference is vital here. Courts might say that until judges, as distinct from administrative officials, pass upon the references turned up in the progress of the application through the Office, the patent has not even a prima facie validity....