Ryan Distributing Corporation v. Caley

• Decision Date: 17 January 1945
• Docket Number: No. 8656.,8656.
• Citation: 147 F.2d 138
• Parties: RYAN DISTRIBUTING CORPORATION v. CALEY.
• Court: U.S. Court of Appeals — Third Circuit

147 F.2d 138 (1945)

RYAN DISTRIBUTING CORPORATION v. CALEY.

No. 8656.

Circuit Court of Appeals, Third Circuit.

Argued November 8, 1944.

Decided January 17, 1945.

Leonard L. Kalish, of Philadelphia, Pa. (Wm. Steell Jackson & Son and Wm. Steell Jackson, all of Philadelphia, Pa., and Arthur N. Klein, of Bayonne, N. J., on the brief), for appellant.

Cedric W. Porter, of Boston, Mass. (George P. Dike and Dike, Calver & Porter, all of Boston, Mass., and Kennard N. Ware and Howson & Howson, all of Philadelphia, Pa., on the brief), for appellee.

Before GOODRICH and McLAUGHLIN, Circuit Judges, and GANEY, District Judge.

GOODRICH, Circuit Judge.

Plaintiff, Ryan Distributing Corporation (called Ryan hereafter), sought a declaratory judgment under § 274d of the Judicial Code, 28 U.S.C.A. § 400, that United States patent, 1,945,932 for a Hair Curler or Waver granted on February 6, 1934 to defendant, Caley, is invalid or not infringed by plaintiff. Defendant's counterclaim, filed with his answer, alleged infringement by plaintiff and asked damages. Defendant demanded a jury trial on the counterclaim and also upon the issue raised by the declaratory judgment complaint and answer. This was granted and the case was tried before a jury. Plaintiff's motion for a directed verdict having been denied, the jury returned a verdict for defendant. Thereafter the Court, acting favorably upon plaintiff's motion to set aside the verdict, entered judgment for the plaintiff. The defendant appeals.

Defendant offers several grounds for his contention that the trial judge erred. He insists that plaintiff's motion to set aside the verdict should have been denied since it was improper in form as required by Rule 50(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, which provides that a motion for a directed verdict shall state the specific grounds therefor. Plaintiff in its motion had stated that the hair curlers alleged to be covered by Caley's Patent No. 1,945,932 were old or did not amount to invention and that the patent was invalid because anticipated by the prior art or lacking in invention over the prior art. We think that these allegations are sufficiently specific under Rule 50(a). Specific grounds are required so that judgment may not be entered "on a ground which could have been met with proof if it had been suggested when the motion was made." Nevertheless, "* * * technical precision need not be observed in stating the grounds of the motion, but merely that they should be sufficiently stated to apprise the court fairly as to movant's position with respect thereto." Virginia-Carolina Tie & Wood Co., Inc., v. Dunbar et al., 4 Cir., 1939, 106 F.2d 383, 385. The basis of the motion was perfectly clear to both court and parties both in the trial court and upon this appeal.

Nor are we impressed with defendant's contention that the motion fails to comply with Rule 50(a) because it presents questions of fact rather than questions of law. Cf. Duncan v. Montgomery Ward & Co., 8 Cir., 1940, 108 F.2d 848, modified on other grounds 1940, 311 U.S. 243, 61 S.Ct. 189, 85 L.Ed. 147, where the question of preponderance of evidence was not sufficient for a motion for judgment n. o. v. Plaintiff's motion here was grounded upon lack of invention or anticipation. The issue of invention is ordinarily one for the trier of fact. Thomson Spot Welder Company v. Ford Motor Company, 1924, 265 U.S. 445, 44 S.Ct. 533, 68 L.Ed. 1098; Hazeltine Corporation v. General Motors Corporation, 3 Cir., 1942, 131 F.2d 34; Radiator Specialty Co. v. Buhot, 3 Cir., 1930, 39 F.2d 373. But in any question of fact, "a verdict will normally be directed where both the facts and the inferences to be drawn therefrom, as supported by the overwhelming weight of the evidence, point so strongly in favor of one party or the other that the court feels reasonable men could not possibly come to a contrary conclusion." 3 Moore's Federal Practice, p. 3104. Perhaps the decisions establish that the judge's power and duty in this respect goes further upon the question of invention in patent cases. See the thoughtful discussion by the court in Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888. Whatever the extent of the power in patent cases may be it is certainly as wide upon the question of invention as upon any other question, ordinarily treated as one of fact, but called a "question of law" when its decision becomes the responsibility of the judge. Singer Manufacturing Co. v. Cramer, 1904, 192 U.S. 265, 24 S.Ct. 291, 48 L.Ed. 437; Market Street Railway Co. v. Rowley, 1895, 155 U.S. 621, 15 S.Ct. 224, 39 L.Ed. 284; Brothers v. Lidgerwood Mfg. Co., 2 Cir., 1915, 223 F. 359; Connors et al. v. Ormsby, 1 Cir., 1906, 148 F. 13. That responsibility was properly assumed by the trial judge in this case. Did he exercise it correctly?

The Caley patent and those of the prior art are so extremely simple as to speak for themselves, so that the court could determine from mere comparison what was the claimed invention described in each, and to decide from such comparison whether the articles described were or were not substantially the same. The patent in suit is described as a "waver or curler that comprises a short strip of rubber or the like having an eye at one end, a head at the other and with or without a slit along an intermediate portion of the strip length." Claim 7 which is typical states, "A hair curler comprising a flat strip of uniform thickness having cut edges, a longitudinally extending slit in the strip and a transversely extending flat locking head adapted to pass through the slit in quarter turned position of the head and to lock against the strip when turned to its normal position." Plaintiff admittedly used such a device, but insists that Caley did not invent it.

The prior art is just as simple as the patent in suit. Among examples most pertinent is No. 672,506, granted to Ernest R. Godward, April 23, 1901, which claims "As an article of manufacture, a haircurler consisting of a single piece of pliable rubber, said curler being in the form of a straight bar having at one end an enlarged knob and at the opposite end an eye through which said knob is adapted to be forced * * *." The body, which is cylindrical may be slitted. In both the Caley and Godward patents the hair is wound about the body of the curler and then the curler is secured in position by locking the ends together. In each the ends of the hair may be inserted within the longitudinal slit by first distending the slitted portion and then rolling up the hair, the ends being confined in the slit. Both use flexible material, and in both the ends of the curler are locked. The differences we find are that where Caley calls for a flat strip having cut edges, Godward uses a cylindrical one; where Caley calls for thickness uniform throughout, Godward's ends extend beyond the width of the body, where Caley uses a flat head adapted to pass through the slit in the opposite end of the strip when in quarter turned position and to lock when turned to its normal position, Godward forces a bulb into an eye. But we do not think that these differences are sufficient to warrant a finding of invention. Inasmuch as the resultant curl is the same whether the strip is flat or cylindrical, this change from Godward's form, accomplishing differences in neither function nor result, does not support invention. 1 Walker on Patents (Deller's Ed.) § 32. All that defendant can claim for this difference is that it is cheaper to manufacture a flat strip with cut edges.¹ Likewise the fact Godward's ends extend beyond the width of the strip while Caley's do not, or that Caley uses a flat head while Godward's is a bulb, makes no difference in function or result. The only effective difference is that Caley's locking device is easier to use and...