Schmidinger v. Welsh

• Decision Date: 02 October 1967
• Docket Number: 15831.,No. 15830,15830
• Citation: 383 F.2d 455
• Parties: Joseph SCHMIDINGER and Tung-Sol Electric Inc., Appellants in No. 15830, v. Marie J. WELSH, James W. Welsh and Welflash, Inc., Oxford Electric Corporation and Its Hudson Lamp Division, Hudson Lamp Co., Inc., Best Mfg. Co., and Its Hudson Lamp Co., Inc., Division, Appellants in No. 15831.
• Court: U.S. Court of Appeals — Third Circuit

383 F.2d 455 (1967)

Joseph SCHMIDINGER and Tung-Sol Electric Inc., Appellants in No. 15830, v. Marie J. WELSH, James W. Welsh and Welflash, Inc., Oxford Electric Corporation and Its Hudson Lamp Division, Hudson Lamp Co., Inc., Best Mfg. Co., and Its Hudson Lamp Co., Inc., Division, Appellants in No. 15831.

Nos. 15830, 15831.

United States Court of Appeals Third Circuit.

Argued February 10, 1967.

Decided October 2, 1967.

William D. Lucas, Eyre, Mann & Lucas, New York City (Melvin H. Kurtz, New York City, on the brief), for Joseph Schmidinger and others.

Richard A. Huettner, Kenyon & Kenyon, New York City (Walter A. Beers, Newark, N. J., William F. Noval, New York City, on the brief), for Marie J. Welsh and others.

BIGGS, Circuit Judge.

The appeal and cross appeal at bar concern patent rights and trade secrets respecting a "Snap Action Device" among whose uses are a switch for an automobile directional signal flasher, a thermostat, a circuit breaker and an overload protector. In the suit at bar, however, we are concerned only with the device's use as a switch for an automobile directional signal flasher. We shall discuss it primarily in this connection. The device is disclosed by Reissue Patent 24,023.

I. THE ISSUE OF VALIDITY OF REISSUE PATENT 24023.

In 1952, Schmidinger, the individual plaintiff, was issued United States Reissue Patent 24,023 for the "Snap Action Device."¹ Prior to 1952 Schmidinger had granted the exclusive manufacturing rights to his device to Tung-Sol Electric, Inc., the corporate plaintiff, subject to a nonexclusive license to Signal-Stat Corporation. During the period of development the defendant James Welsh had been employed by Tung-Sol as a supervisory engineer in charge of the manufacture of Schmidinger signal flashers. In 1952 Welsh left Tung-Sol to go with its chief competitor, Signal-Stat Corporation, where he was employed until the summer of 1959. In the fall of 1959, Welsh and his wife, Marie, also a defendant, formed the defendant corporation, Welflash Inc., for the purpose of manufacturing and selling automobile directional signal flasher devices including the alleged infringing device.²

Schmidinger and Tung-Sol assert that the Welflash flasher constitutes an infringement of claims of the 023 patent and that the defendants are guilty of unfair competition in that Welsh misappropriated the plaintiffs' trade secrets for the mass production of flashers. The defendants assert that the 023 patent is invalid, deny infringement and unfair competition. Jurisdiction is based on Section 1338 and 1400(b), 28 U.S.C.

The court below held five claims (hereinafter set out) of the 023 patent valid and infringed by the Welflash device but that there had been no misappropriation of trade secrets. See 243 F.Supp. 852.³

Schmidinger and Tung-Sol have appealed at our No. 15830 from the ruling of the court below that there was no misappropriation of trade secrets. The defendants have appealed at our No. 15831 from the holding that the 023 patent is valid and infringed by the Welflash device.

The patent specification describes a snap action device that may be actuated by electrical, thermal, or mechanical forces, or by a combination of them. The device comprises three elements; (1) a disc, (2) a laterally flexible pull wire or strip secured at its ends to the disc at the opposite ends of a diameter, and (3) a support element secured to the pull strip, preferably at the center of said pull strip. The disc is of spring material and has a crease along its diameter underlying the laterally flexible pull strip. The pull strip may be continuous between the points of its attachment to the disc and is mounted on a support under longitudinal tension. The support is to be so constructed as to permit adjustment or variation of the tension in the strip. The specification goes on to state that the disc under predetermined increase of tension in the pull strip snaps from a position in which the halves of the disc on each side of the crease extend outwardly away from the pull strip at an angle of less than 180° to a second position in which the disc is bowed in the opposite direction about a diameter of 90° to the preformed crease.

As to the operation of the device, the court below stated, id. supra, at 855:

"In operation, and in the initial starting position, tension in the pull ribbon holds the buckling member in its snapped position. In this position the center of the buckling member is bowed out to form a channel positioned 90° to the permanent deformation and of opposite curvature thereto. The 90° channel of opposite curvature causes a gap to form between the buckling member and the pull ribbon. This 90° channel of opposite curvature is characteristic of the snap action of what plaintiffs termed the `hard\' buckler of the patented device, which Schmidinger achieved by means of a single flexible pull ribbon arranged on the convex side of the buckling member parallel to the deformation.

"When the buckling member is in its snapped position, a gap is formed between the buckling member and pull ribbon. At such time the electrical contacts are closed. When the operator of the automobile moves the signal lever into signalling position, electric current passes through the buckling member and pull ribbon in a divided flow to generate heat and relax the tension in the ribbon. As a result, the buckling member snaps to close the gap and open the electrical contacts. Thereupon, the buckling member and pull ribbon cool and contract, until the tension in the ribbon is restored to snap the buckling member and open the gap. The electrical contacts again close, and the cycle is automatically repeated as long as the directional signal lever remains in signaling position.

"In each of the two positions assumed by the buckling member in its back-and-forth snap action, there is a so-called `locking\' effect, where the buckling member dwells in position. This dwelling in each position is due to the differential expansion and contraction of the pull ribbon and buckling member. The buckling member remains or dwells in each position while the pull ribbon is expanding or contracting, but thereafter suddenly snaps and moves very rapidly through an equilibrium position located between the two `locked\' positions. The differential expansion and contraction are caused by the divided circuit flow of current through the buckling member and pull ribbon, and the ambient cooling thereof."

In an attempt to describe the operation of the 023 device as a directional signal flasher in simplest terms, we state that an electric current flows through the flexible pull ribbon to the disc. The pull ribbon when heated by the current, expands and thereby allows the disc to snap to its natural shape which breaks the flow of electricity through the disc to the flasher light. As the metals of the pull ribbon and the disc cool the disc returns to its original creased condition causing the flasher light to go on again and the cycle is repeated.⁴

The claims in issue are set out in the footnote.⁵ Claims 12, 17, 18 and 23 are combination claims having the three elements set out above. Claim 26 is described as having the first two elements stated above. The third element, the support, is not included in claim 26. All the claims in issue are directed to a flasher switch for the operation and control of automobile directional signals, the two working parts, the pull ribbon and the disc, being actuated by the passage of electrical current through them as distinguished from other claims of the patent, not in issue, some of which cover a thermostat actuated by ambient temperature. "Ambient temperature" means, of course, the temperature of surrounding air. The sole commercial use of the 023 device has been in the control of automobile directional signals.

The plaintiffs seemingly concede and we conclude, as did the court below, that the three elements of the specification as hereinbefore stated were fully anticipated by the prior art but they contend that the combination of those three elements creates a device that is new, useful and nonobvious, and therefore patentable. We agree for the reasons stated hereinafter.

We desire to make it clear that we are aware that the validity of claims of a combination patent cannot rest on any "essential" element "gist" or "heart" asserted to lie in the invention. Aro Manufacturing Company v. Convertible Top Replacement Company, 365 U.S. 336, 345, 81 S.Ct. 599, 5 L.Ed.2d 592 (1961). The defendants contend in this court, as they did in the court below, that the patent in suit is invalid because the disclosure was obvious to any individual possessing the ordinary skill in the art. This is their principal defense on the issue of patentability. Concededly patent claims, not the specifications of a patent, measure the invention, Smith v. Snow, 294 U.S. 1, 55 S.Ct. 279, 79 L.Ed. 721 (1935), and while a specification may be referred to to limit a patent claim it cannot be available to expand it. Darsyn Laboratories, Inc. v. Lenox Laboratories, 120 F.Supp. 42 (D.C.N.J.1954), aff'd per curiam, 3 Cir., 217 F.2d 648, certiorari den. 349 U.S. 921, 75 S.Ct. 661, 99 L.Ed. 1253 (1955). But it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention. Seymour v. Osborne, 11 Wall. 516, 547, 20 L.Ed. 33 (1871).

If we turn to Claim 12 of the patent which we deem to be substantially similar to the other claims in issue save Claim 26, we find that it claims a snap-action device "according to claim 10"; the tension pull ribbon and the disc to be varied by the differential expansion and contraction of the pull ribbon and the disc by passing an electric current through them.

The issue presented, therefore, is whether 023 meets the test of Section 103 of the Patent Act of 1952, 35 U.S.C. The standard was declared by the Supreme Court by Mr. Justice...