Spring-Air Co. v. Ragains

• Citation: 96 F. Supp. 79
• Decision Date: 29 January 1951
• Docket Number: Civ. A. No. 1268.
• Parties: SPRING-AIR CO. v. RAGAINS et al.
• Court: U.S. District Court — Western District of Michigan

96 F. Supp. 79

SPRING-AIR CO. v. RAGAINS et al.

Civ. A. No. 1268.

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

January 29, 1951.

Robert E. Woodhams, Peter P. Price and Laurence, Woodhams & Mills, all of Kalamazoo, Mich., Edward C. McCobb and McCobb, Heaney & Dunn, all of Grand Rapids, Mich., for plaintiff.

Frank E. Liverance, Jr., R. M. Shivel and Linsey, Shivel, Phelps & VanderWal all of Grand Rapids, Mich., for defendants.

STARR, District Judge.

Plaintiff Spring-Air Company, a corporation, of Holland, Michigan, successor to the Charles Karr Company, is principally engaged in the manufacture of spring structures for use in the making of mattresses. The defendants, doing business as the Wire Products Company of Holland, Michigan, are also engaged in the manufacture of spring structures for use in mattresses.

On January 31, 1949, plaintiff filed complaint alleging wilful infringement of the following United States Letters Patent: No. 1,887,058 issued November 8, 1932 (expired November 8, 1949) for a spring assembly; No. 1,922,002 issued August 8, 1933 (expired August 8, 1950) for a spring-assembling machine; and No. 2,026,276 issued December 31, 1935 (expires December 31, 1952) for a spring-assembling machine. Plaintiff asks for an injunction against further infringement, an accounting for profits and damages, and for costs.

Defendants filed answer and counterclaim, denying the charges of infringement and alleging the invalidity of the three patents in suit. They also allege malicious and vexatious conduct on the part of the plaintiff and ask damages therefor, and also for costs of suit and attorney fees. In support of their claim of invalidity defendants cite the following prior-art patents: Heuer, 1,930,715; Kirchner, 1,907,323; Gail, 1,905,459; Kirchner, 1,881,672; Stackhouse, 1,835,819; Lofman, 1,817,087; Stackhouse, 1,812,611; Meister et al., 1,785,839; F. Karr, 1,744,389; Kroehler, 1,706,889; C. D. Karr, 1,656,204; Jackson, 482,965. They also put in evidence the following additional patents: C. D. Karr, 1,938,489; Wunderlich, 1,932,566; Foster, 1,899,087; Karpen, 1,882,649; F. Karr, 1,798,885; F. Karr, 1,596,273; Holtfoth, 1,473,989; Lewis, 1,262,814; Mellon, 1,103,526; Simmons, 1,021,431; Bonnell, 630,967; Templin, 593,406; Templin, 581,316; Bonnell, 405,821.

The plaintiff contends that the spring structures manufactured and sold by the defendants infringe claims 2 and 4 of its spring-assembly patent No. 1,887,058, and that the spring-assembling machines constructed and used by defendants infringe claims 1, 2, 7, 8, 10, 15, and 16 of its machine patent No. 1,922,002, and Claims 1 to 9, inclusive, and claim 14 of its machine patent No. 2,026,276.

Plaintiff's three patents in suit are presumed to be valid, and the burden is upon the defendants to establish their claims 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 also 2 Walker on Patents, Deller's Ed., pp. 1272, 1273, § 276. However, this presumption of validity is rebuttable and not conclusive. J. J. Warren Co. v. Rosenblatt, 7 Cir., 80 F. 540, certiorari denied 168 U.S. 710, 18 S.Ct. 943, 42 L.Ed. 1211; Dennis v. Great Northern Ry. Co., D. C., 51 F.2d 796; Reynolds v. Emaus, D.C., 87 F.Supp. 451. There is undoubtedly a stronger presumption of validity as to plaintiff's spring-assembly patent 1,887,058 because of its involvement in interference proceedings in the Patent Office, in which certain prior-art patents were considered. However, this stronger presumption is not conclusive and is rebuttable upon a convincing showing of invalidity. In considering the question of the validity of the patents in suit, the court cannot disregard the fact that the decisions of the Supreme Court of the United States in recent years clearly 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 Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127; Trabon Engineering Corp. v. Dirkes, 6 Cir., 136 F.2d 24; Perkins v. Endicott Johnson Corp., 2 Cir., 128 F.2d 208; Picard v. United Aircraft Corporation, 2 Cir., 128 F.2d 632.

A device or structure, 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; Continental Machines, Inc., v. Grob, 8 Cir., 137 F.2d 470; Emmett v. Metals Processing Corporation, 9 Cir., 118 F.2d 796; American Laundry Mach. Co. v. Strike, 10 Cir., 103 F.2d 453. An extended application of prior-art teachings, mere perfection of workmanship, a change only in size, form, strength, proportions, degree, or the substitution of equivalents doing substantially the same thing 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. 395; National Pressure Cooker Co. v. Aluminum Goods Mfg. Co., 7 Cir., 162 F.2d 26; Crosley Corporation v. Westinghouse Electric & Mfg. Co., 3 Cir., 152 F.2d 895; B. F. Sturtevant Co. v. Massachusetts Hair & Felt Co., 1 Cir., 122 F.2d 900, certiorari denied 315 U.S. 823, 62 S.Ct. 917, 86 L.Ed. 219; Schreyer v. Chicago Motocoil Corporation, 7 Cir., 118 F.2d 852; Mueller v. Campbell, D.C., 68 F.Supp. 464. In Sinclair & Carroll Co., Inc., v. Interchemical Corporation, 325 U.S. 327, 330, 65 S.Ct. 1143, 1145, 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."

In the recent case of Shaffer v. Armer, 10 Cir., 184 F.2d 303, the court said at page 307: "`The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts.' Atlantic Works v. Brady, 107 U.S. 192, 200, 2 S.Ct. 225, 231, 27 L.Ed. 438. The device must not only be `new and useful,' it must also amount to `invention or discovery'. Thompson v. Boisselier, 114 U.S. 1, 11, 5 S.Ct. 1042, 1047, 29 L.Ed. 76; and `perfection of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable.' Reckendorfer v. Faber, 92 U.S. 347, 356-357, 23 L.Ed. 719; Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 86 L.Ed. 58."

In considering the question as to the validity of each of the three patents here in suit, it should be kept in mind that the patentee in each instance is presumed to know and is chargeable with knowledge of everything disclosed by prior-art patents. Zephyr American Corporation v. Bates Mfg., Co., 3 Cir., 128 F.2d 380; Cutler Mail Chute Co. v. Capitol Mail Chute Corporation, 2 Cir., 118 F.2d 63; Detroit Stoker Co. v. Brownell Co., 6 Cir., 89 F.2d 422.

Plaintiff's spring-assembly patent in suit, Karr 1,887,058, was issued to F. (Francis) Karr November 8, 1932, on application filed December 21, 1927, and by assignment became the property of the Charles Karr Company, predecessor of the plaintiff corporation. The defendants contend that this patent is invalid because lacking invention and because fully anticipated and disclosed in prior-art patents, particularly in Karr 1,744,389 issued to F. (Francis) Karr January 21, 1930, on application filed August 27, 1927. Defendants further contend that plaintiff's claim of infringement of 1,887,058 would render it invalid because of double patenting and illegal extension of the protection granted by 1,744,389.

The first question presented is whether plaintiff's patent 1,887,058 for a spring assembly is valid and, if valid, whether it has been infringed by defendants. The testimony indicates that plaintiff never manufactured or marketed a spring assembly constructed in strict conformance with this patent and, therefore, as a paper patent, it can claim no scope of coverage beyond that specifically disclosed. Roberts v. General Electric Co., 3 Cir., 85 F.2d 964, 965; Stewart-Warner Corporation v. Jiffy Lubricator Co., 8 Cir., 81 F.2d 786. Furthermore, it is a combination patent in a crowded field of the art and, if valid, must be strictly construed.

Prior-art Karr 1,744,389 for a spring assembly expired on January 21, 1947, and thereafter defendants associated together as copartners, acquired factory space, and about January 1, 1948, began the manufacture of spring assemblies. Since that time they have continued to manufacture and market spring assemblies. It is admitted that the spring-assembly structures manufactured and sold by plaintiff and those manufactured and sold by the defendants are...