Stead Lens Co. v. Kryptok Co.

• Decision Date: 07 May 1914
• Docket Number: 4052.
• Citation: 214 F. 368
• Parties: STEAD LENS CO. v. KRYPTOK CO.
• Court: U.S. Court of Appeals — Eighth Circuit

214 F. 368

STEAD LENS CO. v. KRYPTOK CO.

No. 4052.

United States Court of Appeals, Eighth Circuit.

May 7, 1914

D. W Cooper, of New York City, and H. P. Denison, of Syracuse N.Y. (Theoph. L. Carns, of Kansas City, Mo., and Eugene A Thompson, of Syracuse, N.Y., on the brief), for appellant.

William M. Stockbridge, of New York City, and John H. Atwood, of Kansas City, Mo., for appellee.

Before SANBORN and CARLAND, Circuit Judges, and RINER, District Judge.

RINER District Judge.

This was a bill in equity brought by the Kryptok Company, praying an injunction and accounting for an alleged infringement by the Stead Lens Company of two patents, one numbered 637,444 issued to John L. Borsch November 21, 1899, and the second numbered 876,933, issued to John L. Borsch, Jr., January 21, 1908. Both patents are for new and useful improvements in bifocal lenses to be used in spectacles and eyeglasses of the special character known as bifocal.

It is averred in the bill that the Kryptok Company is a corporation organized and existing under the laws of the state of New York and is the owner of these two patents; that the two patents are capable of conjoint use in one and the same lens; that the Stead Lens Company has made and sold bifocal lenses in infringement of both of these patents; and that the lenses so made and sold by the Stead Lens Company 'each constitutes a conjoint use of the inventions or improvements of both of said letters patent in one and the same bifocal lens.'

The Stead Lens Company filed an answer and, by leave of court, a supplemental answer, denying in detail the averments of the bill, setting up certain facts, and referring to prior patents and publications for the purpose of showing anticipation and consequent invalidity of the patents in suit. It is expressly denied in the answers that the patents are capable of conjoint use; that the patents, in view of the state of the art at the time they were issued, did not disclose any new or patentable invention, but that the alleged invention involved, if anything, simply mechanical skill and judgment, and that the Stead Lens Company has not infringed either of the patents. It is further averred in the answers that the Kryptok Company is not a bona fide corporation; that its promoters and organizers were its present nominal stockholders; that it had previously been engaged in an unlawful combination in restraint of trade; and that they organized this corporation as a nominal corporation in furtherance of said unlawful purpose of restraining trade and are still, in the name of the company, keeping up and carrying out said unlawful combination in restraint of trade.

A replication was filed, testimony taken, and at the hearing the district court entered an interlocutory decree granting the injunction prayed for in the bill and directed an accounting.

The patent issued to John L. Borsch contained but a single claim, as follows:

'A bifocal lens formed of two pieces of glass of dissimilar index and size placed and secured face to face, the smaller of said lenses being mounted in a recess in the larger of said lenses, and exposed upon one face of the latter, substantially as set forth.'

In the patent issued to John L. Borsch, Jr., claims 1, 2, 3, 7, and 8 are the only ones in suit. But one of these claims, claim 3, was selected by counsel for submission to the court as typical of the group of claims in this patent. It is as follows:

'A spectacle, eyeglass, or other optical lens consisting of the body portion having a selected index of refraction, and one or more portions of glass embedded in the surface of said body portion and integral therewith, the said embedded portion or portions having an index or indices, of refraction different from that of the main or body portion.'

If these patents are valid and susceptible of conjoint use, there can be no doubt, we think, but that the defendant's device constitutes an infringement. It only requires an inspection and comparison of the lenses manufactured by the Stead Company with those manufactured by the Kryptok Company to show that the two lenses are, for all practical purposes, identical. And indeed upon this question there is but little, if any, real conflict in the testimony.

The defense of unlawful combination in restraint of trade, set up in the answers, may well be passed with the remark that the record discloses no substantial showing of monopoly except such monopoly as inheres in the nature and theory of the patent law. Neither do we think that the evidence offered for the purpose of showing prior use of the fused bifocal lenses sufficient to defeat the patent issued to John L. Borsch, Jr. We have carefully examined the testimony and find it uncertain and indefinite as to time and detail, and, as suggested by the trial court:

'In itself as well as in its attempted corroboration it is unsatisfactory and unconvincing.'

Oral testimony of prior use cannot prevail over the legal presumption of validity which attaches to a patent unless it is at least clear and convincing. National Hollow Brake-Beam Co. et al. v. Interchangeable Brake-Beam Co., 106 F. 693, 694-703, 45 C.C.A. 544; Parker v. Stebler et al., 177 F. 210, 101 C.C.A. 380; Albright v. Langfeld (C.C.) 131 F. 473; Continental Rubber Works v. Single Tube Automobile & Bicycle Tire Co., 178 F. 452, 101 C.C.A. 436; Laas v. Scott (C.C.) 161 F. 122-126.

It was also urged at the argument that the claimed inventions and discoveries of the patents in suit are all anticipated in the prior art, and that both patents are void for want of patentable invention. Upon these questions we here quote at length from the opinion of Judge Van Valkenburgh, annexed to the record, as fairly expressing the views entertained by this court after an attentive and critical examination of the record: 'The first patent in suit, No. 637,444, recited that:

''Heretofore bifocal lenses have been frequently formed by matching and uniting edge to edge two pieces of lens glass, each constituting but part of a complete lens, and respectively suitably ground, the one for distant and the other for near vision, and various forms have by different constructors been given to the respective elements or sections of the lens; the only fixed requirement as to such sections being that they should, when united, present as to their combined outer edges the usual oval outline of a lens.'

''In whatever forms the respective independent sections or elements of a bifocal lens of this character have been made, however, they have been united by bringing the respective edges of said sections or elements into contact and cementing the abutting edges by any suitable balsam or uniting medium, or maintaining them in their assembled position by an enclosing lens frame.'

'The aim of the proposed patent is thus stated:

''This construction has been objectionable, however, by reason of the fact that, however carefully the sections are assembled and cemented, a minute cement-filled space exists between the abutting edges, and the cement which is present, of course, on both surfaces of the lens in time becomes slightly worn away under the action of heat and the attrition to which it is subjected in the cleaning of the lens, with the result that the permanence of the union between the elements or sections is impaired; furthermore, the line of connection between the two sections of a bifocal lens as heretofore constructed as described is always visible, and not only detracts from the appearance of the lens but is an annoyance to the wearer.'

''Broadly stated, it is the object of my invention to produce a bifocal lens of an attractive, efficient, and durable character, in which the objections hereinbefore stated to the existing forms of such lenses shall be obviated.'

'As described in the patent this is done by taking a lens of crown glass suitable for far vision purposes producing in one face thereof a recess of such form as to be adapted to receive and accommodate a smaller near vision lens of flint glass, having an index of refraction different from that of the larger lens, and securing this smaller lens within the recess of the larger by means of balsam or other suitable material, the result being a compound bifocal lens uniform in curvature and integral in structure from edge to edge, the minor lens not being visible to others than the wearer except on very close inspection; a crevice or joint between the elements, with its accompanying disadvantages, being entirely absent.

'The claim declared was as follows: 'A bifocal lens formed of two pieces of glass of dissimilar index and size placed and secured face to face, the smaller of said lenses being mounted in a recess in the larger of said lenses, and exposed upon one face of the latter, substantially as set forth.'

'The essential novelty and invention claimed for this patent is that it for the first time discloses the use of glass of different indices of refraction in such combination as to permit a completed integral bifocal structure of the same thickness and uniformity of surface as a lens composed of but one kind of glass and having a single focal point. In this way the unsightliness, instability, and other infirmities pointed out as existing in former structures were either entirely removed or reduced to a more desirable minimum. If this device presents novelty and invention, its utility and desirability can hardly be disputed; but defendant contends that it presents neither the one nor the other.

'In support of the defense of anticipation something like 27 patents are cited as references. A number of these exhibit the development of the bifocal eyeglass or spectacle from its crude origin up to the application of the first

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