Swanson Mfg. Co. v. FeinbergHenry Mfg. Co.

• Decision Date: 06 February 1945
• Docket Number: No. 112.,112.
• Citation: 147 F.2d 500
• Parties: SWANSON MFG. CO. et al. v. FEINBERGHENRY MFG. CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

147 F.2d 500 (1945)

SWANSON MFG. CO. et al. v. FEINBERGHENRY MFG. CO., Inc., et al.

No. 112.

Circuit Court of Appeals, Second Circuit.

February 6, 1945.

Munn, Liddy & Glaccum, of New York City (John H. Glaccum, of New York City, and Langdon Moore, of Washington, D. C., of counsel), for plaintiffs-appellees-appellants.

Irving F. Goodfriend, of New York City, for appellant Feinberg-Henry Mfg. Co., Inc.

Jacob Goldberg, of New York City (Orville N. Greene, of New York City, of counsel), for appellant Columbia Mfg. Co.

Before SWAN, AUGUSTUS N. HAND, and CHASE, Circuit Judges.

CHASE, Circuit Judge.

The plaintiffs are an Illinois corporation and its president, who is the patentee and the owner of United States Patent No. 2,185,359 granted on January 2, 1940, on an application filed April 25, 1938, for a coin purse. The corporation is the exclusive licensee under the patent. The defendant Feinberg-Henry Mfg. Co., Inc., is a New York corporation, the defendant Columbia Manufacturing Company is a partnership consisting of Harry Behrman and Morris Behrman, and the defendant E. Behrman & Co. is a partnership consisting of Emanuel Behrman and Miriam Behrman. All the individual defendants are residents of New York and all the defendants are doing business in the City of New York. A consent decree has been entered which has disposed of the case in so far as the original defendants, other than those just named, are concerned.

The amended complaint alleged the infringement of the claims of the above patent and unfair competition. The trial court held invalid all the claims in suit, Nos. 4, 5 and 6, and found that defendants Feinberg-Henry Mfg. Co., Inc., and Harry Behrman and Morris Behrman, partners who will hereinafter be referred to as Columbia, had competed unfairly with the plaintiffs in the sale of coin purses. From the judgment entered below the plaintiffs and defendants Feinberg-Henry Mfg. Co., Inc., and Columbia have appealed but no reversal is sought of the judgment which was entered in favor of the partners doing business as E. Behrman & Co.

The patent covered coin purses, with especial reference to those having "zipper" means for closure, which were made of leather or other suitable material in two sections held together by the material along the one side which formed a hinge where there was no part of the "zipper". The inside of the purse contained pockets on either side for keys, bills, or whatever the user could, and cared to, carry in them, but the distinctive feature of the purses was a coin rack provided with coin slots, one of which was for each of the American small coins up to a quarter. Purses with coin racks were not new, as the prior art well shows. Various kinds of them are disclosed in several patents. Tubben's French Patent No. 329,983, Nissl's German Patent No. 19,059, and the United States Patent granted to Willis in 1914 show some of them. Coin racks were also old, as is shown by United States Patent No. 659,228 granted to Haynes. A prior use by plaintiff Swanson himself embodied most of the features of the patented purse and it will be adequate so far as details are concerned to point out the differences between that prior use and the patent to show what advance over the prior art was patented. The patented purse was made with a rack, preferably of plastic, which had an inclined bottom for each of the slots or grooves to tilt the coins and make them easier to remove. They were thus made to overlap and were the more readily taken out by pressure of the thumb upon them through an opening in the plastic, and by cooperating finger pressure on the opposite side where needed. The outside of the bottom of the rack was also inclined or beveled, and a part of the material forming a pocket in one of the sides of the purse was extended beyond the closed bottom of the coin rack for a hinge. This construction permitted the rack to swing freely from side to side within the purse, and because the attachment of the hinge was in effect an inset there was no widening of the bottom of the rack by the hinge and no consequent added bulging of the purse at that point when the latter was closed. At the open ends of the coin grooves there were detents to prevent the coins from falling out of their own weight, but the restraining effect of the detents was easily overcome by pressure of the thumb and finger when removal was desired. These detents were either little nubs of plastic on the inside of the open ends of the grooves, whose sides would yield to allow the removal of the coins, or were little springs whose resiliency permitted removal.

The combination purse and coin rack of Swanson's prior use had the rack, which was of metal, attached to the purse near the open end of a pocket where it would swing within the purse. It had grooves with flat bottoms which would not make the coins in them overlap, and the outside of the bottom was neither beveled nor attached to the hinge having any insetting of the latter, and it had detents which were, indeed, common in the prior art. Whether or not the claims in suit are invalid depends upon whether any invention was disclosed in the specifications which show the abovementioned changes from the prior use. Nothing turns upon the use of a plastic coin rack instead of a metal one. The claims do not cover that mere substitution of one material for another. There was nothing new per se in making the bottom of the grooves slanting to give the coins in the slot that position relative to its sides. That was shown in the patent granted to Martine in 1928, which was for a savings bank made with grooves to hold coins as they are held in a coin rack, and the same thing is shown in the patent granted to Buckner on June 7, 1938, on an application filed October 20, 1933, for a coin container having trays for holding coins in inclined rows. What was lacking in the prior art were the beveling of the outside of the bottom of the coin rack and its attachment to a hinge of material integral with the closed bottom of a pocket in the purse. Yet even this extension of the pocket material to make a hinge was not new, for in Penta's patent granted in 1935 a card holder is hinged to the cover of a bill fold in a similar way; and as the trial judge found, "Patent No. 1,037,264, to Kimmel shows a foldable bill purse having an identification card holder, secured to the lining at the interior of the purse adjacent to the hinge part, between its folds near the closed end of the pocket on the centre fold, in a manner similar to that by which the coin rack of the patent is secured to the purse."

Thus it appears that, while there is no complete anticipation of the combination purse and coin rack which was disclosed and claimed in the patent in suit, all of what few changes were made from the prior use had been foreshadowed by what had been done except perhaps the beveling of the outside of the bottom of the rack, and that was so simple an operation that it is but commonplace to say that one may fasten a hinge on such a coin rack on a bevel or not, as one pleases, without even approaching invention. The dismissal of the complaint for patent infringement on the ground that the claims in suit were invalid because no invention was disclosed in the patent was right. Derman v. Stor-Aid, 2 Cir., 141 F.2d 580; Owens v. Bell & Howell Co., 2 Cir., 143 F.2d 115; Picard v. United Aircraft Corporation, 2 Cir., 128 F.2d 632.

The plaintiffs unsuccessfully attempted to prove in support of their cause of action for unfair competition that the purses they manufactured and sold in combination with the coin rack already described were of such size, shape and general appearance and had been so advertised and sold by them that they had acquired a secondary meaning. The court was clearly right on the evidence in finding that there was no such secondary meaning. Without that or patent protection it was not unfair competition merely to copy the plaintiffs' purses and sell duplicates of them. Electric Auto-Lite Co. v. P. & D. Mfg. Co., 2 Cir., 109 F.2d 566; Cheney Bros. v. Doris Silk Corporation, 2 Cir., 35 F.2d 279.

Both appellant Feinberg-Henry Mfg. Co., Inc., and Columbia did more than that, however. It appeared that the plaintiff corporation began to sell its purses with plastic coin racks in August 1938 with its trademark "Jiffy," which it had registered in 1928, stamped on the rack but with no distinguishing mark on the outside of the purse....