Tolfree v. Wetzler

• Decision Date: 10 October 1927
• Docket Number: No. 2077.,2077.
• Citation: 22 F.2d 214
• Parties: TOLFREE v. WETZLER et al.
• Court: U.S. District Court — District of New Jersey

22 F.2d 214 (1927)

TOLFREE v. WETZLER et al.

No. 2077.

District Court, D. New Jersey.

October 10, 1927.

Fish, Richardson & Neave, of New York City (Stephen H. Philbin and Henry R. Ashton, both of New York City, of counsel), for plaintiff.

Everett & Rook, of Newark, N. J. (Russell M. Everett and Harry B. Rook, both of Newark, N. J., of counsel), for defendants.

CLARK, District Judge.

This is a bill in equity for the enforcement of rights arising out of a patent, No. 1,281,690, granted October 15, 1918. Plaintiff also complains of the infringement of a trade-mark ("X," No. 115,684, registered February 27, 1917), and the unfair use of a trade-name ("X Liquid"). Defendants' counsel promptly and candidly conceded that the "X" was sufficiently a dominant feature common to both marks to amount to trade-mark infringement in goods of the same descriptive property. They further admitted that the similarity in names was likely to deceive purchasers. A decree protecting both has accordingly been entered. The use of the symbol "X" to denote quality derives its historical origin from its ancient application to dutiable goods paying 10 shillings excise.

With respect to the patent, defendants pleaded and offered proof supporting five of the eight defenses ordinarily found in patent suits. They admitted infringement. In so doing, they employed language which seems to have the sanction of accepted practice. Salt's Textile Mfg. Co. v. Tingue Mfg. Co. (D. C. Conn.) 227 F. 115. In the interests of accurate definition, imitation is suggested as a term that does not import validity. Young v. Rosenthal, 1 R. P. C. (Eng.) 29; Blakey & Co. v. Latham & Co., 43 Ch. Div. (Eng.) 23.

Having admitted infringement (imitation), the issue of utility seems to be fore-closed. Dubois v. Kirk, 158 U. S. 58, 64, 15 S. Ct. 729, 39 L. Ed. 895. That this should be so seems to this court an anomaly. A patented article may be lacking in utility in either one of two senses: It may be useful, but capable only of a use considered harmful to the body politic, viz. gambling (National Automatic Device Co. v. Lloyd C. C. N. D. Ill. 40 F. 89, 5 L. R. A. 784), or counterfeiting (Rickard v. Du Bon C. C. A. 2d 103 F. 868). On the other hand, it may be actually useless, either because it will not work (Ex parte Sanders, Fed. Cas. No. 12,292), or because, even if it has the capacity to produce the result, that result is of no advantage to the public (Troy Laundry Machinery Co. v. Columbia Mfg. Co. D. C. E. D. Pa. 217 F. 787).

Clearly, in the first case, an imitator's (infringer's) use has no bearing on any harm to the public. Even without a knowledge of the expressed terms of the patent acts, the public very naturally assumes that the granting of a patent is some guaranty of value. The doctrine now under discussion makes it optional with the imitator (infringer) whether the judgment of the Patent Office in the matter should be reviewed in the courts. Such imitator's (infringer's) motive may be a desire to join with the patentee in mulcting a gullible public, rather than any real acquiescence in or acknowledgment of utility. It is submitted that our courts first turned the English rule of best evidence (Lucas v. Miller, 2 R. P. C. Eng. 155, 160; Miller & Co. v. Searle, Barker & Co., 10 R. P. C. Eng. 106) into the dangerous (in any branch of the law) one of presumption (Lehnbeuter v. Holthaus, 105 U. S. 94, 26 L. Ed. 939) and now seem in a fair way to make that presumption irrebuttable (Salt's Textile Mfg. Co. v. Tingue Mfg. Co., supra). It seems unwise to require the public to depend for protection solely upon the thoroughness with which the Patent Office avails itself of its statutory right to insist upon experiment and demonstration. U. S. C. S. §§ 9434, 9435 (U. S. Code, p. 1167 35 USCA §§ 34, 35). The testimony as to utility in the principal case seems to come from witnesses whose sale of the product on commission naturally makes them interested in sustaining the patent. This may illustrate the point made.

Nothing was said at any stage of the proceeding as to "true and first inventor." Coming, then, to the five defenses pleaded, we have selected for extensive discussion only one — want of invention (or, as it is often broadly, and we think carelessly, called, "want of subject-matter"). In thus choosing, we are influenced, both by a desire not to incumber the reports, and by the thought that this defect in the patent is fundamental, and underlies and involves some reference to its other imperfections. We are satisfied that defendants have equally made out their case in regard to vagueness in the claims, anticipation, and public user.

It is naturally difficult for counsel to appreciate exactly what evidence appeals to the mind of a court. In the case at bar we feel that some scientific facts and part of the proceedings in the Patent Office are pertinent, and may be interesting to the Circuit Court of Appeals, if the matter is carried to them. We have therefore summoned to our assistance the principle of judicial notice. If the appellate court should conclude that we have harmfully transgressed the somewhat technical limits thereof, it is our understanding that the cause may be remanded to the trial court, with directions that it be reopened for additional proof. Firestone Tire & Rubber Co. v. Seiberling (C. C. A. 6th) 245 F. 937; Dunn Wire-Cut Lug Brick Co. v. Toronto Fire Clay Co. (C. C. A. 6th) 259 F. 258, 264; Nash Engineering Co. v. Trane Co. (D. C.) 22 F.(2d) 868.

The principal patent sets forth a process for stopping leaks in vessels containing water, by use of a composition. The claims are broad enough to include all vessels, irrespective of material, capable of containing that popular and useful compound. The specifications and the testimony of the alleged inventor, however, seem to confine them to metal vessels, and his emphasis, at least, was placed upon metal vessels; i. e., water jackets, used in vehicles propelled by gasoline (internal combustion) engines.

Several experiences with patent cases give rise to the reflection that the patent bar exercises considerable ingenuity, if not in the "selection of alternatives," at least in the selection of imitators (infringers). The defendants herein do not manufacture the radiator compound concerning which the plaintiff's witnesses seemed particularly solicitous. They confine their activities, apparently, to a boiler compound and a drain pipe solvent. It may be, therefore, that they are not in as good a position to give battle upon the subject of radiators and a composition devised to cure their ills.

Leakage (an inevitable concomitant of the "obsolescence" decay of materials) defeats the object of the inclosure, whether that object be protection against the liquid or its preservation in captivity. Its prevention would seem to involve the successful solution of two major problems. The story of the little Dutch boy and his historic and personal stopping of the world's most famous leak is told every child. We have long, then, been familiar with the idea of placing over the leak (i. e., the spot at which the obsolescence has reached the stage of destruction) and affixing thereto some new material of the same or equally waterproof (more strictly, insoluble in, immiscible with, or impervious to water) character. Various devices for this purpose, and so, of course, various patents, both here and abroad, have been employed and secured.

In vessels — to use the somewhat Biblicalsounding word of the patent — which, or any parts of which, are inaccessible to human vision without dismantling, two other and more difficult questions present themselves for inventive answer. So we find numerous patents — again, both here and abroad — for leak detectors. (See, also, the electrical field.) Such inventions for the automatic discovery of the existence and location of the leaks, of course, necessitate a further mechanical operation, viz. the repair by human agency of the hole, after its whereabouts have been ascertained. Ex necessitate, the leak is discoverable by the liquid leaking therefrom. So a leak stopper which can be carried by the liquid solves in one operation the dismantling of the apparatus and the detection and sealing of the leak. It is the court's view that some such reasoning eventuated in the patents in the art.

The prior art patents are set forth with their ingredients (the word officially laid down in the tentative forms of the Office-Robb's Patent Essentials, p. 366) classified in accordance with their bearing on the problem as above outlined. The defendants' counsel introduced eight such patents in evidence. The court's own researches adduced one more before the date of the patent in suit and three thereafter. These patents were discovered by the court in various volumes of the "chemical abstract" in the New York Public Library. A survey of puncture-sealing compounds published by the Bureau of Standards March 14, 1927, shows 65 patents granted therefor, and indicates that a more extensive search might be further productive. The Official Gazette of the Patent Office, published annually, has no general subject-matter index, and would therefore require a volume to volume search. It is our understanding that this almost superhuman task can be avoided only by a resort to the public search room in the Patent Office in Washington and the Manual of Classification issued in connection therewith. Some sort of West System of reporting and digesting of patents, if available both to judges and to the public, might be helpful in preventing the growth of abuse we refer to later. Such systems obtain in England and some European countries.

We think that at least United States patents may be judicially noticed. This despite the fact that the only decisions we have been able to find seem to doubt it. Bottle Seal Co. v. De La Vergne Bottle & Seal Co. (C. C. N. J.) 47 F. 59; Coca Cola Co. v. Whistle Co. of...