Trico Products Corporation v. Delman Company

• Citation: 199 F. Supp. 231
• Decision Date: 27 September 1961
• Docket Number: Civ. A. No. 3-648,3-731.
• Parties: TRICO PRODUCTS CORPORATION, Plaintiff, v. DELMAN COMPANY, a Partnership, et al., Defendants (two cases).
• Court: U.S. District Court — Southern District of Iowa

199 F. Supp. 231

TRICO PRODUCTS CORPORATION, Plaintiff, v. DELMAN COMPANY, a Partnership, et al., Defendants (two cases).

Civ. A. Nos. 3-648, 3-731.

United States District Court S. D. Iowa, Central Division.

September 27, 1961.

COPYRIGHT MATERIAL OMITTED

Edward A. Haight, Chicago, Ill., Edwin T. Bean, Buffalo, N. Y., Frank G. Raichle, Buffalo, N. Y., M. Talbert Dick, Talbert Dick & Zarley, Des Moines, Iowa, for plaintiff.

Rudolph L. Lowell, Lowell & Henderson, Des Moines, Iowa, Charles F. Meroni, Chicago, Ill., for defendants.

VAN PELT, District Judge.

By agreement of the parties the two cases above described have been consolidated for trial. Both are so-called patent cases involving windshield clearing systems. The first case filed involved two patents; the first count concerns United States Patent Number 2,206,814 issued to plaintiff on July 2, 1940 as assignee of Erwin C. Horton, and charges infringement by defendants of claims 5 and 6. In the second count plaintiff alleges ownership of United States Patent Number 2,717,556 issued to it September 13, 1955 as assignee of George O. Bartoo. Only claims 1, 2 and 4 are involved in this litigation.

The second case alleges that plaintiff is the owner of United States Patent Number 2,743,473 issued to it on May 1, 1956 as assignee of John L. Oishei. The claims involved are claims 4, 5, 12, 25 and 35, and claims 3, 22 and 32.

Plaintiff charges direct infringement of the Bartoo patent but as to the Horton and Oishei patents in suit charges defendants only with contributory infringement.

Defendants' defenses will be discussed as each patent is taken up separately. Defendants by counterclaim rely upon two patents. They rely first upon Neufeld reissue Number Re 24,507, the original patent Number 2,702,918 having been dated March 1, 1955 and the reissue dated July 22, 1958. The application for the original patent was filed June 7, 1951. Defendants also charge infringement of United States Patent Number 2,703,127 issued March 1, 1955 to Edmond F. Webb and assigned to the Delman Company. The application was dated October 17, 1952.

Plaintiff's count for unfair competition contained in the first case filed, has, pursuant to stipulation of the parties, been dismissed with prejudice. Similarly, the charges made by defendants alleging unfair competition and violation of the antitrust laws have by stipulation been dismissed with prejudice.

Trico and Delman had previous litigation involving certain claims of the Horton patent and involving United States Patent Number 1,949,098 issued to Albert W. Becker. The decision of the Court of Appeals in this litigation, reported in 180 F.2d 529, affirmed the judgment of Judge Dewey reported in 85 F.Supp. 393. At the opening of that trial it was stated to Judge Dewey by counsel for Trico that as to the Horton patent it would rely upon claims 9, 13 and 14. There is therefore before the court the question raised by defendant as to whether this litigation, so far as the Horton patent is concerned, is barred by the previous case. Plaintiff contends that the claims involved herein were not involved in the previous litigation, the record of which has been introduced in evidence (See Defendants' Exhibits 2 and 2A). In that litigation Judge Dewey held that the claims in suit on the Horton patent were void for want of invention. He originally held the entire patent void for want of invention and thereafter amended his findings to limit it to claims 9, 13 and 14. The effect of this litigation will be considered hereafter when the Horton patent is discussed.

It is clear that this court has jurisdiction by reason of the patent laws of the United States. Validity and infringement only are before the court at this time. It was the suggestion of the court, approved by counsel, that no evidence be introduced on the issue of damages until a decision on the other two issues had been reached.

In this opinion the court takes up as to each patent, first the issue of validity. It then turns to infringement as to the patent under consideration, believing, in event of an appeal, that it is best for the Court of Appeals to have before it findings on all issues, in event the court's reasoning as to validity is not followed.

Bartoo Patent Number 2,717,556, Plaintiff's Exhibit BB-1

George O. Bartoo, who assigned the Bartoo patent to plaintiff, is an engineer in plaintiff's experimental department. In the Spring of 1952 he was asked to develop a foot-operated washer which would not have the faults or defects present in the popular model at that time (S.T. 589-90). An application was filed with the patent office on October 16, 1952 and the above numbered patent issued September 13, 1955. Claims 1, 2 and 4 only are involved herein.

As has been earlier indicated, direct infringement is charged as to this patent.

In determining whether or not the Bartoo patent is valid, attention needs to be given to the prior art. As will be hereafter evident when Oishei is discussed, it is clear that the Oishei patent (Plaintiff's Exhibit BB-2), although not issued until May 1, 1956, was applied for July 3, 1952. The application thus antedates the Bartoo application by approximately 3½ months.

Because of a stipulation or statement that Bartoo would be limited to the filing date (See S.T. 713-14) and the presumption that the filing of the application constitutes anticipation and reduction to practice of the subject matter of the patent issued thereon, it is contended that the Oishei patent, in disclosing a pump unit, anticipates that of Bartoo and that plaintiff has failed to prove beyond reasonable doubt that Bartoo had reduced to practice his rubber bulb foot-pump prior to the Oishei patent filing date. The evidence shows that Oishei had seen the Bartoo device; that he never considered the specific bulb structure to be his invention; that he merely took it from Bartoo and used it as one component in his invention (S.T. 1494-95; 1536-7). It also appears from the record that on the next day after the statement was made as to the filing dates above mentioned, counsel for plaintiff (S.T. 713-4) called attention to this statement and stipulation and stated that it was not intended to mean that Oishei was prior art as against Bartoo and took the position that Bartoo came ahead of Oishei.

The court concludes from the evidence that Oishei was not prior art as to Bartoo and recognizes that as to the bulb structure as between Bartoo and Oishei it was Bartoo's invention and not Oishei's.

It is also clear from the evidence that Bartoo had seen the foot washer of the competitor, to-wit, Delman; he knew that the Ford Company was then using the Delman foot washer. In his development he immediately started out with the rubber bulb and explains his use of it on the basis of "the minimum pieces" stating that you could combine the rubber bulb, the plunger and the cylinder and means for containing the fluid into "as few possible pieces as possible" by molding them integrally into one unit and providing a mounting base for it. He admits by using this method that he did not develop any new principle of pumping water or fluid (S.T. 589-95).

The claims in suit read as follows:

"1. A windshield washer pump unit comprising a one-piece construction in the form of a bulb molded of elastic material and having a bottom wall with an upstanding substantially cylindrical wall forming a chamber, a substantially cylindrical plunger-forming top wall of lesser diameter than the chamber for fluid-displacement reception thereby, and a medial pressure-distensible flexible wall joining the top rim of the chamber to the plunger and yieldably supporting the latter for being depressed into the chamber for displacing fluid therefrom, and inflow and outflow passage means communicating with the chamber, said chamber having its upstanding side wall reinforced to confine the pressure-responsive distention of the wall area of the bulb to said pressure-distensible medial wall section."

"2. A windshield washer pump unit comprising a one-piece construction in the form of a bulb molded of elastic material and having a bottom wall with a marginal wall upstanding thereabout to form a chamber of cup shape, a self-sustaining plunger-forming top wall opposing the bottom wall and being less in diameter than the chamber for fluid-displacement reception therein, and a medial flexible wall joining the brim of the cupped chamber to the lower end portion of the plunger and yieldably supporting the latter normally elevated above the brim, said plunger and the adjoining portion of the medial wall being jointly depressible into the chamber to augment the effective displacement area of the unit, and inflow and outflow passage means communicating with the chamber, said upstanding wall being reinforced up to said brim to resist its lateral distention."

"4. A windshield washer pump unit comprising an elastic bulb having a cupped base section forming a chamber, a top section of lesser diameter than the chamber for being received therein, and a medial wall section joining the top section to the upper portion of the cupped base section and flexible upon the depression of the top section into the chamber, said cupped base section having its side wall reinforced up to the medial wall section, and a headed mounting member having an anchoring shank extending through a hole in the bottom wall of the cupped base section with the head of the mounting member arranged within the chamber and overlying the bottom wall to clamp it to a support, said mounting member including a cooperating clamp device engaged with the shank, and inflow and outflow passage means communicating with the chamber."

The main elements called for in Claims 1, 2 and 4 are a cylindrical plunger-forming top wall, a bottom wall with an upstanding substantially cylindrical wall forming a chamber, a medial wall which is relatively more pressure-distensible than the lower...