Troy Laundry Machinery Co. v. Columbia Mfg. Co.

• Decision Date: 12 November 1914
• Docket Number: 1111.
• Citation: 217 F. 787
• Parties: TROY LAUNDRY MACHINERY CO., Limited, v. COLUMBIA MFG. CO.
• Court: U.S. District Court — Eastern District of Pennsylvania

217 F. 787

TROY LAUNDRY MACHINERY CO., Limited, v. COLUMBIA MFG. CO.

No. 1111.

United States District Court, E.D. Pennsylvania.

November 12, 1914

Wm Steell Jackson, of Philadelphia, Pa., and George L Wilkinson, of Chicago, Ill., for plaintiff.

W. H C. Clarke, of Washington, D.C., for defendant.

DICKINSON District Judge.

To discuss or even refer to the facts bearing upon the special features of this case would give inordinate length to this opinion. These facts are found and stated in the special findings.

The plaintiff is the owner by assignment of letters patent No 924,722 granted June 15, 1909, for a dry-room hanger, its proprietary right in which, it asserts, the defendant has infringed. The case for the plaintiff on its broad merits is not an appealing one. What it has is, not a device, but a drawing of a device, by which plaintiff is unwilling to stand as embodying the invention claimed. There is no evidence that any such device was ever in use. There is no evidence (except the stipulation referred to later) that any device was ever made, except one made to serve as an exhibit model. There is nothing in the case from which it could be found that the owner has ever made use of this invention, or put it upon the market, or ever intended so to do. The defendant company uses dry-room hangers in its business. Its employes devised and constructed a form of hanger, its use of which is sought to be enjoined. This hanger is admittedly operative and superior to anything even remotely suggested in plaintiff's letters patent.

The practical effect of a ruling in plaintiff's favor would be, not only to prevent defendant from using its own device, but to turn the ownership and control of it over to the plaintiff. In a proper case for the awarding of an injunction, such a hardship is more apparent than real, for the reason that a patentee cannot, of course, be deprived of the exclusive use of his invention merely because some one had subsequently improved upon it; and, if the improver does not patent his improvements, the first patentee may use them. Moreover, the courts cannot deprive a plaintiff of his property, nor deny to him a right or a remedy which lawfully belongs to him because not in sympathy with the use which he makes of his own. It is a reason, however, for requiring him to prove his right and would be a reason for withholding, in a proper case, not his legal rights or legal remedies, but those super-legal remedies which are awarded, if at all, not of right, but of grace.

The device under discussion is essentially a traveling clothespin. The course of its travels is confined to a room artificially superheated. This is the dry-room in which the laundried articles are dried out. The hanger feature is that the device is attached to and suspended from an endless chain, by which it is carried around the room and through the superheated air until the article is dried. The hanger must be so constructed that the articles may be easily inserted between the gripping jaws, which will hold them suspended until the drying process is complete, and then permit them to be automatically dropped in the receptacle provided for them. The plaintiff's invention was intended to meet these requirements. The defendant's device does meet them.

This brings us directly to the defense which we have analyzed, and will discuss in a somewhat different order from that in which presented. The first feature is lack of utility. The purpose declared by the Constitution as the motive for conferring power upon Congress to grant exclusive proprietary rights, and the language employed by Congress in prescribing the conditions upon which these rights are given, laid a like emphasis upon the useful. The power is conferred 'for the purpose of promoting the progress of science and the useful arts. ' The right is given to him whose invention or discovery is 'new and useful,' and the commissioner is to issue the letters patent only if it shall appear 'that the same is sufficiently useful and important. ' This invention is of no use, unless the device embodying it is operative.

Here we must make a short diversion to discuss the question of the admissibility of some evidence offered by the defendant bearing upon the fact of utility. This was excluded. In deference to the urgency with which the offer was pressed, the ruling was modified to the extent that the evidence was permitted to go upon the record to be considered if relevant, but not considered otherwise. The evidence was in the form of a stipulation admitting two facts. One was that the plaintiff had made devices as described in the letters patent. The other was that they had ceased to manufacture. The deduction from these facts to be drawn was that the device was inoperative. This involves a non sequitur. It is to be observed that there was no offer to follow up this evidence with proof of the further fact that the discontinuance was due to a failure of the device to work. This would have been an admission of inutility. It is obvious that a mere cessation of manufacture might have been due to something which had no relation to the merits of the device. The evidence was properly excluded and has been disregarded.

The evidence for the plaintiff consisted of the letters patent and the opinion expressed by plaintiff's expert. Every patented device bears the indorsement of the Patent Office that it, among other things, is 'useful.' For obvious reasons a working rule cannot be made out of the proposition that the findings of the office are within the res adjudicata principle. Nevertheless, such a finding should carry with it something more than a bare prima facie. The Patent Office is a co-ordinate branch of government. The courts owe an attitude of respect toward the opinions which are expressed in the grant of letters. Where the office had before it all that is before the court, such opinion is entitled to have accorded it all the force which is the accompaniment of judgments which, although not binding, are informative and persuasive. We have before us, however, what the Patent Office did not have, that the only persons who put the operativeness of this device to the test of actual use and trial found it would not work. The plaintiff has also in its favor the opinion of its expert. For the views of this witness we have more than the formality of respect. In all his testimony he was clear, candid, and fair, not yielding, of course, anything which belonged to the side on which he was called and carrying everything which could be urged in its favor as far as it could properly go, but yet recognizing also what he owed to his other profession of engineering. All of his testimony carried weight.

There was, upon the other side, the opposing view of a like expert witness for the defendant. In addition to this, there was the testimony of a man who was one of those who had actually tried this device; one who had seen it at work and who had witnessed its failure. We have the further fact that neither the patentee nor the plaintiff, so far as the evidence discloses, had ever tried out this invention. We do not think this carries any implication that the device is a useless one. We do think, however, that plaintiff is within the rule that where a fact is in dispute, and one of the parties has the means of producing evidence which would have a convincing bearing upon the question and fails to produce it, if there is no implication that he thinks the evidence would be against him if produced, it is a reason for giving the fullest weight to the opposing proofs. The plaintiff might have given added weight to the testimony of its expert by giving him the opportunity to see the hanger in actual use. This it did not do.

Lastly, we have another witness. This is the model exhibit. We think it on the whole to be a witness for the defense. This does not mean that an opinion formed from an inspection of the device would weigh against the opinion of plaintiff's expert, but it gives added weight to the testimony of the witness who subjected the device to the test of actual trial, because he testified to a failure in just those features in which, upon inspection, you would expect it to fail. We therefore feel, after some hesitation, constrained to find that the device is an inoperative one and is lacking in the element of patentability indicated.

Another branch of the defense is lack of novelty. The application does not distinguish in terms between that to which the claimed invention relates as already known to the art and that which is claimed to be new. This omission, coupled with the absence of precision of statement in what is set forth, makes it not a little difficult to be sure of the meaning intended to be expressed. If, by the expression 'having an object,' he meant to state in what the merit of his invention inhered, then surely he claimed novelty only in his described mode of hanger construction below, and including what he terms the 'yoke.' If this is merely illustrative and is descriptive of a preferred form only, then it is difficult to grasp the thought in mind, unless it was to broadly cover any hanger attached to a carrier and having a device by which articles could be taken hold of and held during transit, and which would automatically release its grip at a preselected place. Such a claim would be broader than the then state of the art would support or justify.

The claims of the patent with which we are now concerned are 9 11, and 14. Claim 14 by itself is unintelligible. Claim 11 is evidently intended to cover a device which might be described as the one-half of the illustrated device. The claim, therefore, which has been chosen to most adequately present the case for the plaintiff is 9. Of the...