Udin v. J. Kaufman Iron Works, Inc., 66 Civ. 2378.
| Decision Date | 10 April 1972 |
| Docket Number | No. 66 Civ. 2378.,66 Civ. 2378. |
| Citation | 342 F. Supp. 1090 |
| Parties | Albert UDIN, Plaintiff, v. J. KAUFMAN IRON WORKS, INC., Defendant. |
| Court | U.S. District Court — Southern District of New York |
COPYRIGHT MATERIAL OMITTED
Seidman & Fisher, New York City, for plaintiff; by Julius Fisher, of counsel.
Robert W. Fiddler, New York City, for defendant.
NEWMAN, Judge, Customs Court, sitting by designation.
This is an action for patent infringement (35 U.S.C. § 281) tried by the court without a jury. Jurisdiction and venue are predicated upon 28 U.S.C. §§ 1338(a) and 1400(b).
The patent relates to an "ADJUSTABLE WINDOW GRILLE WITH COLLAPSIBLE BOTTOM GUARD BARS". The grille in question is of the extensible lazy tongs type, and is designed to prevent entry through windows or other openings by burglars.
Plaintiff (a resident of New York) is the individual patentee and his New York corporation, Albert Udin, Inc., manufactures adjustable window grilles and folding gates. Defendant (a New York corporation) manufactures and sells an extensive window grille which is accused of possessing features covered by plaintiff's patent.
Plaintiff seeks: injunctive relief against further infringement by defendant (35 U.S.C. § 283), an accounting for profits and damages (35 U.S.C. § 284), and costs.
Defendant by answer and a counterclaim contests the validity of the patent and denies any infringement even if the patent were valid. Another counterclaim is asserted for alleged patent misuse and antitrust violations arising out of plaintiff's attempt to monopolize subject matter in the public domain. (15 U.S.C. §§ 2, 15 and 26.)
Defendant seeks: dismissal of the complaint; a declaratory judgment of invalidity and noninfringement (28 U.S.C. §§ 2201 and 2202); injunctive relief from charges of infringement by plaintiff or his employees; treble damages under § 4 of the Clayton Act; attorney's fees and costs.
The counterclaims are denied by plaintiff, and he asks their dismissal.
Plaintiff has been in the business of designing and manufacturing iron protective gates since 1924. He employs his son-in-law, Murray Blecher, as a salesman and Blecher sells plaintiff's window grilles to retail hardware stores. Mr. Udin knew, from receiving many complaints from the hardware stores over a period of several years, there was a long-standing problem of burglars breaking through his window grilles by bending or breaking them at the lower pivotally-connected ends. Consequently, early in 1964 plaintiff decided to incorporate into his window grilles a protective feature which would prevent the lower pivotally-connected ends of the grillework from being "jimmied".
Plaintiff sought to solve the problem of burglars breaking through his gates by providing duplicate pairs of spaced guard bars on each side of the grille which would: (1) form an enclosure restricting access to the lower pivotally-connected ends of the extensible unit channel links; and (2) protect the lower pivotally-connected ends of the grille from being bent, broken or displaced out of their normal plane to either side of the gate (perpendicular to the plane of the gate) by one attempting to gain entry. As stated in the disclosures of plaintiff's patent:
Although the record does not precisely indicate when plaintiff first conceived the idea of using protective guard bars on his window grilles, it appears that in May or June of 1964 he made a prototype or model of his improved gate. To plaintiff's knowledge there was no similar window grille on the market at that time.
Mr. Udin's application for a patent was filed in the Patent Office on August 5, 1964. Plaintiff testified that he initially sold his improved window grille with protective guard bars in August or September 1964 "or something like that" (Tr. 22); and that on October 28, 1964 he first became aware that defendant was selling the "Diamond Guard" folding gate possessing protective links similar to plaintiff's guard bars.
Defendant's vice-president, David M. Kaufman, testified that his "Diamond Guard" folding gate with an "Invincible brace" was first sold on or about October 9, 1964 (Tr. 328, 333, 357, 359, 398, 399). A photostatic copy of a "price list and discount schedule" dated October 15, 1964 (Deft.'s Exh. A, p. 23) depicting the "Diamond Guard" folding gate states: . Kaufman further testified that defendant manufactured gates other than those called "Invincible", which had "bottom guard bars" (Tr. 361; Tr. of Dep. 9-13, 16).
Plaintiff's attorney caused the patent application to be expedited (taken out of turn) by means of a petition to the Commissioner of Patents requesting an accelerated examination upon the ground that defendant's "Diamond Guard" folding gate with an "Invincible brace" infringed the claims in plaintiff's application. After a thorough review of the merits, the application was rejected by the examiner pursuant to 35 U.S.C. § 103 on the ground that the features of the claimed invention were obvious in light of the prior art. However, on appeal the Patent Board of Appeals reversed the decision of the examiner for the reasons discussed infra, and patent No. 3,258,061 was issued on June 28, 1966.
The complaint herein was filed on August 2, 1966 and was predicated on patent No. 3,258,061, containing a single claim. Subsequent to the filing of the complaint plaintiff surrendered his original patent No. 3,258,061, and pursuant to 35 U.S.C. § 2511 he obtained reissue patent No. 26,259 on August 29, 1967. Udin's reissue patent contains two claims: the single claim of the surrendered original patent (claim 1 in the reissue patent), and an additional claim (claim 2 in the reissue patent). The disclosure in claim 1 of the reissue patent is identical to the single claim of the original patent. Claim 2 omits certain limitations that are present in claim 1.
By an amendment to the complaint on February 5, 1968, plaintiff charged defendant with infringing both claims of the reissue patent as well as the single claim of the original patent. However, plaintiff now concedes that in accordance with 35 U.S.C. § 252 defendant has intervening rights respecting the second claim (claim 2) of the reissue patent. The parties have agreed and the court has ordered that for the purpose of determining the issue of infringement, claim 2 would be eliminated from plaintiff's case (Tr. 7) However, defendant has placed squarely in issue the validity of claims 1 and 2 of the reissue patent by its counterclaim for a declaratory judgment of invalidity. Hence, both claims 1 and 2 must be deemed to be involved in this case under that counterclaim.2
For a better understanding of the construction of plaintiff's window grille and the structural relationship of the guard bars to the other elements of the grille, reference is made to the drawings in Figures 1 through 6 of the Appendix which form a part of plaintiff's disclosure.
The window grille structure comprises a framework including side frame members, referred to as vertical stiles 12 and 14, and bottom end pivotal frame members in the form of pairs of straight flat metal bars or links 16, 16 and 18, 18, referred to herein as "guard bars". The guard bars are pivotally-connected at one end to the stiles 12 and 14 by means of pivot pins 20; and the other ends of the guard bars are overlapped, with the overlapped ends pivotally-connected by a pivot pin 22. Pivot pin 22 is disposed above the plane of pivot pins 20.
Each vertical stile 12 and 14 comprises a pair of channel irons 24. The channel irons 24 are held together by rivets 26 and are maintained in spaced relation by spacer sleeves 28 through which the rivets extend.
A central stile 30 comprised of a pair of opposed channel irons 32 is provided which extends vertically through the center of the framework. The overlapped ends of the guard bars are disposed within a trackway 40 on the central stile 30 for guiding their sliding movement.
A linkage is formed from the angularly disposed links 44. These links consist of channel-shaped bars. Links 44 criss-cross each other and are pivotally-connected together by rivets 46 at spaced intervals. The linkage is connected to the side stiles 12 and 14 and extends through the central stile 30. The adjacent top and bottom ends of links 44 are pivotally-connected together by rivets 48 and 50, respectively, so that a straightline linkage results.
The guard bars at the bottom of the grille are duplicated at the front and rear of the lazy tongs framework, providing a space within which the overlapping and pivotally-connected lower ends of the grille are positioned and protected when the grille is extended (Fig. 1). Additionally, it is noted that the guard bars are connected directly to the side stiles 12 and 14 by the same connecting pins 20 that hold the channel irons of the side stiles 24 together with spacer sleeves. The guard bars pivot simultaneously and automatically with the opening and closing of the grille. When the grille is opened to a fully extended position (Fig. 1) from a closed position (Fig. 2), the guard bars pivot at both ends, "ride" down the trackway 40, and extend over the bottom of the gate. When the...
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...in the patent application. Gentzel v. Manning, Maxwell & Moore, Inc., 230 F.2d 341, 343 (2d Cir.1956); Udin v. J. Kaufman Iron Works, Inc., 342 F.Supp. 1090, 1099 (S.D.N.Y.1972). If the construction disclosed in the prior patent would inherently accomplish the purpose of the patent-in-suit,......
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