Vacuum Cleaner Co. v. Thompson Mfg. Co.

• Decision Date: 15 April 1919
• Citation: 258 F. 239
• Parties: VACUUM CLEANER CO. v. THOMPSON MFG. CO.
• Court: U.S. District Court — Southern District of Iowa

258 F. 239

VACUUM CLEANER CO. v. THOMPSON MFG. CO.

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

April 15, 1919

Charles Neave and William G. McKnight, both of New York City, and James C. Hume, of Des Moines, Iowa, for plaintiff.

Ralph G. Orwig, of Des Moines, Iowa, for defendant.

WADE District Judge.

Counsel for defendant state the issue herein thus:

'Does the prior art disclose a so-called suction or vacuum having an inlet head characterized by a narrow inlet slot, so arranged that its boundaries are adapted to be brought into sealing contact with the surface to be cleaned?'

Answering this question in the affirmative, counsel rely principally upon three patents: McGaffey, Howard & Taite, and Westman.

This case might well be disposed of upon the following adjudications: Vacuum Cleaner Co. v. American Rotary Valve Co., 227 F. 998; Vacuum Cleaner Co. v Innovation Electric Co., 234 F. 942; Vacuum Cleaner Co. v. Innovation Electric Co., 239 F. 543, 152 C.C.A 421; Vacuum Cleaner Co. v. Bissell Carpet Sweeper Co., 242 F. 649. Not that any of these cases constitute an adjudication as against this defendant, but as a rule a District Court will follow the ruling of the Circuit Court of Appeals of another circuit, where the matter has not already been before the Circuit Court of Appeals of the circuit in which the trial court is sitting.

Counsel recognize this rule, and ask the court to decide contrary to the above cases, upon the contention that in those cases the evidence now before this court was not presented, and that in those cases the courts were mistaken as to the facts of the prior art. Three of these cases were tried before Judge Mayer, whose ability and capacity for painstaking investigation will be conceded. The other case was before the Circuit Court of Appeals on appeal from the decision of Judge Mayer.

No one can read the opinions in these cases and not realize that the questions involved were given most careful consideration, and that the facts were presented most thoroughly-- most minutely. As to the McGaffey disclosure, it appears that, in the first case tried, the original model from the Patent Office was before the court. In this case the McGaffey, Howard & Taite, and Westman disclosures, were all thoroughly and carefully reviewed.

In the Innovation Case, 234 F. 942, supra, Judge Mayer says:

'In view of the exhaustive and able manner in which the case was presented by counsel, I have again studied the history of the art and followed in minute detail defendant's elaborate analysis of the file wrappers.'

In this case it appears that the experts had conducted 'numerous demonstrations' at Columbia University, and at a shop known as Boucher's. It is shown that these demonstrations were in the presence of Judge Mayer. The opinion of Judge Hand for the Circuit Court of Appeals shows careful and earnest consideration of the points made in this case. Judge Mayer again in the Bissell Case, 242 F. 649, supra, reviews the prior art, including the McGaffey and Howard & Taite patents, and others. It does not seem possible that in these various cases the truth as to the prior art was not fully before the courts.

Counsel place much reliance upon an enlargement of the drawing presented to the Patent Office with the McGaffey application, and it is said:

'Hence no court that has heretofore passed on this question has ever had before it a copy of McGaffey's original drawing; nor has any court ever had before it a copy of the McGaffey drawing on an enlarged scale, like the Exhibit No. 7. Furthermore, no court has ever had before it a sample illustrating McGaffey's Patent Office drawing like Exhibit No. 6; but apparently all of the courts that have passed on this matter have had before them only the reduced reproductions of McGaffey's drawings, which are too small to be understood, and the McGaffey model. In view of this fact, the courts have been led into very serious errors in regard to McGaffey's disclosure.'

Now, it must be borne in mind that the defense here is that of prior disclosure made in the application for patents, and in the patents granted. It must be conceded that, not only is the language of the patent to be considered in this defense, but also the drawings and illustrations.

But the distinction between a patent relied upon as a patent by a person asserting a right thereunder, and relied upon as showing the state of the art, must be apparent. Any printing, writing, or illustration relied upon as part of the prior art must be such as to make disclosure, not to an inventor, but to the ordinary individual, skilled as a workman in the field involved. The documents relied upon must teach the art; must be such that the world has knowledge of the art; must be such that qualified persons, without the exercise of inventive genius, may produce the device from the disclosures. Of course, it is not necessary that the device involved shall be shown by any one publication; but the inventor, relying upon his patent, is presumed to have had before him all of the prior printed disclosures.

Now, it does not seem possible that through all of the foregoing litigation, with experts before the court, and a court expert in itself, the particular elements relied upon by counsel were overlooked. Certainly it cannot be assumed, if they were overlooked, that they were sufficiently disclosed, so as to teach the art to the ordinary skilled workman. If all these experts, earnestly interested in the questions presented in the case, and if the courts, seriously endeavoring to find out what was disclosed, could not find the disclosure contended for by counsel, then there was no disclosure defeating the Kenney patent.

Referring to enlarged drawings and present models, we must not overlook the fact...