Van Brode Milling Co. v. Cox Air Gauge System

• Decision Date: 21 April 1958
• Docket Number: No. 1045-57.,1045-57.
• Court: U.S. District Court — Southern District of California
• Parties: VAN BRODE MILLING CO., Inc., Plaintiff, v. COX AIR GAUGE SYSTEM, Incorporated, Defendant.

161 F. Supp. 437

VAN BRODE MILLING CO., Inc., Plaintiff, v. COX AIR GAUGE SYSTEM, Incorporated, Defendant.

No. 1045-57.

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

April 21, 1958.

Lyon & Lyon, by Reginald E. Caughey, Los Angeles, Cal., Kirschstein, Kirschstein & Ottinger, by David Kirschstein, New York City, for plaintiff.

Buchalter, Nemer, Coyle & Cooper, by Richard B. Coyle, Los Angeles, Cal., Kane, Kessler & Proujansky, by Albert Proujansky and Edward Halle, New York City, for defendant.

YANKWICH, Chief Judge.

Involved in this litigation are validity and infringement¹ of Coleman Patent No. 2,710,660 filed December 10, 1951 and issued June 14, 1955, for "a battery hold-down frame of synthetic rubber resin material". The chief objects of the invention are stated in the specifications in this manner:

"The main object of the present invention is to provide a hold-down frame made of a material strong enough to resist deformation under tension of the bolts by means of which the hold-down frame is clamped against the battery top, and possessing sufficient resiliency effectively to prevent cracking of the battery top.

"Another object of the invention is the provision of a battery hold-down device which is made of a material that has good electrical insulating properties and is, thus, especially suited for use in connection with electrical batteries.

"A further aim of the invention is to obtain a hold-down device of the character mentioned which has a relatively high heat resistance, and which is noncorrodible, being thus able to withstand deformation by the heat of the engine, near which it is, of necessity, located, and not being subject to attack by the electrolyte of the battery.

"Still another object of the invention is to provide a battery hold-down device of a material which will not adhere to the battery, thereby permitting convenient removal thereof from the battery."

The Claims are four in number. They are printed in the margin.²

Plaintiff's complaint put in issue the infringement of Claim 3, and also charged unfair competition. However, the defendants, by answer and counterclaim, have challenged the validity of all the Claims and, in addition to non-infringement, have pleaded anticipation, invention by others and lack of patentability.³

I The Unfair Competition Claim

Plaintiff's pendant claim of unfair competition⁴ may be disposed of summarily by stating that the only alleged act of unfair competition is similarity of the frames of the defendant and of the boxes in which they are kept. The frames are of the same size, because they must fit standard batteries. They are both red. But the plaintiff has no exclusive right to the size of a hold-down which must fit standard batteries. Nor can he appropriate the color red for the making of a plastic hold-down frame and, —in the absence of any imitative deceptive devices which tend to mislead the public as to source and sponsorship of the goods,—claim unfair competition on the part of another device similarly made of plastic and colored red.⁵

No evidence has been offered as to actual confusion or tendency to confuse. The evidence in the record shows that the frames are not stacked on shelves where a customer might see them. They are boxed in cartons of the same size, depending upon the size of the batteries. As batteries are standard, the size of the devices, by whomever manufactured and the boxes in which they are kept, must of necessity, be similar. The boxes of the plaintiff emphasize a solid red background with letters and symbols in white. Those of the defendant combine yellow and red, with yellow as the background. The legends are different. So are the symbols. And, even if a customer were to pick one from the shelf, as in the case of canned goods, there would be no likelihood of confusion. As it is, they are not sold by tradename. They are sold, as testified to without contradiction, at the trial, by gas station attendants when asked by an automobile owner to replace the hold-down frame made of steel which all standard automobiles carry. In most instances, the evidence is that it is the supplier who suggests the plastic article in lieu of the equipment to be replaced and that it is priced higher than the steel replacements. Automotive retailers supply them to the gas stations.

There is nothing in the record to indicate that, in the trade, the color red on the frame, or the colors red and white on the boxes have become associated, in the minds of either prospective customers or suppliers with the plaintiff's product, or that either has acquired a secondary meaning which identifies its source and sponsorship with the plaintiff. So the case is lacking absolutely in the essentials which go to constitute unfair competition.

II

The Patent In Suit

The application originally sought two claims, reading:

"1. A one-piece open battery hold-down frame formed of plastic material, comprising sides, ends connecting said sides, and diagonal clamping members at the juncture of said sides and ends, said clamping members being disposed above the top faces of said ends and sides, the plastic material of which said frame is formed possessing strength and toughness sufficient to withstand pressure to which the frame is subjected in its function to hold the battery on its support but having enough flexibility to prevent breakage of the battery top against which said diagonal clamping members bear in the holding down operation.

"2. A one-piece battery hold-down frame according to claim 1, including lugs for engagement with means which force said clamping members into engagement with the battery top."

They were rejected finally by the Examiner on July 2, 1953. On appeal taken by the patentee to the Board of Appeals the action of the Examiner was approved on March 16, 1955. On April 2, 1955, the applicant filed a proposed amendment to the specifications and new claims by which he claimed the original two claims and the four claims which are now in the patent. The Examiner disallowed the original two claims but allowed the claims now in suit. These facts are very significant, because they indicate clearly that what the patentee originally sought was a monopoly for the construction of a hold-down frame of plastic.

The Examiner, in his first rejection, stated that such a claim was anticipated:

"The further fact that applicant uses a different material than either of these patentees does not produce an article meriting patentability. Moreover the use of plastic, the material adopted by applicant, in forming a holding device, is shown to be old in Leuvelink—see page 2, column 2, lines 49-54 and page 3, column 2, lines 6-8."

His final rejection included this ground. So what came out of the Patent Office was a patent for an article, in itself not patentable, made of a particular plastic material.

What the patentee now seeks is to monopolize the field by claiming that he taught the art the combination by interpolymerization of the two chemical elements, butadiene and styrene, to secure a plastic frame of this durability.⁶

The inventor, Coleman, is not a chemist. The patent in suit, while claiming the combination of butadiene and styrene to produce a Buna S with a "high styrene content" does not specify the proportions to be used. Nor do the specifications. The copolymer referred to as "Darex copolymer No. 3" is manufactured by Dewey & Almy Chemical Company and its formula is known. "Buna S" is a synthetic rubber-resin made by polymerization of butadiene and styrene, invented by the Germans during World War I. The use of the name has disappeared, because later chemistry has displaced the catalyst used in such synthetic materials. The term in the trade for the ordinary synthetic rubber-resin now used is GR-S (Government Rubber Styrene).

There is nothing in the patent to indicate to anyone skilled in the art what the words "high styrene content" mean.

It is a well-known rule that an inventor will be given the benefit of his invention, even though he may, himself, not understand

"the exact nature of the physical or chemical changes involved or resulting from his process, if the product and the process are novel and useful."⁷

But an inventor like Coleman who claims a monopoly for a process polymerization of two elements, butadiene and styrene, well-known in the field of chemistry, and who states under oath, as will appear more fully in the discussion to follow,— that he had in mind a styrene proportion "higher than fifty per cent" is confronted with one of several consequences. Either there is no patentability because the patent does not teach any more than what chemical knowledge teaches, i. e., the result of interpolymerizing the two elements, or his patent is invalid for insufficient disclosure.⁸ Or, if his definition is accepted, there is no infringement, if another person combines the same elements in different quantities and produces a less durable product.

III Patentability

The evidence in the record indicates that the plaintiff's patented article has had commercial success. However, such success does not spell patentability if there be no invention.⁹ And the latest decisions of the Supreme Court dealing with chemical patents teach that applying an old process to an analogous use lacks the very essence of invention.¹⁰ As stated in a leading case:

"A product claim describes an article, new and useful. The principle of the Ansonia case Ansonia Brass & Copper Co. v. Electric Supply Co., 144 U.S. 11, 12 S.Ct. 601, 36 L.Ed. 327 plainly would deny validity to the Pipkin patent if the prior art disclosed an electric bulb so frosted on the inside as to round out the angular crevices produced by the first etching, whether the full utility of the bulb had been previously recognized or not. The same result is indicated where, as in the present case, the prior art discloses the method of making an article having the characteristics of the

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