Waterman-Bic Pen Corp. v. WA SHEAFFER PEN CO., DIV. OF TEX.
| Decision Date | 20 April 1967 |
| Docket Number | Civ. A. No. 2273. |
| Citation | 267 F. Supp. 849 |
| Parties | WATERMAN-BIC PEN CORPORATION, Plaintiff, v. W. A. SHEAFFER PEN COMPANY, DIVISION OF TEXTRON, INC., Defendant. |
| Court | U.S. District Court — District of Delaware |
COPYRIGHT MATERIAL OMITTED
Arthur G. Connolly, Thomas S. Lodge, of Connolly, Bove & Lodge, Wilmington, Del., Thomas F. Reddy, Jr., James G. Foley and David J. Toomey, of Pennie, Edmonds, Morton, Taylor & Adams, New York City, of counsel, for plaintiff.
William S. Potter, of Berl, Potter & Anderson, Wilmington, Del., Fred T. Williams, Theodore W. Anderson, Jr., and Thomas E. Smith, of Pendleton, Neuman, Seibold & Williams, Chicago, Ill., of counsel, for defendant.
This is an action for infringement of a patent and jurisdiction is based upon the Patent Laws of the United States, Title 35 U.S.C., 28 U.S.C. § 1338 (1948). Suit was originally brought by the Waterman-Bic Pen Corporation against the W. A. Sheaffer Pen Company, a Delaware corporation . On March 1, 1966 the Sheaffer Pen Company was merged into Textron, Incorporated, and thereafter Textron was substituted as a party defendant.
On August 13, 1957, United States Letters Patent No. 2,802,448 (DX-3; PX-100) was issued to Waterman Pen Company, Inc., upon an application filed on December 16, 1954 by Donald H. Young, Waterman's Chief Engineer for Research and Development (Pretrial Order, Section (C), para. 3). The plaintiff, Waterman-Bic Pen Corporation, subsequent to the issuance of the patent, acquired the patent and is the owner of the entire right, title and interest thereto including the right to maintain actions for present and past infringement (Complaint, paras. 5 and 6; PX-101, 102, 102A). Hereafter the plaintiff will be referred to as "Waterman", the defendant as "Sheaffer".
The patent in suit relates to a "cartridge type fountain pen". As the prior art discussed below indicates, the concept of this type of pen was not novel. Several conceptions had been formulated, and some patented, but none ever became commercially successful. Their failure related to the unattainability of an ink resistant seal between the feeding element and the ink cartridge.
Young's efforts, which commenced in April of 1952, culminated in a drawing of December 9, 1953 which incorporates all the elements of the product claimed in the patent. Young's work during this period can be traced through a series of sketches, but none of these sketches completely embodies the claims of the patent. For reasons which will become apparent later, Waterman has sought to extend Young's date of invention behind the December 16, 1954 application date. This effort is made in order to overcome certain prior art references cited by Sheaffer. The Court finds that Young's conception date does antedate his application date, but cannot be carried any further back than December 9, 1953. The date of invention cannot be predicated upon the unsubstantiated testimony of the patentee; there must be objective manifestations of invention for the date to be carried behind the date of his constructive reduction to practice. These objective manifestations may take the form of disclosure to third parties, drawings or renderings. Clark Thread Co. v. Willimantic Linen Co., 140 U.S. 481, 489, 11 S.Ct. 846, 35 L.Ed. 521 (1891). Waterman has produced a December 9, 1953 drawing which incorporates all the elements of the patent, but the other earlier drawings offered are incomplete, and cannot serve to give Young an earlier date of invention.
The Young patent (see Appendix for diagram and text), teaches a cartridge type fountain pen. The ink is supplied by disposable polyethylene cartridges. At the forward end of these cartridges is a bore. The outward end of the bore is open; the inner end of the bore is sealed by a thin diaphragm. The feed section of the pen, that portion which contains the writing tip, incorporates a pierce tube which is a hollow, open-ended metal tube whose function is to pierce the diaphragm in the cartridge and transport the ink to the writing point. The rearmost end of the pierce tube is cut on a bias. The tube's outer edge has been inwardly beveled to provide a sharp internal cutting edge. The axial length of the cartridge bore exceeds the length of the bias cut portion of the pierce tube, and the inside diameter of the bore is smaller than the outside diameter of the pierce tube. Thus, the pierce tube is a snug fit in the cartridge bore, and the bias cut portion of the tube is sealed within the bore before the diaphragm is perforated. See figure 2 of Appendix. The inward beveling of the pierce tube assures that the hole cut in the diaphragm will be smaller than the outside diameter of the pierce tube, thus assuring a second pressure seal at the juncture between the pierce tube and the ink supply. The inward beveling also guards against scoring the walls of the bore during the piercing operation. The patent also teaches a "supplemental seal" formed by the telescoping together of the convex end of the cartridge and the concave seat on the feed section. See figure 2 of Appendix. This meshing of convex and concave configurations forms a supplemental seal in case the ink should escape the seal between the pierce tube and the inside walls of the bore.
The essential element of the Young patent is its teaching of the principle of sealing before piercing; i. e., to avoid leakage, the pierce tube's bias cut portion should be sealingly imbedded in the material of the cartridge before the diaphragm is cut releasing the ink supply. This is the crucial element of a viable cartridge pen taught by the Young patent and not found in the prior art.
A pen embodying all of the teachings of the Young patent was finally placed on the market in September of 1954. Sheaffer cites as prior art several patents, among which is one to Torchi issued November 29, 1960. Sheaffer's citation of the Torchi patent, whose application is dated July 27, 1954, presents an interesting problem. The Torchi patent teaches the same invention as that disclosed in an Italian application by Torchi filed August 26, 1953. Hence, although the Young date of conception is prior to the date of Torchi's United States application, it is subsequent to the date of Torchi's Italian application. Sheaffer contends that Torchi should be a prior art reference as of its foreign filing date, because of 35 U.S.C. § 119 (1952) which provides, in pertinent part, that an application filed in this country within one year of its filing in a foreign country "shall have the same effect" as if the application had been filed in this country on the foreign filing date.1
A literal reading of § 119 coupled with the premise that all sections of the Patent Act should be read in pari materia would seem to compel the conclusion that under § 102(e) the Torchi patent is prior art as of its foreign filing date. However, the courts and commentators have not been unanimous in their interpretation of these two sections of the Patent Act.2 The District Court for the District of Columbia has recently concluded that patents may be used as references as of their foreign filing dates, provided the other requirements of § 119 are complied with. Eli Lilly & Co. v. Brenner, D.C., 248 F.Supp. 402 (1965). And, even more recently, the Court of Customs and Patent Appeals has held that patents may be cited as prior art only as of their domestic filing date. Application of Hilmer, 359 F.2d 859, (1966). The problem is further complicated by the fact that in 1964 the Commissioner of Patents revoked a long-standing section of the Manual of Patent Procedure, § 715.01, which had stated that the prospective patentee need not overcome the foreign filing date of a prior art reference, but need only antedate the reference's United States filing date. In October of 1965 the Manual was amended to make references effective as of their foreign filing dates, provided the other requirements of § 119 were met.
Although the issue is not free from doubt, this Court feels that the position taken in Hilmer by Judge Rich represents the more correct view of the relationship between § 119 and § 102(e).
The original purpose of § 119's predecessor was to implement certain provisions of the 1883 Convention of Paris for the Protection of Industrial Property. Section 119 was designed to provide for a right of priority for United States citizens in foreign countries by extending reciprocal privileges to foreign nationals in the United States. The legislative history of § 119 emphasizes the benefits to United States citizens. "Report of the Commissioners Appointed to Revise the Laws Relating to Patents, Trademarks, and Trade Names, with Reference to Existing Conventions and Treaties" 14-15 (1902). Thus, from the legislative history of § 119 it becomes apparent that the section was intended as a patent protecting and not a patent defeating section. The section was intended as an addendum to the United States Patent Act for the limited purpose of increasing the scope of patent protection available to United States citizens. As such, § 119 should be read merely to effectuate the reciprocity envisaged by its framers by giving a United States application the benefit of its foreign filing date for priority purposes alone.
This reading of § 119 is strengthened by the legislative history of 60 Stat. 940 (1946) which was an Act of Congress to extend the normal one year period of priority under § 119 because of the exigencies of World War II. House Report No. 1498 (1946) states at page 3:
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