Zalkind v. Scheinman

• Decision Date: 08 March 1948
• Citation: 80 F. Supp. 299
• Parties: ZALKIND v. SCHEINMAN et al. (GUIDE SYSTEM & SUPPLY CO., Inc., Third-Party Defendant).
• Court: U.S. District Court — Southern District of New York

80 F. Supp. 299

ZALKIND v. SCHEINMAN et al. (GUIDE SYSTEM & SUPPLY CO., Inc., Third-Party Defendant).

United States District Court S. D. New York.

March 8, 1948.

Samuel Ostrolenk, of New York City (Mock & Blum, of New York City, of counsel), for plaintiff.

Lackenbach & Hirschman, of New York City, for defendants.

S. G. Faber, of New York City, for third-party defendant.

RIFKIND, District Judge.

This is an action by Philip Zalkind, against Sol Scheinman, Jacob Mandel, Pronto File Corporation and Masell Manufacturing Corporation for infringement of plaintiff's patents 2,218,011, 2,233,906 and 2,245,026. The defendants, in a counterclaim against plaintiff and a third-party complaint against Guide System & Supply Co., plaintiff's licensee, allege that Scheinman's patent 2,277,155 and Scheinman's and Mandel's patents 2,012,857 and 2,110,556 have been infringed by plaintiff and third-party defendant. Both plaintiff and defendants seek an accounting of profits, treble damages and an injunction. All the patents in issue relate to improvements in the art of reinforced collapsible storagefiles. The complaint, the counterclaim and the third-party complaint are all defended on the grounds of invalidity and non-infringement.

Before examining into the issues of validity and infringement, it is necessary to consider the litigious history of Zalkind patent 2,218,011. Plaintiff claims that defendants are estopped to deny the validity of claims 7 and 10 of that patent.

On September 3, 1932, Zalkind applied for a patent — application No. 631,682. Application No. 690,360, filed September 21, 1933, is a division of that application. On April 19, 1933, Scheinman and Mandel applied for a patent — application No. 666,895.

Because of similarities in these and other applications, a series of interferences was declared by the Commissioner of Patents, in accordance with Rule 93 of the Patent Office, 35 U.S.C.A.Appendix. Of these, only Interference No. 68,363 concerning the above applications need concern us here. As finally framed this interference dealt with two counts (brought in by Zalkind on his motion to amend), which finally, with unimportant revision, became claims 10 and 7 of Zalkind patent 2,218,011, to wit:

"Claim 10. (Count 1.) A casing member of the class described, comprising a quadrilateral box-like structure having a body formed of an integral blank of non-metallic material scored and folded along certain portions serving as corner edges between the top, bottom and side walls, said body having the forward end margins thereof faced with metal strips arranged to permit folding and unfolding of said box structure along said scorings, and means engaging the marginal metal strips for holding the walls of the casing member rigidly in right-angled relation."

"Claim 7. (Count 2.) A casing having an open front end and comprising a bottom wall; side walls; a top wall; said walls being made of sheet material having fold lines between the top, bottom and side walls along which lines the same is manually foldable to form said walls; adjacent walls being movable angularly relative to each other about said fold lines to permit the casing to be shipped in knock-down condition; reinforcing members at front edges of said walls; an angle wire, one leg of which is secured to one of said reinforcing members, the other leg of said wire protruding from said reinforcing means, said angle wire being rotatable on said secured leg into position to be engaged by the reinforcing member of the adjacent edge for maintaining said adjacent walls in rigid angular relation."

The Examiner of Interferences on October 21, 1936, awarded priority of invention to Zalkind, the senior party, on the two counts in issue, and on July 9, 1937, this decision was affirmed by the Board of Appeals of the Patent Office, over objections by the junior party that the counts were unpatentable to either party in light of the British patent to Eddels — No. 273,345, issued in 1927.

At this point, Scheinman and Mandel, exercising the privilege granted by R.S. § 4915, 35 U.S.C.A. § 63, brought a suit against Zalkind in the District Court — in the nature of an application for a patent. The bill of complaint contained the usual allegations that Scheinman and Mandel, the plaintiffs, were the true, prior, etc., inventors, and in Paragraph X contained the following allegations:

"X. That in awarding priority to defendant, the Commissioner of Patents through the Board of Appeals, made, among others, the following errors:

"a. He refused to consider the question of the anticipation of the counts in issue by the British patent to Eddels 273,345 on the assumption that `this patent was considered by the Primary Examiner and the counts were held allowable over same', whereas in fact there is nothing of record to indicate that this British patent was before the Primary Examiner when he allowed the counts in issue, such patent not having been made of record by the Examiner.

"b. He failed to recognize that to permit the counts in issue to be awarded to the defendant would work an injustice to the plaintiffs and to the public in general by reason of the obvious anticipation of the counts by the Eddels patent, and that the same would be true if the counts were awarded to the plaintiffs because the latter, knowing such counts to be anticipated, would then be compelled to disclaim the same".

Zalkind's answer denied, inter alia, the allegations of Paragraph X. Scheinman and Mandel, plaintiffs in that action, defaulted and the action was dismissed "with prejudice" after an inquest before Judge Woolsey at which the record of Interference 68,363 was put in evidence.

The plaintiff contends that the issue of patentability is one that the District Court in a 4915 action must decide, that the dismissal with prejudice of defendants' suit was an adjudication that plaintiff's claims were valid and that relitigation of that issue should not here be allowed. The defendants contend that the dismissal of that action can in no wise be deemed an adjudication of the validity of the claims. I hold with the defendants for the reasons about to be stated.

In 1937, when the previous suit was commenced, the wording of the statute under which it was brought read:

"§ 63. Bill in equity to obtain patent. Whenever a patent on application is refused by the Commissioner of Patents the applicant, unless appeal has been taken to the United States Court of Customs and Patent Appeals, and such appeal is pending or has been decided, in which case no action may be brought under this section, may have remedy by bill in equity, if filed within six months after such refusal or decision; and the court having cognizance thereof, on notice to adverse parties and other due proceedings had, may adjudge that such applicant is entitled, according to law, to receive a patent for his invention, as specified in his claim or for any part thereof, as the facts in the case may appear. And such adjudication, if it be in favor of the right of the applicant, shall authorize the commissioner to issue such patent on the applicant filing in the Patent Office a copy of the adjudication and otherwise complying with the requirements of law. In all cases where there is no opposing party a copy of the bill shall be served on the commissioner; and all the expenses of the proceedings shall be paid by the applicant, whether the final decision is in his favor or not. In all suits brought hereunder where there are adverse parties the record in the Patent Office shall be admitted in whole or in part, on motion of either party, subject to such terms and conditions as to costs, expenses, and the further cross-examination of the witnesses as the court may impose, without prejudice, however, to the right of the parties to take further testimony. The testimony and exhibits, or parts thereof, of the record in the Patent Office when admitted shall have the same force and effect as if originally taken and produced in the suit." R.S. § 4915, as amended by 45 Stat. 1476, Act March 2, 1929.

In the leading case of Hill v. Wooster, 1890, 132 U.S. 693, 10 S.Ct. 228, 33 L.Ed. 502, an unsuccessful Patent Office interferant brought a 4915 suit in the Circuit Court, and was awarded priority by that court. On appeal to the Supreme Court, the decree was reversed and remanded with instructions to dismiss the bill, on the grounds that the claims in issue were void for lack of invention. The Court held it the duty of the Circuit Court (and of the Supreme Court, on appeal) to investigate the patentability of the claims of an applicant, stressing the responsibility imposed upon the courts:

"The provision of section 4915 is that the circuit court may adjudge that the applicant `is entitled, according to law, to receive a patent for his invention, as specified in his claim, or for any part thereof, as the facts in the case may appear;' and that, if the adjudication is in favor of the right of the applicant, it shall authorize the commissioner to issue the patent. It necessarily follows that no adjudication can be made in favor of the applicant, unless the alleged invention for which a patent is sought is a patentable invention. The litigation between the parties on this bill cannot be concluded by solely determining an issue as to which of them in fact first made a cabinet creamery. A determination of that issue alone, in favor of the applicant, carrying with it, as it does, authority to the commissioner to issue a patent to him for the claims in interference, would necessarily give the sanction of the court to the patentability of the invention involved." (132 U.S. at page 698, 10 S.Ct. at page 230) (Emphasis added)

Nothing in Hill v. Wooster suggests that a dismissal of a bill would carry with it any sanction of the court to issue a patent to the successful defendant and, indeed, only where the decree is in favor of the applicant does the statute itself bind the...