Fibre Conduit Co. v. Bankameric Corp.

27 F.2d 708 | 2d Cir. | 1928

L. HAND, Circuit Judge

(after stating the facts as above). That there was an invention of genuine merit in the patented disclosure we quite agree, though it appears to us clumsier than what the defendant has devised. That is often the ease with first steps. We should unhesitatingly regard it as patentable if it were not for the prior art, of which we need consider only Alexander, because his patent seems to us fatal to their validity if the claims be taken broadly. The so-called “flexibility” of the system was certainly here disclosed, and, if he had unmistakably buried his conduits, we do not see how the plaintiff could make even a plausible argument for novelty. It insists, however, that the disclosure only contemplated conduits flush with the surface. That this was the usual form intended we agree, but it seems equally certain that the disclosure also assumed that they might be buried, if the builder so chose. The abstracts from the specifications appear above; we need not labor then, for they seem to us too plain for argument.

It is true that Alexander’s specifications always insist upon accessibility, and for obvious reasons. One must not have to bore through too much concrete. The patentees in part avoided that difficulty by a thin crust of concrete over a cinder fill. But that makes no difference. Once one conceives of a covered conduit, the depth of the covering is plainly a matter for the builder’s design in each case. As Alexander says in his patent, “the details of each particular installation are governed in a large extent by the requirements in each instance.” The criticism of the plaintiff that Alexander’s top layer was to be “thin” is answered by the patent itself, which prescribed precisely the same thing (page 2, line 84; page 4, line 84). Its thickness would necessarily depend upon what service was expected. If the surface was to be protected by a substantial wooden flooring, it might be slight, no more than enough to keep out water. If it was to be directly exposed to the movement of heavy objects, like safes or cabinets, surely it took no invention to provide a thick enough layer to sustain the wear. The divergences shown in the Baltimore & Ohio Building prove, if proof be necessary, that the construction would inevitably vary with the conditions.

Nor do we think that Alexander fails as an anticipation because he shows only bushings, instead of outlets proper. Here, too, it is plain that, if the conduit be sunk and any outlet is necessary, its depth must vary with the distance it must span. It is true that in the instance in which the conduit was sunk well below the surface in the Baltimore & Ohio Building no outlet or bushing was inserted and the conduit was pervious to water. But, try as we may, we cannot bring ourselves to believe that it was invention to lengthen the disclosed bushing as the depth of conduit below the surface might require.

While, therefore, we quite agree with the learned District Judge that the claims cannot be infringed by the “preset” system, we cannot agree that they are in any sense a revolutionary advance beyond Alexander. On the contrary, it appears to- us that, unless the claims be limited strictly to the disclosure, they are not valid. That they may survive if so construed is perhaps possible. We are content to dispose of the ease on the basis of noninfringement, leaving them at least a theoretical validity, if that be of any service to 'the patentees.

Decree reversed in so far as it holds that the defendant infringed by its practice after the “preset” conduits were installed; affirmed in so far as it holds that the “preset” conduits do not infringe.