53 F. Supp. 778 | D. Del. | 1943
The plaintiff, The Goldsmith Metal Lath Company, referred to hereinafter as Goldsmith, brought this suit pursuant to the Declaratory Judgment Act, Judicial Code section 274d, 28 U.S.C.A. § 400, seeking to have two patents, Holdsworth No. 2,105,770 and No. 2,150,061, adjudged invalid and for other relief. The defendant, Milcor Steel Company, hereinafter referred to as Milcor, filed a counterclaim alleging that Goldsmith had infringed both patents and sought damages. Milcor by virtue, of certain assignments is the owner of the patents referred to. Patent No. —770 has seven claims. At the trial it was stipulated that claims 1 to 5 of this patent were not infringed by the structure submitted by Goldsmith for adjudication and that claims 6 and 7 are invalid in view of the decision of the Supreme Court in Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332. It follows that no justiciable controversy in respect to No. —770 remains between the parties. Ætna Life Ins. Co. v. Haworth, 300 U.S. 227, 240, 57 S.Ct. 461, 81 L.Ed. 617, 108 A.L.R. 1000.
We are concerned therefore only with issues relating to Holdsworth No. —061. The complaint prays this court to decide that Goldsmith does not infringe any of the five claims of the patent. By a counterclaim in the usual form Milcor has asserted that Goldsmith has infringed claims 1 to 4, inclusive. It was then stipulated by the parties that Milcor would rely at the trial only on claims 3 and 4. Three weeks before the trial Milcor served notice upon Goldsmith that it would rely also upon claims 1 and 2. Goldsmith contends that Milcor may not now change its position in this respect. It is not necessary to decide this question for reasons which will appear hereinafter. ^
Goldsmith asserts that the patent is invalid on several grounds which include the failure to disclaim an invalid claim, the asserted illegal extension of the monopoly of the patent to unpatented materials and Milcor’s alleged bad faith by asserting infringement of certain structures not covered by the patent. I think it is unnecessary presently to consider these issues for I am of the opinion that the patent is invalid since it discloses no invention.
The patent, which is for a “Wall Construction”, issued on March 7, 1939, on an application filed August 5, 1938. The disclosure relates to wall bases to be used in creating room walls or partitions. The specifications describes base members of slightly different types but in every instance designed to be nailed or otherwise fastened to a floor. It is not necessary to describe all the different designs illustrated by the figures of the patent and described in the specification. Reduced to simple terms Holdsworth structures consist of trimming or mop plates, connected together
Holdsworth makes small reference to the application of plaster or of finishing material to the wall or partition. Indeed, extended reference to the application of plaster or finishing material can scarcely be considered necessary in the ancient art of wall building.
Claims 2 and 4 of the patent are set out below.
An examination of the prior art shows how far it had progressed and how little Holdsworth contributed to it by the patent under consideration. The structure displayed by figure 14 of Goldsmith’s Patent No. 2,235,761
Turning to the Peck patents, No. 2,052,033 and No. 2,057,204, issued in 1936, both for “Metallic Baseboard Construction”, we see again that Holdsworth’s— 061 contributed little to the art.
The patent to McNeil, No. 1,198,240, issued in 1934, shows a wall base comprised by the same combination of elements as Holdsworth’s. McNeil’s side-walls, however, are not to be fastened together at the factory but are to be assembled on the job. Assuming that Holdsworth is entitled to claim a prefabricated wall base, it would certainly not constitute invention to prefabricate the McNeil base by securing the
Assuming .without deciding that Holdsworth is entitled to claim a prefabricated unitary base, a matter concerning which his claims are silent, I think the record demonstrates beyond any doubt that such prefabricated bases are old in the art. Holdsworth himself admitted it under cross-examination, albeit very reluctantly.
Goldsmith has prayed for damages. In view of the provisions of Section 274d and in particular those of subparagraph (2) thereof such relief may be granted only subsequent to the entry of a declaratory judgment. See Ferry-Hallock Co., v. Frost, D.C., 33 F.Supp. 27, 31, 32.
A final decree may be submitted.
Findings of fact and conclusions of law are filed with this opinion in accordance with Rule 52(a) of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c.
Claims 2 and 4 are as follows:
“2. A base for a wall or partition, said base comprising laterally spaced and longitudinal body members and connecting means rigidly connecting said body members in lateral spaced relation, said connecting means being integral witb and being located below the tops of said body members, said connecting means having an upstanding wall-portion which is located intermediate and below the tops of said body members, the top of said upstanding wall-portion having openings which are shaped to receive upstanding studs, and to hold said studs against substantial longitudinal movement relative to said body members.”
“4. A wall construction comprising laterally spaced longitudinal base members, longitudinally spaced lateral connecting members which are located intermediate said body members, said laterally spaced connecting members being rigidly connected to said body members to hold them in lateral spaced relation, a longitudinal member located intermediate said body members and field in fixed relation relative to said base members, said intermediate longitudinal member having recesses which, are shaped longitudinally, upstanding studs having their bottom ends located in said recesses, the bottom ends of said studs being shaped to interfit with the walls of said recesses, plaster facing covering said studs, said plaster facing being located between and above said longitudinal body members and exposing said body members.”
Goldsmith’s patent issued on March 18, 1941 on a divisional application, the original application being filed on March 2, 1938. Goldsmith is available to show that the patentee of the patent in suit was not the first inventor of any material part of the thing patented. See Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 401, 46 S.Ct. 324, 70 L.Ed. 651, and International Seal & K. Protector Co. v. E. J. Brooks Co., 3 Cir., 98 F.2d 647, 648.
It should be noted that Goldsmith was in interference with Holdsworth in the Patent Office. The Board of Appeals held that he was not entitled to make claims I, 2, 3 and 4 of Holdsworth’s patent, concluding as to claims 1 and 2 that Goldsmith’s flanges did not constitute the equivalent of Holdsworth’s upstanding studs and that the straps of Goldsmith’s base were not adapted to receive studs; and concluding that as to claims 3 and 4 that while Holdsworth’s base was designed to receive plaster Goldsmith’s was not. The Board of Appeals held that Goldsmith was entitled to prevail as to count 3 of the issue, in short that he was entitled to make the fifth claim of Holdsworth’s patent and thereby awarded him priority of invention in respect to the matter claimed by this claim. See Transcript of Record on Appeal, United States Court of Customs and Patent Appeals, Patent Appeal Docket No. 4593, Holdsworth v. Gold.smith, pp. 69 — 71. The decision of the Board of Appeals of the Patent Office was affirmed by the Court of Customs and Patent Appeals. See Holdsworth v. Goldsmith, 129 F.2d 571.
Milcor cites the rule of Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 38 L.Ed. 657, and relies upon it, but the doctrine is not applicable under the drcumstances of the case at bar for this court has concerned itself only with the question as to whether the patent sub judice discloses invention. No issue concerning the issuance of a patent to Goldsmith is presently before me. It should also be pointed out that the rule of Morgan v. Daniels is not applicable except in a subsequent suit concerning the same subject matter between the same parties or their privies.
The Peck patents were not considered by the Board of Appeals of the Patent Office in the interference between Goldsmith and Holdsworth because they were not part of the prior art of record in the patent file. See Rule No. 122 of the United States Patent Office providing inter alia as follows: “At a hearing on a motion to dissolve an interference between an application and a patent, the prior art of record in the patent file shall be referred to for the purpose of construing the issue.” 35 U.S.C.A.Appendix. The Court of Customs and Patent Appeals in substance affirmed the refusal of the tribunals within the Patent Office to consider the Peek patents as “ * * * the well-settled practice of the Patent Office * * * In resolving the interference the court did not consider the Peck patents.
See Record, pp. 328-331.