21 F.2d 544 | W.D.N.Y. | 1927
This is a motion for an injunction pendente lite against the defendants in an equity suit charging infringement of patent No. 1,500,452, granted July 8, 1924, to Joseph F. Haggerty, and assigned to the Universal Gypsum Company, now known as the Universal Gypsum & Lime Company, the plaintiff, for improvements in plaster wall board, and for discovery of improvements made in the assigned invention, by the patentee, and requiring an assignment of all patent applications and patents covering improvements. The defendant Haggerty has not been served with process. It will suffice to set forth claims 1 and 8:
“1. A wall board consisting mainly of gypsum and having a paper liner, cooked starch being incorporated with the gypsum, to insure secure adhesion of said paper liner.”
“8. A wall board consisting mainly of gypsum and having a paper liner, cooked carbohydrate being incorporated with the gypsum to insure secure adhesion of the paper liner, fiber being thoroughly distributed throughout the carbohydrate to strengthen the board.”
The injunction is sought on the ground of estoppel to deny the validity of the patent and its utility and novelty because of its assignment by Haggerty to plaintiff, and its subsequent infringement by him and his privies. It is urged, in opposition, that, since there has been no adjudication sustaining the patent, or judicial construction of the claims, or acquiescence by the public, the injunction should not issue. This rule, however, has no application to a state of facts showing that a patentee transferred his patent for a valuable consideration, and after-wards, in co-operation and association with others who had knowledge of the assignment, commits acts of infringement. Continental Wire Fence Co. v. Pendergast (C. C.) 126 F. 381; Mellor v. Carroll (C. C.) 141 F. 992. If, therefore, the defendants Williams and the National Gypsum Company became associated with the patentee, knowing or having reason to know, that the patented invention had been sold to plaintiff, and they jointly or severally co-operated with him to manufacture wall board under the described process, and are so engaged, then they may be restrained from infringements, even though many of the stockholders of the corporation were unaware of the antoce’dant history of the patent and its sale to plaintiff under an agreement that future improvements or inventions should be assigned. Moreover, if the corporation is dominated by the patentee and persons associated with him, it is deemed to have been in privity with them, and may equally be es-topped. In such a situation it amounts to more than a mere co-operation with the es-topped assignor. Johnson Furnace & Engineering Co. v. Western Furnace Co. (C. C. A.) 178 F. 819.
What are the circumstances warranting the application of the doctrine of estoppel? It is evidenced that the inventor, Haggerty, was a promoter in the manufacture of wall board, and, at the time he assigned his invention and patent, and prior thereto, was familiar with the ordinary processes by which gypsum board, as a substitute for lath and plaster, was made. He appreciated the difficulties in prior art structures as to the amount of water used in the mixture to secure sufficient adhesion of paper liners placed on both sides of the gypsum core and prevent peeling off. He designed to remedy the difficulty by making the paper liners stick better to the board, and, in the attainment of his object, he used, as the specification and claims in controversy show, a certain quantity of carbohydrate material, or soluble starch, in the core mixture, and made the board lighter by using a relatively large amount of water in the mixture. He did not limit his invention exclusively to the use of starch, and emphasizes that a suitable carbohydrate material may be used in the core, “as, for instance, starch or the like,” in practicing the invention. He stated that use of sawdust can be omitted, while the paper liner could be made either of wood fiber or waste paper beaten to a pulp to form sheets. In short, he brought about a wall board that could be nailed without chipping, and which had adhesive qualities between the paper and the gypsum core.
The patentee originally organized the Gypsolite Company to manufacture wall board embodying his invention, but, on May 14, 1923, as the moving affidavits show, sold his interest in the company, together with his patent, to plaintiff, for a valuable consideration, and also agreed to, assign any improvements thereafter made or invented by him. Defendant Williams took an active part in the organization of plaintiff, beeom
Defendants draw attention to prior patents, but they cannot be considered to invalidate tbe claims. Alvin Mfg. Co. v. Scharling (C. C.) 100 F. 87. Some of them do not alone bear upon tbe scope of tbe Haggerty patent, but seem to relate to anticipation and novelty. As between plaintiff and defendants, in my estimation, tbe assigned patent is entitled to a liberal construction instead of one that is narrow. Piano Motors Corp. v. Motor Players Corp. (C. C. A.) 282 F. 435; U. S. Frumentum v. Lauhoff (C. C. A.) 216 F. 610, and eases cited.
It is true that tbe scope of plaintiff’s patent is open to construction, but tbe claims are broad enough, on the showing before me, to include defendants’ adaptation by which a similar structure is produced. In meeting defendants’ contention, plaintiff asserts that none of tbe prior patents limit tbe scope of tbe claims, since tbe Haggerty patent teaches bow a strong, lightweight gypsum wall board may be produced by using a relatively larger amount of water in tbe core mixture than is shown in tbe prior art; and, moreover, in overcoming known difficulties in securing adhesion of tbe liners to tbe core, tbe patent progressed the art. It may be conceded that dextrin in tbe batch and certain fibrous material used was an old expedient, but defendant corporation has gone farther, and, in making a lighter and stronger board, has taken tbe elements of the claims in combination to achieve tbe result. Its modification and use of dextrin may produce a more perfect board than the conception of tbe patentee, but, even though this be a correct estimate, weight cannot be given it on this application. If defendant’s operation were new, or if doubt existed as to infringement, then an injunction pendente lite would not be grantable, but tbe whole question apparently rests upon whether an admixture of dextrin evaded tbe scope of tbe claims. In tbe Armstrong patent, cited by defendants, a small quantity of dextrin was added to tbe fibrous material in a paper lined gypsum board, but tbe dextrin was used as a bastener to tbe setting and not for adhering tbe paper liner to tbe core. I discover nothing to require a striet construction of plaintiff’s patent by this citation. Defendants’
If I am correct in construing the claims in issue, as indicated, there is no doubt as to their infringement of the assigned patent, and it follows that a ease for injunction is fairly made out against the defendants served with process, but, since it is urged that irreparable injury to defendant corporation, which is financially sound, may follow if its manufacture of wall board is enjoined, and to guard against error, I will withhold the injunction upon defendants Williams and National Gypsum Company giving an adequate bond, the amount to be determined on éntry of the order, to secure plaintiff for damages sustained, and loss of profits, if any, that may be decreed herein, or, in the alternative, the injunction may issue. So ordered.