Appeal from the District Court of the United States for the Eastern District of New York.
Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
AUGUSTUS N. HAND, Circuit Judge.
This is a suit for the infringement by the defendant of United States patent No. 1,673,727, issued to Louis V. Aronson. The claims in issue were 2, 7, 12, 13, and 14. The District Court held that claims 2, 7, 13, and 14 were valid and infringed by the defendant in the sale of cigar lighters known as the "Evans Automatic," but that claim 12 was not infringed. It also held that claims 7, 13, and 14 were not infringed by the defendant in the sale of cigar lighters known as the "Evans Roller Bearing" lighters. These were the only claims relied on in respect to this latter device. The complainant appeals from so much of the decree as denies relief for infringement of claim 12 in the sale by the defendant of "Evans Automatic" lighters and from so much as denies relief for infringement of claims 7, 13, and 14 in the sale of "Evans Roller Bearing" lighters.
The patent states that the invention relates "to cigar pocket lighters or the like and has as an object the provisions of an exceedingly simple, efficient, and convenient form of lighter having means to ignite a wick by means of a shower of sparks." The invention consists of an ingenious combination of well-known elements in such a way as to make a useful commercial device.
The lighter mechanism comprises a fuel receptacle which is flat or elongated in horizontal cross section on the top of which the working parts are mounted. They are mounted in a certain order, namely, the wick with its suuffer cap is at one end of the upper part of the receptacle, in the center is a rotatable wheel, which the patent calls an abradant wheel, and to the right of that is a finger piece which is used by the operator to effect the desired result of lighting the wick, which is under the snuffer cap and extends down into the fuel receptacle. The abradant wheel is so arranged that it rotates in one direction only, which means that the sparks as generated are projected toward the wick. This arrangement of the three main parts of the device, namely, the wick with its snuffer cap, the wheel, and the finger piece, was called by Mr. Hammer (complainant's expert) "a one, two, three arrangement." The wick and its flame are far removed from the thumb so as to avoid possibility of burns when striking a light, and the construction is so thin and flat as to be adapted to be carried in the pocket. Moreover, the device has no cover or lid, and yet the parts are so arranged that there is no likelihood of their being caught in the clothing. The moment the finger piece is released, a spring forces it up, the snuffer is replaced, and the wick covered automatically.
Devices which have been marketed by the complainant under the patent have had a large commercial success. While this success has been substantially promoted by advertising, there is little doubt that the patentee has devised a lighter that excels in compactness and convenience and has made valuable and meritorious contribution to an old art.
The court below sustained the claims that were put in issue, with the exception of claim 12, which it did not pass upon. As we have already said, it held claims 2, 7, 13, and 14 valid and infringed by the defendant in the sale of what is known as the "Evans Automatic Lighter." While the validity of the claims in issue, other than claim 12, is not directly involved here because the defendant has not appealed from the interlocutory decree, validity is important as bearing upon the question raised by the complainant's appeal because the latter not only insists that claim 12 is valid and infringed by the automatic lighter, but that claims 7, 13, and 14 should have been held infringed by defendant's "Roller Bearing Lighter," while defendant insists that these claims are not only not infringed by this lighter, but are themselves void for lack of invention.
Upon the issue of validity the defendant relies principally on the Austrian patent No. 86,979 (1922) to Hauzenberger, the British patent No. 10,260 (1910) to Bergmann, the United States patents No. 1,018,763 to Von Horvath and No. 1,086,175 to Hofmann, and the alleged Lagerholm prior invention.
We may say at the outset that Lagerholm's device alleged to have been made in 1925 lay dormant for about three years, and that no application for a patent on it was filed during that period and until after complainant had begun to put its cigar lighter on the market. Moreover, the oral testimony as to an experimental model made in 1925 was accompanied by no documentary proof tending to establish the date of its construction. In such circumstances the defendant has not supported its burden, and the alleged Lagerholm invention can be awarded no priority.
The Hauzenberger patent does not show the "one, two, three" arrangement of the main operating parts. The finger piece is along the side of the lighter instead of on top; the pressure of the lateral wall with the long spring along the receptacle involves a loss of space and lack of compactness. The patent does not show the wick, the abradant wheel, and the thumb piece elongated in a row on top of the fuel receptacle, but, on the contrary, discloses a large cap embracing all the operating members.
The British patent to Bergmann shows a large cylindrical telescopic shell inclosing the entire space above the receptacle. This wick and the abradant wheel are thus boxed in instead of being on top of the fuel receptacle, and there is nothing which may be reasonably called a finger piece within the meaning of the patent in suit.
The Von Horvath and Hofmann patents likewise have caps encasing the whole top of the receptacle. Moreover they are opened by a spring and closed by hand instead of opened by hand and closed by a spring as in the patent in suit. In other words, they lack the useful and convenient automatic feature and have no finger piece. In the German Gebrauchsmuster No. 844,296, also relied on by the defendant, the finger piece is not located on top of the receptacle, and in the German patent No. 293,705 (1915) to Kellerman, there is no spring tending to force the finger piece upward, and the closure is not automatic, because the snuffer must be closed manually. Moreover, the Kellerman device obviously was capable of no such quick snap operation as that of the patent in suit.
Aronson made an advance over the prior development of cigar lighters by his arrangement of operating parts, so that the wick was at the side furthest away from the finger of the operator; the snuffer, abradant wheel, and thumb piece were on the top of the receptacle; all three were free from a cumbersome outer housing and the manual actuation of snuffer and abradant wheel by the finger piece through gears enabled the operator to obtain just the shower of sparks he might require at the moment. The Austrian patent to Hauzenberger was probably the nearest approach to Aronson's invention, but Hauzenberger's ...