The opinion of the court was delivered by: GALSTON
This is a motion for a preliminary injunction based on the alleged infringement of letters patent No. 1,673,727 for a cigar lighter, issued June 12, 1928. The validity of the patent was sustained in Art Metal Works, Inc., v. Abraham Straus, Inc. (D.C.) 52 F.2d 951, modified (C.C.A.) 61 F.2d 122.
The outcome of the previous litigation between the parties was the holding that both forms of the defendant's lighters, known, respectively, as the "Evans Automatic" and the "Evans Roller Bearing Lighter" infringed.
This present action involves a third form of lighter, which is referred to in the papers as a "Trig-a-lite." The contention of the plaintiff is that this third form is substantially the same as the roller bearing device, and that it should accordingly be held infringed. On the other hand, the defendant contests on the ground that there is a marked difference between the two forms of lighters; and on the additional ground that the plaintiff, in its effort to differentiate the prior art in the earlier litigation, took such position as now estops it from contending that the scope of the claims is sufficiently broad to include the Trig-a-lite construction.
The roller bearing lighter was held by the Circuit Court of Appeals to infringe claims 7, 13, and 14. Those claims read as follows:
"7. A lighter having in combination a receptacle, an abradant wheel journalled on top of the receptacle, a pyrophoric member, means including a spring projecting said pyrophoric member into engagement with said wheel, a wick extending into said receptacle and projecting from the top thereof on one side of the wheel, a finger piece located on the other side of said wheel, said finger piece being adapted to be pressed downwardly, a spring tending to force said finger piece upwardly, a snuffer for said wick, and means whereby upon pressing said finger piece downwardly said wheel is rotated by manual pressure to ignite the wick and said snuffer is removed from the wick, said last mentioned means comprising a rack on the finger piece and a gear operated thereby, and pawl and ratchet means whereby the wheel is operated by the gear."
"13. A lighter having in combination a receptacle, said receptacle being elongated in horizontal cross-section, an abradant wheel centrally disposed over the top of said receptacle and journalled about a horizontal axis, a wick projecting from the top of the receptacle on one side of the wheel, a snuffer for the wick, a finger piece on the opposite side of the wheel from the wick, said finger piece being mounted independently of the snuffer, and means whereby operation of said finger piece will operate the wheel and snuffer by manual pressure, said last mentioned means including gear means operated by the finger piece and acting to operate both the snuffer and the wheel."
"14. A lighter having in combination a receptacle, an abradant wheel journalled on top of said receptacle, a pyrophoric member, means projecting said pyrophoric member upwardly from the top of said receptable into engagement with said wheel, a wick extending into said receptacle and projecting from the top thereof on one side of the wheel, a finger piece carried on top of the receptacle and adapted to be pressed downwardly, a spring tending to force said finger piece upwardly, a snuffer for said wisk, and means whereby uppn pressing said finger piece downwardly said wheel is rotated by manual pressure to ignite the wick and said snuffer is removed from the wick, said last mentioned means comprising a rack on the finger piece and a gear member operated thereby."
In determining this motion, it becomes necessary to consider the construction of the prior art patents given by the experts in the former litigation. Particularly important in that connection is the consideration of those prior art patents which disclose the storing of energy in a spring by the movement of a finger piece, and the releasing of the stored energy at a point near the completion of the movement of the finger piece, which actuates a rotation of the spark wheel.
In these spring actuated lighters, the defendant's expert found the equivalent of the manually operated variety claimed as the invention defined in the patent in suit. Mr. Hammer, the plaintiff's expert, however, distinguished the spring actuated class. Referring to claim 7, he said:
"Another distinction is noted when we proceed in the reading of the claim and find the requirement of 'means whereby, upon pressing said finger piece downwardly, said wheel is rotated by manual pressure to ignite the wick, and said snuffer is removed from the wick.' And there I must comment on what apparently was in Mr. Ray's mind in calling attention to the manual operation of this German device.
"As I understand it, the patent in suit is broadly differentiated from much prior art by having a rotation of the wheel depending upon the energy of the thumb action on the thumb piece or finger piece. In other words, if you give a short, sharp, snappy action of the thumb, you get a different effect than if you just move it down deliberately, and it is within the control of the user as to the amount of vigor with which that device shall be operated.
"There is a class of prior art, of which this German patent is representative, in which the actual operation of the wheel is not a function of the finger pressure. In illustration of that we have in this German patent a wheel k, only one-half of which is abradant; the other half is smooth. That wheel is so arranged with reference to the movable, pivoted side section of the casing that the movement of that side piece toward the left in Fig. 4, until it reaches the position shown in Fig. 5, that only the smooth portion of that wheel comes in contact with the pyrophoric metal, and therefore no sparks are produced. So that the movement by manual pressure of this green side piece does not itself produce any sparks. What it does is to turn the wheel around into the position shown in Fig. 5, and at the same time put the spring p under pressure, under tension, because the rotation of the wheel in clockwise fashion carries the little crank around with it and extends the spring.
"Now, up to that time, and that is the limit of movement of the side piece, there will be no sparks, but having reached that point the teeth on the wheel escape from the teeth on this rack and the spring which has then been put under this tension, and which has been carried just beyond the center o of the wheel, causes that wheel to give a short, sharp, snappy movement in a clockwise direction, passing the cerated portion of the wheel, ...