The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This suit is for the alleged infringement of reissue patent No. 18,100, issued to Frederick J. Mersfelder and Paul Balze, assignors to the plaintiff, on June 16, 1931, on application filed February 4, 1931, and coupled with cause of action for unfair competition.
The original patent No. 1,702,878 was issued February 19, 1929, on an application filed May 18, 1927.
A reissue patent No. 17,528 was issued December 17, 1929, on an application filed May 7, 1929.
A second reissue patent No. 17,667 was issued May 13, 1930, on an application filed March 3, 1930.
The patent in suit is therefore the third reissue the application for which was filed within two years after the date of the issue of the original patent.
The plaintiff is a New Jersey corporation, and all of the defendants are citizens of the state of New York; the defendant Paul Munk & Co., Inc., being a New York corporation.
The clean-out plug of the patent in suit has gone largely into commercial use, and from the time of its first introduction to the trade was given a definite name, to wit, "Fit-All" clean-out plug, by which it has become and ever since has been known in the trade. This name "Fit-All" was placed on the commercial product.
The defendants manufacture and sell clean-out plugs for the same purposes but of somewhat different appearance than plaintiff's commercial structure, and have applied the name "Takall" to the alleged infringing plugs.
The defendants have interposed an answer setting up the defenses of invalidity and noninfringement.
The object of the invention is described by the patentees in the specifications as follows:
"This invention relates to improvements in drainage clean out devices and has particular reference to detachable members used in connection with clean outs on drains.
"The ordinary clean out used in connection with drains, consists of a body in the nature of a hollow cylinder of a suitable size, into one end or side of which is fitted, by a screw thread, a brass plug. The body is usually made of iron and is caulked into the hub of the pipe or trap, leaving the brass plug removable for the purpose of cleaning the drain or trap. In many cases the brass plug is lost or broken requiring its replacement.
"Since the threaded portions of the body and plug vary somewhat as to their diameters from other bodies and plugs, it becomes very difficult to obtain the size of the new plug that will properly fit the body. In many cases it becomes necessary to remove the old body from the hub and to replace it with a new body for which the plug is furnished, but this replacement of the new body and plug involves much labor and expense.
"Among the objects therefore of this present improvement is to provide a member such as a plug which will fit into thereaded clean-out bodies of various diameters and which consequently will eliminate the necessity for replacing or renewing the body of the clean-out when only a new plug is required. This object is attained by providing, for example, a new plug having a soft metal thread characterized by an excessive taper whereby the plug will fit threaded body openings of substantially varying diameters; and another object is to so form the thread or threaded surface portion of the new plug in an improved manner so that the normal yielding or conforming action of the soft metal may be increased." Page 1, lines 1 to 41.
Of course, the plug must fit tightly to prevent the escape of sewer gas.
The invention met with success.
The patentees organized the M. & B. Manufacturing Company, Inc., and for a time manufactured and sold the plugs; but the demand for them grew so large that it became necessary for the M. & B. Manufacturing Company, Inc., to look for a manufacturer, and it entered into an agreement with the Flemm Lead Company, which had previously been licensed to sell the plug, wherein it licensed the Flemm Lead Company both to manufacture and sell, and that licensee has sold over 100,000 of the patented plugs (Exhibits 5, 8, and 9).
Exclusive sales agreements were granted for Chicago, Detroit, and Buffalo.
The plugs sold were all of the soft metal layer or soft thread type.
The simplex Manufacturing Company took a license, Bensonhurst Plumbing Supply Company, Inc., consented to a decree in open court upon the day of trial, and Clinton Plumbing Supply Company consented to a decree and paid damages.
The individual defendants herein for a time in 1930 sold what were claimed by the plaintiff to be infringing plugs, but ceased when pressed by counsel for the licensee, by letter dated December 20, 1930 (Exhibit 20).
The defendants Paul Munk and Albert Munk were doing business under the firm name and style of Paul Munk & Co., at No. 36-11 Thirty-Third street, Long Island City, borough of Queens, and state of New York, where the infringing acts complained of were, and at the time of the commencement of this action were being, committed.
The defendant corporation was organized by the said Paul Munk and Albert Munk, doing business under the firm name and style of Paul Munk & Co., in January or February, 1933, acquired the assets and assumed the liabilities of said Paul Munk & Co., and took an oral license from a Mr. Wallach and commenced the manufacture and sale of the alleged infringing plugs.
The claims in suit are claims 6 and 7, which read as follows:
"6. In combination, a plug having a tapered threaded outer surface and a member having a tapered threaded opening receiving said plug, said surface having approximately the same number of threads as said member, the taper of the threaded surface of said plug being so substantially different than the taper of said opening, that only a fractional section of the plug is adapted to engage in said threaded opening or in similar threaded openings of various sizes, whereby said plug may be used with members having threaded openings of substantially varying sizes.
"7. A clean-out plug having a threaded outer surface adapted to be engaged with a drainage fitting having a tapered threaded opening for receiving said plug, the taper of the threaded surface of said plug being so sufficiently greater than the taper of said opening that only a fractional section of the plug may be engaged with said opening or with similar threaded drainage openings of various sizes."
These two claims do not require soft metal surface or soft metal thread.
What they do require is (claim 6) a combination having a clean-out plug, and (claim 7) a clean-out plug having a taper so much greater than that of the threaded opeing of the fitting that only a fractional portion of the plug is engaged with the opening, and the number of threads on the plug being the same as the number of threads on the fitting.
Defendants do not escape infringement by reason of their failure to use soft metal for the plug thread, as that is not mentioned in these claims. It is a feature of other claims, and believing that feature to be of advantage, the patentees, in disclosing as required by statute their preferred form, properly disclosed the use of the soft metal thread, but it is not necessary for the proper functioning of the plug that the metal of the thread be soft. Defendants' plug will function for the purpose but not as well as plaintiff's commercial structure, and it is no defense that defendants do not avail themselves of all of the advantages of the patented structure.
The defendants adopted and used the word "Takall" as a name for their plugs from about the date of the ...