The opinion of the court was delivered by: KNIGHT
The suit is in equity for infringement of 9 several patents including 44 claims. E. F. Hauserman, Plaintiff, is an Ohio Corporation with its place of business located at Cleveland, in that state. Wright Metal, Inc., defendant, is a New York corporation, with its principal place of business at Falconer, in that state. Defendant Samuel J. Lasser is an assignee for benefit of creditors of Wright Metal, Inc., and is in the active conduct of the business of that corporation. The counterclaim set up in defendants' answer has been withdrawn, and the only issue is the alleged infringement by defendant of these patents.
The defendants do not contest plaintiff's title to the patents in suit. Noninfringement and anticipation in the prior art are the defenses interposed. Generally speaking, these patents pertain to various features and parts of metal partitions to inclose space in building interiors. The construction of partitions to divide interior space follows as a natural sequence of improvements in building construction. Until comparatively recent years, interior partitions were usually built of wood. Changes in material and type of construction, economy, and convenience, and the needs of safety directed the ingenuity of men to a new type of interior partition. A metallic partition of the general type involved here was a natural evolvement from the metallic form of partition. The metallic partition of the sectional type has been in use approximately 25 years. The plaintiff corporation has engaged in the manufacture of removable steel partitions since 1920, while the defendant corporation, under the name of Hollow Metal Construction Company, was organized in 1928.
The trial of this case consumed substantially two weeks. Many physical and photographic exhibits have been received in evidence.Voluminous briefs of the respective attorneys have been submitted, and it may be safely asserted that no contention on the part of either party has been lacking in most careful presentation as to every detail. The case has been thoroughly and most ably tried. The niceties involved in the questions presented could best be solved by a mind specially trained in the study of patents and patent laws. This court has not such special qualifications. It has, however, given the issues long and careful consideration and to the best of its ability.
The patents and claims in question relate to the following particular parts of metallic partition construction: Vertical panel assembly, post and cornice construction and assembly, wicket, mop strip, shim, and plinth.
Certain rules of law point the paths of decision upon the claims and patents in question. The plaintiff has the burden of proof upon the issue of infringement. Hatmaker v. Dry Milk Co. (C.C.A.) 34 F.2d 609. Letters patent are prima facie evidence that the device was patentable. Palmer v. Corning, 156 U.S. 342, 15 S. Ct. 381, 39 L. Ed. 445. "This presumption is strengthened by the circumstance that the alleged anticipating patent was considered by the Patent Office in connection with the application for the patent in suit. And the presumption is weakened by the circumstances that closely similar prior references were not interposed or considered." Walker on Patents, vol. 1, § 535 (6th Ed.). Defendant must show prior use beyond a reasonable doubt. Cantrell v. Wallick, 117 U.S. 689, 6 S. Ct. 971, 29 L. Ed. 1017. In considering whether there is invention, everything known to the art through patents, publications, or use must be considered. U.S. Hoffman Machinery Corporation v. Pantex Pressing Machine, Inc. (D.C.) 35 F.2d 523. Plaintiff must show the defendants' structure was made or sold subsequent to the issue of the patents in question. Mere showing in a catalog is not infringement. Van Kannell Revolving Door Co. v. Revolving Door & Fixture Co. (D.C.) 293 F. 261. Patentees are required to declare and define their invention so that the public may know its rights. American Bell Telephone Co. v. National Telephone Mfg. Co. (C.C.) 109 F. 1043. Patentee's claims cover only that which is both described and claimed no matter how broad the claim language may be. Baker Perkins Co. v. Thomas Roulston, Inc. (C.C.A.) 62 F.2d 509. Where the art is advanced step by step by series of inventions so that no one inventor can claim the complete whole, each is entitled only to the specific form which he produces which differs from those of his competitors. Jay v. Weinberg (D.C.) 250 F. 469. Progressive adaptation by the mechanic's skill in the art without the exercise of inventive genius is not invention. Ford Motor Co. v. Ohio Stamping & Emgineering Co. (C.C.A.) 56 F.2d 807. Reissue patents can be valid only when they are granted for the same invention for which the original patent was granted. Whether they are for the same invention is to be determined by the specifications and drawings, or models. Section 64, title 35 USCA; Seymour v. Osborne, 11 Wall. 516, 20 L. Ed. 33; Topliff v. Topliff, 145 U.S. 156, 12 S. Ct. 825, 36 L. Ed. 658; Lorraine v. Townsend (C.C.A.) 8 F.2d 673; Walker on Patents (6 Ed.) vol. 1, p. 365.
A question has arisen in the mind of the court with regard to the proper order in which the various claims of the different patents should be presented in this opinion. It has been concluded to take up the consideration of the patents separately, together with the claims under each.
I. Reissue Patent No. 17,440, issued September 24, 1929. Original Filed October 22, 1920.
Claims 1 to 10, inclusive, shown in the original patent, issued February 28, 1928, were retained in haec verba in the reissue presented. The claims involved in this determination were all obtained by the reissue.
Claims 11 and 12 purport to cover a plurality of panels, erectable separately, between support members, and interchangeable with one another. Claims 14, 15, 17, and 19 purport to cover panel units with cornice assembly.
Claims 11 and 12 were twice rejected by the Patent Office on the patent to Klein, No. 1,241,635. Originally claim 11 said nothing regarding the abutting of or means of engagement of the horizontal members or the interchangeability of the panels. The first amendment after rejection purports to take care of the matter of abutting and engagement of the horizontals. Instead of merely saying "means of engagement" as before, it says: "Means extending in engagement between such horizontals fitting and aligning," etc. On the second rejection on the Klein patent, by further amendment the claim was made to recite that the panels were "erectable separately." Thus the view of the Patent Office seems to be that this particular feature in the combination set forth made it patentable over Klein. Claim 12, as originally presented, recited that the general channel-shaped horizontals engaged the support members, and that the horizontals were aligned by means of "a removably assembled member extending from support member to support member," etc. This claim was rejected and a further limitation included reciting that the panels "were erectably separately one above another." In construing these claims, under these circumstances, the plaintiff must be held to a very clear and definite proof of infringement. I.T.S. Co. v. Essex Co., 272 U.S. 429, 47 S. Ct. 136, 71 L. Ed. 335.
In claim 11, this interchangeability appears to relate to the vertical relationship of the panels with one another between the same pair of posts, rather than the idea of interchangeability between different pairs of posts. This construction of the claim is borne out by the statement of the patentee's counsel appearing in the record of the Patent Office with reference to claim 17 of the application then pending, which became claim 11 of this reissue patent. The statement then made was: "Applicant's conception is to use a plurality of standard units removably assembled one above the other in any desired combination."
In the disclosure of the patent, the means of engagement between the horizontals to fit and align the horizontals of adjacent panels is a separate member. This appears in the drawing of the patent as receiving the abutting channels of abutting horizontals. The later construction does not show any separate member, but the horizontals of the panels contact each other directly. The defendants' construction does not make use of any separate part, and the alignment between abutting horizontals is by means of edgewise extensions of one horizontal overlapping the abutting horizontal along the outer face. These facts, broadly considered, correspond to the means specified in claim 11, and, if this was the only limitation upon such means for aligning the horizontals, there would seem to be a similarity in function between the two constructions. However, this claim states that the horizontals are generally channel shaped, and if the channel shape is to have a function, it must be in connection with the aligning means set forth in the claim. The result obtained is not sufficient to prove identity or equivalency. The flanges of one horizontal of defendants' construction, which overlap the abutting horizontal, are independent of the existence or nonexistence of the channel in the abutting faces of the panel. It therefore does not appear that the defendants' construction for aligning the abutting horizontals of the panels is the mechanical equivalent of the structure set forth in the claim.
Further, the record does not indicate that the defendants' construction employs more than two panels abutting one another between any two parallel posts. One of these panels is a relatively long panel having a relatively wide horizontal at its lower edge. If such a panel was placed at the top of the opening between two adjacent posts, and the smaller panel disposed between the same posts but below and abutting the larger panel, interchangeability of panels would be had, but it would show an unsightly construction and no material utility or commercial value. This claim should not be so construed as to cover such an impractical arrangement. It is my conclusion that claim 11 is not infringed by defendants' construction.
Claim 12 relates to plurality of panels. It is more specific than claim 11. It purports to cover a removably assembled member extending from support member to support member, lapping and fitting and aligning the horizontals of adjacent panels. There does not appear to be any corresponding part in defendants' construction. Plaintiff's contention that this removably assembled member is the cornice piece in both constructions is not warranted, since the cornice members do not perform the same function and combination that the removable member of plaintiff's construction performs. It does not seem that the cornice is the mechanical equivalent of the aforesaid member. The cornice members which plaintiff claims are the equivalent of the coupling member, as it appears to me, are not fitted between adjacent upright posts, but across said posts, and therefore do not function to unite abutting panels in the manner contemplated by the patentee as disclosed in the record in the Patent Office.
Claim 14 purports to cover a cornice member between the uprights. It recites that such member has on its lower face an abutment acting as a stop to engage the section member beneath. This construction is found in the Dahlstrom Metallic Door Company partition in Guardian building at Cleveland, Ohio, placed in 1916. Plaintiff claims that the cornice member of the Dahlstrom construction is not an upper connection for the uprights, but that the cornice member is connected to the panel sections. The uprights in the Dahlstrom installation extend into the channel of the lower face of the cornice member. The cornice member acts as an upper connection for the uprights. The claim does not specify any particular connection, and should be interpreted to include the panel section beneath the cornice member as a part of the means by which the cornice member connects the uprights.This construction is also found in the Klein patent, No. 1,241,635, and similar reasoning applies. Claim 14, it is noted, refers to upturned and horizontal flanges. These seem to be details which have no function or utility in the particular combination. Dahlstrom and Klein appear, also, to have this flange feature. In the Klein patent the cornice member may properly be considered as including member 8, shown particularly in figure 2 of the Klein patent. Slight skill of the average mechanic familiar with this art would be sufficient to modify the Dahlstrom and Klein constructions, if there were any occasion to cite differences pointed out by the plaintiff. The basis for this claim appears to be found in the Hauserman-Lasser patent, and the description therein is very meager and incomplete. It is apparent the patentees did not consider the horizontal flanges of any importance as a part of the invention originally covered by the patent before reissue. So far as I can find, neither the description of the invention nor the claims of the original patent before reissue show any features of claim 14 of the reissue. If this claim 14 is to be distinguished from Dahlstrom and Klein by details which require the exercise of inventive faculties to create, the claim would apparently cover new matter. A reissue must be for the same invention. An original patent must show an intention to secure the invention claimed in the reissue, and the patentee is not entitled to claim in a reissue patent any feature of the device that was not described in the original patent as a part of the invention, although it might be incidentally shown or indicated in the drawings. Mere disclosure in a drawing is not sufficient indication of an intention to claim that disclosure. It is my conclusion that claim 14 does not involve any patentable difference over the Dahlstrom installation or Klein patent. If the claim is construed as different patentably from those constructions, then it would seem to be invalid, because it covers new matter not included in the original patent.
Claim 15 is different from claim 14 only in referring to inturned flanges instead of horizontal flanges. There does not seem to be any material difference in the two claims, and my conclusion as to claim 15 is the same as to claim 14.
Claim 17, in substance, covers a plan of connecting a plurality of uprights with a cornice member of generally channel shape with outstanding flanges and with a bridge connection joining such flanges. In the aforesaid Dahlstrom construction in the Guardian building at Cleveland, is found this kind of a cornice member and with like bridge connections. What has been said with reference to cornice member in claim 14 applies here. The cornice member in effect forms an upper connection for the uprights, and the panel sections may properly be considered as a part of the connecting means. A like statement may be made as regards the Klein patent, No. 1,241,635. It therefore seems to me that claim 17 does not show a patentable improvement over such Dahlstrom partition or over the Klein patent.
Claim 19 relates to a post of tubular construction, with clips securing flanges aligned to leave an opening between the flanges and a horizontal member of generally channel shape, with an abutment engaging section members forming an upper connection for the posts in the uprights. The limitation in the shape does not enter into the accomplishment of any unitary purpose or function. Any novelty appears in the construction of the uprights. That construction, also, is shown in the aforesaid Dahlstrom partition.
The reissue claim seems to show material departure from the disclosure in the original patent. A review of the record in the Patent Office shows that the purpose of patentee's claim was to have an opening in the face of the post to enable access. This purpose was not shown in connection with the disclosure of the original patent, and the drawings indicate that no such construction was contemplated. It seems, therefore, to be a departure from the original invention, and for this reason is invalid. Even if this were not the fact, the construction of these upright posts is so different from that of the Wright partition that the defendants' construction does not infringe it. Defendants' construction is not the same as, nor the mechanical equivalent of, the post disclosed by the patent. Plaintiff's witness Balch testified that the defendants do not make any posts similar to figure shown in the reissue patent; that the post of the claim does not correspond with the post of Plaintiff's Exhibit 3; and that the post of defendants' structure does not correspond with the post of this claim. I hold defendants' construction does not infringe claim 19.
II. Patent No. 1,856,995 Issued May 3, 1932. Divided From Original Application Filed September 7, 1926.
Claim 1 covers upright supporting elements or posts of generally channel form with spaced ties connecting flanges of the channels without obstructing access to the opening between the flanges and forming symmetrical hollow posts with uniform longitudinal recesses on all sides and a plurality of panel units in a vertical assembly between such posts. A face member is inferentially included, since the post as described is a hollow symmetrical post with longitudinal recesses. The claim should be construed with this in mind.
Defendants claim their construction does not use "a plurality of panel units in removable vertical assembly." This contention cannot be sustained. The Wright catalog (Exhibit 18, pages 8 and 9), clearly shows members corresponding to panel units removable and in vertical assembly between the uprights. Defendants admit this construction in their statement that: "A sash member * * * is used in certain instances to increase the height of the partition." The claim does not recite interchangeability nor method of removability. The Hale and Kilburn installation in the Parkway building in Philadelphia, Pa., is not an anticipation. The uprights do not compare in several respects with those called for in the patent claim. Assuming the uprights are of generally channel form, they have no spaced ties connecting opposed flanges. The parts indicated by defendant to be the equivalent of spaced ties, bridging the flanges, of themselves constitute the flanges and do not connect the flanges. The Mills partition in the Studebaker building has no "symmetrical hollow post having longitudinal recesses on all four sides." The Mills partition of the Tidewater Sales building type shows longitudinal recesses on two sides. While the claim does not recite that the panel units may co-operate with all of the channels in the posts, the specification points out this purpose in the construction. A function for each recess is therefore specified. The Mills installations therefore cannot be regarded as anticipations. The claim is infringed.
Claim 5 relates to the connection between abutting horizontals of abutting panel sections and recites that the horizontals of the panel sections are connected by intermediate generally channel-shaped horizontal members having means for alignment. The construction shown in defendants' catalogs issued prior to May, 1932, reads within this claim. There is no proof that defendants sold any construction of that type. In defendants' catalog issued in May, 1932, another type of construction, so far as it relates to this claim, is described. It is defendants' contention that this is the only type being sold or offered for sale by them. I do not see how it can be held that this construction reads within the claim. The channel-shaped horizontals of the panel sections of the plaintiff's construction are important, particularly with respect to the inturned flanges thereon, because plaintiff utilizes that construction, as shown in the bottom portion of figure 12 of this patent, in fitting adjacent superposed panels, and it utilizes the same horizontal members of the panels at opposite sides of the cornice member, thereby making a universally interchangeable construction. The filler block at the top of the defendants' construction does not have a horizontal member of generally channel shape with edges rebent inwardly to form inturned flanges, and therefore that construction does not correspond to the expressly stated limitations in this claim. If it be assumed that such expressly stated limitations are immaterial in this combination and that a horizontal member of any shape and construction is the equivalent of this expressly defined horizontal of the plaintiff's device, then the claim would appear to read directly upon the prior art such as the Klein patent, where panel sections abut grooves in the upper and lower faces of a cornice member. It is important, therefore, that these expressly recited limitations be interpreted as shown in the patent if this claim is to be patentable, and when so construed the claim does not cover the defendants' construction, as described in its catalog issued in May, 1932.
Claim 12, like claim 1, relates to cornice, post, and panel assembly. It describes the panel members as having generally channel-shaped horizontals, such panels being removably and interchangeably assembled, and a cornice member with a continuous and uninterrupted recess in its lower side extending over the tops of the uprights and engaging the panels. It also describes the horizontals of the panels as being adapted to interfit with adjoining panels or said cornice recess interchangeably. The defendants' construction as advertised and sold since May, 1932, reads within this claim where an installation involving several panels is used below the cornice. Defendants' catalog shows panels below the cornice adapted to interfit with adjoining panels and the cornice recess interchangeably. Within the reasonable interpretation of this claim, defendants' structure has a recess in the lower side of the cornice continuing without interruption and extending over the tops of the uprights and engaging the panels. This claim, therefore, is infringed. The Hale and Kilburn construction cannot be regarded as an anticipation, because the horizontals of the panels were not adapted to interfit with adjoining panels; a rail having been provided as a means of fitting adjoining panels together. Nor do either of the Mills partitions introduced anticipate the patent. The installation in the Studebaker building does not show a ...