The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit in Equity for the alleged infringement of Patent No. 2,095,223 issued to Abe O. Samuels, Assignor to Samson-United Corporation for Fan, granted October 5th, 1937, on an application filed October 2nd, 1935.
The defendant, Sears, Roebuck & Co. Inc., is only a nominal defendant, the real defendant being the Excell Auto Radiator Company, the manufacturer of the accused article, which has taken over the defense of the suit.
The act charged to constitute the infringement was the sale of an automobile fan (Exhibit 3) by the Sears, Roebuck branch store in Jackson Heights, Long Island, New York.
The plaintiff is a corporation existing under and by virtue of the laws of the State of Delaware, with its principal place of business at Rochester, New York.
The defendant, Sears, Roebuck & Co., Inc., is a corporation organized and existing under and by virtue of the laws of the State of New York, with its principal place of business at Chicago, Illinois, and with a regular and established place of business at 84-02 Roosevelt Ave., Jackson Heights, L.I.N.Y., within the Eastern District of New York.
The subject matter of the Patent is an electric fan with soft rubber blades instead of metal or rigid blades. It is manufactured for home and office use, as well as for use in automobiles.
The advantages claimed for the rubber fan are its safety and quietness, which, it is contended, are obtained without in any way sacrificing its ability to create a current of air.
The fan has met with public acceptance and commercial success.
The fans manufactured by plaintiff were put on the market in 1936, before the Patent issued.
Up to that time plaintiff had not been in the business of manufacturing fans, but had been in the business of manufacturing toasters, flat irons, waffle irons, food mixers and other household electrical utensils.
It was due to the alleged invention of the rubber-bladed fan that plaintiff entered into the fan business. Only one type of fan, that of the 10 inch stationary fan for home and office use, was offered by plaintiff for sale, when it entered the market in 1936.
Plaintiff has a score of competitors making fans of many different styles, shapes and prices. Among them were the large representative Electric Companies, but in spite of this, the sales of the plaintiff, during the Summer of 1936, of the rubber-bladed fan, were very large.
Plaintiff also brought out the automobile fan for the 1936 and 1937 Winter trade, and sold all that it could make, and could have sold many more, if it had the facilities to manufacture them. By the 1937-1938 season, the metal-bladed automobile fan had practically disappeared from the market.
During the first season the plaintiff had the rubber-bladed fan field to itself. In the second season it met with competition, on the part of eight or ten manufacturers, but when the patent came out, eight of these manufacturers took licenses under the Patent. The maker of the alleged infringing fan and two others have not taken out licenses.
The invention of the Patent in suit is described by the Patentee in the specification, as follows:
"This invention relates to fans for producing air currents and has for its principal object to provide such a fan with flexible fan blades of suitable material and shape to give the blades stability for an efficient operation of the fan combined with sufficient flexibility to cause any portion of the moving blades to yield when a stationary rigid or semi-rigid member is brought in contact with them, and to be self-restoring to normal position when the intruded member is withdrawn.
"Another object of this invention is to so construct and mount the blades of the fan that a temporary deflection of a portion of the fan blades will not prevent the fan from operating to produce a movement of air.
"A further object of this invention is to construct the fan with flexible material which may have suitable ballast incorporated therein to properly balance the fan blades and provide a steady operation of the fan.
"A further object of this invention is to provide the fan blades with novel fastening means and a novel mode of mounting to provide for a quick and efficient attachment of the blades to the rotating member in a normally radial position thereto.
"A still further object of my invention is to provide a fan which is almost entirely noiseless in operation." (Page 1, lines 19 to 48.)
The fan, as described by the Patentee, embodies a structure, which provides substantial air resistance or the so-called axial trust, and at the same time allows the blade to deform, if it strikes accidently an obstacle such as a hand, which comes in contact with the edge of the blade.
Further, it seems to me, that the Patent requires, and the fan embodies, a blade structure that may be bent over by striking against some object, without being permanently bent or broken, which will return immediately to its normal position, as soon as the deforming force has been removed. Both the patented fan and the ordinary metal-bladed electric fan operate as does a screw propeller to produce a beam of air which is sent out into the room in the direction of the axis of rotation of the fan.
The mere change from metal blades to rubber blades, would not be invention, because that would be a mere substitution of material, but where, by reason of other changes, which produced a new article, then there would be something more than a mere substitution of material, which might constitute invention.
All of the claims of the Patent in suit, with the exception of claims, 11, 12, 16 and 17, formed the basis of the present action, and plaintiff, by its brief, also withdraws claims 14 and 15, which leaves for consideration, claims 1 to 10 inclusive, and 13 and 18.
Claims 1, 2, 3, 10 and 13 are typical of the 12 claims upon which plaintiff now relies.
Claim 1 reads as follows: "A fan comprising a hub with radially projecting blades carried thereby, said blades being formed at their outer portions of material sufficiently flexible to bend readily without permanent distortion, and the inner end portions of said blades being of a construction and configuration such that said blades are sufficiently ...