The opinion of the court was delivered by: INCH
The above suits have been duly consolidated for trial and will be disposed of by one decision.
By the first suit the plaintiff, Brown Instrument Company, a wholly owned subsidiary of the Minneapolis-Honeywell Regulator Company, has used the General Electric Company, alleging that the Shafer patent U.S. No. 1,583,496 owned by the General Electric Company interferes with the Phelan-Hotchkiss patent U.S. Re-issue No. 19,235 owned by the Brown Instrument Company, Title 35 U.S.C. Section 66, 35 U.S.C.A. § 66. A supplemental bill was later filed by the Brown Instrument Company alleging that the Shafer patent infringed the said Phelan-Hotchkiss patent. The General Electric Company duly denies any infringement and asserts that Shafer was the first inventor.
By the second suit the General Electric Company sues the Minneapolis-Honeywell Regulator Company for alleged infringement by it of the Shafer patent by reason of the Phelan-Hotchkiss patent. As to this suit the Minneapolis-Honeywell Regulator Company denies any such infringement and contends that Shafer was later than Phelan and further that if Shafer is found to be entitled to priority, nevertheless, there was a constructive abandonment by Shafer of his invention by reason that he allowed same to be in public use for more than two years before he applied for his patent, Title 35, U.S.C. § 31, 35 U.S.C.A. § 31, and finally that Shafer's invention is void by reason of having been anticipated in the prior art.
It will be seen, therefore, that some of these issues flow together such as that of alleged infringement and the invalidity.
But assuming that the claims of Shafer and Phelan-Hotchkiss cover the same invention, Morris v. Kempshall Mfg. Co., C.C., 20 F. 121, Nathan Mfg. Co. v. Craig, C.C., 49 F. 370, the first question necessary to be determined is that of priority.
For convenience the Brown Instrument Company will be referred to as Brown, the General Electric Company as G.E., the Minneapolis-Honeywell Regulator Company as Honeywell, the Shafer patent as Shafer, and the Phelan-Hotchkiss patent as Phelan.
Many material facts have been agreed on by due stipulation and pleading, such as the residence of the parties, the title to the two patents, the manufacture and sale by the G.E. of certain thermostats indicating infringement, if such is found to exist.
The claims of the Phelan re-issue sued on in this suit by Brown are Claims 30-31-32-33-35. The Shafer patent has twenty claims and the G.E. relies upon all except Claims 4-6-7-11-12-13.
Both Shafer and Phelan attempted to carry their dates back of the filing date. Phelan applied for the patent on December 23, 1922, patent was granted July 10, 1928, U.S. No. 1,676,921, but this patent is not in suit.
Phelan applied for a re-issue and this re-issue was granted July 10, 1934, U.S.R.E. 19,235. This re-issue patent is the one relied on by Brown by supplemental bill filed after receipt of the answer of G.E.
Shafer applied for his patent February 23, 1924, patent was granted May 4, 1926, U.S. No. 1,583,496.
It will be seen therefore that while Phelan applied for his original patent December 23, 1922, Shafer did not apply for his patent until February 23, 1924. Thus a period of about one year and two months elapsed after Phelan had applied before Shafer applied. On the other hand, Shafer obtained his patent May 4, 1926, while Phelan did not obtain his patent until July 10, 1928, so that Shafer received his patent approximately two years before Phelan did. Finally, Phelan did not apply for his re-issue patent, which, it is now claimed in this suit, is infringed by Shafer, until July 9, 1930, a period of over four years after Shafer had obtained his patent. These dates may or may not be material but they are intersting in view of this contest between inventors. The original patents were co-pending.
Shafer claims that he invented the subject matter of his patent and reduced it to practice November 24, 1921 (Thanksgiving Day).
Phelan claims that he conceived his idea during the summer of 1921. Sufficient has been shown to carry Phelan's date back to April, 1922. This however would not be enough for, if Shafer discovered his invention in February, 1921, he is the senior of Phelan by approximately six months. A considerable portion of the testimony taken was directed to this issue.
As Phelan first applied for his patent it was necessary for G.E. to convince the court by the clearest and most convincing evidence that though Shafer did not apply for his patent until some time after Phelan had applied, nevertheless, Shafer was in fact the real inventor and discoverer assumedly covered by both patents. Mygatt v. Schaffer, 2 Cir., 218 F. 827. The Barbed Wire Patent (Washburn & Moen Mfg. Co. v. Beat 'Em All Barbed-Wire Co.), 143 U.S. 275, 12 S. Ct. 443, 36 L. Ed. 154. This was done by Shafer producing before the court convincing witnesses and documents. The efforts of Brown to push the Phelan patent to a date earlier than Shafer was most uncertain and far from satisfactory. The proof offered by G.E. satisfies me beyond any doubt that the testimony as to what took place at the Shafer home on November 24, Thanksgiving Day, 1921, is true and it establishes, within the requirements for such proof, that Shafer was the first discoverer of the idea. This being so, Brown cannot succeed in defeating Shafer by means of the Phelan patent nor would Shafer infringe Phelan as claimed by Brown. Accordingly, both the original and supplemental bill of Brown must be dismissed with disbursements, but in view of the other suit, without costs. Submit findings.
This brings us to the suit by G.E. against Honeywell. The first question is that of alleged ...