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Cover v. Schwartz.

December 17, 1942

COVER
v.
SCHWARTZ.



Appeal from the District Court of the United States for the Southern District of New York.

Author: Frank

Before L. HAND, CLARK, and FRANK, Circuit Judges.

FRANK, Circuit Judge.

All three patents are concerned with a respiratory mask for miners, the purpose of which is to protect the wearer against dust and poisonous gases.

1. Patent No. 2,065,304. The lower court held this patent invalid for lack of invention, finding as a fact that a prior patent, No. 2,019,918, issued on November 5, 1935 to Punton, showed "substantially the same arrangement, and what differences there are, are merely the result of mechanical skill." We agree.

The constituent elements of the Punton mask were a face-piece, covering the nose and mouth, an exhaust valve, and two filter units, attached to the face-piece.The filter units were a pair of cylindrical casings, each consisting of a base and side wall, a metal cover, and a circular paper filter supported around its edge between the cover and the wall of the casing. The cover, which screwed on to the side wall, was perforated to permit the ingress of unfiltered air to the filter. This was the state of the prior art when, on January 9, 1936, appellant filed an application for the patent in issue, No. 2,065,304.

Essentially, all that appellant has done is to remove the necessity for a perforated cover.*fn1 When on oral argument, appellant's counsel was asked whether appellant had done any more, he could not deny that appellant had not. Cover's removal of the cover was no more than an act of mechanical skill. The man who first found out that it is unnecessary to burn down a house to roast a pig was perhaps a genius. But the discovery that certain parts of a process or device are useless is not necessarily evidence of invention. The discovery may involve no more than the ordinary skill of the art and that we think to be the case here. Cf. Cuno Corp. v. Automatic Service Corp., 314 U.S. 84, 91, 62 S. Ct. 37, 86 L. Ed. 58. Someone has to be the first to hit upon an idea, even if it involves no more than such skill. In Buchanan v. Wyeth H. & M. Co., 8 Cir., 47 F.2d 704, 712, the court said: "It seems that no one did discover this exact use for the locknut in combination with other elements up to Buchanan's time, but some one had to think of it first, even if it constituted merely mechanical skill. The fact that Buchanan was the first so to think bears on the question of invention, but is not at all decisive."

Appellant advances the "long-felt want" argument. But it has often been held that commercial and that it is only held that commercial success is a relatively poor test of invention and that it is only when invention is in considerable doubt, as it is not here, that that factor has any significance. See, e.g., Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474, 55 S. Ct. 449, 79 L. Ed. 997; DeForest Radio Co. v. General Electric Co., 283 U.S. 664, 685, 51 S. Ct. 563, 75 L. Ed. 1339; Textile Machine Works v. Louis Hirsch Textile Machines, 302 U.S. 490, 58 S. Ct. 291, 82 L. Ed. 382.

2. Patent No. 2,120,230. This is a patent for a twin-filter respirator in the form of a transverse wedge, with a foldable rubber body. The prior art discloses that a British patent on a twin-filter device had been previously issued. See Goeke's British Patent No. 323,16 Appellant simply added the characteristic of foldability to Goeke's patent. But a foldable respiratory mask was already part of the prior art, for appellee had previously obtained such a patent on January 21, 1919. Certainly, thus to combine two ideas, both part of the prior art, was not invention. Cuno Corp. v. Automatic Service Corp., supra; Cf. Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 355, 356, 59 S. Ct. 897, 83 L. Ed. 1334; Powers-Kennedy Contracting Corp. et al. v. Concrete Mixing & Conveying Co., 282 U.S. 175, 51 S. Ct. 95, 75 L. Ed. 278.

3. Patent No. 2,000,064. The appeal as to this patent must be dismissed for the following reasons: In his pleadings in the trial court, appellant alleged that appellee had infringed and still is infringing the patent and "will continue to do so unless enjoined by this court." He made no alternative allegation to the effect that, while appellee had not yet infringed, he was threatening to do so in the future. He alleged a past and continuing infringement.

The trial court denied appellant relief as to this patent on the ground that it was invalid; the findings and judgment of the trial court are based solely on that ground. The trial court, however, in its memorandum opinion, did indicate that the patent was not infringed.

Appellee filed a counterclaim setting up certain of his own patents which, he alleged, appellant was infringing. The trial court dismissed this counterclaim on the specific ground that appellee's patents were invalid.From this judgment appellee did not appeal. Accordingly, this court, by order, directed that the counterclaim be excluded from the printed record on appeal.

In appellant's statement of points relied upon in this appeal, he stated that the trial court erred in finding and adjudging that the patent was invalid and in failing to find and adjudge that the patent was valid and infringed. However, in his brief filed in this court on this appeal, he stated that "appellant does not challenge that part of the judgment which holds the claims not infringed. Appellant challenges only the holding of invalidity of the claims involved." This language can mean only that appellant has abandoned any contention that appellee has infringed or is infringing his patent. His position now is that, although there is an absence of any past, present or threatened future infringement, he is entitled to have this court determine that the judgment of the trial court as to invalidity was in error.

In other words, appellant is stating that he is asking no relief against anybody before the court (or so far as we know against anyone else), that there is no real dispute, no case or controversy, but that he wants an advisory opinion that his patent is valid. Of course, no federal court can constitutionally give an advisory opinion, since the Constitution confers jurisdiction on federal courts only where there exists a case or controversy. It is suggested that the words "cases" and ...


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