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January 24, 1944


The opinion of the court was delivered by: CAMPBELL

CAMPBELL, District Judge.

This action is brought by plaintiff to recover from defendants for the alleged infringement of Patent No. 1,940,847 issued by the United States Patent Office to Harold L. Danziger for Apparatus for Winding Coil Condensers, dated December 26, 1933, on an application filed May 10, 1926, and for an injunction.

The defendants interposed an answer alleging the defenses of invalidity and non-infringement.

 The ownership of the patent and the giving of the notice required before the commencement of the action are conceded.

 Plaintiff is a wholly owned subsidiary of Cornell Dubilier Corporation. These companies, and the corporate defendant, are all engaged in the manufacture of condensers.

 Both defendants reside in this district and jurisdiction is admitted.

 The defendant Alexander P. Hirsch is the president of the corporate defendant Micamold Radio Corporation, owns some stock, and votes other stock of a number of members of his family.

 I shall hereinafter, for convenience, in this opinion describe the corporate defendant as defendant, and where the individual defendant is in question describe him either by name or as the individual defendant.

 Plaintiff bases its action upon two groups of claims of the said patent, to wit: claims 1 to 3, both inclusive, and claims 9 to 12, both inclusive.

 Claim 1 of the first group, which is fairly representative of the 1 to 3 group, reads as follows: "1. In a condenser winding machine, a supply of paper, a supply of metallic foil, a rotatable arbor on which the paper and foil are adapted to be wound, means for severing the foil and paper, means driven in timed relationship with the arbor, and means controlled by the last-mentioned means for causing the operation of said severing means to sever the foil prior to the severance of the paper."

 Claim 2 differs from claim 1 in using the word "adjustable" in claim 2 with reference to the "means driven in timed relation with the arbor,".

 Claim 3 likewise differs from claim 1 in stating in claim 3 that the parts driven in timed relation with the arbor are adjustable.

 Claim 9 of the second group, which is fairly representative of the 9 to 12 group, reads as follows: "9. In apparatus for winding a continuous strip upon a mandrel, means for exerting a continuous pull upon the strip in the direction of the mandrel, means for cutting said strip during the winding thereof after a predetermined length thereof has been wound, and means operable in timed relation to the cutting means for momentarily increasing the tension of the strip."

 All of the claims of that group relate to the combination of elements which operate to increase tension during the cutting operation, the differences being in the language by which the elements of the combination are described. Claims 9 and 10 recite in broader terms, and dominate claims 11 and 12 in which the mechanical combinations are more specifically claimed.

 This patent relates to the art of manufacturing condenser bodies made of paper and metal foil. It is an old art, and consists in the winding together of very thin and fragile foil and paper strips to form a composite compact foil and paper condenser made up of two foil strips surrounded and insulated from each other by paper strips.

 In the preparation of the condenser it is important that at least one foil strip be shorter than the paper strip.

 The claims in suit are to a new combination of mechanical means, each of which means co-operates in the production of new and novel results in condenser winding machines.

 The mechanical elements and means used in the combination were all old, well known, and in common use, but the patentee, Danziger, was the first to incorporate them in a new mechanical combination in the condenser winding art, thereby producing new and useful results. Such combinations are patentable. Hailes v. Van Wormer, 87 U.S. 353, 22 L. Ed. 241; Grinnell Washing Mach. Co. v. E.E. Johnson Co., 247 U.S. 426, 432, 38 S. Ct. 547, 62 L. Ed. 1196.

 The patent in suit is not a pioneer, and therefore is not entitled to the wide range of equivalents accorded to such a patent, but is entitled to such a range of equivalents as will protect the invention of the patent in suit.

 The problem which confronted the patentee of the patent in suit was to construct an automatic machine which would overcome the dependence on the operator of the hand operated machine, which were the only ones in use prior to his invention, to relieve from the consequent errors of the operator in hand operation, to relieve the damage caused by undesirable grit and moisture on the hands of the operator of the hand operated machine, to produce condensers of a uniform capacity (electrical characteristics) and to properly insulate the foil.

 The machine of the patent in suit had considerable commercial success and that is to be considered if there should be a doubt on the question of invention.

 The defendants, in support of their defense of invalidity, offered the British Patent to Siemens and the United States Patent to Jones, and the United States Patent to Parrish, but three patents, which they allege are prior art, and anticipate the patent in suit.

 Not only has the patent in suit presumption of validity of a granted patent but, that presumption is strengthened by the fact that the said patents presented here as the most pertinent prior art were, with the exception of the patent to Parrish, considered by the Patent Office, and the patent in suit was issued over them. Otis Elevator Co. v. 570 Bldg. Corporation, 2 Cir., 98 F.2d 699, 702; Ensign Carburetor Co. v. Zenith-Detroit Corporation, 2 Cir., 36 F.2d 684, 686.

 The presumption, it seems to me, is strengthened by the controversy in the Patent Office, and the allowance of the patent thereafter. Celanese Corporation of America v. Essley Shirt Co., 2 Cir., 98 F.2d 895, 896.

 I entirely disagree with the defendant's construction of the alleged prior art patents, and find with reference to them as follows:

 British patent to Siemens Brothers & Company, Limited, No. 13,682 of A.D.1905, for "Method and Apparatus for the Manufacture of Electrical Condensers" accepted October 12th, 1905.

 The machine of that patent is almost completely hand-operated. Strips of foil and paper are applied to a mandrel j from supply rolls, which may be operated either by hand or power. The foil rolls are manually operated by a handle o, at certain times during the machines operation.That patent does not show any paper cutting means.

 The British patent to Siemens does not show, so far as I can observe, the specific combinations of the claims of the patent in suit, on which plaintiff relies. That Siemens patent shows a machine which has all the disadvantages of the hand winding machine, of the prior art, which it really is.

 The machine of that Siemens patent was seen in operation by the plaintiff's expert witness Van Deventer in the plant of the owners thereof in 1910, and in 1918. At those times it was operated without a foil cutter, for the reason that the cutter shown in that patent did not work, and did not have the levers O and Z shown in Fig. 4.

 Of course it was what was disclosed by the patent, not the machine, that we must consider, but it would appear quite significant that its owners did not follow the disclosures of that patent.

 That, however, is not of much weight, but, I am impressed by the fact that the Siemens patent was accepted October 12th, 1905, and with the desire there was for an automatic condenser winder, the Siemens patent was not availed of, and there was no satisfactory automatic condenser winder on the market until Danziger, the patentee ...

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