Antici v. KBH Corp.

324 F. Supp. 236, 168 U.S.P.Q. (BNA) 745, 1971 U.S. Dist. LEXIS 14752
CourtDistrict Court, N.D. Mississippi
DecidedFebruary 4, 1971
DocketNo. DC 6941-K
StatusPublished
Cited by4 cases

This text of 324 F. Supp. 236 (Antici v. KBH Corp.) is published on Counsel Stack Legal Research, covering District Court, N.D. Mississippi primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Antici v. KBH Corp., 324 F. Supp. 236, 168 U.S.P.Q. (BNA) 745, 1971 U.S. Dist. LEXIS 14752 (N.D. Miss. 1971).

Opinion

MEMORANDUM OPINION

KEADY, Chief Judge.

This is a patent infringement suit brought by Marino Antici (Antici) against The KBH Corporation (KBH) in which Antici asserts that U. S. Patent No. 3,140,881, owned by him, has been infringed by KBH and its predecessor, Gotcher Engineering & Manufacturing Company, Inc. (Gotcher), after notice of claim of infringement, by their continued making, using and selling trailer hitches covered by said patent. Denying infringement, KBH challenges the validity of the patent-in-suit on various alternative grounds.

By pre-trial order the court reserved the matter of accounting and damages and confined the initial evidentiary hearing to questions of patent validity and infringement. After full evidentiary hearing on those issues and submission of memorandum briefs, the matter is now ripe for decision. For reasons that follow, we conclude that the patent is both valid and infringed upon.

In early November 1960 Antici, who was accustomed to operating farm vehicles, conceived the idea of an automatic latching, spring-loaded trailer hitch for mounting on the rear bumper of a towing vehicle. After building such device Antici tested it and found that it operated satisfactorily. At Antici’s direction photographs were taken and drawing made of the device. With delay he consulted and engaged an attorney at Memphis, Tennessee, to make a patentability search and, upon receiving favorable report, filed an application for patent on March 31, 1961. Claims 1-4 were in the original patent application; and a continuation-in-part application, which was filed by him on March 27, 1962, added claims 5-9. On July 14, 1964, the U. S. Patent Office issued Letters Patent on the patent-in-suit to Antici who was then and still is the owner.

Shortly after he invented the trailer hitch device, plaintiff disclosed it to Robert Hunsucker, a KBH employee, who made drawings from his description. KBH actually made a similar bumper hitch on the basis of Hunsucker’s information. This particular device, which was wholly derived from Antici’s idea and made without his knowledge or consent, was experimental and, in January, 1961, sold to a customer. Neither KBH nor Hunsucker undertook to manufacture additional hitches and despite an initial inquiry to patent attorneys, they made no effort to procure a patent.

On August 31, 1964, Antici entered into a license agreement with Gotcher, whereby the latter made and sold bumper trailer hitches covered by the patent. The original design of patented trailer hitch, designated as BX-3, was during 1966 changed to a design referred to as BX-4. This change in design was for the purpose of efficiency and economy. Gotcher continued to pay to Antici the stipulated royalties on its BX-4 series and, in fact, published literature showing thereon the patent number of the patent-in-suit. Gotcher paid to Antici royalties as required by the license agreement on all trailer hitches through the first quarter of 1967. By that time Gotcher was experiencing financial difficulties and fell in arrears in its pay[238]*238ments. Thereupon, Antici cancelled the license agreement with Gotcher because of the arrearage; the cancellation became effective September 22,1967.

Notwithstanding this cancellation Gotcher continued to make bumper trailer hitches of its BX-4 series. In February 1969 Gotcher merged with KBH. After the merger KBH continued to make and sell trailer hitches of the BX-4 design despite the fact that both it and Gotcher received notice from Antici that they were infringing upon his patent. Defendant has had notice of the patent-in-suit since the date of its issue and continues to make and sell bumper trailer hitches of the BX-4 design.

I. THE VALIDITY OF THE PATENT

We consider first the alleged invalidity of the patent-in-suit, noting that by statute a patent is presumed valid, and the burden of establishing invalidity rests always on the party asserting it.1

To be worthy of the limited, private monopoly which is a patent, an invention must satisfy three criteria established by statutes and case law: (1) utility, (2) novelty, and (3) nonobviousness.2 There being no dispute as to the utility of the Antici trailer hitch, whose fore and aft and horizontal adjustments, shock-absorbing springs, and automatic relatching features are extremely useful in attaching trailers to towing vehicles, we consider whether the hitch was “novel” within the strictures of the statutes and case law. 35 U.S.C. § 102 3 dictates that an invention is not novel or new in the public knowledge and, therefore, not patentable if it was known or used by others more than one year prior to the filing of the patentee’s application, and the cases hold that even a single prior public use, or only a placing on sale, is sufficient to invalidate a patent under § 102(b). 4 Although prior public use must be proved at least by clear and convincing evidence, once a prima facie case of prior public use has been made, the burden of going forward with the evidence shifts to plaintiff, who then must show that the use was an experimental, restricted one; if the pat[239]*239entee fails to make such a showing, the invention is deemed to have been dedicated to the public, and is, therefore, unpatentable.5

In the case sub judice KBH charged in its answer that Antici abandoned his invention and allowed it to become public knowledge, thereby precluding its patentability under § 102. The evidence failed to sustain this contention. The testimony of KBH’s witnesses was that its former employee, Hunsucker, who is now deceased, actually made one experimental hitch (Ex. 28), which was substantially identical in structure and operation to the patent-in-suit, and in January 1961 KBH sold it to a local customer, Gibson. We reject the suggestion that Hunsucker might have invented the device, and are convinced from the weight of the evidence that Antici invented the device, and although he revealed his secret invention to Hunsucker, he did not intend to abandon it, and in fact filed his original patent application containing all of the material patent claims on March 31, 1961, only about four months after conceiving the invention and revealing it to Hunsucker. Although Antici styled his second application a continuation-in-part-application, the second filing, despite its nomenclature, did not put forward any claims materially different from those disclosed in the original application. We note that the second application only made certain language changes not affecting the meaning of the prior application and did not materially broaden the scope of the original claims. Consequently the filing date of the parent application controls.6 Therefore, any prior public use occurred very shortly before the filing of application, and the one-year requirement of § 102 was thus avoided, and KBH's first attack on the patent-in-suit must fail.

Next, defendant vigorously contends that Antici’s patent is invalid because each and every substantial part thereof was anticipated by the prior art. The evidence showed that many separate elements of the Antici hitch appeared in the prior art in one form or another well before plaintiff’s application was filed. Antici contends that the novelty of his invention lies in the new and unique combination of the elements used to reach a different and better result.

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Bluebook (online)
324 F. Supp. 236, 168 U.S.P.Q. (BNA) 745, 1971 U.S. Dist. LEXIS 14752, Counsel Stack Legal Research, https://law.counselstack.com/opinion/antici-v-kbh-corp-msnd-1971.