Blanchard v. J. L. Pinkerton, Inc.

77 F. Supp. 861, 78 U.S.P.Q. (BNA) 179, 1948 U.S. Dist. LEXIS 2766
CourtDistrict Court, S.D. California
DecidedMay 13, 1948
DocketNo. 7734
StatusPublished
Cited by4 cases

This text of 77 F. Supp. 861 (Blanchard v. J. L. Pinkerton, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Blanchard v. J. L. Pinkerton, Inc., 77 F. Supp. 861, 78 U.S.P.Q. (BNA) 179, 1948 U.S. Dist. LEXIS 2766 (S.D. Cal. 1948).

Opinion

YANKWICH, District Judge.

The above-entitled cause heretofore tried, argued, and submitted, is now decided as follows:

(A) As to the complaint, judgment will be for the defendants that plaintiff take nothing by his Complaint against the defendants or either of them.
(B) As to the counterclaim, judgment and declaration will be entered as follows: (1) That the patent covered by U.S. Letters Patent No. 2199611, issued on May 7, 1940, and patent covered by U.S. Letters Patent No. 2233395, issued on May 4, 1941, are, and each of them is valid; and (2) that none of the claims are, or were, infringed by the devices made, used or sold by the defendants, or either of them, prior to the filing of the Complaint.
(C) The defendants are allowed their costs and disbursements herein, but no attorney’s fees.

Comment

By the complaint, the plaintiff seeks injunction, profits and damages by reason of alleged infringement of the claims of the devices covered by the two patents just referred to. Neither structure is of great complexity. The actual trial of the case consumed less than three days. In addition to trial memoranda, exhaustive briefs have been filed, covering a total of 270 pages, with plaintiff’s opening and closing briefs filling 189 pages. They have received full consideration.

The decision announced states the Court’s ultimate conclusions upon the issues presented by the pleadings. In what follows will be indicated, in greater detail, some of the legal bases for the conclusions.

As this is not a full-length opinion, I shall not undertake to discuss in detail all the legal principles urged by the parties to this action. Our aim is merely to indicate, as a guide to counsel in the preparation of findings, some of the legal and factual foundations which underlie the decisions.

I. I.etters Patent No. 2233395

A. Much of the argument, in so far as it relates to this patent, expounds accepted norms, such as that a pioneer patent is entitled to a broad interpretation of its claims. We have no quarrel with this principle. The specifications designate the scope of the patent: “This invention relates to improvements in safety devices for boilers.”

When dealing with an improvement patent, the structure claimed must be considered in the light of the prior art as it relates to devices in the same field, which, in this case are “safety devices for boilers.” The claims must be limited to the “improvements.” The specifications may be [863]*863resorted to in order to resolve ambiguities. They may limit, but they cannot enlarge, the claims.

But in the last analysis, if there be infringement, it is the claims that are infringed and not the specifications. And when we are dealing with an “improvement” of a structure which existed before, the patentee is entitled only “to the precise devices described and claimed in his patent.” Boyd v. Janesville Hay-Tool Co., 1894, 158 U.S. 260, 267, 15 S.Ct. 837, 840, 39 L.Ed. 973. And see, McClain v. Ortmayer, 1891, 141 U.S. 419, 425, 12 S.Ct. 76, 35 L.Ed. 800; Pacific States Electric Co. v. Wright, 9 Cir., 1922, 277 F. 756; Keystone Driller Co. v. Northwest Engineering Corp., 1935, 294 U.S. 42, 55 S.Ct. 262, 79 L.Ed. 747; Paraffine Cos. v. McEverlast, Inc., 9 Cir., 1936, 84 F.2d 335; H. Brinton Co. v. Mishcon, 2 Cir., 1937, 93 F.2d 445, 448; Williams Mfg. Co. v. United Shoe Machinery Corp., 1942, 316 U.S. 364, 368, 369, 62 S.Ct. 1179, 86 L.Ed. 1537.

There is another important consideration. A greater liberality of interpretation of claims obtains, and a greater range of equivalents is allowed, when we are dealing with a patent which has been reduced to practice successfully than when we are dealing with what we call “paper” patents. See my opinion in Mantz v. Kersting, D.C.Cal.1939, 29 F.Supp. 706, 712. However, great commercial success, in itself, is not a criterion either in determining whether there was invention, or in arriving at its scope. McClain v. Ortmayer, 1891, 141 U.S. 419, 428, 12 S.Ct. 76, 35 L.Ed. 800; Klein v. City of Seattle, 9 Cir., 1896, 77 F. 200, 204; Grayson Heat Control v. Los Angeles etc. Co., 9 Cir., 1943, 134 F.2d 478, 481; Marconi Wireless Co. v. United States, 1943, 320 U.S. 1, 20, 63 S.Ct. 1393, 87 L.Ed. 1731.

“ ‘Amazing results’ do not in and of themselves indicate invention.” General Metals Powder Co. v. S. K. Wellman Co., 6 Cir., 1946, 157 F.2d 505, 509.

“Commercial success is only a make weight to be thrown info the scale when invention is in doubt.” Hanovia Chemical & Mfg. Co. v. David Buttrick Co., 1 Cir., 1942, 127 F.2d 888, 894. And see, Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 1937, 302 U.S. 490, 498, 499, 58 S.Ct. 291, 82 L.Ed. 382.

If the prior art which has been pressed upon the court as a ground for invalidity be considered in the light of these principles, it is evident that, while some of the elements contained in the patented structure are in the others, the claims here would not read upon any of the references or on the 'best references: Parker Patent No. 1965052, Sutherland Patent No. 1209355, Horridge Patent No. 930860, Spiller Patent No. 229644-, House Patent No. 521166, Baldwin Patent No. 716982. Some of the results achieved by the patent in suit are also obtained by the structures referred to. But, essentially, they are different in that they do not achieve the primary purpose of the present patent, which is automatic safety. Nor do they operate on the same principles. See Los Alamitos Sugar Co. v. Carroll, 9 Cir., 1909, 173 F. 280, 284. Thus taking the measure of the invention from the claims as described, but not enlarged, in the specifications and depicted and exemplified in the drawings, the claims are valid.

B. By the same token, however, none of the claims is infringed by the devices manufactured by the defendants. This conclusion applies equally to the 1932-1933 construction and installation and to the structures manufactured for general commercial use subsequent to that date. The use of the 1932 structure was not pleaded as a defense, and cannot be considered as anticipation. 35 U.S.C.A. § 69(5); and see, Electric Storage Battery Co. v. Shimadzu, 1939, 307 U.S. 5, 17, 59 S.Ct. 675, 83 L.Ed. 1071.

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77 F. Supp. 861, 78 U.S.P.Q. (BNA) 179, 1948 U.S. Dist. LEXIS 2766, Counsel Stack Legal Research, https://law.counselstack.com/opinion/blanchard-v-j-l-pinkerton-inc-casd-1948.