E. J. Brooks Company v. Stoffel Seals Corporation

266 F.2d 841, 121 U.S.P.Q. (BNA) 333, 1959 U.S. App. LEXIS 5450

• Court: Court of Appeals for the Second Circuit
• Decided: May 4, 1959
• Docket: 25191_1
• Status: Published

Opinions

CLARK, Chief Judge.

This appeal is from a decision below, D.C.S.D.N.Y., 160 F.Supp. 581, rendered on defendant’s counterclaim holding plaintiff to have infringed defendant’s Ashton Patent No. 2,611,198 for a poultry tag. The sole issue is as to the validity of the patent, since the plaintiff is not here attacking the finding of infringement against it. No question is raised as to the court’s rulings of invalidity of two other patents in issue at the trial.

The Ashton poultry tag patent covers a device exceedingly simple both in construction and in function; and the court below sustained it almost entirely on the device’s commercial success and a finding that it filled long-felt needs in the tag-making industry. The device covered by the patent is a simple metal tag designed for attachment to the dressed carcass of a chicken or other fowl. It is stamped of a single piece of thin bendable metal, the main portion of which, is surrounded by a curved lip with an opening in. one’ end and a narrow tongue of metal at the other conveniently bent toward this opening in two places so as to flatten out and clamp a fold of poultry skin in it when the tongue and main portion are-pressed together. The use of metal tags is quite old in the poultry industry,¹ and novelty is claimed only in the clamping or grasping manner by which Ashton’s tag is attached to the bird. The clip-type tags previously in most common-use were affixed by a sharply pointed tongue which pierced through the skin of the fowl on compression and then bent backwards, locking the tag.

The trial court found that the Ashton tag filled a need long felt in its industry.But apart from the usual and common desire of manufacturers constantly to improve their .product — the stimulus of nearly all routine engineering improvements — there is no evidence of any specific and recognized problems which the claimed invention solved. While there is some evidence that the- older clip-type tags were difficult for housewives to remove and their piercing of the skin of the bird decreased the value of the poultry, it is not clear that Ashton’s patented device eliminated either of these difficulties. The patent itself stresses the tag’s tightly locking feature, rather than any ease of removal.² And as its claims are not limited to blunt-tongued tags which will not pierce poultry skin, many of the tags shown at the trial to be made under or in infringement of the patent have sharp or even double-pronged tongues to allow them to pierce, as well as clamp, the skin of the bird. The testimony of Hans F. Stoffel of the defendant corporation is typical of the record on this point. When questioned by the court as to the problem on which he and the rest of the industry allegedly had been working before Ashton came out with his tag, he could answer only in terms of Ashton’s solution, and how good that was, surpassing his own prior efforts in various features. Additionally, the finding that Ashton solved problems of long stánding in the industry is belied by the discussion in the patent itself: “In the past wing-tags have been popular and quite satisfactory for certain purposes. ' They were variously constructed but usually were so made that they could be conveniently and securely clipped to the wing' of a bird but were unsuitable for clipping to the breast. Recently however there has been a demand for a breast tag.” (Emphasis added.)

The record is similarly ambiguous as to the several advantages Stoffel claims for the patented device. While Stoffel did show that the tags were somewhat less expensive to manufacture, store, and ship than those previously used, these savings seem due principally to the use of less metal on their backs — a feature easily duplicated on the older clip-type tags as well, and wholly unrelated to the workings of their clamping mechanism. Moreover, while they may be somewhat more easily applied to poultry than the older tags, we cannot find how significant this improvement may have been, since there is no proof of the rate at which a skilled operator could apply the clip-type tags.

On this record we cannot find any invention in the Ashton patent. While we need not decide whether Ashton was anticipated by the Bicknell paper clasp patent No. 1,163,127 of 1915 or the Buck & Barnes laundry tag patent No. 492,085 of 1893, the close physical similarity of these tags to Ashton’s underscores its obviousness. It concededly differs from tags long used on poultry only in its mode of affixture. This change hardly reaches that level of invention required by statute and the Constitution for the grant of a patent monopoly. 35 U.S.C. § 103; U.S.Const. Art. 1, § 8.³ Affixture by clamping is as common as the ordinary clothespin used to hold clothes on a line. And the bent metal tongue which develops the tag’s clamping pressure is a simple toggle not unlike toggles used to develop a controlled pressure in devices as diverse as stone crushers, wagon brakes, and shoe trees.⁴ Such an adaptation of a device common to many dissimilar fields, achieving no unusual results and solving no problems of recognized difficulty, is clearly not invention. Welsh Mfg. Co. v. Sunware Products Co., 2 Cir., 236 F.2d 225, 226.

The device is, in short, a simple and obvious gadget of the type held unpatentable in Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, or Savoy Leather Mfg. Corp. v. Standard Brief Case Co., 2 Cir., 261 F.2d 136, or Surgitube Products Corp. v. Scholl Mfg. Co., 2 Cir., 262 F.2d 824; and it is clearly more obvious than the widely used and highly successful Zoomar lens held not novel in Zoomar, Inc. v. Paillard Products, 2 Cir., 258 F.2d 527, certiorari denied 358 U.S. 908, 79 S.Ct. 237, 3 L.Ed. 2d 230. Indeed we know of no case in this circuit or in others which can be considered authority for sustaining so ordinary a device. Clearly Lyon v. Bausch & Lomb Optical Co., 2 Cir., 224 F.2d 530, 536, certiorari denied Bausch & Lomb Optical Co. v. Lyon, 350 U.S. 911, 76 S.Ct. 193, 100 L.Ed. 799, does not support it; that case in fact recognizes “the continued authority” of Hotchkiss v. Greenwood, 11 How. 248, 267, 52 U.S. 248, 267, 13 L.Ed. 683, and its requirement that the improvement over the prior art must be more than would be obvious to a person having ordinary skill in the art. And that test is definitely and expressly carried over to the Patent Act of 1952, 35 U.S.C. § 103⁵ It cannot be held satisfied by the convenient flexing of the metal tongue here.

Where invention is so plainly lacking, commercial success cannot validate the patent. Jungersen v. Ostby & Barton Co., 335 U.S. 560, 69 S.Ct. 269, 93 L.Ed. 235, affirming Jungersen v. Baden, 2 Cir., 166 F.2d 807; Bostitch, Inc. v. Precision Staple Corp., 2 Cir., 178 F.2d 332; Magnus Harmonica Corp. v. Lapin Products, 2 Cir., 236 F.2d 285; Kleinman v. Kobler, 2 Cir., 230 F.2d 913, certiorari denied 352 U.S. 830, 77 S.Ct. 44, 1 L.Ed.2d 51. As the .cases just cited show, we have needed to view these insistent claims of commercial success with a degree of sophistication, lest we give undue rewards to skillful advertising. Here we have before us the two manufacturers who monopolize the American market which became active with the increased practice of tagging poultry as encouraged by the United States and Canadian Agricultural Departments. Certainly their business would grow under the circumstances. The district court, however, made no attempt to apportion the sales in terms of response to these various obvious stimuli. Perhaps an essay at such an informative evaluation would not have been possible on the evidence; at any rate, lack of real knowledge re-emphasizes the danger of substituting sales figures for novelty.

Judgment reversed; counterclaim dismissed; action remanded for the entry of a declaratory judgment holding the patent invalid.

1 . As is the use of price or grade-defining tags generally. Thus see E. J. Brooks Co. v. Klein, 3 Cir., 114 F.2d 955, invalidating such a patent, and Klein v. American Casting & Mfg. Corp., 2 Cir., 87 F.2d 291, L. Hand, J., dissenting, upholding one. Both cases deal with the usual issues of claimed mutilation of the product and commercial success.

2 . “Continued pressure • * * forces the locking tongue * * * to snap into the reverse angular position shown in Figure 5. In that position the tag is ‘locked’ to the skin of the fowl carcass and may not be removed without damage to or destruction of the tag.”

3 . “It is worth emphasis that every patent case involving validity presents a question which requires reference to a standard written into the Constitution.” Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 154, 71 S.Ct. 127, 131, 95 L.Ed. 162. See also Ouno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 91, 62 S.Ct. 37, 86 L.Ed. 58; Gillman v. Stern, 2 Cir., 114 F.2d 28, 30, certiorari denied Stern v. Gillman, 311 U.S. 718, 61 S.Ct. 441, 85 L. Ed. 468.

4 . While the patent stresses employment of the principle of the toggle, this perhaps assumes a scientific background for the device beyond what it deserves. For the toggle joint is essentially a device to develop extreme pressure where needed, see Webster’s New International Dictionary (2d Ed. 1939) and 22 Encyc.Brit. 485(b) (14th Ed. 1929), while here strong pressure is rather eschewed, see text at note 2 supra. Further, the toggle principle itself is old and not patentable. See 11 The Oxford English Dictionary, Ti-Tz, 106 (1933), giving a definition from “1847 Webster.” The patent itself stresses as an essential feature “an angularly bent tongue” so “arranged and dimensioned” as to be easily manipulated to catch a fold of chicken skin through an aperture in the tab portion when the tongue is straightened; but no attempt is made to define the amount of bend, and the invention in expressly not limited “to the shape of the parts shown in the drawings.” A flexible and conveniently, but imprecisely, bendable metal hardly embodies originality.

5 . As made explicit in the Reviser’s Note to § 103 and the Committee Reports. Sen.Rep. No. 1979, 82d Cong., 2d Sess., June 27, 1952, 2 U.S. Code Cong. & Adm. News, pp. 2394, 2402, 2403 (1952); also H.R.Rep. No. 1.923, 82d Cong., 2d Sess., May 12, 1952. As these materials show, the only change contemplated in this Act - — essentially a codification and not a revision, see Federico, Commentary on the New Patent Act, 35 U.S.C.A. 1, 6 et seq. —was to disavow the implication read by some into the “flash of creative genius” characterization — as opposed to “merely the skill of the calling” — of Cnno Engineering Corp. v. Automatic Devices Corp., 814 U.S. 84, 62 S.Ct. 37, 41, 86 L.Ed. 58, that the manner in which the invention was made, rather than the device itself, was significant. Among the many decisions holding that the stated test does not change the law, the following may be cited: Hawley Products Co. v. United States Trunk Co., 1 Cir., 259 F.2d 69, 70; Wasserman v. Burgess & Blacher Co., 1 Cir., 217 F.2d 402; Interstate Rubber Products Corp. v. Radiator Specialty Co., 4 Cir., 214 F.2d 546, 548-549; Vincent v. Suni-Citrus Products Co., 5 Cir., 215 F.2d 305, 815-316, certiorari denied 34S U.S. 952, 75 S.Ct. 440, 99 L.Ed. 744; Bobertz v. General Motors Corp., 6 Cir., 228 F.2d 94, 99, certiorari denied 352 U.S. 824, 77 S.Ct. 32, 1 L.Ed.2d 47; General Motors Corp. v. Estate Stove Co., 6 Cir., 203 F.2d 912, certiorari denied Estate Stove Co. v. General Motors Corp., 346 U.S. 822, 74 S.Ct. 37, 98 L.Ed. 348; Helms Products v. Lake Shore Mfg. Co., 7 Cir., 227 F.2d 677, 682-683; Pacific Contact Laboratories v. Solex Laboratories, 9 Cir., 209 F.2d 529, 532-533, certiorari denied 348 U.S. 816, 75 S.Ct. 26, 99 L. Ed. 643; Seismograph Service Corp. v. Offshore Raydist, Inc., D.C.E.D.La., 135 F.Supp. 342, 350.