Hansen v. Colliver

171 F. Supp. 803, 121 U.S.P.Q. (BNA) 485, 1959 U.S. Dist. LEXIS 3661
CourtDistrict Court, N.D. California
DecidedMarch 25, 1959
DocketCiv. No. 7399
StatusPublished
Cited by1 cases

This text of 171 F. Supp. 803 (Hansen v. Colliver) is published on Counsel Stack Legal Research, covering District Court, N.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Hansen v. Colliver, 171 F. Supp. 803, 121 U.S.P.Q. (BNA) 485, 1959 U.S. Dist. LEXIS 3661 (N.D. Cal. 1959).

Opinion

HALBERT, District Judge.

This action has been brought by Charles F. Hansen, (hereinafter referred to as plaintiff) as owner of United States Letters Patent Number 2,552,673, issued May 15, 1951, against Colliver and Fuller (hereinafter referred to as defendants), jurisdiction being founded upon Title 28 U.S.C.A. § 1338(a). It is alleged in the complaint that a device, constructed and used commercially by defendants, infringes the Hansen patent, and plaintiff, having waived an accounting for damages, prays solely for injunctive relief. Defendants, by their answer, deny any infringement and contend that, in any event, the Hansen patent has been anticipated, and so is void. In addition, the defendants counterclaimed for damages alleged to have resulted from notices sent by plaintiff to defendants’ customers alleging infringement of the Hansen patent by the customers, which resulted in defendants being unable to find purchasers for the product of their device.

[806]*806May 15, 1951 c. f. hansen 2,552,673

MEANS FOR INTERCHANGING CORES IN WIRE ROPES

Filed July 14, 1950

EXHIBIT "A"

[807]*807The Hansen patent involves a machine which enables short lengths of preformed wire cable to be economically recored. It appears that the prior art in the field involved expensive and cumbersome machines which required considerable setup time. Such a mechanism required considerable set-up time and so was impracticable, in an economic sense, for re-coring short lengths of cable. The machine evolved by Hansen (See: Exhibit “A”), is simplicity itself. It consists of a fixed pin, which is passed through an opening created in one end of a short length of cable, the opening being created by twisting the cable against the lay of its strands. The pin prevents the pre-formed cable from closing and resuming its original shape. Stress is then applied by means of a swivel, pulling the cable past the pin, the helical lay of its strands forcing it to revolve about the pin. As the cable rotates in this fashion, the old core is forced out as it meets the pin, emerging through the gap in the strands at that point. Through a hole in the pin a new core is inserted. As the cable beyond the pin resumes its original shape, it closes around and draws the new core with it.

It appears that Hansen utilized his machine to re-core, with a steel core, used cable, manufactured with a hemp core, and sold the resultant product to a segment of the logging industry. While so engaged, Hansen employed defendants to operate the machine. During their employment defendants conceived their device, which they suggested to Hansen as an improvement, but which Hansen refused to consider. After leaving Hansen, the defendants constructed their device and commenced re-coring cable, which construction and operation is in issue here.

Initially this Court is impelled, in view of the essential simplicity of the Hansen patent in concept and construction, to consider the possibility that the patent lacks “invention”. While there is a prima facie presumption, arising from the issuance of letters patent, that all requisite elements of patentability exist, including invention (Palmer v. Village of Corning, 156 U.S. 342, 15 S.Ct. 381, 39 L.Ed. 445, and Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed. 121), this presumption is not in any sense con? elusive (Gardner v. Herz, 118 U.S. 180, 6 S.Ct. 1027, 30 L.Ed. 158). Defendants were entitled, but did not, allege and put in issue the non-statutory defense of lack of invention (Powers-Kennedy Contracting Corporation v. Concrete Mixing & Conveying Co., 282 U.S. 175, 51 S.Ct. 95, 75 L.Ed. 278, and Richards v. Chase Elevator Co., 158 U.S. 299, 15 S.Ct. 831, 39 L.Ed. 991). No admissible evidence by either party was offered in this regard. Invention, however, cannot be established by the failure of the parties to raise and consider the issue (cf. Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959, and Daniels v. Permutit Co., D.C., 44 F.Supp. 74, reversed on other grounds 3 Cir., 137 F.2d 823).

Invention is, perhaps, the most essential element of patentability. It is the quality which carries a device beyond that level which might be obtained through the exercise of no more than mechanical skill and raises it to the legal stature of patentability (United States v. Dubilier Condenser Corp., 289 U.S. 178, 53 S.Ct. 554, 77 L.Ed. 1114). It follows then that an absence of invention would defeat an action for infringement at its inception, and it is, therefore, proper for this Court to raise and consider the issue sua sponte (Slawson v. Grand Street, P. P. & F. R. Co., 107 U.S. 649, 2 S.Ct. 663, 27 L.Ed. 576).

The test in this regard has received extended discussion in Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 71. S.Ct. 127, 95 L.Ed. 162, although there the Su-i preme Court was specifically concerned with a combination patent. The concept embodied in the Hansen patent has been long and carefully considered in the light of that discussion. Such study has convinced the Court that, obvious as it appears at this stage of the proceeding, the development of the Hansen patent did in fact require the exercise of inventive? [808]*808ness, rather than mechanical skill only, and so properly forms a valid basis for a subsisting patent.

Raised by defendants in their answer was the defense of anticipation. Substantially identical testimony was elicited in that regard from two witnesses, one Drew and one Enzensperger. They both testified that during the World War II they were employed .at the same shipyard where they served as members of a Labor-Management Committee whose purpose was to consider for merit awards employee suggestions aimed at increasing and furthering production. Drew, a patent agent, had the further responsibility of determining the patentability of such suggestions, and of obtaining a patent where that was indicated.

Both witnesses testified that during the early years of the War (They were unable to set the time more precisely.) they had obsei'ved a mechanism in one of the yard’s rigging lofts which was used to re-core short lengths of wire cable. The mechanism was described as a vertical timber with a spike driven into its flat top. On opposite sides of the spike were fastened inverted U bolts. Cable, placed over the spike, was lead through the U bolts and then drawn past the spike by means of a swivel, enabling the old core to be removed and a new core inserted in much the same fashion as the Hansen patent.

Both Drew and Enzensperger had viewed this mechanism independently, but neither was certain whether or not it had been submitted to their Committee or, if so, whether it had received an award. A check could not be made through the Committee records, as the records had been destroyed several years before the trial.

It has.been stated that prior use must be proven beyond a reasonable doubt (Hotel Security Checking Co. v. Lorraine Co., 2 Cir., 160 F. 467, 24 L.R.A.,N.S., 665).

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171 F. Supp. 803, 121 U.S.P.Q. (BNA) 485, 1959 U.S. Dist. LEXIS 3661, Counsel Stack Legal Research, https://law.counselstack.com/opinion/hansen-v-colliver-cand-1959.