Udin v. J. Kaufman Iron Works, Inc.

342 F. Supp. 1090, 173 U.S.P.Q. (BNA) 716, 1972 U.S. Dist. LEXIS 14281
CourtDistrict Court, S.D. New York
DecidedApril 10, 1972
Docket66 Civ. 2378
StatusPublished
Cited by2 cases

This text of 342 F. Supp. 1090 (Udin v. J. Kaufman Iron Works, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Udin v. J. Kaufman Iron Works, Inc., 342 F. Supp. 1090, 173 U.S.P.Q. (BNA) 716, 1972 U.S. Dist. LEXIS 14281 (S.D.N.Y. 1972).

Opinion

OPINION

NEWMAN, Judge, Customs Court, sitting by designation.

This is an action for patent infringement (35 U.S.C. § 281) tried by the court without a jury. Jurisdiction and venue are predicated upon 28 U.S.C. §§ 1338(a) and 1400(b).

The patent relates to an “ADJUSTABLE WINDOW GRILLE WITH COLLAPSIBLE BOTTOM GUARD BARS”. The grille in question is of the extensible lazy tongs type, and is designed to prevent entry through windows or other openings by burglars.

Plaintiff (a resident of New York) is the individual patentee and his New York corporation, Albert Udin, Inc., manufactures adjustable window grilles and folding gates. Defendant (a New York corporation) manufactures and sells an extensive window grille which is accused of possessing features covered by plaintiff’s patent.

Plaintiff seeks: injunctive relief against further infringement by defendant (35 U.S.C. § 283), an accounting for profits and damages (35 U.S.C. § 284), and costs.

Defendant by answer and a counterclaim contests the validity of the patent and denies any infringement even if the patent were valid. Another counterclaim is asserted for alleged patent misuse and antitrust violations arising out of plaintiff's attempt to monopolize subject matter in the public domain. (15 U.S.C. §§ 2, 15 and 15/26" style="color:var(--green);border-bottom:1px solid var(--green-border)">26.)

Defendant seeks: dismissal of the complaint; a declaratory judgment of invalidity and noninfringement (28 U.S.C. §§ 2201 and 2202); injunctive relief from charges of infringement by plaintiff or his employees; treble damages under § 4 of the Clayton Act; attorney’s fees and costs.

The counterclaims are denied by plaintiff, and he asks their dismissal.

The Background of the Patent

Plaintiff has been in the business of designing and manufacturing iron protective gates since 1924. He employs his son-in-law, Murray Blecher, as a salesman and Blecher sells plaintiff's window grilles to retail hardware stores. Mr. Udin knew, from receiving many complaints from the hardware stores over a period of several years, there was a long-standing problem of burglars breaking through his window grilles by bending or breaking them at the lower pivot-ally-connected ends. Consequently, early in 1964 plaintiff decided to incorporate into his window grilles a protective feature which would prevent the lower pivotally-connected ends of the grille-work from being “jimmied”.

Plaintiff sought to solve the problem of burglars breaking through his gates by pi’oviding duplicate pairs of spaced guard bars on each side of the grille which would: (1) form an enclosure restricting access to the lower pivotallyconnected ends of the extensible unit channel links; and (2) protect the lower pivotally-connected ends of the grille from being bent, broken or displaced out *1093 of their normal plane to either side of the gate (perpendicular to the plane of the gate) by one attempting to gain entry. As stated in the disclosures of plaintiff’s patent:

The primary object of the present invention is to economically produce a grille of this kind which is adjustable while having qualities present in a fixed grille, such as vertical bars mounted in conjunction with the grille structure.
A further object is to provide a grille of this kind with means to prevent tampering with the movable grille members at the bottom thereof.

Although the record does not precisely indicate when plaintiff first conceived the idea of using protective guard bars on his window grilles, it appears that in May or June of 1964 he made a prototype or model of his improved gate. To plaintiff’s knowledge there was no similar window grille on the market at that time.

Mr. Udin’s application for a patent was filed in the Patent Office on August 5, 1964. Plaintiff testified that he initially sold his improved window grille with protective guard bars in August or September 1964 “or something like that” (Tr. 22); and that on October 28, 1964 he first became aware that defendant was selling the “Diamond Guard” folding gate possessing protective links similar to plaintiff’s guard bars.

Defendant’s vice-president, David M. Kaufman, testified that his “Diamond Guard” folding gate with an “Invincible brace” was first sold on or about October 9, 1964 (Tr. 328, 333, 357, 359, 398, 399). A photostatic copy of a “price list and discount schedule” dated October 15, 1964 (Deft.’s Exh. A, p. 23) depicting the “Diamond Guard” folding gate states: “[T]he INVINCIBLE jacknife [sic] webbing brace is now being introduced because of the rising demands for a folding gate that will withstand more than normal abuse. We have taken a standard DIAMOND-GUARD * folding gate and added a jacknife [sic] webbing brace to make the diamonds rigid, thereby preventing intruders from manually bending the bottom or top points of the webbing”. Kaufman further testified that defendant manufactured gates other than those called “Invincible”, which had “bottom guard bars” (Tr. 361; Tr. of Dep. 9-13, 16).

Plaintiff’s attorney caused the patent application to be expedited (taken out of turn) by means of a petition to the Commissioner of Patents requesting an accelerated examination upon the ground that defendant’s “Diamond Guard” folding gate with an “Invincible brace” infringed the claims in plaintiff’s application. After a thorough review of the merits, the application was rejected by the examiner pursuant to 35 U.S.C. § 103 on the ground that the features of the claimed invention were obvious in light of the prior art. However, on appeal the Patent Board of Appeals reversed the decision of the examiner for the reasons discussed infra,, and patent No. 3,258,061 was issued on June 28, 1966.

The complaint herein was filed on August 2, 1966 and was predicated on patent No. 3,258,061, containing a single claim. Subsequent to the filing of the complaint plaintiff surrendered his original patent No. 3,258,061, and pursuant to 35 U.S.C. § 251 1 he obtained reissue *1094 patent No.

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Bluebook (online)
342 F. Supp. 1090, 173 U.S.P.Q. (BNA) 716, 1972 U.S. Dist. LEXIS 14281, Counsel Stack Legal Research, https://law.counselstack.com/opinion/udin-v-j-kaufman-iron-works-inc-nysd-1972.